RTX Telecom A/S

Trademark Trial and Appeal Board

Feb 25, 2008

No. 79019433 (T.T.A.B. Feb. 25, 2008)

Mailed:
Feb. 25, 2008,

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re RTX Telecom A/S
________

Serial No. 79019433
_______

John A. Clifford and Danielle I. Mattessich of Merchant &
Gould P.C. for RTX Telecom A/S.

William T. Verhosek, Trademark Examining Attorney, Law
Office 114 (K. Margaret Le, Managing Attorney).
_______

Before Quinn, Grendel and Kuhlke, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

RTX Telecom A/S, applicant herein, seeks registration
on the Principal Register1 of the mark RTX (in standard
character form) for services recited in the application as:2

1 Serial No. 79019433, filed on November 15, 2004. The
application was filed pursuant to Trademark Act Section 66(a),
based on International Registration No. 0872818.

2 The application also includes Class 9 goods as to which no
refusal exists, and which are not at issue in this appeal.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 79019433
2
“repair, installation and maintenance of
telecommunication and data communications
equipment, and equipment based on wireless
technology and other related equipment, apparatus
and instruments,” in Class 37;

“consultation within the areas of
telecommunication and data communications,” in
Class 38; and

“development of products based on wireless
technology in the nature of development of
projects in relation to telecommunication and
data communications; design and development of
computer hardware; development of DECT technology
and other kinds of wireless telephony systems;
development of overall solutions and specially
designed products making use of wireless
technology, namely wireless personal area
networks (WPAN), DECT, WDCT, DCT 2,4 GHz,
GSM/GPRS, CDMA, TD-SCDMA, 3G and WLAN;
implementation of the aforementioned development
projects,” in Class 42.

The Trademark Examining Attorney has issued a final
refusal to register applicant’s mark in all three of these
classes, on the ground that the mark, as applied to the
recited services, so resembles the mark RTX, previously
registered on the Principal Register (in standard character
form) for Class 9 goods identified in the registration as
“computer software tools and extensions for the development
and deployment of real-time applications, together with
associated user’s manuals and documentation, all sold
together as a unit,” as to be likely to cause confusion, to
Ser. No. 79019433
3
cause mistake, or to deceive. Trademark Act Section 2(d),
15 U.S.C. §1052(d).
Applicant has appealed the final refusal. After
careful consideration of the evidence of record and the
arguments of counsel, we affirm the refusal to register.
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 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).
Under the first du Pont factor, we find that
applicant’s mark RTX and the cited registered mark RTX are
identical in terms of appearance, sound, connotation and
commercial impression. Applicant argues that its mark as
actually used is displayed in a stylized form which
distinguishes it from the cited registered mark. However,
applicant is seeking to register its mark in standard
character form, not in any stylized form. Any stylization
Ser. No. 79019433
4
of the mark as actually used therefore is irrelevant to our
comparison of the marks under the first du Pont factor.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842 (Fed. Cir. 2000). We find that the marks are
identical, and that the first du Pont factor therefore
weighs heavily in favor of a finding of likelihood of
confusion.
The second du Pont factor requires us to determine the
similarity or dissimilarity of the goods and services as
identified in the application and in the cited
registration. It is settled that it is not necessary that
the goods and services be identical or even competitive in
order to find that the goods and services are related for
purposes of our likelihood of confusion analysis. 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 or are in some way associated with the same
Ser. No. 79019433
5
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).
Finally, in cases such as this where the applicant’s mark
is identical to the cited registered mark, there need be
only a viable relationship between the respective goods and
services in order to find that a likelihood of confusion
exists. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687 (Fed. Cir. 1993); In re Opus One Inc., 60 USPQ2d 1812
(TTAB 2001); and In re Concordia International Forwarding
Corp., 222 USPQ 355 (TTAB 1983).
The goods identified in the cited registration are
“computer software tools and extensions for the development
and deployment of real-time applications, together with
associated user’s manuals and documentation, all sold
together as a unit.” The Trademark Examining Attorney has
submitted evidence from an online computer dictionary which
shows that “real-time” “describes an application which
requires a program to respond to stimuli within some small
upper limit of response time.” (www.foldoc.org.)
Ser. No. 79019433
6
Also of record is evidence showing that wireless
products and technologies like those to which applicant’s
services are directed can involve and utilize real-time
applications. See, for example the following excerpts from
various Internet websites:

Real-Time Service Provisioning for Mobile and
Wireless Networks – As mobile devices and
wireless networks are becoming ubiquitous, the
interest of users to deploy real-time
applications, e.g. online gaming or Voice-over IP
in such environments is also increasing. … This
paper gives an overview of the key technical
challenges that are fundamental and need to be
solved in order to easily support real-time
applications in wireless and mobile environments.
(whitepapers.techrepublic.com)

Real-Time Wireless Communications-Based
Applications to Drive Next Phase of Internet’s
Evolution … Delivering compelling real-time
applications on reliable, energy-efficient
devices will drive the future growth of wireless
communications and the mobile Internet.
(www.ti.com)

Internet telephony reflects the beginning of a
new communication era, which is characterized by
running real-time applications over
Internet/Intranet based computer communication
infrastructure. (dspace.mit.edu)

