Soft Solutions S.A.v.Solid Software Solutions, Inc.

Trademark Trial and Appeal Board

May 21, 2007

No. 91164984 (T.T.A.B. May. 21, 2007)

Mailed: May 21, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Soft Solutions S.A.
v.
Solid Software Solutions, Inc.
_____

Opposition No. 91164984
_____

Richard Sybert and Maha Sarah of Gordon & Rees LLP for Soft
Solutions S.A.

Solid Software Solutions, Inc., pro se.
______

Before Holtzman, Walsh and Bergsman, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Applicant, Solid Software Solutions, Inc., has filed an
application to register the mark SOLID SOFTWARE SOLUTIONS (in
standard character form) for "computer software development,
computer software consultation, computer software design and
programming for others" in Class 42.1 The wording "Software
Solutions" has been disclaimed.

1 Application Serial No. 78370663, filed February 19, 2004, based on an
allegation of a bona fide intention to use the mark in commerce.

THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Opposition No. 91164984
2
Opposer filed a notice of opposition alleging that it is the
prior user and owner of Registration No. 2926310 for the mark
SOFT SOLUTIONS (in typed form) for the following goods and
services:
Software related products, namely, software for retail
merchandise management and decision support (in Class
9); and

Creation and development of software; product research
and development; computer software consultation;
technical support services, namely, troubleshooting of
computer hardware and software problems; computer
programming for others (in Class 42).

Opposer claims that applicant's mark, when applied to
applicant's services, so resembles opposer's previously used and
registered mark for the above goods and services as to be likely
to cause confusion under Section 2(d) of the Trademark Act.
Applicant filed an answer arguing the merits of the
likelihood of confusion claim, and in particular the differences
in the marks, but essentially denying the salient allegations in
the opposition.
The record includes the pleadings; the file of the involved
application; and opposer's notice of reliance on a status and
title copy of its pleaded registration.
Applicant did not take any testimony or offer any other
evidence in its own behalf.2 Only opposer filed a brief.

2 Applicant filed a paper entitled "Rebuttal Brief" during the period
assigned to applicant for taking testimony. The brief does not
constitute evidence in the case, and it is untimely as a brief on the
case. Accordingly, this paper has not been considered.
Opposition No. 91164984
3
Priority
Opposer has made of record a copy of its pleaded
Registration No. 2926310 for the mark SOFT SOLUTIONS showing
current status of the registration and ownership in opposer.3
Thus, opposer's standing has been established, and its priority
with respect to the registered mark for the goods and services
identified therein is not in issue.4 King Candy Co., Inc. v.
Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974).
Likelihood of confusion
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. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two key
considerations are the similarities or dissimilarities between

3 Issued February 15, 2005.

4 Opposer argues in its brief that it is also the owner of an
additional registration, Registration No. 1540191 for the mark
SoftSolutions for "computer programs contained on magnetic media, and
written instruction manuals accompanying the programs supplied as a
unit." However, this registration was not pleaded in the notice of
opposition, nor in any event did opposer introduce a status and title
copy of the registration or otherwise attempt to properly make the
registration of record. This unpleaded registration has not been
considered. We also note that opposer introduced no evidence of common
law use of its pleaded mark SOFT SOLUTIONS, and contrary to opposer's
belief, the registration itself is evidence only of use of the mark as
of the filing date of the underlying application. See Section 7(c) of
the Trademark Act; and Brewski Beer Co. v. Brewski Brothers Inc., 47
USPQ2d 1281 (TTAB 1998). Therefore, opposer's unsupported arguments
relating to common law use of this mark have not been considered.
Opposition No. 91164984
4
the marks and the similarities or dissimilarities between the
goods and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). We will focus
our attention on a comparison of the marks as applied to the
parties' respective services.5
Applicant's services are "computer software development,
computer software consultation, computer software design and
programming for others." The services identified in opposer's
registration are "creation and development of software; product
research and development; computer software consultation;
technical support services, namely, troubleshooting of computer
hardware and software problems; computer programming for others."
The services in this case are, in substantial part, identical.
The registration encompasses virtually all, if not all, of the
services identified in the application.
In view of the directly competitive nature of the services,
and because there are no restrictions as to their channels of
trade or classes of purchasers, the services must be deemed to be
sold in the same channels of trade and directed to the same
purchasers. See Interstate Brands Corp. v. McKee Foods Corp., 53
USPQ2d 1910 (TTAB 2000); and In re Smith & Mehaffey, 31 USPQ2d
1531 (TTAB 1994).

