Toshiba America, Inc.

Trademark Trial and Appeal Board

Feb 27, 2001

No. 75015839 (T.T.A.B. Feb. 27, 2001)

2/27/01
Paper No. 20
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Toshiba America, Inc.
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Serial No. 75/015,839
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Brian E. Banner of Banner & Witcoff, Ltd. for Toshiba
America, Inc.
Jessie W. Billings, Trademark Examining Attorney, Law
Office 134 (Michael Szoke, Managing Attorney).
Before Cissel, Hohein and Chapman, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On November 7, 1995, applicant filed the above-
referenced application to register the mark “ASPIRE CI” on
the Principal Register for “a bundle of software and
hardware options for CT scanners,” in Class 9. The
application was based on applicant’s assertion that it
possessed a bona fide intention to use the mark in
connection with these goods in commerce.
In her initial Office Action, the Examining Attorney
noted a prior-filed application that she warned might
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/015,839
2
present a bar to registration of applicant’s mark, and also
required a more definite identification-of-goods clause in
the application.
Applicant responded by amending the application to
identify the goods with which it intended to use the mark
as “computer hardware and software for use with medical CT
scanners.” Applicant also presented arguments on the issue
of likelihood confusion with the mark in the prior-filed
application the Examining Attorney had referenced in the
first Office Action.
The Examining Attorney then suspended action on the
instant application in view of the prior-filed application,
but on May 20, 1998, she resumed action on it and refused
registration under Section 2(d) of the Lanham Act in view
of the fact that the referenced application had matured
into Registration No. 2,124,703 on December 30, 1997.1 The
cited registration is for the mark “ASPIRE” for goods
identified as “computer, monitor, keyboard, printer,
scanner, and remote controller,” in Class 9.
Applicant responded to the refusal to register with
arguments that confusion with the registered mark would not
1 The registration issued to Acer America Corp. on the Principal
Register based on claims of first use and first use in commerce
on August 31, 1995.
Ser No. 75/015,839
3
be likely if applicant were to use the mark it seeks to
register in connection with the goods identified in the
application. Applicant conceded that the marks are
similar, but argued that confusion would not be likely
because registrant’s products are personal computers
designed for home use, whereas applicant’s computer
hardware and software is used by physicians and
radiologists on live patients in medical facilities such as
hospitals, clinics and medical offices with the applicant’s
medical CT scanners. Applicant argued that registrant’s
goods travel in a different trade channel than the goods
set forth in the application, that applicant’s goods are
expensive, complicated devices marketed to medical
specialists in radiology, and that the purchasing decisions
for its goods are made by sophisticated, knowledgeable
individuals only after careful consideration. Applicant
contrasted this situation to the personal computers it
argued registrant sells, which applicant asserted move only
in the trade channels for home computer products.
Applicant listed three registered trademarks in Class
9 which consist of or include the word “aspire.” Copies of
these registrations were included. Along with these
registrations, applicant submitted a corporate profile of
registrant obtained by applicant from the Internet and a
Ser No. 75/015,839
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copy of a press release from applicant which discusses
applicant’s “Aspire CI” scanners and imaging equipment and
mentions that these products are used by physicians who are
radiologists.
The Examining Attorney was not persuaded by
applicant’s arguments, and the refusal to register under
Section 2(d) the Act was continued and made final in the
next Office Action.
Applicant timely filed a Notice of Appeal, along with
an amendment and a request for reconsideration. The
amendment sought to change the identification-of-goods
clause in the application to “a multi—slice computer
tomography fluoroscope for continuous imaging of patients
as a diagnostic tool to an interventional procedure for
sale to hospitals and clinics and for use by physicians and
radiologist” (sic). Attached as exhibits to the request
for reconsideration were a copy of a medical press release
regarding applicant’s goods and an advertising brochure
describing the products to be sold by applicant under the
mark sought to be registered.
The Board instituted the appeal, but suspended action
on it and remanded the application to the Examining
Attorney for consideration of the request for
reconsideration and the proposed amendment to the
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identification-of-goods clause. The Examining Attorney
refused to accept the amendment on the ground that it
designates goods which are not within the scope of the
identification then set forth in the application, as
previously amended. The Examining Attorney pointed out
that fluoroscopes are not computer hardware or software,
and that an application may only be amended to clarify or
