Siemens AG

Trademark Trial and Appeal Board

Apr 30, 2001

No. 75559756 (T.T.A.B. Apr. 30, 2001)

4/30/01
Paper No. 14
GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Siemens Aktiengesellschaft
________
Serial No. 75/559,756
_______
Lawrence E. Abelman of Abelman, Frayne & Schwab for Siemens
Aktiengesellschaft.
Gina M. Fink, Trademark Examining Attorney, Law Office 103
(Daniel P. Vavonese, Acting Managing Attorney).
_______
Before Simms, Wendel and Rogers, Administrative Trademark
Judges.
Opinion by Rogers, Administrative Trademark Judge:
Siemens Aktiengesellschaft has filed an application to
register the mark ABM in International Class 9 for goods
identified as "electronic components, namely integrated
circuits."1 The Examining Attorney refused registration of
applicant's mark under Section 2(d) of the Trademark Act,
1 Application No. 75/559,756, filed September 25, 1998, claiming
priority under Section 44(d) of the Trademark Act and seeking
registration under Section 44(e), based on applicant's ownership
of a German registration for the mark.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser. No. 75/559,756
2
15 U.S.C. § 1052(d), because of the prior registration of
ABM2, in class 9 for "optical fiber cables."2
When the Examining Attorney made the refusal of
registration final, applicant appealed. Both applicant and
the Examining Attorney have filed briefs, but an oral
argument was not requested. We affirm the refusal.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In the
analysis of likelihood of confusion presented by this case,
key considerations are the virtually identical nature of
the marks, the related nature of the goods, and the
presumptively similar classes of consumers for these goods
and services. Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
The marks appear and are pronounced the same, but for
registrant's addition of a "2" to the letters "ABM."
Registrant's mark appears to be an arbitrary alpha-numeric
combination and applicant's combination of letters also
appears to be arbitrary.
2 Registration No. 2,184,985, issued August 25, 1998, based on
claimed dates of first use for both classes of April 1997.
Ser. No. 75/559,756
3
We note applicant's argument that the number 2 in
registrant's mark makes "a strong impact on the eye and
ear," but we disagree with applicant's conclusion. Its
placement as the last element in registrant's mark may
lessen its significance, as compared to the leading letters
"ABM," for many that see or hear the mark. Moreover, we
find merit in the Examining Attorney's argument that many
may simply view the number as indicating registrant's goods
are the second in a series or of a second generation. We
also note applicant's argument that, when the marks are
considered in conjunction with the respective goods for
which they are used, they would be perceived as acronyms
and have different connotations. There is, however, no
support for the argument that registrant's mark would be
considered as an acronym. Applicant's only proffered
support is the observation that A is the first letter in
registrant's mark and in its name. This is insufficient
basis to conclude that the entirety of registrant's mark
would be perceived as an acronym with a specific
connotation different from any connotation that may be
associated with applicant's ABM.3
3 We are skeptical, too, of applicant's assertion that its use of
ABM would be perceived as an acronym for Asynchronous Transfer
Mode Network Buffer Manager.
Ser. No. 75/559,756
4
In our consideration of the similarity of the involved
marks, we are mindful of the wide scope of protection that
has often been accorded arbitrary arrangements of letters.
See 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, Section 23.33 (4th ed. 2000). Indeed, the
Board has stated that it is a "well-established principle
of our trademark law that confusion is more likely between
[similar combinations of] arbitrarily arranged letters than
between other types of marks." See Edison Brothers Stores,
Inc. v. Brutting E.B. Sport-International GmbH, 230 USPQ
530, 533 (TTAB 1986) (involving marks EB and EBS).
The great similarity of the marks makes it likely
that, if the marks were used in connection with related
goods, confusion would result. In this regard, the Board
has stated that "[i]f the marks are the same or almost so,
it is only necessary that there be a viable relationship
between the goods or services in order to support a holding
of likelihood of confusion." In re Concordia International
Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983).
