Sonnet Tech-nologies, Inc.

Trademark Trial and Appeal Board

Sep 25, 2001

No. 75600234 (T.T.A.B. Sep. 25, 2001)

9/25/01 Paper No. 12
RLS/LG

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sonnet Technologies, Inc.
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Serial No. 75/600,234
_______

Howard J. Klein of Klein and Szekeres, LLP for Sonnet
Technologies, Inc.

Tracey Cross, Trademark Examining Attorney, Law Office 103
(Mike Hamilton, Managing Attorney).
_______

Before Simms, Walters and Drost, Administrative Trademark
Judges.

Opinion by Simms, Administrative Trademark Judge:

Sonnet Technologies, Inc. (applicant), a California
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register the mark CRESCENDO
for computer hardware, namely computer processor
performance upgrade cards.1 The Examining Attorney has
refused registration under Section 2(d) of the Act, 15 USC
Section 1052(d), on the basis of Registration No.

1 Application Serial No. 75/600,234, filed December 7, 1998,
based upon allegations of use and use in commerce since December
23, 1997.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/600,234
2
1,344,071, issued June 25, 1985, Sections 8 and 15
affidavit accepted and received, respectively, for the mark
shown below for computer programs.

Applicant and the Examining Attorney have submitted briefs
but no oral hearing was requested.2
It is the Examining Attorney’s position that confusion
is likely because the respective marks are very similar and
because registrant’s computer programs and applicant’s
computer processor performance upgrade cards are both
computer-related items. In this regard, it is the
Examining Attorney’s position that registrant’s goods are
identified broadly without limitation as to the nature,
type, channels of trade or class of purchasers, so that

2 The Examining Attorney has objected to a declaration of
applicant’s president submitted with applicant’s appeal brief. In
this regard, Trademark Rule 2.142(d) provides, in relevant part,
that the record in an application should be complete prior to the
filing of an appeal and that the Board will ordinarily not
consider additional evidence filed by applicant or the Examining
Attorney after the appeal is filed. The rule further provides
that, after an appeal is filed, if the applicant or the Examining
Attorney desires to introduce additional evidence, the applicant
or the Examining Attorney may request the Board to suspend the
appeal and remand the application for further examination. Here,
applicant’s request to suspend and remand, sought in its appeal
brief and reply brief, is untimely. In any event, consideration
of the declaration would not have altered the result we reach
herein.
Ser. No. 75/600,234
3
registrant’s goods could encompass all of the types of
goods described, move in all normal channel of trade, and
be available for purchase by all reasonable purchasers.
The Examining Attorney has made of record a number of
third-party registrations in support of her argument that
the same companies make and sell both computer hardware and
computer software. The Examining Attorney has also made of
record evidence that the same retail entities and Web sites
offer both computer hardware and computer software
products. The Examining Attorney has cited a number of
cases where the Board has held that confusion is likely
where the respective goods were computer hardware and
computer software. Finally, the Examining Attorney asks us
to resolve any doubt in favor of the prior user and
registrant.
Applicant, on the other hand, argues that the
respective goods are dissimilar. First, applicant points
out that there is no per se rule holding that there is
always likelihood of confusion between computer hardware
and computer software products bearing similar marks. With
respect to the goods involved in this appeal-—computer
programs and computer processor performance upgrade cards-—
applicant argues that registrant’s goods are sold to a very
specific category of buyers—-financial and estate planning
Ser. No. 75/600,234
4
professionals, who are very sophisticated and knowledgeable
purchasers.3 Contrasted to registrant’s special purpose
application software, applicant’s goods are not directed to
a narrow market, according to applicant. Applicant argues
that vendors of computer software do not generally market
computer hardware, and that customers do not expect vendors
of specialized computer software to also market computer
hardware such as applicant’s computer processor performance
upgrade cards. Accordingly, applicant maintains that
purchasers encountering applicant’s goods will not believe
that registrant has expanded into computer hardware
products. Applicant’s attorney also points to the three-
year period of concurrent use of the respective marks
without any known instances of actual confusion.
Applicant also relies upon cases of the Board in which
confusion was not found with respect to computer hardware
and software products. For example, applicant quotes from
In re Quadram Corp., 228 USPQ 863, 865 (TTAB 1985):

3 Applicant makes this argument because the Examining Attorney
had earlier cited three registrations against applicant,
including the one noted above. Those other two registrations,
also held by Comdel, Inc., the owner of the cited registration,
and covering the mark CRESCENDO and CRESCENDO PRO, issued for
computer software to create presentations that illustrate
financial, estate and gift planning consequences of financial and
estate planning, including graphic, paint and animation features.
The Examining Attorney, in her brief, withdrew the refusal on the
basis of those two registrations, but continued refusal with
respect to the ’071 registration.
Ser. No. 75/600,234
5
As a result of the veritable explosion of
technology in the computer field over the last
several years and the almost limitless number of
specialized products and specialized usage in
this industry, we think that a per se rule
relating to source confusion vis-à-vis computer
hardware and software is simply too rigid and
restrictive an approach and fails to consider the
realities of the marketplace. We note that, in
the past, tendencies toward applying “per se”
rules relating to likelihood of confusion in
other fields have been struck down as being too
inflexible and contrary to trademark law where
each case must be decided based on its own facts
and circumstances.