limit the goods, so that additional goods, not within the
scope of the existing identification-of-goods clause, are
not allowed. Applicant responded to the refusal to accept
its proposed amendment by proposing yet another
identification-of-goods clause: “computed tomography
software and hardware.” The Examining Attorney accepted
this amendment, but adhered to the final refusal to
register under Section 2(d) of the Lanham Act.
The Board resumed action on the appeal, and applicant
submitted its appeal brief, attached to which were
additional exhibits and a declaration from one of
applicant’s attorneys.
The Examining Attorney filed her appeal brief,
including an objection to the additional evidence submitted
with applicant’s brief on appeal. The Examining Attorney’s
objection is sustained. As she points out, the record in
an application should be complete prior to the filing of a
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Notice of Appeal. The Board may grant a request under
Trademark Rule 2.142(d) to allow additional evidence to be
submitted after that time, but applicant in the instant
case made no such request, nor does it appear that if a
request had been made, it would have been granted.
Applicant did not request an oral hearing before the
Board.
The sole issue presented by this appeal is whether
applicant’s mark, “ASPIRE CI,” if it were to be used in
connection with computed tomography software and hardware,
so resembles the registered mark “ASPIRE” for “computer,
monitor, keyboard, printer, scanner, and remote
controller,” that confusion would be likely. Based on
careful consideration of the record and arguments before
us, we find that the refusal to register is well taken.
Confusion is likely in this case because the broad
identification-of-goods clause in the cited registration
encompasses the goods identified in the application, and as
even applicant acknowledges the mark of applicant and the
mark in the cited registration are similar.
In the case of E. I. duPont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973), the predecessor to our
primary reviewing court set forth thirteen factors to be
considered in determining whether confusion is likely
Ser No. 75/015,839
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between two marks. In each case where this is the issue,
we must consider any factor which relates to the facts
before us. Chief among these factors are the similarity of
the marks, as to appearance, sound, meaning and commercial
impression, and the similarity of the goods. Any doubt as
to whether confusion is likely must be resolved in favor of
the registrant. Lone Star Manufacturing Co. v. Bill
Beasley, Inc., 498 F.2d 906,182 USPQ 368 (CCPA 1974).
In view of the close similarity of the marks at issue
in the case before us, the outcome of this appeal hinges on
the relationship between the goods. It is well settled
that in determining whether confusion is likely, we must
compare the goods as they are identified in the application
and registration, respectively, without restrictions or
limitations not reflected therein. Toys “R” Us, Inc., v.
Lamps R Us, 219 USPQ 340 (TTAB 1983). We must consider the
listed goods as encompassing all products of the type
described, and that they move in all of the normal channels
of trade for such products and are available to all
potential customers for such goods. In re Elbaum, 211 USPQ
639 (TTAB 1981).
As noted above, applicant’s goods are identified as
“computed tomography software and hardware.” The
registration identifies the goods with which the registered
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mark is used even more broadly as “computer, monitor,
keyboard, printer, scanner, and remote controller.”
Contrary to applicant’s assertion, we cannot consider
registrant’s products as limited to use in connection with
personal computers for home use by ordinary consumers.
Registrant’s computer products, as identified without
restriction or limitation, could be used by almost anyone
for almost anything, including use by radiologists in
connection with computed tomography. Applicant’s goods are
thus encompassed within the identification-of-goods clause
in the cited registration.
Applicant’s argument that confusion is not likely in
view of the three third-party registrations applicant
submitted is not persuasive. Such registrations are not
evidence that the marks shown therein are in use or that
the public is familiar with them. Moreover, even if it
were clear that the marks and goods in these registrations
are similar to those set forth in both the application and
the cited registration, the existence on the register of
confusingly similar marks would not assist applicant in
registering yet another mark which so resembles the cited
registered mark that confusion is likely. In re Total
Quality Group Inc., 51 USPQ2d 1474 (TTAB 1999). In this
regard, third-party registrations are of little value in
Ser No. 75/015,839
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determining whether confusion is likely. United Foods Inc.
v. J. R. Simplot Co., 4 USPQ2d 1172 (TTAB 1987).
We accordingly conclude that confusion is likely
because these marks are quite similar and the goods set
forth in the registration encompass the goods identified in
the application.
Decision: The refusal to register under Section 2(d)
of the Act is affirmed.
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