Pliant Tech-nologies, Inc.

Trademark Trial and Appeal Board

Jul 26, 2001

No. 75739014 (T.T.A.B. Jul. 26, 2001)

7/26/01
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

Trademark Trial and Appeal Board
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In re Pliant Technologies, Inc.
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Serial No. 75/739,014
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Fred G. Pruner, Jr. for Pliant Technologies, Inc.

Wendy E. Goodman, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
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Before Simms, Seeherman and Hanak, Administrative
Trademark Judges.

Opinion by Hanak, Administrative Trademark Judge:

Pliant Technologies, Inc. (applicant) seeks to
register ELF in typed drawing form for a “house mark for
a complete line of computer programs that use a non-
hierarchical structure for the organization, storage,
integration and retrieval and exchange of data,
information and applications.” The intent-to-use
application was filed on June 30, 1999.
Citing Section 2(d) of the Trademark Act, the
Examining Attorney refused registration on the basis that
applicant’s mark ELF, as applied to applicant’s goods, is
likely to cause confusion with the identical mark ELF,
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
previously registered in typed drawing form for “computer
programs and
Ser. No. 75/739,014

instructional manuals sold as a unit for spreadsheet and
graphics-based statistical data entry, manipulation and
analysis.” Registration No. 1,368,757.
When the refusal to register was made final,
applicant appealed to this Board. Applicant and the
Examining Attorney filed briefs. Applicant did not
request a hearing.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the
similarities of the marks and the similarities of the
goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by Section 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the
marks.”)
Considering first the marks, they are identical.
Thus, the first Dupont “factor weighs heavily against
applicant” because the two word marks are identical. In
re Martin’s Famous Pastry Shoppe Inc., 748 F.2d 1565, 223
USPQ 1289, 1290 (Fed. Cir. 1984).
Turning to a consideration of applicant’s goods and
registrant’s goods, we note that because the marks are
identical, their contemporaneous use can lead to the
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assumption that there is a common source “even when [the]
goods or services are not competitive or intrinsically
related.” In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1689 (Fed. Cir. 1993).
However, in this case we find that applicant’s goods
as described in its application and registrant’s goods as
described in its registration are clearly related. The
foregoing underlined words are critical because our
primary reviewing Court has made it abundantly clear that
“the question of likelihood of confusion must be
determined based on an analysis of the mark as applied to
the goods and/or services recited in applicant’s
application vis-a-vis the goods and/or services recited
in [registrant’s] registration, rather than what the
evidence shows the goods and/or services to be.”
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987).
Applicant seeks to register ELF as a “house mark for
a complete line of computer programs that use a non-
hierarchical structure for the organization, storage,
integration, retrieval and exchange of data, information
and applications.” (emphasis added). Registrant’s ELF
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registration is for “computer programs and instructional
manuals sold as a unit for spreadsheet and graphics-based
statistical data entry, manipulation and analysis.”
(emphasis added). The term “data entry program” is
defined as “an application program that accepts data ...
and stores it in the computer.” The Computer Glossary
(9th ed. 2001)(emphasis added). Thus, applicant’s
complete line of computer programs for the storage of
data is clearly related to registrant’s computer programs
for data entry. Indeed, but for differences in
terminology, it appears that applicant’s complete line of
computer programs as described in the application and
registrant’s computer programs as described in the
registration are, in part, essentially the same.
In arguing that its goods are different from
registrant’s goods, applicant disregards the teachings of
Canadian Imperial Bank and instead focuses on the
purported differences in applicant’s actual goods and
registrant’s actual goods. In this regard, applicant
attached to a paper dated May 10, 2000 what purports to
be registrant’s web page describing registrant’s ELF
computer programs. Based upon this visit to registrant’s
web page, applicant argues that
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Ser. No. 75/739,014

its actual computer programs and registrant’s actual
computer programs are different. For example, at pages 2
and 3 of its brief, applicant argues that its computer
programs are of a non-hierarchical structure, whereas
registrant’s computer programs employ a hierarchical
structure. There are two problems with applicant’s
argument. First, applicant has made of record no
evidence showing that registrant’s actual computer
programs are limited to those using a hierarchical
structure as opposed to a non-hierarchical structure.
Second, and of even greater importance, is the fact that
even if applicant had made of record such evidence, this
evidence pertaining to registrant’s actual goods would be
of no consequence because pursuant to Canadian Imperial
Bank, this Board must consider registrant’s goods as
described in the registration. Registrant’s description
of its goods is broad enough to include both computer
programs of a hierarchical and non-hierarchical nature.
One final comment is in order. At page 3 of its
brief applicant argues that the purchasers of its actual
computer programs are sophisticated and exercise a high
degree of care in purchasing applicant’s actual computer
programs
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Ser. No. 75/739,014

because (1) applicant’s actual computer programs are
expensive, and because (2) applicant’s actual computer
programs are “critical to the success of the purchaser’s
web site.” Again, applicant’s argument suffers from two
defects. First, applicant has made of record no evidence
demonstrating that its purchasers are sophisticated; that
its computer programs are expensive or that its computer
programs are critical to the success of the purchaser’s
web site. However, even if opposer had made of record
evidence demonstrating the foregoing features of its
actual computer programs, applicant’s own chosen
description of goods is far broader than what applicant
contends that its actual goods are. Again, it must be
remembered that applicant seeks to register the identical
mark ELF for a “house mark for a complete line of
computer programs that use a non-hierarchical structure
for the organization, storage, integration retrieval and
exchange of data, information and applications.”
(emphasis added). The words “complete line of computer
programs” clearly indicate that applicant is seeking to
gain registration rights in its mark ELF for a very broad
range of computer programs.
In summary, based upon the fact that applicant seeks
to
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register the identical mark ELF for computer programs
which, at least in part, overlap registrant’s computer
programs as described in the cited registration, we find
that there exists a likelihood of confusion resulting
from the contemporaneous use of the identical mark ELF by
applicant and registrant.
Decision: The refusal to register is affirmed.

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