SRC Computers, Inc.

Trademark Trial and Appeal Board

Jan 25, 2001

No. 75519930 (T.T.A.B. Jan. 25, 2001)

1/25/01
Paper No. 12
HWR
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re SRC Computers, Inc.
________
Serial Nos. 75/519,930; 75/520,150;
and 75/520,151
_____
Wendy J. Pifher of Holland & Hart L.L.P. for
SRC Computers, Inc.
Christine M. Baker, Trademark Examining Attorney, Law
Office 106 (Mary I. Sparrow, Managing Attorney).
_____
Before Chapman, Wendel and Bottorff, Administrative
Trademark Judges.
Opinion by Wendel, Administrative Trademark Judge:
SRC Computers, Inc. has filed applications to register
the mark SRC COMPUTERS1 and the two SRC and design marks
shown below, all three for “custom manufacturing of
computers for others” in Class 40 and “design of computers
for others” in Class 42.
1 Serial No. 75/519,930, filed July 16, 1998, claiming a first
use date of August 28, 1996 and a first use in commerce date of
November 1996 for both classes. A disclaimer has been made of
the word COMPUTERS.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. Nos. 75/519,930; 75/520,150 and 75/520,151
2
Serial No. 75/520,1502 Serial No. 520,1513
Registration has been finally refused in each
application under Section 2(d) on the ground of likelihood
of confusion with the mark SRC DIRECT,4 which is registered
for “supplies volume purchasing services, namely, telephone
order and mail order services in the field of office and
business equipment, machines, computers, printers,
accessories and supplies used therewith” in Class 42.5
The refusals have been appealed and applicant and the
Examining Attorney have filed briefs in each application.
No oral hearing was requested. In view of the common
questions of law and fact which are involved herein, we
find it in the interests of judicial economy to consolidate
2 Serial No. 75/520,150, also filed July 16, 1998, claiming the
same first use dates.
3 Serial No. 75/520,151, also filed July 16, 1998, claiming the
same first use dates. The statement has been entered that the
mark is lined for the color red.
4 Registration No. 1,901,707, issued June 27, 1995, setting forth
first use dates of March 15, 1994. A disclaimer has been made of
the term DIRECT.
5 The mark is also registered for “catalogues featuring office
and business equipment, machines, computers, printers and
accessories and supplies used therewith” in Class 16. The
Examining Attorney has stated in her brief, however, that the
refusal is based only on the Class 42 services.
Ser. Nos. 75/519,930; 75/520,150 and 75/520,151
3
the cases for purposes of final decision. Thus, we have
issued this single opinion.
We make our determination of likelihood of confusion
on the basis of those of the du Pont6 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 USPQ 1209 (TTAB
1999).
Considering first the marks involved here, we are
guided by the well established principle that although the
marks must be considered in their entireties, there is
nothing improper, in 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). Thus, despite applicant’s arguments that
when the marks are properly viewed in their entireties, the
visual and phonetic differences will be readily apparent,
we need not necessarily give equal weight to those portions
6 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Ser. Nos. 75/519,930; 75/520,150 and 75/520,151
4
of the marks which create these visual and phonetic
differences. Here all of the marks contain the same three
letters “S” “R” and “C” in the same seemingly arbitrary
arrangement or series.7 The remainder of each mark of
applicant’s marks consist either of the generic term
(COMPUTERS) or a triangle design (in black or red), and the
remainder of registrant’s mark consists of the descriptive
term DIRECT.
Although it is acknowledged that descriptive or
disclaimed matter cannot be ignored in comparing the marks,
it is also a fact that consumers are more likely to rely on
the non-descriptive portion of a mark as an indication of
source. See Hilson Research Inc. v. Society for Human
Resource Management, 27 USPQ2d 1423 (TTAB 1993). The term
COMPUTERS in applicant’s mark is simply the generic term
for the products involved and would have no role in
indicating the particular source of these products. The
descriptive word DIRECT in registrant’s mark is similarly
7 While both applicant and the Examining Attorney refer to this
series of letters as an “acronym,” we find this a misnomer. An
“acronym” as defined is “a word formed from the initial letters
or groups of letters in a set phrase or series of words,” not the
initials of the name of a person or a company. See Random House
Dictionary of the English Language (2nd Ed. 1987). Applicant’s
SRC mark is said to be derived from the initials of its founder,
Seymour R. Cray, whereas registrant’s mark is perhps derived from
its company name, Standard Register Company. Neither of these
origins are likely to be recognized by potential purchasers, upon
viewing the marks per se.
Ser. Nos. 75/519,930; 75/520,150 and 75/520,151
5
without significance as the indicator of a single source.
