Parametric Technology Corp.

Trademark Trial and Appeal Board

Apr 16, 2004

No. 78044413 (T.T.A.B. Apr. 16, 2004)

Mailed: Paper No. 14
April 16, 2004 GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________
In re Parametric Technology Corporation
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Serial No. 78044413
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Thomas V. Smurzynski of Lahive & Cockfield, LLP for
Parametric Technology Corporation.
Michael Webster, Trademark Examining Attorney, Law Office
102 (Thomas Shaw, Managing Attorney).
_______
Before Seeherman, Walters and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Parametric Technology Corporation [applicant] has
applied to register the mark WINDCHILL PROJECTLINK for
various computer related products and services.
Specifically, the identification covers the following:
Computer software for computer aided design, CAD,
for general use, computer-aided manufacturing,
CAM, for general use, and computer aided
engineering, CAE, for general use; computer
software for workflow, process and production
automation; computer software for visualization
and digital mockup; computer software for
This Opinion is Not
Citable as Precedent
of the TTAB
Ser No. 78044413
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information management of business,
organizational, supplier, engineering, component,
product, production and maintenance information;
computer software for use in software
development, and accompanying user guides sold
with such software as a unit, in International
Class 9;

Computer education training services, namely,
training and education services in the field of
computer software, in International Class 41; and
Technical support services, namely,
troubleshooting of computer software problems via
telephone; updating of computer software;
maintenance of computer software, namely,
maintenance and error correction services for
computer software; computer consultation; product
development for others; repair of computer
software, in International Class 42.
The application is based on applicant's stated bona fide
intention to use the mark in commerce on or in connection
with these identified products and services.
The examining attorney refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), in
view of the prior registration of the mark PROJECTLINK for
goods identified as "computer software program and
accompanying user's manual used to generate and update
project management plans from business and engineering
models," in International Class 9.1 When the refusal of
registration was made final, applicant appealed. Applicant
1 Registration No. 2,212,382 issued December 22, 1998 to
Knowledge Based Systems, Inc.
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and the examining attorney have filed briefs, but applicant
did not request an oral hearing.
Preliminary matters we must address are the questions
of whether the examining attorney's refusal of registration
was made as to all three classes in the application and, if
so, whether the refusal was waived or withdrawn in the
briefing of the appeal as to one or more classes. Thus, we
examine the content of the office actions and responses,
and the briefs, to find the answers to these questions.
In the initial office action, the examining attorney
refused registration "because the applicant's mark, when
used on or in connection with the identified goods, so
resembles the marks in [the cited registrations2] as to be
likely to cause confusion, mistake, or to deceive."
Further, in discussing the marks, he stated that their
similarities "are likely to cause confusion as to the
origin of the goods." The examining attorney then went on
to quote in full applicant's identification of goods, but
not its services, to compare applicant's goods with the
identification of goods in the cited registration, and to
conclude "[t]he same consumers will be exposed to the goods
2 In that office action, the examining attorney also refused
registration based on a registration for the mark WINDCHILL, but
applicant acquired the company that owned that registration and
the registration was assigned to applicant.
Ser No. 78044413
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identified with each mark. The similarities among the
marks and the goods of the parties are so great as to
create a likelihood of confusion." In short, the examining
attorney made no mention whatsoever of applicant's services
in connection with the refusal of registration.3
Applicant's response to the initial office action argued
against the refusal of registration solely on the basis of
asserted differences in the marks and on the basis that the
registered mark should be accorded a narrow scope of
protection.
In his second office action, which was denominated the
final refusal of registration, the examining attorney
recapped the refusal set forth in the initial action,
stating "[r]egistration was refused… because the mark for
which registration is sought so resembles the [marks in the
cited registrations] as to be likely, when used on or in
connection with the identified goods and services, to cause
confusion, or to cause mistake, or to deceive." Also, the
examining attorney repeated, verbatim, the following from
the initial office action: "The same consumers will be
exposed to the goods identified with each mark. The
similarities among the marks and the goods of the parties
3 The examining attorney only mentioned the services insofar as
he required amendment of the classification for one service.
Ser No. 78044413
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are so great as to create a likelihood of confusion." In a
request for reconsideration (applicant's "Response to Final
Refusal"), applicant again argued the differences in the
marks and that the cited PROJECTLINK mark should be
accorded a narrow scope of protection. In denying the
request for reconsideration, the examining attorney stated,
in regard to the goods, "Applicant's computer software is
very similar to registrant's."
In its main brief on appeal, applicant argued, "The
software described in Applicant's application is not
identical to that of the cited registration." Also,
applicant argued, "The goods, software products are
different, and any similarity is precisely in the area that
the term 'Project Link' aptly describes. Both the marks
and the goods of this application and of the cited
registration are effectively different."
In his brief, the examining attorney stated that
applicant had "applied to register the mark WINDCHILL
PROJECTLINK for goods and services, including…" and then
went on to quote only the Class 9 identification. Section
two of the examining attorney's brief is entitled
"Applicant's Computer Software and Registrant's Computer
Software Are Used for Similar Functions in the Same Field."
The examining attorney, in this section, states that
Ser No. 78044413
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"[a]pplicant provides no evidence of a difference between
its software and the software in the cited registration."
The examining attorney then compared a portion of
applicant's Class 9 identification with the identification
in the cited PROJECTLINK registration, and concluded that
these software items "appear to be used for business and
engineering project management. Applicant has made no
distinction between the goods. Even if the goods do not
perform the same exact function, they appear to be used in
the same field, and therefore, confusion as to the source
of the goods is likely." In his conclusion, the examining
attorney repeated his assessment that the "goods of the
