WRQ, Inc.v.Levin Grant and Associates, Inc.

Trademark Trial and Appeal Board

Jan 6, 2000

No. 91104535 (T.T.A.B. Jan. 6, 2000)

Paper No. 19
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JAN. 6, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
WRQ, Inc.
v.
Levin Grant and Associates, Inc.
_____
Opposition No. 104,535
to application Serial No. 74/672,254
filed on May 11, 1995
_____
Loren R. Dunn of Graham & James LLP/Riddell Williams PS
for WRQ, Inc.
Levin Grant and Associates, Inc., pro se.
______
Before Cissel, Seeherman and Wendel, Administrative
Trademark Judges.
Opinion by Wendel, Administrative Trademark Judge:
Levin Grant & Associates, Inc. filed an application to
register the mark PERSONAL REFLECTIONS for “computer
software for assisting the user in writing an autobiography
or biography” in Class 9 and “manuscripts and books for
Opposition No. 104,535
2
assisting the user in writing an autobiography or biography”
in Class 16.1
WRQ, Inc. filed an opposition to registration of the
mark for the Class 9 goods on the ground of likelihood of
confusion, under Section 2(d) of the Trademark Act. Opposer
alleges the use of the mark REFLECTION for software since
1985; the ownership of a family of REFLECTION marks for
networking and connectivity software and of federal
registrations for the same;2 the long-established and

1 Serial No. 74/672,254, filed May 11, 1995, based on an
assertion of a bona fide intention to use the mark in commerce.
2 The following registrations are listed for Class 9:
Registration No. 1,475,672, issued February 9, 1988, for the
mark REFLECTION for “computer programs for terminal emulation and
file transfer and instruction manuals therefor sold as a unit,”
Section 8& 15 affidavit filed and accepted;
Registration No. 1,698,819, issued July 7, 1992, for the mark
REFLECTION for “computer programs and instructional manuals sold
as a unit for use in the fields of communications, networks,
terminal emulation, programming, file transfer, printing and
business productivity,” Section 8 & 15 affidavit filed and
accepted.
Registration No. 1,688,349, issued May 19, 1992, for the mark
REFLECTION NETWORK SERIES for “computer programs and
instructional manuals sold as a unit; namely, network programs
for both personal computers and main-frame computers,” Section 8
& 15 affidavit filed and accepted. A disclaimer has been made of
the phrase NETWORK SERIES.
Registration No. 1,838,998, issued June 7, 1994, for the mark
REFLECTION TO GO for “computer programs and instructional manuals
sold as a unit for use in the fields of communications, networks,
terminal emulation, programming, file transfer, printing and
business productivity”; and
Registration No. 1,992,867, issued August 13, 1996, for the
mark REFLECTION COMPLETE for “computer programs and instructional
manuals sold as a unit for use in the fields of cellular
communications, intercomputer communications and communications
within and between computer networks with specific applications
featuring terminal emulation, computer programming, file
transfer, printing computer files to paper or digital files, and
cross-platform programming.”
Although listed as applications in the notice of opposition,
the following have since issued as registrations:
Opposition No. 104,535
3
outstanding reputation of opposer and its REFLECTION
software products; the use by individuals associated with
companies, organizations or government offices of opposer’s
software to connect personal computers, either at home, on
the road or in the office, to each other, and to various
networks, host computers and the Internet; and a likelihood
of confusion as to source if applicant’s PERSONAL
REFLECTIONS software were also used by these same
individuals on their personal computers.
Applicant, in its answer, denied the salient
allegations of the notice of opposition.
The Record
The record consists of the file of the involved
application and opposer’s trial testimony deposition, with
accompanying exhibits, of Shaun Wolfe, Director of Product
Marketing for opposer. Applicant took no testimony and made