Applicant itself has pointed out that the term is
frequently used to identify a method of obtaining goods and
is “routinely” used in connection with mail order or volume
purchasing. Thus, it is the arbitrary series of letters
SRC which dominates both the mark SRC COMPUTERS and the
mark SRC DIRECT and which would be the portion looked to by
purchasers as the indication of origin.
In like fashion, it is the word portion of a mark,
rather than the design feature, unless particularly
distinctive, that is more likely to be remembered and
relied upon by purchasers in referring to the goods or
services, and thus it is the word portion that will be
accorded more weight. See Ceccato v. Manifattura Lane
Gaetano Marzotto & Figli S.p.A., 32 USPQ2d 1192 (TTAB
1994). Despite applicant’s arguments as to the
distinguishing features of the “highly stylized graphic
elements” of its SRC and design marks, we find the
triangles used therein to be no more than commonplace
background designs with little trademark significance.
Once again, it is the letter series SRC that dominates the
marks. The situation here is not the same as the use of a
common word in two marks, although applicant attempts to
draw such a parallel. Instead, we have the use of the
Ser. Nos. 75/519,930; 75/520,150 and 75/520,151
6
identical letter series, with the additional matter in the
marks being such that it can be accorded little weight in
comparing the marks as a whole.
Accordingly, we find the overall commercial
impressions created by registrant’s SRC DIRECT mark and
applicant’s SRC COMPUTERS and SRC and design marks to be
highly similar. In fact, in view of the minimal trademark
significance which may be attached to either the words
DIRECT or COMPUTERS or to the design features of
applicant’s other marks, we find the commercial impressions
virtually the same. See In re Dixie Restaurants Inc., 41
USPQ2d 1531 (Fed. Cir. 1997)(neither background design
element nor generic term in applicant’s mark THE DELTA CAFÉ
and design sufficient to create different commercial
impression from registered mark DELTA). The dominant
portion of each mark is SRC, which is obviously identical
in terms of appearance and sound in each mark. Moreover,
as previously discussed, there is no meaning of the letters
which purchasers would readily attach to the marks, so as
to distinguish between applicant’s and registrant’s uses of
the series SRC. See Alberto–Culver Co. v. F.D.C. Wholesale
Corp., 16 USPQ2d 1597 (TTAB 1990)(neither party’s
combination of letters shown to have any special meaning to
purchasers aside from trademark significance).
Ser. Nos. 75/519,930; 75/520,150 and 75/520,151
7
While applicant raises the factor of use of similar
marks by others for similar services by its argument that
there has been frequent use of the series SRC in third-
party marks, applicant has provided little evidence to
support this contention. In the first place, the four
third-party registrations in Appendix 1 of applicant’s
brief8 are not evidence of actual use of the marks shown
therein or of familiarity of the public with the marks,
and, thus, they can be given little or no weight in
determining the strength of a mark. See Olde Tyme Foods
Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed.
Cir. 1992). Furthermore, of the four registrations two
are for marks used with totally unrelated goods and
services and the other two are for very specific types of
software. None relates to the use of similar marks in
connection with computer design, manufacture or sale.
Thus, we go forward with our analysis on the basis
that registrant’s mark SRC DIRECT is not a weak mark but
rather is entitled to the full scope of protection and that
applicant’s SRC marks (either SRC COMPUTERS or SRC and
design) create commercial impressions virtually identical
8 We note that the Board has previously held that Appendix 1 will
be considered as part of the record, although Appendix 2 will
not. Thus, only Appendix 1 has been taken into consideration in
making our decision.
Ser. Nos. 75/519,930; 75/520,150 and 75/520,151
8
to registrant’s mark. This high degree of similarity
brings into play the recognized standard that the greater
the degree of similarity in the marks, the lesser the
degree of similarity that is required between the services
on which the marks are being used to support a likelihood
of confusion. If the marks are the same or almost the
same, as is the case here, there need only be a viable
relationship between the services in order to support a
holding of likelihood of confusion. See In re Concordia
International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
Turning to the respective services, we note that the
most relevant services of registrant are its telephone and
mail order sales in the field of computers.9 Applicant’s
services are the custom manufacturing and design of
computers for others. Although applicant contends that its
“specialized” services in fact entail the development of
high performance “supercomputers” for use by skilled
professionals within the scientific, governmental and
educational communities, these qualifications are not
reflected in its services as identified in the
applications. Thus, any limitations of this nature are not
9 Although the services as identified in the registration are
prefaced with the phrase “supplies volume purchasing services,”
we interpret this as an indication of sales on a volume scale,
and not of a purchasing service per se.
