Sapien Technologies, Inc.

Trademark Trial and Appeal Board

Feb 26, 2008

No. 78811663 (T.T.A.B. Feb. 26, 2008)

Mailed:
February 26, 2008
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sapien Technologies, Inc.
________

Serial No. 78811663
_______

Michael J. Hughes of IPLO - Intellectual Property Law
Offices for Sapien Technologies, Inc.

Ray Thomas, Jr., Trademark Examining Attorney, Law Office
102 (Karen M. Strzyz, Managing Attorney).
_______

Before Quinn, Bucher and Zervas, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Sapien Technologies, Inc. seeks registration on the
Principal Register of the following mark:

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78811663
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for goods identified in the application as “computer
software development tools; computer software for creating
an editor and language-independent development environment
for use in writing and editing other software” in
International Class 9.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this mark based upon Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d). The Trademark Examining Attorney
asserts that applicant’s mark, when used in connection with
applicant’s recited services, so resembles the mark SAPIENT
registered in connection with “computer consultation
services; custom computer software development services” in
International Class 42,2 and with “computer consultation
services; custom computer software design and development
services for others; website design and development
services for others; providing consultation on the use,
integration and operation of computer software programs and
the updating of computer software programs services” in

1 Application Serial No. 78811663 was filed on February 9,
2006 based upon applicant’s allegation of a bona fide intention
to use the mark in commerce.

2 Registration No. 2012848 issued to Sapient Corporation on
October 29, 1996; renewed.
Serial No. 78811663
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International Class 42,3 as to be likely to cause confusion,
to cause mistake or to deceive.
Applicant and the Trademark Examining Attorney have
fully briefed the substantive issues. We affirm the
refusal to register.
In arguing for registrability, applicant argues that
there is no likelihood of confusion owing to the
differences in the marks themselves, differences in the
involved goods and services, and more than a dozen years of
contemporaneous usage without any actual confusion within a
marketplace of highly sophisticated consumers.
By contrast, the Trademark Examining Attorney contends
that the marks are strikingly similar in sound, appearance,
connotation and commercial impression, and that applicant’s
computer software development goods are very closely
related to registrant’s computer software design and
development services.
LIKELIHOOD OF CONFUSION
We turn then to a consideration of the issue of
likelihood of confusion. Our determination under Section

3 Registration No. 2555676 issued to Sapient Corporation on
April 2, 2002; Section 8 affidavit (six-year) accepted and
Section 15 affidavit acknowledged.
Serial No. 78811663
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2(d) is based upon an analysis of all of the probative
facts in evidence that are relevant to the factors bearing
on this issue. 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 relationship of the
goods and/or services. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
The Goods and Services

We turn first to the du Pont factor focusing on the
relationship of the goods identified in the involved
applications and the services recited in the cited
registrations. The Trademark Examining Attorney contends
that applicant’s computer software development tools are
very closely related to registrant’s services inasmuch as
the goods and services in question are all acquired for the
common purpose of developing/designing computer software.
Nowhere does the Trademark Examining Attorney resort to a
per se rule that all computer software related goods and
services are necessarily so related to each other such that
there must be a likelihood of confusion from the use of
similar marks in relation thereto.
Serial No. 78811663
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However, in its reply brief, applicant emphasizes the
difference between applicant’s goods and registrant’s
services, arguing as follows:
Examining Attorney Thomas, [in] his brief,
cites several cases where goods and somewhat
related services were found to be grounds
for finding likely confusion. However, in
each of the cases cited (groceries,
furniture, clothing, trucking, etc.) the
consumers in question were casual and
represent the general purchasing public.
The present case is much different where the
consumers of the goods of Applicant are very
highly sophisticated and a narrow niche of
the market (computer programmers).