Tasman’s technology will complement Nortel’s
enterprise infrastructure portfolio and is
expected to further our ability to provide
seamless, feature-rich networks that support
critical real-time applications including voice,
video and streaming media applications.”
(www.nortel.com)

This investment is intended to accelerate the
development of the Lynx industry-leading real-
Ser. No. 79019433
7
time operating system (RTOS) technology which is
built on a scalable, standards-based
architecture. The technology will enable
Motorola and others in communications-focused
industries to build complex, highly reliable,
intelligent systems for their leading-edge
products. One of the key technologies
accelerated by this investment is high
availability platforms, such as cellular
infrastructure equipment, and other applications.
(www.lynuxworks.com)

Also of record are printouts of various third-party
registrations, in which the identifications of goods show
wireless and other telecommunications products and
technologies involving real-time applications. For
example:

Reg. No. 2636252: “Devices and systems to provide
real-time audio, video and/or data communication
over switched circuit networks and/or data
networks…”

Reg. No. 2512640: “developing computer software
applications used to integrate real-time and
delayed messaging, paging, email and facsimile
services via the Internet, telephones, personal
computers and/or wireless devices…”

Reg. No. 2566727: “computer services, namely,
providing online computer software applications
for others, enabling bi-directional dialog
between internet based applications and mobile
devices for facilitating real-time commercial
transactions and information exchange via
wireless devices…”

Reg. No. 2611803: “computer consultation, custom
software development, and computer integration
services of real-time logistic decision support
systems, real-time embedded systems,
Ser. No. 79019433
8
communication protocol and wireless
communications systems in the field of surface
transportation and wireless communication…”

Reg. No. 2658365: “audio visual
telecommunications and video conferencing
products, namely portable wireless video phone,
real-time wireless video surveillance unit for
digitally recording, transmitting and receiving
live information…”

Reg. No. 3039355: “…web-based multimedia
teleconferencing services, and web-based real-
time multimedia communications services, which
allow users to simultaneously view electronic
data, documents, and applications using a
standard web browser or other software
application…”

Reg. No. 2990312: Class 9 “communications
software…for allowing computer users to access
on-line software applications, namely, access to
a software application that provides the user
with a text messaging system that allows users to
communicate with each other on a real-time
basis.” Class 38 “wireless communications
services, namely, digital text messaging which
allows communication on a real-time basis.”

Reg. No. 2910464: “…technical consultation in
the field of real-time reconfigurable wireless
communications handsets and network equipment for
use in wideband communications…”

Relying on printouts from registrant’s website,
applicant contends that, in the actual marketplace,
registrant’s real-time application software has a specific
purpose which is unrelated to the wireless communications
field in which applicant’s services are rendered. That is,
registrant “provides a software product under the RTX brand
Ser. No. 79019433
9
that enhances Microsoft Windows by providing hard real-time
and control capabilities to a general purpose operating
system.” (Brief at 13.)
However, regardless of what the record might show to
be the nature of registrant’s actual goods, our likelihood
of confusion determination must be based on registrant’s
goods as they are identified in the registration. See
Cunningham v. Laser Golf Corp., supra; In re Dixie
Restaurants Inc., 105 F.3d 1405 (Fed. Cir. 1997); Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n,
811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). The
“computer software tools and extensions for the development
and deployment of real-time applications” identified in the
cited registration’s identification of goods must be deemed
to include software pertaining to any and all real-time
applications, including real-time applications for the
wireless and telecommunications fields like those to which
applicant’s services are directed.
For these reasons, and based on the evidence of
record, we find that applicant’s services as identified in
the application are sufficiently closely related to the
goods identified in the cited registration that source
confusion is likely to result from use of the identical
marks involved in this case. As noted above, because
Ser. No. 79019433
10
applicant’s mark is identical to the cited registered mark,
there need be only a viable relationship between the
respective goods and services in order to find that a
likelihood of confusion exists. See In re Shell Oil Co.,
supra; In re Opus One Inc., supra; In re Concordia
International Forwarding Corp., supra. We find that the
requisite viable relationship exists in this case. The
second du Pont factor weighs in favor of a finding of
likelihood of confusion.
Under the third du Pont factor, we find that
applicant’s services as recited in the application and
registrant’s goods as identified in the registration would
be marketed in similar trade channels and to similar
classes of purchasers in the telecommunications industry.
Registrant’s real-time application software tools would be
marketed to the same wireless industry purchasers to whom
applicant renders its repair and maintenance services,
consultation services, and product development services.
The third du Pont factor weighs in favor of a finding of
likelihood of confusion.
It is likely that registrant’s goods and applicant’s
services are purchased with a degree of care by
knowledgable purchasers. The fourth du Pont factor
(conditions of purchase) therefore weighs in applicant’s
Ser. No. 79019433
11
favor. However, it is settled that even purchasers
knowledgable in their particular fields may still be
confused by the use of identical marks on related goods and
services. See In re Decombe, 9 USPQ2d 1812 (TTAB 1988).
Considering all of the evidence of record as it
pertains to the relevant du Pont factors, and for the
reasons discussed above, 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.
supra; 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.

Decision: The refusal to register as to Classes 37,
38 and 42 is affirmed. However, the application shall
proceed as to Class 9, which was not the subject of the
refusal.