5 If there is no likelihood of confusion between the marks as applied
to the parties' services, there would be no likelihood of confusion as
to opposer’s less similar goods.
Opposition No. 91164984
5
We turn then to a comparison of opposer's mark SOFT
SOLUTIONS with applicant's mark SOLID SOFTWARE SOLUTIONS.
Opposer argues that applicant has merely added two descriptive
terms, SOLID and WARE to opposer's mark, and that the resulting
differences do not overcome the similarity of the marks in sound,
appearance or commercial impression. Opposer contends that
SOFTWARE is merely descriptive of computer software development
and consultation, and is therefore entitled to little weight. In
addition, opposer contends that in view of applicant's statements
in its answer that applicant will provide "'Solid' or robust
solutions for our customers" and that the term SOLID "refers to
Applicant's services," applicant has admitted that the term SOLID
is descriptive of its services and that, as a result, that word,
too, is entitled to little or no weight in the analysis.
In determining the similarity or dissimilarity of marks, we
must consider the marks in their entireties in terms of sound,
appearance, meaning and commercial impression. See Cunningham v.
Laser Golf Corp., 55 USPQ2d 1842 (Fed. Cir. 2000). The mere
fact that applicant's mark incorporates all the elements of
opposer's mark does not necessarily compel a finding that the two
marks are confusingly similar. See, e.g., New England Fish
Company v. The Hervin Company, 184 USPQ 817 (CCPA 1975) ("there
is no arbitrary rule of law that if two product marks are
confusingly similar, likelihood of confusion is not removed by
use of a company or housemark in association with the product
Opposition No. 91164984
6
mark"). Instead, "each case requires a consideration of the
effect of the entire mark including any term in addition to that
which closely resembles the opposing mark." Id. We find that
the marks SOFT SOLUTIONS and SOLID SOFTWARE SOLUTIONS when
considered in their entireties, are not similar in sound,
appearance, meaning, or in their overall commercial impression.
The addition of other matter to one of two otherwise similar
marks has been found sufficient to distinguish the marks as a
whole under circumstances where: (i) there are recognizable
differences in the asserted conflicting term [see, for example,
North American Corp. v. Eisenund Drahtwerk Erlau AG, 176 USPQ 540
(TTAB 1973), aff'd, 182 USPQ 172 (CCPA 1974) (ERLAU ROCK-STANDARD
not confusingly similar to ROCKWELL STANDARD)]; or (ii) the
shared term is highly suggestive or merely descriptive or has
been frequently used or registered by others in the field for the
same or related goods or services [see, for example, In re
Merchandising Motivation, Inc., 184 USPQ 364 (TTAB 1974) (MEN'S
WEAR for a semi-monthly magazine not confusingly similar to MMI
MENSWEAR for fashion consulting for men because "MENSWEAR" is
merely descriptive of such services)]; or (iii) the marks in
their entireties convey significantly different meanings or
commercial impressions [see, for example, Colony Foods, Inc. v.
Sagemark, Ltd., 735 F.2d 1336, 222 USPQ 185 (Fed. Cir. 1984)
(HOBO JOE'S for restaurant services, suggesting a particular
individual hobo named "Joe," not confusingly similar to HUNGRY
Opposition No. 91164984
7
HOBO for restaurant services, suggesting an anonymous person of
that kind in need of a meal)].
All of these circumstances are present in this case. The
asserted conflicting portions of the marks are different, and
this difference combined with the addition of the word SOLID in
applicant's mark SOLID SOFTWARE SOLUTIONS significantly changes
the meaning and commercial impression created by SOFT SOLUTIONS.
We take judicial notice of the definition of the word SOLUTION as
"An application of computers and software to a particular
problem."6 Thus, the phrase SOFTWARE SOLUTIONS, the asserted
conflicting term, is descriptive of applicant's computer-related
services, and although it encompasses opposer's entire mark, it
constitutes only a subordinate part of applicant's mark. See In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985) ("That a particular feature is descriptive or generic
with respect to the involved goods or services is one commonly
accepted rationale for giving less weight to a portion of a
mark"). It is the additional word SOLID that is dominant in
conveying the meaning and commercial impression of applicant's
mark as a whole. We take judicial notice of the relevant
definitions of "solid" in the context of applicant's services as
meaning "RELIABLE able to be relied or depended upon" and "of a

