Sonnet Tech-nologies, Inc.

Trademark Trial and Appeal Board

Apr 17, 2001

No. 75600235 (T.T.A.B. Apr. 17, 2001)

4/17/01
Paper No. 10
HRW
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Sonnet Technologies, Inc.
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Serial No. 75/600,235
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Howard J. Klein of Klein & Szekeres, LLP for
Sonnet Technologies, Inc.
Tracy Cross, Trademark Examining Attorney, Law Office 103
(Dan Vavonese, Acting Managing Attorney).
_______
Before Cissel, Wendel and Bucher, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Sonnet Technologies, Inc. has filed an application to
register the mark SONNET and design, as shown below, for
“computer hardware.”1
1 Serial No. 75/600,235, filed December 7, 1998, claiming a date
of first use and first use in commerce of May 1992.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/600,235
2
Registration has been finally refused under Section
2(d) of the Trademark Act on the ground of likelihood of
confusion with the mark SONNET, which is registered for
“computer software for analyzing electronic circuits.”2
The refusal has been appealed and both applicant and the
Examining Attorney have filed briefs. An oral hearing was
not requested.
We make our determination of likelihood of confusion
on the basis of those of the du Pont3 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. 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
2 Registration No. 2,017,720, issued November 19, 1996, setting
forth a first use date of 1983 and a first use date in commerce
of 1984.
3 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Ser No. 75/600,235
3
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). It is the word portion of a 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 thus it is the
word portion that will be 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).
Here the word portions of the marks are the same, the
single word SONNET. The marks are identical in sound and
connotation. Furthermore, the word SONNET would appear to
be arbitrary as used with the computer software of
registrant, as well as the computer hardware of applicant.
Although applicant points to the design elements of
its mark as a distinguishing feature, we do not consider
these features so distinctive that purchasers would be
likely to rely upon and refer to applicant’s goods in terms
of the design, rather than the word SONNET. Furthermore,
since registrant has elected to register its mark in typed
drawing form, registrant is free to use the mark in any
form it chooses, including one very similar to the form in
Ser No. 75/600,235
4
which applicant seeks to register the word. As stated in
In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991),
where the mark was registered in typed form:
... the display of a word mark may be changed at any
time at the whim of its owner; rights in such a mark
reside in the term itself rather than in any
particular form thereof. (Cite omitted)).
Inasmuch as registrant is free to adopt any design for its
mark, applicant’s reliance upon cases involving marks each
having a specific design feature is misplaced. Any
argument with respect to difference in type style or design
is not viable when, as here, the registrant has not
restricted its rights to a particular display. See Squirto
Co. v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937 (Fed. Cir.
1983).
Accordingly, we find the overall commercial
impressions created by applicant’s SONNET and design mark
and registrant’s SONNET mark to be highly similar.
Turning to the goods involved, we note that as a
general principle, the issue of likelihood of confusion
must be determined on the basis of the goods as identified
in the application and in the cited registration(s).
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813 (Fed.Cir. 1987). If there are no
restrictions in the application or registration(s) as to
Ser No. 75/600,235
5
channels of trade, the parties’ goods must be assumed to
travel in all the normal channels of trade for goods of
this nature. See Kangol Ltd. v. KangaROOS U.S.A. Inc., 974
F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992). Moreover, it is
not necessary that the goods of the applicant and
registrant be similar or even competitive to support a
holding of likelihood of confusion. It is sufficient if
the respective goods are related in some manner and/or that
the conditions surrounding their marketing are such that
they would be encountered by the same persons under
circumstances that could, because of the similarity of the
marks used thereon, give rise to the mistaken belief that
they emanate, or are associated with, the same source. See
In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993)
and the cases cited therein.
The goods of both applicant and registrant are
identified in very broad terms in the application and
registration. Applicant’s “computer hardware” is totally
unrestricted as to types of hardware components, fields of
use, or channels of trade in which the hardware is offered.
Registrant’s software, while restricted to a particular