Yet the Trademark Examining Attorney had indeed included a
citation to cases involving non-casual, niche markets such
as the sale and refinishing of office furniture in
Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983).
See also Corinthian Broadcasting Corporation v. Nippon
Electric Co., Ltd., 219 USPQ 733 (TTAB 1983) (TVS for
transmitters and receivers of still television pictures
held likely to be confused with TVS for television
broadcasting services);
In support of his specific contention that applicant’s
type of proposed computer software development tools and
registrant’s kind of computer consultation services,
computer software development services and computer
software design services are marketed and sold together
Serial No. 78811663
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under the same mark, the Trademark Examining Attorney has
made of record use-based third-party registrations
demonstrating that the types of services as recited in
registrant’s registrations and applicant’s identified goods
originate with the same source. These registrations,
summarized below, have probative value to the extent that
they serve to suggest that the goods and services listed
therein are of a kind that may emanate from a single
source. See In re Infinity Broadcasting Corp. of Dallas,
60 USPQ2d 1214, 1217-1218 (TTAB 2001); In re Albert Trostel
& Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and In re
Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6
(TTAB 1988).

MAXCORE for “computer software development tools for use in
the fields of digital signal processing,
microcontrollers, and processors for embedded
processing; computer software for use in design and
integration of semiconductors, microcontrollers,
processors for embedded processing, and signal
processing computer hardware; computer software for
simulation of digital signal processing and embedded
algorithms” in International Class 9;
“computer consultation services in the fields of
modeling, simulation, programming and implementation
of embedded control and signal processing systems and
semiconductor realizations” in International Class
42;4

4 Registration No. 2573471 issued on May 28, 2002.
Serial No. 78811663
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DIGITWISE for “computer e-commerce software to allow
users to perform electronic business
transactions via a global computer network;
computer game software; computer software
development tools; computer search engine
software; computer software for use in database
management, for use as a spreadsheet, for word
processing, for desktop publishing, in a wide
variety of fields, that may be downloaded from
a global computer network; data compression
software; website development software;
educational software featuring instruction in
computer programming, computer software design
and development, website design and
development” in International Class 9;5
ORIELLE for “computer software development tools “ in
International Class 9;
“technical consultation and research in the
field of computer science; product research and
development of new software products for web-
based, real-time and distributed systems
through federally sponsored research grants;
technical consultation and research in the
fields of materials science and physics;
scientific research in experimental
semiconductor physics through federally
sponsored research; product research and
development; computer consultation; computer
software design for others” in International
Class 42;6
APPROVA for, inter alia, “computer software for use in
application and database management and
integration; communications software for
connecting computer network users; computer
software development tools; computer software
for computer and network security; computer
software for the management of access to
computer and network applications and
databases; computer and network monitoring
software; in International Class 9;

5 Registration No. 2647220 issued on November 5, 2002.

6 Registration No. 2672633 issued on January 7, 2003.
Serial No. 78811663
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computer software consultation; computer
consultation; computer software development and
design for others; computer systems analysis;
computer network design for others; integration
of computer systems and networks; installation
of computer software; technical support
services, namely, troubleshooting of computer
hardware and software problems; technical
support, namely, monitoring of network systems”
in International Class 42;7
GAMMASTREAM for “computer software in the field of software
development tools” in International Class 9;
and
“design, creation, hosting and maintenance of
websites for others; computer software design
for others; and, application service provider
services in the fields of education and
photography; application service provider
services in the field of customer information
management” in International Class 42.8

The Trademark Examining Attorney also submitted copies
of screen shots drawn from the websites of five different
software development companies. These web pages
demonstrate that computer software development tools of the
type proposed to be sold by applicant are often discussed
together with related development services, and in fact,
that computer software development professionals often use
computer software development tools when providing computer
software development services.

