Set Secure Electronic Transaction LLC

Trademark Trial and Appeal Board

Jul 27, 2001

No. 75326191 (T.T.A.B. Jul. 27, 2001)

7/27/01

Paper No. 11
HRW

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Set Secure Electronic Transaction LLC
________

Serial No. 75/326,191
_______

David S. Fleming and Eric W. Gallender of Brinks, Hofer,
Gilson & Lione for Set Secure Electronic Transaction LLC.

Darshini Satchi, Trademark Examining Attorney, Law Office
111 (Craig Taylor, Managing Attorney).
_______

Before Hohein, Wendel and Drost, Administrative Trademark
Judges.

Opinion by Wendel, Administrative Trademark Judge:
Set Secure Electronic Transaction LLC1 has filed an
application to register the mark SET SECURE ELECTRONIC
TRANSACTION and design, as depicted below, for “computer
consulting services regarding development and testing of
software developed by others, in the fields of encryption

1 The application was originally filed by Mastercard
International Inc. and Visa International Service Association and
was subsequently assigned to Set Secure Transaction LLC. The
assignment was recorded by the Assignment Branch on August 11,
1998 at reel 1767, frame 795.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/326,191
2
and protection of information, banking, credit, debit and
payment services, and funds transfers.”2

Registration has been refused under Section 2(d) of
the Trademark Act on the ground of likelihood of confusion
with the SET and design mark, as depicted below, which is
registered for “computer consultation, programming and
software design for others; up-dating of computer software;
and design of computer systems for others.”3

This refusal has been appealed and applicant and the
Examining Attorney have filed briefs. No oral hearing was
requested.

2 Serial No. 75/326,191, filed July 17, 1997, based on an
allegation of a bona fide intention to use the mark in commerce.
A disclaimer has been made of the words SECURE ELECTRONIC
TRANSACTION.
3 Registration No. 1,947,418, issued January 9, 1996, claiming
first use dates of January 13, 1993.

Ser No. 75/326,191
3
For the sake of completeness, we note that, initially,
registration had also been refused under Section 2(d) on
the basis of the mark SET and design, as depicted below,
which is registered for “software development services.”4

This refusal was withdrawn, however, by the Examining
Attorney in her appeal brief.5
At the time of appeal, there was also an outstanding
requirement that applicant enter a disclaimer of the
wording SECURE ELECTRONIC TRANSACTION. Up until this
point, applicant has agreed only to a disclaimer of
ELECTRONIC TRANSACTION. Applicant in its appeal brief,
however, stated that it had decided to comply with the full
disclaimer requirement and entered a disclaimer of SECURE
ELECTRONIC TRANSACTION. Accordingly, the only issue for
our consideration is the Section 2(d) refusal based on
Registration No. 1,947,418.

4 Registration No. 1,999,165, issued September 10, 1996, claiming
first use dates of August 1, 1988.
5 We note that this case was reassigned to a new Examining
Attorney for purposes of preparing the appeal brief.

Ser No. 75/326,191
4
We make our determination of likelihood of confusion
on the basis of the du Pont6 factors which are relevant in
view of the evidence of record. Two key considerations in
any analysis are the similarity or dissimilarity of the
respective marks and the similarity or dissimilarity of the
goods or services with which the marks are being used or
are intended to be used. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976);
In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209
(TTAB 1999).
Looking first to the respective marks, we are guided
by the well established principle that although the marks
must be considered in their entireties, there is nothing
improper, under appropriate circumstances, in giving more
or less weight to a particular portion of a mark. See In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.
Cir. 1985). Moreover, although descriptive or disclaimed
matter cannot be ignored in comparing the marks, consumers
are more likely to rely on the non-descriptive portion of a
mark as an indication of source. See Hilson Research Inc.
v. Society for Human Resource Management, 27 USPQ2d 1423
(TTAB 1993). In addition, it is the word portion of a