function, is similarly unlimited as to channels of trade or
fields of use. Accordingly, we find the web pages made of
record by the Examining Attorney fully adequate to
Ser No. 75/600,235
6
demonstrate that, since the same entities, such as the
AppleStore or CompUSA, offer both hardware and software,
both hardware of the type identified in the application and
software of the type identified in the registration travel
in the same channels of trade and are offered by the same
entities to the same potential customers.
Moreover, although applicant argues that registrant’s
software is highly specialized applications software,
applicant had failed to make any evidence of record to
substantiate that registrant’s software, as identified in
the registration, should be so construed.4 Instead, we must
concur with the Examining Attorney that because
registrant’s software is broadly described as being used
for analyzing electronic circuits and because applicant’s
hardware necessarily has electronic circuits, registrant’s
software might well be used in conjunction with applicant’s
hardware.
We fully agree with applicant that there is no “per
se” rule in the field of computer products whereby all
4 The Examining Attorney has properly objected to the declaration
of Robert Farnsworth, which is attached to applicant’s brief, as
being untimely. See Trademark Rule 2.142(d). Accordingly, we
have given the declaration no consideration. We deny applicant’s
request that the application be remanded to the Examining
Attorney for consideration of the declaration at this point in
time; applicant had ample opportunity to file such a declaration
earlier in the prosecution.
Ser No. 75/600,235
7
computer hardware and software products are considered
related. See In re Quadram Corp., 228 USPQ 863 (TTAB
1985). In the Quadram case, however, insufficient overlap
was found between a “specific, specialized piece of
peripheral computer hardware” and a “specific, specialized
type of applications software” to warrant a holding of
likelihood of confusion. A distinction was drawn between
applications software designed for a particular application
and other types of “utility” of “systems” software which
help a computer or its peripherals operate in general.
Here, we have no reason to make such a distinction.
Instead, registrant’s software must be viewed as “utility”
software, in that it may be used to analyze the electronic
circuits of computer hardware. In view of the broad way
the goods are identified, we can only conclude that a
complementary relationship exists between the hardware of
applicant and the software of registrant. There is a much
more direct tie-in between the software and hardware
involved here than the mere fact that both products are
linked in some way to the use of computers or that both may
be categorized as being computer hardware and/or software.
Cf. Information Resources Inc. v. X*Press Information
Services, 6 USPQ 1034 (TTAB 1988)(marked differences
between opposer’s specialized information analysis software
Ser No. 75/600,235
8
and applicant’s service of transmitting news and general
information to computers via satellite and cable television
lines); Electronic Data Systems Corp. v. EDSA Micro Corp.,
23 USPQ2d 1460 (TTAB 1992)(insufficient relationship found
between opposer’s computer data processing
programming/information management services and applicant’s
computer software programs for electrical distribution
system analysis and design.)
Thus, because the goods of both applicant and
registrant must be presumed to travel in the same channels
of trade and to be encountered by the same persons, we find
the relationship between the goods sufficient, that if the
respective SONNET marks are used thereon, potential
purchasers might well assume a common origin for the goods.
The only remaining factor raised by applicant is the
lack of evidence of actual confusion, despite the
concurrent use of the marks since 1992. We simply note
that this factor can be given little weight in an ex parte
proceeding. Whether or not we gave any consideration to
the declaration untimely submitted by applicant, with
respect to applicant being unaware of any instances of
confusion, we still have had no opportunity to hear from
registrant on this point. In addition, we have no
information as to the geographic overlap of markets and,
Ser No. 75/600,235
9
thus, the actual potential for confusion. See In re
National Novice Hockey League, Inc., 222 USPQ 638 (TTAB
1984).
Accordingly, on the basis of the similarity of overall
commercial impressions created by applicant’s SONNET and
design mark and registrant’s SONNET mark and the
relationship between the computer hardware of applicant and
the computer software for analyzing electronic circuits of
registrant, we find a likelihood of confusion with
concurrent use of the marks. To the extent that there may
be any remaining doubt, we follow the well-established
principle that any doubt regarding likelihood of confusion
must be resolved against applicant as the newcomer in the
field. See In re Hyper Shoppes (Ohio) Inc., 837 F.2d 463,
6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal to register under Section 2(d)
is affirmed.