7 Registration No. 2787614 issued on November 25, 2003.

8 Registration No. 3011464 issued on November 1, 2005.

Serial No. 78811663
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SERVICES

SOFTWARE DEVELOPMENT
TRILENT software development services support our hardware products
and designs. Whether it is in the form of firmware, device drivers, system
programming, or a user front-end, our software support rounds out our
service offering. Our expertise in software development spans all of major
operating systems and programming languages.
…
Languages and Tools
Our programs are written in Assembly, C, C++, and Java. We support a
range of software development tools to ensure the best tool for each
particular task.9

Services
What we offer - Products & Services:
At Bennet-Tec Information Systems, we use the very latest in Industry
standard development tools and technologies to provide a rich set of
products and services for Windows platforms at a reasonable cost.
…
• Custom Software Development - Software specifically tailored to fit
your needs. After all, computers are a productivity tool, and your business
shouldn't have to accommodate the tools that you use... the tools should
invariably accommodate your business. We will make your software
solutions work for you, so you don't have to. Our team uses the latest in
software development tools, and can create any type of application, be it
a complex database application, client/server solution, utility, or anything
you can think of. Our team programs in a variety of languages including
Visual Basic (6.0 & .NET), Access, Visual C++/ANSI C, and more.10

9 http://www.trilent.net/services/swdesign.html

10 http://www.bennet-tec.com/btcorporate/services.htm
Serial No. 78811663
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Custom software development
Development of customized software is one of our company's main activity
[sic]. We are specialized in creation of software projects that solve science-
intensive and complex algorithmic tasks in an optimal way.

Our experience of contracting with US, Canadian, German, Swiss and
other clients has helped us to understand and adopt western project
management practices, and in particular how they apply to software
development demands in the west. We at Amic Utilities Inc. strive hard to
provide you custom software solutions that will reorient your business for
new internet age. For this, we use modern software development platforms,
software development tools as well as employ latest project
management techniques and software engineering practices.

We have top class software development professionals like project
managers, software engineers and programmers, testers, designers and
technical writers with exclusive skill sets for this.
The company gradually introduces into practice SEI-CMM Quality
Assurance principles and can duly deliver high-quality products within your
budget. All software systems are properly tested and delivered with on-line
help subsystems and documentation.

We provide the following Custom Software Development
Services:
Application Re-Engineering
Complex GUI design and implementation
Business Applications
3D interfaces development
Custom controls development
Data migration between various DBMS
Database design and development
Distributed data processing
Games development
Web-development
Information System development
Network development
Internet/Extranet/Intranet Solutions
Device Drivers (for WinNT, Win2000/98/95 )
Product/application customization and support
Multimedia (music streaming, mp3, sound processing, graphics,
animation)
Systems Integration
Security and Cryptography
Localization of software products
Software testing11

11 http://www.amicutilities.com/software-development/
Serial No. 78811663
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Our Software Development Tools Provide Ultimate
Flexibility
Soft Servo Systems provides dynamic CNC solutions designed to meet
specific industry needs. All of our products are tested extensively by end
users to ensure that we achieve the highest levels of quality and innovation.
Despite all the preparation that goes into our development process, we know
there will always be some customers who require something different in their
CNC applications. With this in mind, we have made it easy for users to create
or customize their own ServoWorks applications in C/C++ and Visual Studio
6.0 for Windows 2000/XP/XPe.
Customers can program their own GUI or text-based ServoWorks application
interface in one of two ways:
1. By using SWAPI, ServoWorks’ extensive Motion Control APIs in the
Win32 environment, provided in the form of Visual Basic, C/C++,
Visual Studio .NET and Delphi. APIs are provided for complete and
full access to all real-time processes and resources.
2. By modifying the source code of any ServoWorks GUI application.
We offer source code in Visual Basic and C/C++ for customers to
use as a basis for customizing their own ServoWorks application.
This may be the most efficient way to customize an application to
meet exact specific needs.
Users can create a hybrid application of C/C++ and Visual Basic to take
advantage of the faster execution time of C/C++ while using Visual Basic to
quickly and easily create advanced, professional-looking GUIs.
Soft Servo Systems offers software development tools to facilitate
development of customized applications capitalizing on ServoWorks
technology: the ServoWorks Simulator and the ServoWorks Development Kit
(SDK). We also offer software development services. 12