parties perform a highly similar function and, at least,
are used in the same field." Applicant's reply brief
focused solely on the marks.
From this review, it can be seen that the examining
attorney, at best, can be said to have included applicant's
two service classes in the refusal of registration by a
single reference in the final refusal. Even then, the
examining attorney did not specifically discuss the nature
of the purported relationship between applicant's services
and the goods in the cited registration. Because applicant
never discussed whether its services are or are not related
to the goods in the cited registration, it is not clear
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that the examining attorney's single cursory reference was
sufficient to put the applicant on notice that the refusal
of registration encompassed all three classes of goods and
services in the application.
Ultimately, we need not decide whether the refusal of
registration encompassed applicant's service classes. We
find that the examining attorney waived or withdrew any
presumptive refusal as to those classes when he failed to
address in his appeal brief the relationship, if any, of
applicant's services and the goods in the cited
registration. Accordingly, we have before us on appeal
only the question whether applicant should be refused
registration as to its Class 9 goods; the application shall
proceed at least in regard to the service classes.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In the
analysis of likelihood of confusion presented by this case,
key considerations are the similarities of the marks and
the overlapping nature of the goods. Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976).
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Turning first to the marks, the examining attorney
contends that the WINDCHILL portion of applicant's mark is
merely a "house mark" and that applicant has appropriated
the registered mark and merely added this house mark. The
basis for the argument is applicant's acquisition of the
WINDCHILL mark from Windchill Technology, Inc. and
applicant's purported filing of numerous applications for
marks featuring WINDCHILL as the first term.
The examining attorney did not raise the issue of
applicant's various pending "WINDCHILL _____" applications
until he referenced them in his appeal brief, noting
therein that the applications were not available when the
final refusal was made. Applicant, however, implicitly
admits that WINDCHILL originally was a house mark or trade
name, because it states in its reply brief that WINDCHILL
"had its origin in the name of an acquired company that has
been integrated into Applicant's operations." Moreover,
applicant acknowledges that the applications for various
WINDCHILL marks are pending, insofar as it disputes the
examining attorney's house mark argument and asserts that
WINDCHILL is a product mark used on or in connection with
various products by coupling WINDCHILL with "a variety of
descriptive or heavily suggestive terms appropriate to
different software products."
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Applicant and the examining attorney appear to argue
the issue to support their respective views of what is the
"dominant" term in applicant's mark. Applicant argues that
the dominant term is WINDCHILL, because PROJECTLINK is
descriptive or highly suggestive. The examining attorney
argues that PROJECTLINK is dominant because WINDCHILL is a
house mark.
We agree with the examining attorney that the
WINDCHILL portion of applicant's mark will be perceived as
a house mark or trade name, because applicant has coupled
it with a variety of other terms. The various composites
may very well be perceived as product marks, but the
WINDCHILL element will be perceived as the house mark or
trade name that it was prior to applicant's acquisition of
the company that bore the name.
An applicant cannot normally avoid a finding of
likelihood of confusion, when marks are used on or in
connection with similar products, by adopting as a mark
that which merely combines a house mark or trade name with
an already registered term. See, e.g., In re The U.S. Shoe
Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE for clothing
held likely to be confused with CREST CAREER IMAGES for
uniforms); and In re Riddle, 225 USPQ 630 (TTAB 1985)
(RICHARD PETTY’S ACCU TUNE and design for automotive
Ser No. 78044413
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service stations refused registration because likely to be
confused with ACCUTUNE for automotive testing equipment).
Applicant has argued that the registered mark
PROJECTLINK is highly suggestive (and has intimated that it
may even be descriptive) and should be accorded a limited
scope of protection. Of course, to the extent that
applicant is alleging that registrant's mark is descriptive
or non-distinctive and therefore unregistrable, this would
be an impermissible collateral attack on the registration.
See In re Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997). Such allegations are properly raised
only in the context of a petition to cancel the
registration. Even if we consider applicant's argument to
be one asserting only that the registered mark is
suggestive, “even weak marks are entitled to protection
against registration of similar marks” for related goods or
services. In re Colonial Stores, 216 USPQ 793, 795 (TTAB
1982). See also, In re The Clorox Co., 578 F.2d 305, 198
USPQ 337, 341 (CCPA 1978) (ERASE for a laundry soil and
stain remover held confusingly similar to STAIN ERASER,
registered on the Supplemental Register, for a stain
remover).
Inherent in applicant's argument that PROJECTLINK is
suggestive is an acknowledgment that the term has the same
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connotation when used by applicant and registrant, i.e.,
that the term suggests software that allows users to link
aspects of their projects. A consumer familiar with
registrant's PROJECTLINK brand computer programs, when
confronted with applicant's WINDCHILL PROJECTLINK products
and services, may conclude that these are a new or expanded
line stemming from registrant's initial program.
Turning then to the goods, we agree with the examining
attorney that certain of applicant's computer software
products may be the same as, and certainly would have to be
considered closely related to, the software program
identified in the cited registration. The latter covers a
"computer software program … used to generate and update
project management plans from business and engineering
process models." Applicant's products include "computer
software for workflow, process and production automation"
and "computer software for information management of
business, organizational, supplier, engineering, component,
product, production and maintenance information." Any
differences between the programs of applicant and the
registrant, not reflected in the identifications, are
irrelevant to our analysis, as are any differences in
channels of trade. See also Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
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1783, 1787 (Fed. Cir. 1990) (“The authority is legion that
the question of registrability of an applicant’s mark must
be decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed”).
Under these circumstances we find that confusion will
be likely when applicant uses its mark for its goods.
Decision: The refusal of registration is affirmed as
to the Class 9 goods but is found to have been waived or
withdrawn as to the Class 41 and 42 services.