Triada, Ltd.

Trademark Trial and Appeal Board

Dec 19, 2000

No. 75408277 (T.T.A.B. Dec. 19, 2000)

12/19/00
Paper No. 11
DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Triada, Ltd.
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Serial No. 75/408,277
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John G. Posa and Allen M. Krass of Gifford Krass Groh Sprinkle
Anderson & Citkowski for Triada, Ltd.
Michael W. Baird, Trademark Examining Attorney, Law Office 109
(Ronald R. Sussman, Managing Attorney).
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Before Hohein, Bucher and Bottorff, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Triada, Ltd. has filed an intent-to-use application seeking
registration on the Principal Register of the mark depicted
below:
for goods identified in the application as “computer software
for use in data management in the fields of information analysis
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/408,277
2
and interpretation; and computer hardware for use in information
analysis and interpretation” in International Class 9.1
The Trademark Examining Attorney has refused registration
under Trademark Act Section 2(d), 15 U.S.C. §1052(d), citing a
registration for the mark “ATHENA” for “computer programs, and
instruction manuals sold therewith, which collectively provide a
set of integrated network services; namely, user authentication,
file service, name service, messaging service, mail service,
network management service, and print service,” also in
International Class 9.2
When the refusal was made final, applicant filed this
appeal. Applicant and the Trademark Examining Attorney have
filed main briefs, and applicant has filed a reply brief. No
oral hearing was requested.
We affirm the refusal to register.
Our determination under Section 2(d) is based upon an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood of
confusion. See In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 1362, 177 USPQ 563, 567-68 (CCPA 1973). Upon careful
consideration of the evidence of record pertaining to these
factors, we find as follows.
1 Serial No. 75/408,277 was filed December 19, 1997.
Serial No. 75/408,277
3
Applicant’s mark consists of the word “ATHENA,” directly
above the phrase “GUIDING THE ANALYST TO WISDOM.” The design
portion of the mark is a woman’s head connected to the first
letter “A” in the word Athena by a sweeping arc. Although
applicant argues that its proposed mark is “dramatically
different” from the mark in the cited registration, we agree
with the Trademark Examining Attorney that these two marks have
the same connotation, and hence create the same overall
commercial impression in the minds of consumers.
Applicant argues correctly that its mark has five
additional words not found in registrant’s mark – “GUIDING THE
ANALYST TO WISDOM.” However, as the Trademark Examining
Attorney contends, these words are displayed in much smaller
lettering than the prominent lettering of the word “ATHENA.”
The entire phrase of five words appears, in a subordinate
manner, under T-H-E-N-A – the last five letters of the word
“ATHENA.” Furthermore, we note that rather than distinguishing
the marks, this additional wording in applicant's mark merely
reinforces for the analyst/purchaser the commonly understood
significance of “Athena,” the Greek goddess of wisdom.
Similarly, in the context of this composite mark,
applicant’s design element is not an arbitrary design feature.
2 Reg. No. 1,789,164 issued on August 24, 1993; combined Section 8
and 15 affidavit accepted and acknowledged.
Serial No. 75/408,277
4
Rather, the classical pose of the woman’s head would be seen by
many consumers as representing the goddess Athena, once again
reinforcing pictorially the common impression of applicant’s
composite mark as connoting “ATHENA” – the totality of
registrant’s mark.
Turning to the goods, we note that applicant’s computer
hardware and software are designed for use in data management
and information analysis. Registrant’s software, by contrast,
integrates essential services provided on computer networks.
These goods are not competitive, but the question is whether
these respective computer products are related in a way that
purchasers and prospective purchasers would mistakenly believe
that they came from a common source. To support his contention
that this question should be answered in the affirmative, the
Trademark Examining Attorney has submitted for the record a
variety of types of evidence of a source-relationship between
these two specific computer products.
The Trademark Examining Attorney has placed into the record
a representative sample of sixteen registrations where third-
party registrants, in each instance, claim use of the same mark
on computer software dealing with “networking” as well as
software programs designed for “data management / data analysis
/ information analysis.” Furthermore, the file contains copies
of brochures, catalogues, Web pages and a classified directory
Serial No. 75/408,277
5
showing networking software and data base programs on the same
page, or even within a single frame of an advertisement where
both products are marketed under the same house mark.
Consequently, on a system of networked computers, it appears
likely that these respective products could well be used
together.
Hence, in spite of the fact that these marks have some
difference in sound and appearance, given that the marks
generate the same connotations, leading on balance to the same
overall commercial impression, and because these are related
goods that move through the same channels of trade to the same
class of purchasers, we agree with the Trademark Examining
Attorney that confusion is likely.
Decision: The refusal to register is affirmed.