Software Engineering Services
At DDC-I, our job is to help you succeed. Serving the safety critical industry
for over 20 years, we offer software development tools and custom
software development services for real-time embedded applications.
Our team of experts covers a wide range of software engineering domains
with support for legacy systems developed in Fortran and JOVIAL, to modern
systems developed in Embedded C++ and Ada 95. Tools include compilers,
debuggers and run-time systems for Embedded C++, C, Ada 95, Ada 83 and

12 http://www.softservo.com/DevelopmentOverview.php?catID=3&subID=6

Serial No. 78811663
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JOVIAL application development. We offer custom services and training to
satisfy your requirements in a timely and reliable manner.13

Applicant’s PrimalScript Enterprise and Professional
software (see JPEG attachments to application papers) is
designed to serve the “scripting community.” While
applicant’s emphasis is clearly on the marketing and sale
of International Class 9 tools, not surprisingly, part of
any solution provided for software developers and IT
professionals within a technology client would be
applicant’s offering, at the very least, on-site scripting
training. Clearly, both applicant and registrant are
deeply involved in Internet web design for their respective
clients. The copies of third-party web pages placed into
the record by the Trademark Examining Attorney show that
companies using scripting tools like applicant as well as
those offering services such as registrant offers rely upon
some of the same Windows platform tools such as .NET,
Visual Basic Script, and PowerShell. Companies like AMIC
Utilities (at footnote 11, supra) tout their software
development tools as well as “top class software
development professionals like project managers, software
engineers and programmers, testers, designers and technical

13 http://www.ddci.com/products_engnr.php

Serial No. 78811663
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writers with exclusive skill sets for this.” Similarly,
companies such as registrant that provide outsourced
consulting and interactive services will have their own
custom software development teams working with technology
clients, and they will necessarily rely upon existing
proprietary software packages, including perhaps those of
the kind marketed by applicant.
Accordingly, despite applicant’s arguments to the
contrary, we find that it has failed to rebut this prima
facie showing that applicant’s goods are related to
registrant’s services, and this du Pont factor favors a
finding of likelihood of confusion.
The marks

Yet another critical du Pont factor that the Trademark
Examining Attorney and applicant discuss in their briefs
involves the similarities or dissimilarities in the
appearance, sound, connotation and commercial impression of
the respective marks. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
While we agree with applicant that the marks must be
compared in their entireties under a Section 2(d) analysis,
nonetheless, one feature of a mark may be recognized, based
Serial No. 78811663
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upon quite rational reasons, as more significant in
creating a commercial impression. In this context, greater
weight is given to that dominant feature in determining
whether there is a likelihood of confusion. In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985);
Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ
693 (CCPA 1976). In re J. M. Originals Inc., 6 USPQ2d 1393
(TTAB 1987). When a mark consists of a word portion and a
design portion, the word portion is more likely to be
impressed upon a purchaser’s memory and to be used in
calling for the goods or services. Therefore, the word
portion is normally accorded greater weight in determining
likelihood of confusion. In re Dakin’s Miniatures Inc.,
59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions
Co., 3 USPQ2d 1553 (TTAB 1987); and Amoco Oil Co. v. Amerco
Inc., 192 USPQ 729 (TTAB 1976).
Accordingly, we do not find that the Trademark
Examining Attorney has completely discounted the design
element of applicant’s proposed mark, but that the less
significant design element cannot overcome the dominance of
the literal portion, SAPIEN.
Obviously, the literal portions of the respective
marks are identical but for the fact that registrant has a
Serial No. 78811663
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final letter “t.” We find that the literal portions of the
marks are highly similar in terms of appearance; both begin
with the letters S•A•P•I•E•N. The dissimilarity in appearance
which results from the difference in registrant’s mark’s
final letter is outweighed by the similarity which results
from the fact that both marks begin with the same six
letters. In our judgment, a consumer familiar with
registrant’s mark SAPIENT, upon seeing applicant’s mark
SAPIEN, could easily not notice the fact that the seventh
letter of registrant’s mark was missing and hence assume
that he or she was viewing registrant’s mark SAPIENT. This
is particularly true when one takes into account that marks
are not compared on a side-by-side basis. Rather, the test
is whether a consumer, having seen registrant’s mark and
having retained but a general recollection of it, would,
upon seeing applicant’s mark at a later time, assume that
it is registrant’s mark.
In terms of pronunciation, we find that the two marks
are again extremely similar even if applicant’s mark is
properly pronounced as having a hard “t” sound at the end.
Applicant’s mark sounds exactly like the cited registered
mark except for the addition of the “t” sound at the end of
registrant’s mark, which may or not be distinctly
Serial No. 78811663
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pronounced by purchasers inasmuch as it must be remembered,
“there is no correct pronunciation of a trademark.” In re
Belgrade Shoe Co., 411 F.2d 1352, 162 USPQ 227 (CCPA 1969).
Again, it is our view that a not insignificant number of
consumers might well “mispronounce” one or both of the two
marks such that the resulting “mispronunciations” would be
almost identical. Accordingly, this slight difference is
greatly outweighed by the overall aural similarity between
the marks.
In terms of connotation, applicant has cited to
dictionary definitions to show that the word “sapient”
means “wise or having the capacity to reason.”
Furthermore, applicant argues that its mark has no meaning.
However, we note that in terms of etymology, the same Latin
root, “sapiēns,” is responsible for the word “sapient” and
the word “sapiens,” the second word of Homo sapiens (or
“wise man”). While the singular form, “sapien,” arguably
has no dictionary meaning, we agree with the Trademark
Examining Attorney that consumers will likely assume that
these remarkably similar words share the same root
meanings, and as a result, they create similar commercial
impressions, particularly in the context of cutting-edge
Serial No. 78811663
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software development performed, in part, by other
software.14
Viewing the marks in their entireties, we find that
any subtle dissimilarity between the marks in terms of
connotation is outweighed by the fact that the marks look
and sound essentially the same, and create quite similar
commercial impressions. Hence, this du Pont factor too
weighs in favor of a finding of likelihood of confusion.
Class of purchasers and Channels of trade

