Spezielle Communi-cations Systems, GmbH

Trademark Trial and Appeal Board

Jan 10, 2001

No. 75347223 (T.T.A.B. Jan. 10, 2001)

1/10/01
Paper No. 17
EJS
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________
In re Spezielle Communications Systems, GmbH
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Serial No. 75/347,223
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Carl A. Rankin of Rankin, Hill, Porter & Clark, LLP for
Spezielle Communications Systems, GmbH
Rebecca Gilbert, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney)
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Before Seeherman, Walters and Rogers, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Spezielle Communications Systems, GmbH has appealed
from the final refusal of the Trademark Examining Attorney
to register PACTOR as a trademark for what has ultimately
been identified as
telecommunications system for use by
amateur radio operators, comprised of
electrical instrumentation and computer
software, both for transmitting and
receiving high frequency radio
transmissions using frequencies
specifically assigned to amateur radio
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/347,223
2
operators, in the telecommunications
field.1
Registration has been refused pursuant to Section 2(d) of
the Trademark Act, 15 U.S.C. 1052(d), on the ground that
applicant’s mark so resembles the mark PICTOR, previously
registered for “radio communication system for transmitting
and receiving compressed digital image data over radio
links comprised of radio transmitters, radio receivers,
computer hardware and computer software for use in
operating such radio communication system.”2
Applicant and the Examining Attorney have filed
briefs;3 an oral hearing was not requested.
In determining whether there is a likelihood of
confusion between two marks, we must consider all relevant
factors as set forth in In re E.I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
In any likelihood of confusion analysis under Section
2(d), two of the most important considerations are the
similarities or dissimilarities between the marks and the
1 Application Serial No. 75/347,223, filed August 26, 1997, and
asserting first use and first use in commerce in July 1991.
2 Registration No. 1,992,480, issued August 13, 1996.
3 In its brief applicant has made certain statements as to
information which is “admittedly not of record in this case.”
Brief, pp. 8, 18. The Examining Attorney has objected to
consideration of this information. The objection is well taken,
and applicant’s statements regarding information on both its own
web site and that of the registrant have not been considered.
Ser. No. 75/347,223
3
similarities or dissimilarities between the goods.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
Turning first to the goods, applicant’s goods are,
essentially, a telecommunications system for amateur radio
operators to transmit and receive high frequency radio
transmissions, while the cited registration is for a radio
communication system for transmitting and receiving
compressed digital image data. Applicant has attempted to
distinguish the registrant’s goods from its own by pointing
to statements made by the registrant during the prosecution
of its own application with respect to the purchasers of
its products and the manner in which they are sold.
However, it is well-established that the 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 cited registration,
rather than what the evidence shows the goods and/or
services to be. See In re William Hodges & Co., Inc., 190
USPQ 47 (TTAB 1976); Canadian Imperial Bank of Commerce v.
Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed.
Cir. 1987).
Ser. No. 75/347,223
4
There is nothing inherent in the identification of the
cited registration which would require that the radio
communication system be sold only to the military, disaster
relief organizations, etc., as applicant argues. Nor is
there anything inherent in the identification that would
require the system to be sold only by a direct sales force.
Registrant’s radio system for transmitting and receiving
compressed digital images data is identified broadly so
that it could be used by anyone having the need to send and
receive pictures over radio links, including the amateur
radio operators who are the purchasers of applicant’s
goods. Absent contrary evidence, it is reasonable to
conclude that such systems could also be sold through
internet web sites and publications targeted to amateur
radio operators.
Moreover, there is a clear relationship between the
goods sold by applicant and the registrant beyond the fact
that both are telecommunications systems for transmitting
and receiving data using radio waves. The NEXIS articles
made of record by the Examining Attorney, and which
applicant confirms refer to its product, describe the
PACTOR system as enabling the transfer of data and e-mail
messages over radio, and as capable of transmitting color
graphics. Accordingly, there is an overlap or relatedness
Ser. No. 75/347,223
5
in the nature of the data which both applicant’s and the
registrant’s products transmit over radio waves, and an
overlap in the purpose of the products.
Despite the relatedness of the goods and similarity or
overlap in the consumers for the goods and the channels of
trade for their distribution, we find that confusion is not
likely to result because of the differences in the marks,
the sophistication of the purchasers and the care with
which the products are purchased.
The Examining Attorney is correct that the marks
differ only in the second letter, one being PICTOR and the
other PACTOR. However, because the mark PICTOR is used
with a system for transmitting and receiving digital image
data, the suggestiveness of PICTOR, and the phonetic and
visual similarity between the mark and the word “picture,”
will be readily apparent. As for the mark PACTOR, the
NEXIS articles show that the system is used to send data
packets, and that the term was derived because it is a
“Packet/Amtor hybrid.” (AMTOR is the name of an operating
mode.) The sophisticated consumers who are the purchasers
of applicant’s and the registrant’s goods are likely to
recognize either the derivation of the mark or, at the very
least, the connection between PACTOR and data packets.
Thus, the PAC portion of applicant’s mark has a connotative
Ser. No. 75/347,223
6
significance which causes the letter “A” in applicant’s
mark to be noted, and this in turn has an impact in terms
of the appearance and the pronunciation of the mark.
Accordingly, although applicant’s mark and the cited mark
differ only in a single vowel, that difference results in a
recognizable difference in the connotation, appearance and
pronunciation of the marks.
As applicant has asserted, and as the registrant
stated in its own application papers, the goods at issue
are not impulse purchases, but will be selected with care,
after deliberation. As a result, the differences in the
marks, although slight, will be recognized.
In reaching our decision that confusion is not likely,
we would point out that we have not been influenced by
applicant’s argument that it has a right to exclude others
from the use of its mark because it owns a German
registration and an International Registration. Neither of
these registrations gives applicant the right to exclude
others from using their marks in the United States.
Nor are we influenced by applicant’s assertion that
there have been no instances of actual confusion. Not only
do we not have access to the registrant’s experience on
this factor, but we have no evidence as to the extent of
either applicant’s or the registrant’s use of their
Ser. No. 75/347,223
7
respective marks in the United States from which we could
conclude that there has been an opportunity for confusion
to occur if such confusion were likely. In this
connection, we note that both applicant and the registrant
are foreign entities, and the registrant obtained its
registration pursuant to Section 44(e) of the Trademark
Act, and therefore did not have to show any use of the mark
in this country.
Decision: The refusal of registration is reversed.