6 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Ser No. 75/326,191
5
mark, rather than the design features, unless particularly
distinctive, that is more likely to be remembered and
relied upon by purchasers in referring to the goods and/or
services and thus it is the word portion that is accorded
more weight in determining the similarity of the involved
marks. See Ceccato v. Manifattura Lane Gaetano Marzotto &
Figli S.p.A., 32 USPQ2d 1192 (TTAB 1994).
Applying these principles, we are in agreement with
the Examining Attorney that the dominant portion of both
applicant’s and registrant’s marks is the term SET. While
applicant argues that the most visually commanding portion
of applicant’s mark is the phrase SECURE ELECTRONIC
TRANSACTION, the question is not the amount of space
occupied by a portion of a mark but rather the trademark
significance of this portion. Here the phrase SECURE
ELECTRONIC TRANSACTION has been acknowledged by applicant
to be descriptive of its services by applicant’s
acquiescence in a disclaimer of the phrase. As a
descriptor of applicant’s services, it has but minimal
import to purchasers as an indication of a particular
source of these services. The term SET is instead the
portion which points to the source of the services, and
thus functions as the dominant portion of applicant’s mark.
Ser No. 75/326,191
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While applicant also places great significance on the
visual differences of the designs in applicant’s and
registrant’s marks, we find the designs not to be so
distinctive as to result in overall commercial impressions
which will distinguish the marks in the minds of
purchasers, especially over a period of time. Purchasers
will still refer to the services by the term SET. In fact,
the “setting sun” of registrant’s mark may well serve to
re-enforce the impression created by the term SET. As for
applicant’s design, a rectangle is a frequently used border
of minimal significance and the five-sided figure around
the term SET is no more than barely suggestive of a “shield
device,” as contended by applicant. Clearly there is no
strong impact made by the design of applicant’s mark, as
would be remembered over time so as to distinguish
applicant’s mark in the minds of purchasers. Despite the
obvious differences in the marks when viewed in their
entireties in appearance and sound, we find the overall
commercial impressions of both to be dominated by the term
SET and thus to be highly similar.
Turning to the services involved, we note that as a
general principle, the issue of likelihood of confusion
must be determined on the basis of the services as
identified in the application and in the cited
Ser No. 75/326,191
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registration, rather than on the basis of any evidence
showing what the services are in actual practice. Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813 (Fed. Cir. 1987); CBS, Inc. v. Morrow,
708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983).
Here applicant’s services have been narrowly recited
as computer consulting services regarding development and
testing of software of others in certain specialized
fields. On the other hand, registrant’s services, in
relevant part, are broadly recited as “computer
consultation, programming and software design for others;
updating of computer software.” There is no limitation as
to the field or fields to which these services are
directed. While applicant has introduced evidence from
registrant’s website which applicant claims shows that
registrant sells software exclusively to ophthalmologists
which is designed to act as a billing, inventory and
patient-date tracking database, and further claims that it
has confirmed this limitation of registrant’s services by
means of professional investigators, any evidence of this
nature is irrelevant to our determination of a likelihood
of confusion. Looking solely to the services as identified
in the registration, we find no restrictions as to fields
of operation or types of purchasers. Registrant’s services
Ser No. 75/326,191
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cover computer consulting services in general, and software
design and updating of software as well. As such, the
services of registrant clearly encompass the specific
computer consulting services of applicant.
While applicant correctly points out that there is no
per se rule in cases involving computer or software related
goods, the fact remains that if computer goods or services
are to be distinguished and similar marks allowed to be
registered therefor, the distinctions in these goods or
services must be fully set forth in the identifications
thereof. Although applicant in this case may have
particularly defined its services, registrant’s services
are not so specifically identified and thus registrant’s
services cannot be restricted to any particular field.7
In a similar vein, if there are no restrictions in the
application or registration as to channels of trade, the
parties’ services must be assumed to travel in all the
normal channels of trade for services of this nature. See
Kangol Ltd. v. KangaROOS U.S.A., 974 F.2d 161, 23 USPQ2d
1945 (Fed. Cir. 1992); Canadian Imperial Bank v. Wells
Fargo Bank, supra. The cited registration contains no

7 We note that applicant has a potential remedy at hand, namely,
the filing of a petition to partially cancel the registration
under the provisions of Section 18 of the Trademark Act.