Turning to the involved goods, the Examining Attorney
contends that these goods can and do emanate from sources
utilizing the same mark for both goods; that applicant has,
at least until a recent divestiture of its fiber optic
systems business, produced both of the involved goods; that
Ser. No. 75/559,756
5
the goods can be ordered from the same catalogs; and that
there are numerous NEXIS articles which discuss both
applicant's and registrant's goods and establish that they
are complementary.
Evidence introduced by the Examining Attorney in
support of the refusal includes: third-party registrations
showing that the same mark has been registered for
"integrated circuits" and "optical fiber connectors," or
"fiber optic cable" or "optical cables … optical fibers" or
"fiber optic connectors and cables"; registrations of
applicant for marks for "integrated circuits" or for
"optical fiber cables" or for "cables containing fiber
optic filaments"; a press release retrieved from
applicant's web site, and various news reports retrieved
from NEXIS, discussing applicant's divestiture of its fiber
optics business; photocopies of pages from the 1999
"electronic engineers master catalog" and from "Computer
Shopper" magazine; and various articles retrieved from
NEXIS which include either "integrated circuit" or "chip"4
and "optical fiber."
4 The Examining Attorney also made of record a computer
dictionary definition that defines "integrated circuit" as "[t]he
formal name for chip."
Ser. No. 75/559,756
6
Applicant distinguishes the third-party registrations
as covering "company names or house marks" and asserts that
its mark and registrant's mark "are not house marks and are
not likely to be perceived as such." In regard to the
evidence that applicant has marketed both of the involved
products, applicant notes that none of its registered marks
covers both goods; rather each registration lists only
integrated circuits or fiber optic goods, but not both.
Applicant also contends that integrated circuits and
optical fiber cables differ "in form and function" and
generally would be purchased by different companies or,
even if purchased by the same companies, "would be
purchased by different individuals or divisions." Further,
applicant contends that "it is unlikely that consumers
would encounter the marks together. Even if the goods …
are both used in telecommunication networks … [t]he
Applicant's integrated circuits would already be
incorporated into an end product before that product
[would] be combined with optical fiber cables in a
telecommunication system." Finally, applicant contends
that purchasers of the involved goods would be
sophisticated and "less likely to be confused than ordinary
consumers."
Ser. No. 75/559,756
7
It is well settled that the third-party registrations
made of record by the Examining Attorney have probative
value to the extent that they suggest that the goods listed
therein and which are relevant to this case ("integrated
circuits" and "optical fiber connectors," or "fiber optic
cable" or "optical cables … optical fibers" or "fiber optic
connectors and cables") are of a type which may emanate
from a single source under the same mark. In re Albert
Trostel & Co., 29 USPQ2d 1783, 1786 (TTAB 1993).
Applicant's argument that the marks in these registrations
are house marks does not persuade us that the principle
does not apply. The argument presumes that the goods
listed in the registrations would have their own product
marks, apart from the house marks, and that the owners of
these registrations, like applicant, would not use the same
product mark for these different products. There is no
evidence in the record, however, to support the
presumption; house marks or not, the evidence suggests that
the identified goods emanate from a single source with the
same mark.
We do not disagree with the applicant's argument that
its goods and those of registrant differ in form and
function. Indeed, apart from an initial characterization
of the goods as related items of computer hardware, the
Ser. No. 75/559,756
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Examining Attorney has not argued that the goods perform
the same function or are interchangeable. Rather, the
argument is that they are complementary and would,
therefore, be marketed to the same class of consumers.
Though the photocopies of pages from the 1999 "electronic
engineers master catalog" and from "Computer Shopper"
magazine do not support this argument, excerpts retrieved
from NEXIS do. We note, in particular, the following5:
JDS Uniphase makes chips that allow
companies to send more info over optical
fiber without having to lay more cable.
Fortune, December 20, 1999.
And JDS Uniphase is picking up nicely. It
has gained 10 3/8. That's a gain of 4 1/2
percent. It makes chips for increasing the
carrying capacity of optical fibers.
