Mintek Corporationv.Samuel Bouter

Trademark Trial and Appeal Board

Dec 17, 2007

No. 91167540 (T.T.A.B. Dec. 17, 2007)

Mailed:
Dec. 17, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Mintek Corporation
v.
Samuel Bouter dba Minatek Solutions
_____

Opposition No. 91167540
to application Serial No. 78490643
filed on September 28, 2004
_____

Thomas E. Toner of Smith & Hopen, P.A. for Mintek
Corporation.

Samuel Bouter dba Minatek Solutions, pro se.
______

Before Grendel, Drost and Zervas, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Samuel Bouter dba Minatek Solutions, a Canadian sole
proprietorship and applicant herein, seeks registration on
the Principal Register of the mark MINATEK (in standard
character form) for Class 9 goods identified in the
application as:

Computer software designed to manage a business’
customers, known as customer relationship
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91167540
2
management or CRM software, by keeping track of
their interactions with the business and providing
reports and reminders to the sales team and
management; product and billing management, known
as point-of-sale or POS software, e-commerce, and
electronic client invoicing, designed to allow
[sic – follow?] a business through the complete
retail cycle of listing, selling, invoicing,
payment collection, and shipping of products both
on Internet and a traditional retail outlet;
notification software to e-mail or phone a client
letting them know a product or service they
subscribe to is ready or available.

The application was filed on September 28, 2004, based on
applicant’s ownership of Canadian Registration No.
TMA616130. Trademark Act Section 44(e), 15 U.S.C. §1126(e).
Mintek Corporation, opposer herein, has filed a timely
notice of opposition to registration of applicant’s mark.
As its ground of opposition, opposer alleges that it is the
prior user of the trade name and service mark MINTEK in
connection with computer software development for
integrating mobile devices, billings systems and other
databases, and that applicant’s mark as used on applicant’s
goods so resembles opposer’s trade name and service mark as
to be likely to cause confusion, to cause mistake, or to
deceive. Trademark Act Section 2(d), 15 U.S.C. §1052(d).
Applicant filed an answer denying the salient
allegations of the notice of opposition.
Both parties presented evidence at trial. Opposer filed
a brief, but applicant did not.
Opposition No. 91167540
3
The evidence of record consists of the pleadings; the
file of applicant’s involved application; the testimony
declaration of opposer’s officer Lind E. Hutton and
opposer’s Exh. Nos. 1-5 thereto (submitted pursuant to the
parties’ Rule 2.123(b) stipulation); opposer’s notices of
reliance on official records (opposer’s Exh. Nos. 6-8) and
on applicant’s discovery responses (opposer’s Exh. Nos. 9-
11); and the testimony declaration of applicant’s principal
Samuel Bouter and applicant’s Exh. Nos. 1-5 thereto
(submitted pursuant to the parties’ Rule 2.123(b)
stipulation).
The undisputed evidence of record establishes that
opposer “is a value-added reseller providing computer
software development for integrating mobile devices,
billings systems and other databases.” (Hutton Decl. ¶ 5.)
Opposer uses the designation MINTEK as a trade name and a
service mark in connection with its services. (Hutton Decl.
at ¶¶ 2, 6-8.) Based on this evidence, we find that opposer
has standing to oppose registration of applicant’s mark.
See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185 (CCPA 1982); see also Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000).
We find that the earliest date upon which applicant can
rely for priority purposes is his application filing date,
Opposition No. 91167540
4
September 28, 2004.1 The undisputed evidence of record
establishes that opposer began using MINTEK as a trade name
and a service mark in connection with its services prior to
any date upon which applicant can rely. See Hutton Decl. at
¶¶ 6-7 (averring opposer’s continuous use of MINTEK since
1990), and Exh. Nos. 1-5 (showing opposer’s use of MINTEK on
a 1998 advertisement, in 1996 and 1999 license agreements
with third-party licensees, and in a 2002 PowerPoint
presentation made to potential customer). Based on this
evidence, we find that opposer has Section 2(d) priority.
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue (the du Pont factors). See In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d