Ser No. 75/326,191
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limitations and thus registrant’s services cannot be
restricted to any specialized channels of trade or
particular type of purchasers, but rather must be assumed
to encompass those of applicant. No distinctions can be
made on this basis.
Accordingly, the potential purchasers for the services
of both must be assumed to be the same. Although applicant
argues these would all be sophisticated customers who would
be likely to exercise a high degree of care in purchasing
the services, even sophisticated purchasers are not immune
to source confusion when highly similar marks are used in
connection with the involved services. See In re Total
Quality Group Inc., 51 USPQ2d 1474 (TTAB 1999). Two
sources offering computer consulting services in the same
field under similar SET marks would lead to a likelihood of
confusion on the part of even sophisticated purchasers.
Applicant has also introduced as a factor for
consideration the use by third parties of marks based on
the formative SET or consisting of the term SET alone for
goods or services in the same general field. While
applicant has made of record copies of numerous third-party
registrations, applicant has made no evidence of record of
actual use of any of these marks. As has often been
stated, copies of third-party registrations in themselves
Ser No. 75/326,191
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carry little weight in determining likelihood of confusion.
They are not evidence of use of the marks or that consumers
are familiar with the marks so as to be accustomed to the
existence of similar marks in the marketplace. See Hilson
Research Inc. v. Society for Human Resource Management,
supra, and the cases cited therein.
Even if we had evidence of actual use, the majority of
these third-party marks are simply composite terms which
include the letters SET and do not create the same
commercial impression as the term SET alone. As such,
these marks are irrelevant. Even those few marks which
consist of the term SET alone (applicant points to a total
of six) are of little significance, in that although these
may be registered for goods in the same broad field, such
as electronic devices or computer software, none is
registered for services similar to those involved here.
Nor can any correlation be drawn between the various
SET marks such that we might determine that the term has a
commonly understood meaning in the relevant field and the
marks have been chosen to convey this meaning. If this
were the case, which it is not, then we might be able to
conclude that marks of this nature are inherently weak and
that only slight differences would be sufficient to
distinguish one from another. See In re Melville Corp., 18
Ser No. 75/326,191
11
USPQ2d 1386 (TTAB 1991). But applicant has clearly not
shown this to be the situation here.
The only truly relevant third-party registrations are
the previously cited registration which was withdrawn by
the Examining Attorney on appeal and the cited
registration. Here we have evidence of the registration of
the mark SET by two separate entities for computer
consulting services. Although applicant argues that its
mark should be allowed to coexist with these two
registrations, we do not agree. In the first place, we do
not have the file histories before us of the two
registrations and thus cannot make a full assessment of the
reasons for the coexistence of these two marks. In any
event, the prior decision of an Examining Attorney on the
registrability of the two marks over one another is in no
way controlling on our present decision. See In re
Nationwide Industries, Inc., 6 USPQ2d 1882 (TTAB 1988). It
is well settled that each case must be decided on its own
facts. In re Sun Microsystems, Inc., 59 USPQ2d 1084 (TTAB
2001); In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB
1991).
The other factor which applicant introduces is its
evidence of the lack of any actual confusion despite the
fact that there has been coexistent trademark usage of
Ser No. 75/326,191
12
applicant’s and registrant’s mark over the past four years.
We can give little weight to this fact, however, under the
present circumstances. In the first place, registrant has
not had the opportunity to be heard from on this point.
See In re National Novice Hockey League, Inc., 222 USPQ 638
(TTAB 1984). Second, in view of the apparent narrow scope
of registrant’s present use of its mark, as opposed to the
scope of the services for which it is registered, the
question arises whether there has been any real opportunity
for confusion, at this point in time. See Gillette Canada
Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992). Whatever
the case, in the final analysis, the issue is not actual
confusion, but rather likelihood of confusion.
Accordingly, on the basis of the similarity of the
commercial impressions created by applicant’s and
registrant’s marks and the fact that applicant’s services
are fully encompassed by the “computer consultation”
services of registrant, we find confusion likely with the
contemporaneous use of the marks.
Decision: The refusal to register under Section 2(d)
is affirmed.
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