Ser. Nos. 75/519,930; 75/520,150 and 75/520,151
9
to be considered, since we must make our comparison for
purposes of determining likelihood of confusion on the
basis of the services as identified in the applications and
the cited registration. See Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813
(Fed. Cir. 1987).
As such, we find that the custom design and
manufacture services being offered by applicant might
reasonably be associated by purchasers with the computer
sales of registrant and be assumed to originate from a
common source. Contrary to applicant’s contentions, we
find no basis for assuming that registrant’s computers are
manufactured by third parties and simply distributed by
registrant. Instead, in view of the identification of the
products being sold as “computers,” we must construe
registrant’s sales to include those of computers
manufactured and designed by registrant itself. Under
these circumstances, if purchasers familiar with
registrant’s computer sales were to encounter applicant’s
SRC marks being used in connection with the design and
custom manufacture of computers, we find it highly likely
for these purchasers to assume a close association between
the sources of, or common origin for, the two services.
Purchasers might well believe that applicant is a branch or
Ser. Nos. 75/519,930; 75/520,150 and 75/520,151
10
division of registrant which will custom design and
manufacture computers to the particular needs of a
purchaser, thus covering those situations in which the pre-
designed computers sold by registrant under its SRC mark
will not suffice.10
Despite applicant’s contentions otherwise, there is a
much closer relationship here than the mere fact that the
services involve computers. We are not applying a per se
rule, which, in any event, has long since been rejected by
the Board,11 but rather find a viable relationship to exist
between registrant’s computer sales and the design and
custom manufacture services of applicant. Not only do
applicant’s services ultimately also entail the sale of
computers, but there is ample reason for purchasers to
associate applicant’s design and custom manufacturing
services with the selling of computers, even if not custom
designed, by registrant.
Applicant further argues that the channels of trade
are unrelated, asserting that registrant’s computer sales
10 While the Examining Attorney has advanced the argument that
custom design and manufacture services would lie within
registrant’s own “natural zone of expansion” under the services
recited in the registration, we find no need to explore this
theory. We would simply note that no evidence has been made of
record by the Examining Attorney which would allow us to draw any
conclusions on this basis.
11 See Viacom International Inc. v. Komm, 46 USPQ2d 1233, 1238
(TTAB 1998) and the cases cited therein.
Ser. Nos. 75/519,930; 75/520,150 and 75/520,151
11
are targeted to general consumers of commodity office
equipment whereas applicant’s services are engaged only by
means of individual bid proposals submitted to an exclusive
segment of consumers within the scientific, governmental
and educational communities. The problem with this
argument, however, is that there are no restrictions in the
applications as to channels of trade or type of purchasers.
Thus, we must assume that the services of applicant are
offered through all the normal channels of trade for custom
design and manufacture of computers. See Kangol Ltd. v.
KangaROOS U.S.A., 974 F2d. 161, 23 USPQ2d 1945 (Fed. Cir.
1992). As such, we can draw no distinction between the
channels of trade for the services of applicant and of
registrant; both might be offered to general purchasers of
computers for office purposes or the like.
Similarly, we cannot distinguish between the types of
purchasers for the respective services. While applicant
may argue that its custom services are very expensive and
are tailored to meet the needs of a sophisticated audience
of technical professionals, the recitation of services does
not reflect any such level of sophistication or expertise.
There is no basis upon which to presume that the services
of applicant would be purchased with any greater degree of
care, or by any more sophisticated purchasers than those of
Ser. Nos. 75/519,930; 75/520,150 and 75/520,151
12
registrant. Instead, we must assume that the same
purchasers may well encounter the SRC marks of both
applicant and registrant being used in connection with
services involving the sale of computers, whether custom
designed to the particular needs of the purchaser or mass
produced.
Applicant has also raised the issue of lack of actual
confusion, despite the marks’ coexistence on the market for
nearly four years. This factor can be given little weight,
however, because registrant has not had the opportunity to
be heard from on this point. See In re National Novice
Hockey League, Inc., 222 USPQ 638 (TTAB 1984). In
addition, as has often been stated, the test under Section
2(d) is likelihood of confusion, not actual confusion. See
Weiss Associates, Inc., v. HRL Associates, Inc., 902 F.2d
1546, 14 USPQ2d 1840 (Fed. Cir. 1990).
Accordingly, balancing all of the relevant du Pont
factors and giving each the appropriate weight, we find
confusion likely. 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).
Ser. Nos. 75/519,930; 75/520,150 and 75/520,151
13
Decision: The refusal to register under Section 2(d)
is affirmed in each application.