As to the du Pont factor focusing on the channels of
trade, the Internet evidence produced by the Trademark
Examining Attorney supports the conclusion that these goods
and services may well travel through the same channels of
trade so as to be encountered by some of the same
purchasers. Nonetheless, applicant argues that it sells “…
highly specialized computer software directed at
programmers, while … [registrant’s] services … are directed
at those who do not wish to do their own programming, but
rather wish to have programming done for them …”
Applicant’s Brief, at 4 However, applicant’s

14 In this overall context, arguably the overall commercial
impressions of the two marks are made more similar in that
applicant’s imagery within its composite “Sapien” mark suggests a
beam of insight (or wisdom) from an unseen mechanism, directly
into the programmer’s brain.
Serial No. 78811663
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identification does not contain any limiting language about
the trade channels for its goods, and we must presume that
they are sold to all consumers. Furthermore, where the
relevant consumer is comprised of, for example, both IT
professionals and corporate executives who are not IT
professionals, the standard of care when purchasing the
goods and services is equal to that of the least
sophisticated purchaser in the class. Alfacell Corp. v.
Anticancer Inc., 71 USPQ2d 1301, 1304 (TTAB 2004) [as
stated in KOS Pharmaceuticals Inc., v. Andrx Corp.,
369 F.3d 700, 70 USPQ2d 1874 (3d Cir. 2004), and citing
Checkpoint Sys., Inc., v. Check Point Software Techs.,
Inc., 269 F.3d 270, 285, 60 USPQ2d 1609, 1617-1618 (3d Cir.
2001)]. The standard of care in this likelihood of
confusion analysis is equal to registrant’s purchasers
since they are the least sophisticated. Moreover, the fact
that either applicant’s or registrant’s non-corporate
purchasers may well be relatively sophisticated or
knowledgeable in the field of computer programming does not
necessarily mean that they are sophisticated or
knowledgeable in the field of marks or immune from source
confusion when quite similar marks are used in connection
with closely-related goods and services. See In re
Serial No. 78811663
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Decombe, 9 USPQ2d 1812 (TTAB 1988); and In re Pellerin
Milnor Corp., 221 USPQ 558 (TTAB 1983). Therefore, the
relative computer programming savvy of some of the relevant
prospective consumers does not obviate the likelihood of
confusion in this case.
Period of contemporaneous use without actual confusion.

