PageMart, Inc.

Trademark Trial and Appeal Board

Sep 20, 2000

No. 75366221 (T.T.A.B. Sep. 20, 2000)

Paper No. 16
ejs
9/20/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re PageMart, Inc.
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Serial No. 75/366,221
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William A. Munck of Novakov Davis for PageMart, Inc.
Melvin T. Axilbund, Trademark Examining Attorney, Law
Office 113 (Meryl Hershkowitz, Managing Attorney)
_______
Before Simms, Cissel and Seeherman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
PageMart, Inc. has appealed from the final refusal of
the Trademark Examining Attorney to register SCOUT as a
trademark for "message pagers and personal communication
systems, namely, two-way pagers; and two-way pager cards."1
This is the identification submitted by applicant with its
request for reconsideration, and the identification which

1 Application Serial No. 75/366,221, filed October 1, 1997,
based on an asserted bona fide intention to use the mark in
commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75?366,221
2
the Examining Attorney accepted. It is noted that
applicant, in both its appeal brief and reply brief, has
referred to the goods as "message pagers and personal
communications systems, namely, two-way pagers and two-way
pager cards," despite the fact that the Examining Attorney
pointed out in his brief the discrepancy in punctuation
with the identification which is of record. Our decision
herein is based on the identification which the Examining
Attorney accepted, although we agree with the Examining
Attorney that the punctuation differences found in the
identifications recited by applicant in its briefs have no
effect on the outcome of our decision.
Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. 1052(d), on the ground that
applicant's mark so resembles the following marks,
registered to two separate entities, that, if used on
applicant's identified goods, it would be likely to cause
confusion or mistake or to deceive.
SCOUT for digital computers2; and
SCOUT for wireless microphones and wireless
receivers.3

2 Registration No. 1,238,102, issued to Computer Automaton, Inc.
on May 17, 1983; Section 8 affidavit accepted; Section 15
affidavit received.
3 Registration No. 1,813,481, issued to TOA Corporation on
December 28, 1993; Section 8 affidavit accepted; Section 15
affidavit received.
Ser No. 75?366,221
3
The appeal has been fully briefed; an oral hearing was
not requested.
Our determination is based on an analysis of all of
the probative facts in evidence that are relevant to the
factors set forth in In re E.I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood
of confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Food, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Turning first to the refusal based on Registration No.
1,813,481 for SCOUT for wireless microphones and wireless
receivers, there is no question that the marks are
identical. As for the goods, the Examining Attorney has
submitted a dictionary definition showing that a "pager" is
"a small one-way (typically) wireless receiver you carry
with you." This definition goes on to state that "[m]any
pagers and pager networks now include an 'acknowledgment'
feature, which allows you to press a button to acknowledge
the receipt of the page through two-way communications
capability." Newton's Telecom Dictionary, 15th ed., 1999.
This same dictionary defines "receiver" as, inter alia,
"any device which receives a transmission signal" and "any
portion of a telecommunications device which decodes an
Ser No. 75?366,221
4
encoded signal into its desired form." In addition, the
Examining Attorney has made of record several third-party
registrations which show that other entities have
registered their marks both for wireless receivers and
pagers, for example, radio pagers and wireless receivers4;
wireless receivers and transmitters, paging radio receiving
units, and radio paging transmitting units5; radio pager
cards, namely personal computer memory cards for use with
wireless receivers or radio pagers6; and computer hardware
and software, namely pagers and wireless receiver devices
for use in the field of radio transmission of textual data
such as messages.7 Third-party registrations which
individually cover a number of different items and which
are based on use in commerce serve to suggest that the
listed goods and/or services are of a type which may
emanate from a single source. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Applicant appears to take the position that because
its goods do not include wireless microphones, there can be
no likelihood of confusion. However, it is not necessary,
in order to support a finding of likelihood of confusion,

4 Registration No. 2,270,986.
5 Registration No. 1,449,412.
6 Registration No. 1,912,366.
7 Registration No. 2,044,128.
Ser No. 75?366,221
5
that likelihood of confusion must be proved with respect to
each of the goods listed in the cited registration; if
applicant's mark is likely to cause confusion with any of
the goods or services identified in the cited registration,
refusal of registration pursuant to Section 2(d) is
appropriate.
In this case, we find that applicant's mark SCOUT is
likely to cause confusion with the registered mark SCOUT as
used for wireless receivers. As shown by the dictionary
definition, a pager is a type of wireless receiver.
Moreover, applicant has acknowledged that its one-way
pagers include an integrated receiver. Appeal brief, p. 6.
We recognize that, as identified in the application,
applicant's goods do not include all pagers, but are
specifically two-way pagers, and therefore they are not
simply wireless receivers8; indeed, applicant describes them
as containing a transceiver (combination transmitter and
receiver). However, one-way pagers (wireless receivers)
and two-way pagers are so closely related that, if sold
under the identical mark SCOUT, they will be assumed to
emanate from the same source.