1 There is no date of first use alleged in applicant’s Section
44(e) application. In his testimony declaration, applicant, a
Canadian citizen, states that “Minatek and Minatek Solutions has
been used since 2000 in the products and services offered both in
Canada, the United States of America, The Netherlands, Germany,
and due to the nature of some of the products and services to
other countries. See Exhibits 3, 4, and 5.” Those exhibits
consist of printouts of WHOIS search results in which applicant
is named as the “contact” for “humarbo.com” of The Netherlands,
“betonexport.de” of Germany, and “djcmatzone” of the United
States. We find that these WHOIS records, which merely identify
applicant as a “contact” for what on this record appear to be
unrelated third-party domain name registrants, fail to
persuasively establish applicant’s claimed 2000 date of first
use. In any event, opposer’s proven use of its mark prior to
2000 gives opposer Section 2(d) priority.
Opposition No. 91167540
5
1689 (Fed. Cir. 2005); In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
The first du Pont factor requires us to determine the
similarity or dissimilarity of the parties’ marks when
viewed in their entireties in terms of appearance, sound,
connotation and overall commercial impression. Palm Bay
Imports, Inc., supra. The test, under the first du Pont
factor, is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of their overall
commercial impression that confusion as to the source of the
goods offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Opposer’s mark is MINTEK. Applicant’s mark is MINATEK.
But for the presence of the additional letter and syllable
“a” in the middle of applicant’s mark, applicant’s mark is
identical to opposer’s mark in terms of appearance and
sound. Certainly, the marks look and sound highly similar.
To the extent that these apparently coined marks have
connotations, the connotation would be similar in both
Opposition No. 91167540
6
marks. In terms of overall commercial impression, the marks
are highly similar, each appearing as a coined word which
begins with the letters “MIN” and ends with the letters
“TEK.” The additional single letter “A” inserted in the
middle of applicant’s mark does not suffice to distinguish
the overall commercial impressions created by the marks. In
short, we find that applicant’s mark is highly similar to
opposer’s mark in terms of appearance, sound, connotation
and overall commercial impression. The first du Pont factor
weighs in favor of a finding of likelihood of confusion.
The second du Pont factor requires us to determine the
similarity or dissimilarity of opposer’s services and
applicant’s goods as identified in the application. It is
settled that it is not necessary that the goods and services
be identical or even competitive in order to find that they
are related under the second du Pont factor. That is, the
issue is not whether consumers would confuse the goods and
services themselves, but rather whether they would be
confused as to the source of the goods and services. See In
re Rexel Inc., 223 USPQ 830 (TTAB 1984). It is sufficient
that the goods and services be related in some manner, or
that the circumstances surrounding their use be such, that
they would be likely to be encountered by the same persons
in situations that would give rise, because of the marks
used thereon, to a mistaken belief that they originate from
Opposition No. 91167540
7
or are in some way associated with the same source or that
there is an association or connection between the sources of
the respective goods and services. See In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991); and In re International Telephone & Telegraph Corp.,
197 USPQ 910 (TTAB 1978).
Opposer develops software for integrating mobile
devices, billings systems and other databases. These
software development services are related to applicant’s
computer software as identified in the application,
especially to the extent that applicant’s software is used
for “billing management” and opposer is engaged in
developing software for “billings systems.” Opposer’s
services and applicant’s goods are likely to be marketed to
and used by the same purchasers, including businesses
seeking software to assist them in managing their
relationships with their customers. We find that the second
du Pont factor weighs in favor of a finding of likelihood of
confusion.
To summarize, we find that opposer’s mark is coined and
therefore strong, and that applicant’s mark is essentially
identical or at least highly similar to opposer’s mark. We
also find that applicant’s goods are sufficiently related to
opposer’s services that confusion is likely to result from
Opposition No. 91167540
8
the parties’ use of these highly similar marks on or in
connection with such goods and services. For these reasons,
we conclude that a likelihood of confusion exists. To the
extent that any doubts might exist as to the correctness of
this conclusion, we resolve such doubts against applicant.
See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed.
Cir. 1993); In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6
USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous
Pastry Shoppe, Inc., supra.
In conclusion, we find that opposer has standing, that
opposer has Section 2(d) priority, and that a likelihood of
confusion exists. Opposer therefore is entitled to prevail
in this proceeding.

Decision: The opposition is sustained.