6 The New Penguin Dictionary of Computing (Penguin Books 2001). The
Board may take judicial notice of dictionary definitions. See, e.g.,
University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co.,
Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
Opposition No. 91164984
8
substantial character; not superficial, trifling, or frivolous."7
Based on these definitions, applicant's mark suggests reliable
and stable software solutions that customers can depend on to
meet their needs.8
Opposer's mark SOFT SOLUTIONS, on the other hand, suggests
almost an opposite meaning of SOLID as applied to software
solutions, or at least an entirely different meaning. Opposer
has offered no meaning for its mark, but we take judicial notice
of the definition of "soft" in computer terms as "Temporary or
changeable, as opposed to hard (permanently wired, physically
fixed, or inflexible)."9 Therefore, SOFT could suggest
changeable or flexible solutions for software problems, a meaning
which differs substantially from SOLID solutions for software
problems. To the extent that the term SOFT in opposer's mark
would be perceived simply as an abbreviated form of "software,"
the overall meaning of the mark would be descriptive as we noted

7 Microsoft Encarta College Dictionary (2001) and Webster's
Encyclopedic Unabridged Dictionary of the English Language (1996),
respectively.

8 Applicant has disclaimed exclusive rights to "SOFTWARE SOLUTIONS"
presumably because it is descriptive, and we agree that it is.
Opposer, by arguing that the word SOLID is also descriptive is in
effect alleging that applicant's entire mark is merely descriptive of
applicant's services, which essentially constitutes an additional, and
moreover, unpleaded ground for opposition. Accordingly, opposer's
arguments in this regard have been given no consideration. We will
assume for purposes of the likelihood of confusion analysis that the
word SOLID is not merely descriptive. In any event, we find that this
word only suggests a quality of the services.

9 Webster's New Worldâ„¢ Computer Dictionary (2003). See also Microsoft
Computer Dictionary (5th ed. 2002) defining "soft" as "In computing,
temporary or changeable. For example, a soft error is a problem from
Opposition No. 91164984
9
earlier, and the addition of SOLID would be sufficient to readily
distinguish that meaning. See, e.g., In re Merchandising
Motivation, Inc., supra.
Furthermore, there are recognizable differences in sound and
appearance between SOFTWARE SOLUTIONS and SOFT SOLUTIONS, the
asserted conflicting portions of the marks, and the addition of
the word SOLID to applicant's mark greatly enhances the aural and
visual differences. The marks begin with two different words,
and they do not have the same number of words or syllables.
Applicant's mark is three words with seven syllables, and
opposer's mark is two words with four syllables.
We also note that opposer's mark SOFT SOLUTIONS is
suggestive, if not highly suggestive, of opposer's services, and
as such it is entitled to a more limited scope of protection than
an arbitrary mark. Home Decorators, Inc. v. Ekco Products
Company, 292 F.2d 296, 130 USPQ 153 (CCPA 1961); and Standard
Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917
(TTAB 2006). It is well settled that a finding of likelihood of
confusion "cannot be predicated upon the presence in each mark of
a weak or suggestive term when the remaining portions of those
marks differ in appearance, sound and/or meaning." Holiday Inns,
Inc. v. Monolith Enterprises, 212 USPQ 949, 952 (TTAB 1981). See
also Tektronix, Inc. v. Daktronics Inc.,534 F.2d 915, 189 USPQ
693 (CCPA 1976); Insta-Foam Products, Inc. v. Instapak

which the system can recover, and a soft patch is a temporary program
Opposition No. 91164984
10
Corporation, 189 USPQ 793 (TTAB 1976) aff'd unpubl. (CCPA 1977);
and Season-All Industries, Inc. v. Spring Hill Fuel Co. 152 USPQ
515 (TTAB 1966).
We find in this case that the overall differences in the
marks SOLID SOFTWARE SOLUTIONS and SOFT SOLUTIONS, far outweigh
their similarities.
Finally, although we have no evidence or argument on this
point, we believe it is reasonable to assume that the purchasers
of at least computer software consultation services would include
ordinary purchasers and users of software products. In any event
since the description of services is not restricted, we must
construe the services as encompassing all consumers who would
normally use computer software consultation services and software
products. These purchasers, while perhaps not discriminating or
sophisticated, would be likely to exercise some degree of care in
their purchasing decisions, thereby making them less prone to
confusion. However, we find that even purchasers exercising only
ordinary care in the purchase of these services would be able to
readily distinguish these marks.
Notwithstanding the identity of the services in this case,
we conclude that the dissimilarity of the marks makes confusion
unlikely.
Decision: The opposition is dismissed.

fix that hold only while the program is running."