Registration No. 2,051,391, issued April 8, 1997, for the
mark REFLECTION SELECTSUITE for “computer programs and
instructional manuals sold as a unit for use in the fields of
cellular communications, intercomputer communications and
communications within and between computer networks with specific
applications featuring terminal emulation, computer programming,
file transfer, printing computer files to paper or digital files,
and cross-platform programming,” and
Registration No. 2,095,859, issued September 9, 1997, for the
mark REFLECTION SUITE FOR THE ENTERPRISE for “computer programs
and instructional manuals sold as a unit for use in the fields of
cellular communications, intercomputer communications and
communications within and between computer networks with specific
applications featuring terminal emulation, computer programming,
file transfer, printing computer files to paper or digital files,
and cross-platform programming.” A disclaimer has been made of
the word ENTERPRISE.
Opposition No. 104,535
4
no evidence of record. Only opposer filed a brief and no
oral hearing was requested.
The testimony of Mr. Wolfe establishes that the
software produced by opposer under the REFLECTION mark and
related marks consists of connectivity products that enable
users of personal computers to connect with other systems,
particularly mainframe computers, server systems, HP mid-
range computers and the like. The software resides in the
personal computer and thus could be part of computers used
for personal or home use as well as office use. Mr. Wolfe
testified that, although opposer’s software is for business
use, because it connects to mainframes, individuals within
an organization often use the products to connect their home
PCs into the corporate network as well.
Approximately 60% of opposer’s software products are
sold domestically through opposer’s direct sales force, with
the remaining 40% going through traditional business
software channels, which include, in part, VAR (value added
reseller) channels and corporate resellers that service
large accounts. Opposer also markets through the Internet
and such marketing is expanding.
Opposer sells about a million units of REFLECTION
products a year and estimates that there are three and a
half to four million users of its products. While Mr. Wolfe
testified to the extent of opposer’s worldwide advertising
Opposition No. 104,535
5
expenses for its REFLECTION products, no figures were made
of record with respect to these expenses in the United
States, the only figures which would be relevant here. Mr.
Wolfe did introduce copies of a collection of reprints or
photocopies of trade journal articles about the REFLECTION
products, illustrating both publicity for such products and
the high independent ratings and the magazine awards which
have been obtained by them. (Exhibit 8). Mr. Wolfe also
testified that opposer had policed its mark against
infringements.
Status and title copies of opposer’s registrations for
its REFLECTION marks have been made of record (Exhibit 7),3
as well as samples of opposer’s packaging for various
REFLECTION products and of packaging used by applicant.
(Exhibits 2-6 and 9).
The Opposition
Priority is not an issue here in view of opposer’s
submission of status and title copies of its pleaded
registrations proving ownership of valid and subsisting
registrations for the marks REFLECTION, REFLECTION COMPLETE,
REFLECTION NETWORK SERIES, REFLECTION SELECTSUITE,