Turning our attention to another du Pont factor,
applicant makes an unsupported assertion that it has not
encountered any instances of actual confusion between its
mark and registrant’s mark despite over twelve years of
contemporaneous use. While the absence of any instances of
actual confusion over a significant period of time is a
factor indicative of no likelihood of confusion, it is a
meaningful factor only where the record demonstrates
appreciable and continuous use by the applicant of its mark
in the same markets as those served by the registrant under
its mark. Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d
1768, 1774 (TTAB 1992). Although the record includes a few
details about applicant’s use of its mark, the record is
silent as to the extent of registrant’s use. Thus, we are
at a significant disadvantage to ascertain, with any degree
of accuracy, whether there have been opportunities for
Serial No. 78811663
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confusion to have occurred. Accordingly, this factor has
not entered into our analysis as a mitigating factor.
Market interface between applicant and registrant

In its reply brief, applicant argues as follows:
“It is also noted that the Examining
Attorney discounts entirely the long
coexistence of the marks in the marketplace,
with no known instances of consumer
confusion. It is implied that the only way
to overcome the presumption of confusion
applied by the Examining Attorney is to
provide a consent agreement. Applicant
disagrees that such a consent agreement is a
requirement and burden to be placed upon
applicants for registration, who are
entitled to a fair evaluation of the
circumstances. Given the positions take[n]
in this matter, it is far from clear that
even such a document would sway the present
Examining Attorney. However, Applicant
notes for the Board that Applicant has
indeed attempted to contact the Registrant
in the hope of obtaining such a consent, but
has received no reply at all, neither
positive nor negative. Applicant contests
the presumption of intent on part of the
Registrant to contest in ex parte cases and
notes that a full opportunity is presented
post publication if Registrant indeed has
such an intent.”

Applicant’s reply brief at 3.
While applicant is correct in noting that registrant’s
explicit consent to applicant’s use and registration of the
involved mark is not a requirement that the United States
Patent and Trademark Office can place on an applicant, our
Serial No. 78811663
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primary reviewing court compels us to make a consent
agreement into a dominant factor in our final determination
of likelihood of confusion. See In re Four Seasons Hotels
Ltd., 987 F.2d 1565, 26 USPQ2d 1071 (Fed. Cir. 1993);
Amalgamated Bank v. Amalgamated Trust & Sav. Bank, 842 F.2d
1270 6 USPQ2d 1305 (Fed. Cir. 1988); In re N.A.D. Inc.,
754 F.2d 996, 224 USPQ 969 (Fed. Cir. 1985); In re United
Oil Mfg. Co., 508 F.2d 1341, 184 USPQ 490 (CCPA 1975); and
In re Superior Outdoor Display, Inc., 478 F.2d 1388,
178 USPQ 151 (CCPA 1973). Irrespective of the final
position of the Trademark Examining Attorney, clearly, in
the face of such admonitions from our reviewing court (and
its predecessor), the presence of such an agreement between
applicant and registrant containing valid indications that
confusion was unlikely to occur in the instant case could
well have been a significant determinative factor in this
tribunal’s decision on this ex parte matter.
Conclusion:

We find that applicant’s computer software development
tools are very closely related to registrant’s services;
that we must presume that these goods and services are sold
to similar consumers through overlapping channels of trade;
that the computer programming savvy of prospective
Serial No. 78811663
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consumers will not obviate the likelihood of confusion in
this case; and that under the circumstances of this case,
the absence of any instances of actual confusion over a
dozen year of contemporaneous usage is not a mitigating
factor herein.
Decision: The refusal to register under Section 2(d)
of the Lanham Act is hereby affirmed.