8 In point of fact, applicant throughout its briefs has stated
that its message pagers include "portable, conventional one-way
communication devices." Reply brief, p. 2. However, applicant's
identification lists its pagers as "two-way pagers," and our
determination herein is based on the identification.
Ser No. 75?366,221
6
Applicant has asserted that the channels of trade for
the goods are different, and the purchasers of its products
are careful. Applicant bases this assertion on the fact
that it intends its goods to be used by subscribers to
applicant's wireless messaging services, that is, that its
pagers and pager cards may only be purchased by parties
subscribing to its messaging services. Accordingly,
applicant asserts that its services and related goods will
be purchased only after careful inspection and not on
impulse because "the decision to select a message paging
service provider is similar to the decision to select a
long distance company." Brief, p. 9.
The difficulty with applicant's argument is that its
identification of goods does not limit their sales to
customers who purchase applicant's messaging services. It
is well settled that the determination of likelihood of
confusion must be based on a consideration of the goods as
they are identified in applicant's application and the
cited registration. In re William Hodges & Co., Inc., 190
USPQ 47 (TTAB 1976); see also, Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987). Thus, we must assume that the goods
are sold in all channels of trade appropriate for goods of
this type. Accordingly, we must deem applicant's pagers to
Ser No. 75?366,221
7
be sold in the same channels of trade as the registrant's
wireless receivers. Such channels could include consumer
electronics stores, in which case the asserted care with
which a consumer would choose a messaging service would be
irrelevant. Further, even if we assume that the two-way
pagers are not impulse purchases, even a careful purchaser
would not be able to distinguish between identical marks.
As noted above, given the close relationship between one-
way and two-way pagers, consumers are likely to assume that
both types of pagers sold under the identical mark SCOUT
emanate from a single source.
Applicant has argued that SCOUT is not a strong mark,
and the cited registration should be given only a limited
scope of protection. It bases this argument on references
to certain third-party registration which it lists in its
appeal brief. The Examining Attorney has objected to these
registrations, which he points out were never made of
record during the examination phase of this application.
The Examining Attorney's objection is well taken, and we
have not considered the registrations. See Trademark Rule
2.142(d).
For the foregoing reasons, we find that applicant's
mark SCOUT, if used for the identified "message pagers and
personal communication systems, namely, two-way pagers," is
Ser No. 75?366,221
8
likely to cause confusion with the mark SCOUT, registered
for wireless receivers.
This brings us to a consideration of the question of
likelihood of confusion with respect to Registration No.
1,238,102 for SCOUT for digital computers. Again, the
marks are identical, so we focus our attention on a
comparison of the goods.
In support of his position that the goods are related,
the Examining Attorney has submitted excerpts from U.S.
Patent No. 5,905,777 that indicates a pager card may be
used with a computer, to wit:
In response to the selection signal,
the server sends a wakeup signal to the
pager card attached to the recipient's
computer. The wakeup signal
sufficiently identifies the E-Mail
message waiting on the server, to
enable the computer to logon and
request the message.
In another embodiment, the server
transmits an alert signal over the
wireless paging network to a pager card
attached to the recipient's computer.
The Examining Attorney also points to another application
filed by applicant which includes, in the identification,
"two-way pager cards for use with desktop computers."9

9 Application Serial No. 75/366,142.
Ser No. 75?366,221
9
Although this evidence shows that pager cards may be
used with computers, we must recognize that, given the
ubiquitous role that computers play in daily life, many
items are designed to be used with computers. That fact
alone is not a sufficient basis for us to find that two-way
pager cards and digital computers are related products.
Nor do we find that the third-party registrations
referenced by the Examining Attorney10 support a conclusion
that computers and pager cards are related goods which may
be sold by the same entity under the same mark.
Accordingly, based on the record before us, we cannot
find that applicant's mark, if used for its identified
goods, is likely to cause confusion with Registration No.
1,238,102 for SCOUT for digital computers.

10 The specific registrations include in their identifications
"paging information computers" and "radio paging transmitting
units" (Registration No. 1,449,412); "radio pager cards, namely
personal computer memory cards for use with wireless receivers or
radio pagers" (Registration No. 1,912,366); and "computer
hardware and software, namely radio transmission software,
pagers, and wireless receiver devices, all for use in the field
of radio transmission of textual data such as messages, news, and
other information" (Registration No. 2,044,128).
Ser No. 75?366,221
10
Decision: The refusal of registration based on
Registration No. 1,813,481 is affirmed; the refusal of
registration based on Registration No. 1,238,102 is
reversed.
R. L. Simms
R. F. Cissel
E. J. Seeherman
Administrative Trademark Judges
Trademark Trial and Appeal Board