5 Each of these NEXIS references includes the term "chip" rather
than integrated circuit; however, the evidence establishes that
"chip" is merely a less formal name for an integrated circuit.
In addition, though applicant attempts to discount this
evidence by observing that the articles refer to "optical fibers"
rather than "optical fiber cables," we do not find the difference
significant. To be sure, other NEXIS references make clear that
"optical fibers" can be minuscule enough to fit on the surface of
a chip or integrated circuit. The references we have set out,
however, clearly employ "optical fiber" as a means of referencing
a broader panoply of fiber optic material. See also, in this
regard, the following dictionary definition, of which we take
judicial notice, and which evidences that some of the terms in
this industry are somewhat interchangeable:
fiber optic, fiber optics, fiber optic cable, optical fiber
These are cables constructed of parallel, bundled, slender,
transparent fibers of glass or plastic, encased in a lesser
refractive material, which carry transmitted light through the
length of the cable through internal reflection. … The unenhanced
capacity of fiber optic is about 2.5 Gbps…. Fiber optic cables
have far greater bandwidth… than traditional copper phone wires….
Data & Telecommunications Dictionary 288 (1999).
Ser. No. 75/559,756
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Transcript #99112425FN-119 from CNNFN [Cable
News Network Financial], for the show
"Market Coverage," November 24, 1999.
JDS Uniphase gets 60% of its sales from
fiber-optic telecom equipment. It also
makes chips to increase carrying capacity of
optical fibers.
Investor's Business Daily, July 16, 1999.
HEADLINE: OFFER TO RAZE FORMER HESS'S IN
PACKAGE TO WOO LUCENT; CITY WOULD TEAR DOWN
OLD HESS'S TO MAKE WAY FOR LUCENT OFFICES;
AEDC WOULD OWN NEW BUILDING, LEASE IT TO
TELECOMMUNICATIONS GIANT
…Microelectronics Group, which has
facilities in Allentown, Salisbury Township
and Breinigsville, makes components and
systems for the telecommunications and
computer markets.
Breinigsville is home to part of the
company's opto-electronics--optical fiber--
group.
A Reading facility, employing about 2,000,
makes parts for optical fiber communications
systems as well as integrated chips using
exotic materials. …
The Morning Call (Allentown), February 28,
1998.
Applicant's argument that even if the involved goods
were purchased by the same companies, they "would be
purchased by different individuals or divisions" is not
persuasive and is without support in the record. The same
is true of applicant's argument that even if the goods are
complementary, its "integrated circuits would already be
incorporated into an end product before that product
Ser. No. 75/559,756
10
[would] be combined with optical fiber cables in a
telecommunication system."
Applicant's last argument is that the consumers of the
involved goods are sophisticated and, therefore, less
likely to be confused. We do not find the argument
persuasive. There are no limitations on channels of trade
in the registration or applicant's application. Therefore,
we consider all possible channels of trade for the involved
goods. Canadian Imperial Bank of Commerce, National
Association v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815-16 (Fed. Cir. 1987). This would include the
possibility that consumers might be purchasing applicant's
integrated circuits and registrant's optical fiber cables
from resellers, rather than directly from applicant and
registrant. Under such circumstances, the likelihood of
confusion, even among sophisticated consumers is increased.
Moreover, it is well settled that even technically
knowledgeable purchasers are not necessarily immune from
source confusion when goods are sold under similar marks.
Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d
1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (Even discriminating
purchasers of products costing thousands of dollars held
likely to be confused by contemporaneous use of marks TMS
Ser. No. 75/559,756
11
and TMM), and Aries Systems Corp. v. World Book Inc., 23
USPQ2d 1742, n.17 (TTAB 1992).
Finally, we note that if there were any doubt on
the question of likelihood of confusion, it would have
to be resolved against the newcomer, as the newcomer
has the opportunity of avoiding confusion and is
obligated to do so. See TBC Corp. v. Holsa Inc., 126
F.3d 1470, 44 USPQ2d 1315 (Fed. Cir. 1997).
Decision: The refusal to register under Section
2(d) is affirmed.