The determination of likelihood of confusion is based
on an analysis of all of the facts in evidence that are
relevant to the factors bearing on the 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 similarities between the goods. Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976).
The marks have obvious similarities in sound,
appearance and meaning. The marks only differ by the angle
design appearing in registrant’s mark. See In re Appetito
Provisions Co. Inc., 3 USPQ2d 1553 (TTAB 1987)[when a mark
consists of a word and design, the word portion is more
likely to be remembered by purchasers and to be used in
calling for the goods]. In sum, the marks, when considered
Ser. No. 75/600,234
6
in their entireties, engender substantially similar overall
commercial impressions such that, if used in connection
with related goods, confusion would be likely to occur.
With respect to the goods, it is not necessary that
the goods be identical or even competitive in nature in
order to support a finding of likelihood of confusion. It
is sufficient that the circumstances surrounding their
marketing are such that they would be likely to be
encountered by the same persons under circumstances that
would give rise, because of the marks used in connection
therewith, to the mistaken belief that the goods originate
from or are in some way associated with the same source.
In re International Telephone and Telegraph Corp., 197 USPQ
910 (TTAB 1978). Further, the identifications of goods in
the application and the cited registration control the
comparison of the goods. See Canadian Imperial Bank v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed.
Cir. 1987)[“[T]he question of likelihood of confusion must
be determined based on an analysis of the mark as applied
to the goods and/or services recited in applicant’s
application vis-à-vis the goods and/or services recited in
[the] registration, rather than what the evidence shows the
goods and/or services to be.”]; and In re Elbaum, 211 USPQ
639 (TTAB 1981). Thus, we may not consider registrant’s
Ser. No. 75/600,234
7
computer programs to be limited in the manner suggested by
applicant.
When the goods are compared in light of the legal
constraints cited above, we find that applicant’s computer
processor performance upgrade cards are related to
registrant’s broadly identified computer programs. For
purposes of the legal analysis of likelihood of confusion
herein, it is presumed that registrant’s registration
encompasses all goods of the nature and type identified,
that the identified goods move in all channels of trade
that would be normal for such goods, and that the goods
would be purchased by all potential customers. In re
Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992); and In re
Elbaum, supra at 640. There are no limitations in
registrant’s identification of goods and, thus, we must
presume that registrant’s software may be used in
connection with computer upgrade cards. Further, we must
presume that registrant’s computer programs are purchased
by all normal purchasers of these goods. Thus, the goods,
as identified, are presumed to travel in the same or
similar channels of trade and are presumed to be bought by
the same classes of purchasers.
As the Examining Attorney has noted, the record here
includes evidence that the same companies offer both
Ser. No. 75/600,234
8
computer hardware and computer software under the same
mark. This evidence supports the contention that
purchasers, aware of registrant’s software, who then
encounter applicant’s specific computer hardware product,
are likely to believe, because of the near identity of the
marks, that the goods come from the same source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Applicant’s attorney has pointed to the absence of any
actual confusion between the involved marks in the time
since applicant began using its mark. As a du Pont factor,
the absence of actual confusion weighs in applicant’s
favor. The probative weight is very limited here, however,
by the fact that there are no specifics regarding the
extent of use by applicant or registrant. Thus, there is
no way to assess whether there has been a meaningful
opportunity for confusion to have occurred in the
marketplace.
With respect to the Quadram case relied upon by
applicant, suffice it to say that that case involved
specialized and specific hardware and software products,
unlike the broadly described software listed in
registrant’s registration.
We find that purchasers, familiar with registrant’s
computer programs sold under the mark CRESCENDO and design
Ser. No. 75/600,234
9
would be likely to believe, upon encountering applicant’s
computer upgrade cards offered under the nearly identical
mark CRESCENDO, that the goods originated with or were
somehow associated with or sponsored by the same entity.
Lastly, to the extent that there is any doubt about
our ultimate conclusion on the issue of likelihood of
confusion, we resolve that doubt, as we must, in favor of
the prior registrant. In re Hyper Shoppes (Ohio), Inc.,
837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.