Swearingen Software, Inc.

Trademark Trial and Appeal Board

Feb 22, 2001

No. 75365334 (T.T.A.B. Feb. 22, 2001)

2/22/01
Hearing: Paper No. 019
October 17, 2000 EWH/cv
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Swearingen Software, Inc.
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Serial No. 75/365,334
_______
Al Harrison of Harrison & Egbert for Swearingen Software,
Inc.
Esther Borsuk, Trademark Examining Attorney, Law Office 113
(Meryl Hershkowitz, Managing Attorney).
_______
Before Hanak, Hohein and Bucher, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Swearingen Software, Inc. (applicant) seeks to
register RMS in typed drawing form for “computer programs
for radiology information systems, namely, software for
patient management, film tracking, scheduling,
transcription, inventory, quality control, standard
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/365,334
2
procedures, equipment maintenance, and personnel management
of X-ray departments of small-to-medium-sized healthcare
facilities including clinics and hospitals.” The
application was filed on September 30, 1997 with a claimed
first use date of June 1986.
Citing Section 2(d) of the Trademark Act, the
Examining Attorney has refused registration on the basis
that the applicant’s mark, has applied to applicant’s
goods, is likely to cause confusion with the identical mark
RMS, previously registered for ”computer programs in the
form of prerecorded magnetic tape and computer user’s
manuals sold as a unit.” Registration No. 1,315,475. This
registration issued on January 22, 1985 with a claimed
first use date of August 1980.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. An oral hearing was held on October
17, 2000 at which counsel for applicant was present.
However, neither the Examining Attorney nor any other
representative from the PTO was present at the hearing.
In any likelihood of confusion analysis, two key,
although by no means exclusive, considerations are the
similarities of the marks and the similarities of the goods
Ser No. 75/365,334
3
and/or services. Federated Foods, Inc. v. Fort Howard
Paper, Co. 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
Turning to a consideration of the marks, as noted
above, they are identical. However, RMS is often not an
arbitrary string of letters. We see this in a number of
third-party registrations that the applicant has made of
record. The initialism “rms” readily suggests “Root Mean
Square” to those who are knowledgeable about sine waves and
their mathematical application to audio inputs,1
electronics2 and television signals.3 In the context of
these particular goods, the designation generates the idea
of an attribute of the goods and hence must be viewed as
suggestive for such goods. Other third-party registrations
containing the RMS designation, like applicant’s suggestion
of radiology management systems, suggest other specialized
software applications like records management systems4 or
even restaurant management systems.5 Hence, inasmuch as a
number of third parties adopted the term RMS with different
suggestive connotations, users of computer software and
1 RMS and design for guitar amps and speakers (Reg. No.
1,697,398).
2 RMS and square root design for electronic controls (Reg. No.
1,405,569).
3 RMS for TV antennas (Reg. No. 870,387).
4 RECORDS MANAGEMENT SYSTEM/2000 RMS/2000 for software for
municipalities (Reg. No. 1,764,134).
5 RMS-TOUCH for restaurant software (Reg. No. 1,894,952).
Ser No. 75/365,334
4
high tech equipment will tend to view this initialism as a
relatively weak source identifier.
Turning to a consideration of the goods, registrant’s
goods, as previously noted, are broadly described as
“computer programs in the form of prerecorded magnetic tape
and computer user’s manuals sold as a unit.” This
identification of goods is broad enough to arguably
encompassed applicant’s computer programs for radiology
information systems.
However, our likelihood of confusion analysis does not
end here. Applicant has established through the
declaration of its president that applicant’s computer
programs, as described in its application, are inherently
expensive; are sold only to sophisticated purchasers
(hospitals and clinics); and are sold only after a
considerable amount of discussion and negotiation between
applicant and the purchaser. The Examining Attorney has in
no way challenged applicant’s evidence regarding the nature
of its goods, as described in its application, in terms of
cost; purchaser sophistication; and conditions of sale.
See Examining Attorney’s brief page 6.
Considering the cost of the goods as described in
applicant’s application, it is obvious that “confusion is
less likely where goods are expensive.” Magnaflux Corp. v.
Ser No. 75/365,334
5
Sonoflex Corp., 231 F.2d 669, 109 USPQ 313, 315 (CCPA
1956). See also Weiss Assocociates Inc. v. HRL Associates
Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1841 (Fed. Cir. 1990).
Considering next the fact that applicant’s goods, as
described in its application, are purchased only by
sophisticated purchasers, it should be noted that our
primarily reviewing Court has made it clear that purchaser
“sophistication is important and often dispositive because
sophisticated consumers may be expected to exercise greater
care.” Electronic Design & Sales v. Electronic Data
Systems, 954 F.2d 713, 21 USPQ2d 1388, 1392 (Fed. Cir.
1992).
Moreover, as for undisputed fact that applicant’s
goods, as described in its application, are purchased only
after significant discussion and negotiation, our primarily
reviewing Court has explicitly stated that this is yet
another fact in reducing the likelihood of confusion.
Electronic Design & Sales, 21 USPQ 2d at 1392.
Finally, applicant has established by means of the
declaration of its president that from the time applicant
first used its mark RMS in 1986 to the present “there have
been no incidences of there being any confusion between
[applicant’s] RMS product and any other product marketed
under a RMS trademark.” (Swearingen declaration paragraph
Ser No. 75/365,334
6
5). As previously noted, registrant has claimed that it
first used its mark in 1980. Thus, while we do not know
what registrant’s experience has been, the record shows
that applicant has encountered no instances of actual
confusion involving applicant’s highly specialized RMS
computer programs for radiology information systems and
registrant’s RMS pre-recorded computer programs. In
response, the Examining Attorney merely notes that proof of
actual confusion is not a prerequisite to a finding of
likelihood of confusion.
On this latter point, the Examining Attorney is
correct. However, the fact that during a time period of 14
years applicant has experienced no known instances of
actual confusion is some slight evidence in support of
finding that there is no likelihood of confusion. Cf. In
re General Motors Corp., 23 USPQ2d 1465, 1470-71 (TTAB
1992). However, we wish to emphasize that the facts
surrounding the absence of actual confusion in this case
are not nearly as dramatic as those that existed in General
Motors, and that we have accorded only very minimal weight
to this absence of actual confusion in determining whether
there exists a likelihood of confusion.
In sum, given the fact that the letters RMS are not
arbitrary but rather have various meanings as applied to a
Ser No. 75/365,334
7
variety of specialized computer programs and related goods,
and the fact that applicant’s computer programs, as
described in its application, are inherently expensive, are
purchased by sophisticated individuals and are purchased
only after extensive discussion and negotiation with the
manufacturer, we find there exists no likelihood of
confusion.
Decision: The refusal to register is reversed.