Personnel Data Systems, Inc.

Trademark Trial and Appeal Board

Jan 5, 2001

No. 75325141 (T.T.A.B. Jan. 5, 2001)

1/5/01
Paper No. 15
EJS
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Personnel Data Systems, Inc.
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Serial No. 75/325,141
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Stanley B. Kita of Howson and Howson for Personnel Data
Systems, Inc.
Heather D. Thompson, Trademark Examining Attorney, Law
Office 103 (Michael A. Szoke, Managing Attorney).
_______
Before Seeherman, Wendel and Bucher, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Personnel Data Systems, Inc. has appealed from the
final refusal of the Trademark Examining Attorney to
register VISTA as a trademark for “computer software for
use in human resource management, namely, in maintaining
personnel and benefits records, and processing payrolls.”1
Registration has been refused pursuant to Section 2(d) of
1 Application Serial No. 75/325,141, filed July 16, 1997, and
asserting a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/325,141
2
the Trademark Act, 15 U.S.C. 1052(d), on the ground that
applicant’s mark so resembles the mark VISTA/PAY, shown
below, and registered for “business services, namely
payroll administration services performed for other
companies”2 that, if used on applicant’s identified goods,
it would be likely to cause confusion or mistake or to
deceive.
Applicant filed an appeal brief and a supplemental
appeal brief.3 The Examining Attorney also filed a brief.
An oral hearing was not requested.
In determining whether there is a likelihood of
confusion between two marks, we must consider all relevant
factors as set forth in In re E.I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In reaching
our decision herein, we have focused our discussion on
2 Registration No. 1,948,407, issued January 16, 1996. The
drawing is lined for the color red.
3 After the filing of applicant’s appeal brief the Examining
Attorney requested remand because the application had been newly
assigned to her, and she wished to supplement the evidence in
the case. The request was granted, and the Examining Attorney
not only submitted additional evidence, but she withdrew the
refusal of registration with respect to Registration No.
1,240,942, which had formed one of the bases for refusal in the
final Office action. Applicant was thereupon given an
opportunity to file a supplemental appeal brief directed to the
new evidence and arguments.
Ser. No. 75/325,141
3
those factors argued by applicant and the Examining
Attorney.
In any likelihood of confusion analysis under Section
2(d), two of the most important considerations are the
similarities or dissimilarities between the marks and the
similarities or dissimilarities between the goods and/or
services. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
Turning to a consideration of applicant’s goods and
the registrant’s services, it is true that one is a product
and the other a service. However, it is well established
that the goods or services of the parties need not be
similar or competitive, or even that they move in the same
channels of trade to support a holding of likelihood of
confusion. It is sufficient that the respective goods or
services of the parties are related in some manner, and/or
that the conditions and activities surrounding the
marketing of the goods and services are such that they
would or could be encountered by the same persons under
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they originate
from the same producer. See International Telephone &
Telegraph Corp., 197 USPQ 910 (TTAB 1978).
Ser. No. 75/325,141
4
In this case, the Examining Attorney has made of
record third-party registrations that show that a party has
adopted a single mark for both payroll services and payroll
software.4 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).
In addition, the Examining Attorney has made of record
a number of excerpts of articles taken from the NEXIS data
base which refer to payroll processing companies offering
payroll software as well. As a result of these reports,
consumers are likely to believe that payroll administration
services and payroll software can emanate from the same
source.
Applicant argues that the customers for its software
are different from the customers of the registrant’s
services. It is clear from the identification that the
4 See, for example, Registrations Nos. 2,176,083 and 2,147,183
for, inter alia, computer software for use in connection with
human resources, and payroll, and for payroll preparation
services; Registration No. 1,868,786 for, inter alia, software to
allow customers to input their own payroll data, transmit the
files, and print payroll checks on site or have payroll or
personnel reports prepared by a processing center, and payroll
processing services.
Ser. No. 75/325,141
5
registrant’s payroll administration services are rendered
to other companies. However, applicant’s identified
software would also be utilized by companies having the
need for payroll processing and administration. In
particular, a company which has used payroll administration
services may decide to purchase computer software in order
to handle its own payroll processing, or to supplement the
services it obtains from a third party. Such a consumer
might well believe, if the software were offered under a
confusingly similar mark to that under which the payroll
administration services were rendered, that the software
was an ancillary product emanating from the same source as
the services.
This brings us to a consideration of the marks.
Applicant’s mark is VISTA, while the cited mark is for
VISTA/PAY and design. Although there are specific
differences in the marks, they do not serve to distinguish
them. The design element in the cited mark has a very
limited visual effect, because it is a common geometric
shape, is relatively small compared to the words, and
because, as a non-verbal element, is less likely to be
referred or remembered. See In re Appetito Provisions Co.,
3 USPQ2d 1553 (TTAB 1987). Similarly, the word PAY, which
is a descriptive term for the services, is not only
Ser. No. 75/325,141
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separated from the word VISTA by a slash, but has a lesser
visual impression because it is shown in lower case letters
as opposed to the upper case lettering of VISTA. Thus,
although we have compared the marks in their entireties in
assessing the likelihood of confusion, we find that the
VISTA portion of the cited mark is the dominant element.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985). Moreover, because of the similarities in
the appearance, pronunciation and connotation of the marks,
they both convey the same commercial impression.
Applicant has argued that VISTA is entitled to a
limited scope of protection because it has been registered
by third parties. Although applicant has not submitted
copies of these registrations,5 the Examining Attorney did
not object to them or otherwise advise applicant of the
insufficiency of merely listing them. Accordingly, we have
treated them as of record. However, of the three
registrations listed by applicant, Office records show that
two have been cancelled, and the one remaining
registration, No. 1,503,617, is not, as applicant
characterizes it, for a “Personal Computer Software
5 In general, the Board does not take judicial notice of
registrations that reside in the U.S. Patent and Trademark
Office, and the submission of a list of registrations is
insufficient to make them of record. In re Duofold Inc., 184
USPQ 638 (TTAB 1974).
Ser. No. 75/325,141
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Program.” The full identification is “personal computer
software program recorded on magnetic media, personal
computer hardwired programming circuit board, and personal
computer operator’s hand control mouse, all for
computerized video display enlargement systems for the
visually impaired.” This specialized computer equipment
for the visually impaired is clearly different from
applicant’s identified payroll processing software and the
payroll administration services identified in the cited
registration. Moreover, the significance of VISTA in
connection with products for the visually impaired is
clearly different from the meaning of this word in
connection with payroll software and services.
Accordingly, we are not persuaded by applicant’s argument
that the scope of protection of the cited registration
should be so limited that it would not extend to the use of
VISTA for the computer software identified in applicant’s
application.
Because of the similarity of the marks, and the
related nature of the goods and services, we find that
consumers who are aware of the registrant’s payroll
administration services offered under the mark VISTA/PAY
and design are likely to believe, upon seeing the mark
Ser. No. 75/325,141
8
VISTA on computer software for, inter alia, processing
payrolls, that this product emanates from the same source.
Decision: The refusal of registration is affirmed.