3 In addition to certified status and title copies of the pleaded
registrations, opposer introduced certified copies of four
pending applications filed under Section 1(b). Inasmuch as these
applications are evidence of nothing more than an assertion by
applicant of an intention to use the marks in the future, we have
given no consideration to these applications or the marks sought
to be registered therein.
Opposition No. 104,535
6
REFLECTION SUITE FOR THE ENTERPRISE and REFLECTION TO GO.
King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108 (CCPA 1974).
Thus, we turn to the issue of likelihood of confusion,
considering all factors which are relevant to the
circumstances at hand. See In re E.I. duPont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
With respect to the factor of the similarity or
dissimilarity of the marks, opposer argues that applicant’s
mark PERSONAL REFLECTIONS is very similar in appearance and
sound to opposer’s REFLECTION marks. Opposer further
contends that the term PERSONAL carries the connotation of
being a product for use on personal computers, a connotation
which would be applicable to opposer’s products, as well as
applicant’s. In addition, opposer stresses that Internet
search engines would not distinguish between fore-name or
post-name additions to the term “reflection” and thus
applicant’s mark and opposer’s marks would both be pulled up
in any search under “reflection.”
Before reaching these arguments, we find it necessary
to consider opposer’s allegations of ownership of a family
of REFLECTION marks. It is well established that ownership
of a number of marks sharing a common feature (or ownership
of registrations therefor) is insufficient to establish a
claim of ownership of a “family” characterized by the
Opposition No. 104,535
7
feature. There must be evidence showing that prior to first
use by the other party, the marks were used and promoted in
such a manner as to create among purchasers an association
of common ownership based on the “family” characteristic.
See Hester Industries Inc. v. Tyson Foods Inc., 2 USPQ2d
1646 (TTAB 1987) and the cases cited therein. Opposer here
has introduced no evidence of any promotion of a family of
REFLECTION marks, such as by advertisements in which various
REFLECTION marks are promoted together. All opposer has
shown is that it owns registrations for various REFLECTION
marks for related software products. This ownership of
registrations cannot be equated with ownership of a “family”
of marks, such that purchasers would be apt to associate any
mark containing the term REFLECTION used in connection with
a software product with opposer.
Thus, we must consider the issue of likelihood of
confusion with respect to each of opposer’s pleaded
registrations. Looking to the specific marks, we
immediately note not only the obvious differences in
appearance and sound between opposer’s various REFLECTION
marks and applicant’s mark PERSONAL REFLECTIONS, but also
the differences in format and connotation. All of opposer’s
marks are either REFLECTION alone or REFLECTION followed by
other terms, which are either descriptive or highly
suggestive of features of the products with which they are
Opposition No. 104,535
8
being used. By contrast, in applicant’s mark the term
PERSONAL precedes the word REFLECTIONS and the mark as a
whole has a directly related connotation to applicant’s
goods, namely, software for assisting a person in writing an
autobiography or biography. Opposer argues that PERSONAL
suggests use of the program on a personal computer, and thus
applicant’s mark would be equally applicable to opposer’s
software. We find, however, that the entire phrase PERSONAL
REFLECTIONS, when used in connection with applicant’s
software, has the much more specific connotation of the
personal thoughts of one writing an autobiography or
biography.
Whether or not an Internet search engine would retrieve
both marks with the entry of the word “reflection,” as
opposer asserts, is clearly not indicative of a similarity
in commercial impressions of the two marks. Even if both
marks would be retrieved, that would be evidence only that
both marks contain the term “reflection.”
Opposer further argues that applicant’s trade dress is
quite similar to opposer’s trade dress, referring
specifically to Exhibits 5 and 9, samples of opposer’s and
applicant’s packaging, respectively. As our primary
reviewing court has stated, trade dress, although normally
not even considered for a word mark, may provide evidence of
whether the marks project similar commercial impressions.
Opposition No. 104,535
9
See Specialty Brands Inc. v. Coffee Bean Distributors Inc.,
748 F.2d 669, 223 USPQ 1282 (Fed. Cir. 1984). Looking at
Exhibits 5 and 9, we agree that the trade dress for both
products includes a monochromatic background and that the
packaging of at least one product of opposer and of
applicant includes cloud imagery. However, the color of
each party’s monochromatic background is different.
Further, applicant’s cloud imagery also contains facial
features which directly tie in with the connotation of
PERSONAL REFLECTIONS, whereas there is no such correlation
between opposer’s trade dress and its REFLECTION marks.
Opposer’s trade dress contains many additional items. Thus,
there are several distinct features in the trade dress of
each.
This is a far cry from the situation in Kenner Parker
Toys Inc. v. Rose Art Industries, Inc., 953 F.2d 350, 22
USPQ2d 1453 (Fed. Cir. 1992), where the Court pointed to the
“multitude of similarities” in trade dress of the two
parties as an enhancement of the “inherently similar
commercial impressions.” Instead, we find the overall
commercial impressions created by the present marks to be
readily distinguishable, even if consideration is given to
the trade dress being used by each party.
We turn next to the similarity or dissimilarity of the
goods involved. While the goods need not be identical or
Opposition No. 104,535
10
even competitive in order for confusion to be likely, there
must be a viable relationship between the goods and/or the
circumstances surrounding their marketing must be such that
they are likely to be encountered by the same persons who,
because of the similarity of the marks used thereon, might
assume that they originate from, or are in some way
associated with, the same source. Devries v. NCC Corp., 227
USPQ 705 (TTAB 1985). Given the ubiquitous use and myriad
producers of computer software, the fact that both parties’
products are computer software is not sufficient, in and of
itself, to establish a relationship between the goods. See
Electronic Data Systems Corp. v. EDSA Micro Corp., 23 USPQ2d
1460, 1463 (TTAB 1992).
Opposer’s only argument with respect to the similarity
of the parties’ goods is that both are software programs
designed for use on personal computers. This same can be
said of a myriad of software programs designed for totally
different purposes. Opposer has failed to establish any
viable relationship between its business-oriented
connectivity software, which is used for purposes of
intercomputer communications, communications within and
between computer networks or linking a personal computer to
a mainframe or other systems in a corporate network, and
applicant’s software, which is a program designed for
personal use in the writing of an autobiography or
Opposition No. 104,535
11
biography. The fact that the software of both may end up on
the same personal computer is clearly not sufficient reason
for users to associate the two distinctly different programs
with the same source.
Opposer’s further argument that the goods of both are
likely to be sold through similar trade channels, such as
software “storefront outlets” and over the Internet, is
equally unpersuasive. In the first place, Mr. Wolfe
testified that opposer’s products presently are sold
predominately through direct contact by sales
representatives with businesses or through other business
software channels. These are not the typical software
outlets that are frequented by purchasers of software for
personal use. It is true, however, that opposer’s
registrations do not limit the channels of trade to business
outlets, and thus we must consider all the normal channels
of trade for products of this nature. See Canadian Imperial
Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed.
Cir. 1987). Nonetheless, even if opposer’s software
products were marketed in the same “storefront outlets”
offering applicant’s product, opposer’s products are for
business use and the purchasers would accordingly be
business oriented. Applicant’s product is for personal use
and its purchasers would be so limited. Although both
opposer’s software products and applicant’s product could be
Opposition No. 104,535
12
offered on the vast Internet market, once again the
potential purchasers for the respective products would not
be the same, and as a result might not even encounter the
goods of the other party.
Finally, opposer argues that its marks are famous and
its products have wide-spread market recognition. Mr. Wolfe
has testified to the absence of any third-party use of the
term “reflection” in marks for software products. The sales
figures and number of users of opposer’s software products
sold under its various REFLECTION marks are not
insubstantial.
Nonetheless, we find the circumstances here similar to
those in Electronic Data Systems Corp. v. EDSA Micro Corp.,
supra. While opposer’s REFLECTION marks may be well
recognized in opposer’s particular area of business-oriented
connectivity software, this recognition cannot be held to
entitle opposer to such an expanded scope of protection for
its marks as to encompass all software products. Opposer
has failed to establish any relationship between the goods
involved here other than the fact that the software products
may both be used on personal computers. We have no reason
for extending the scope of protection for opposer’s marks to
bar registration by applicant of its PERSONAL REFLECTIONS
mark for its totally distinct software.
Opposition No. 104,535
13
Accordingly, we find that, upon considering all the
relevant du Pont factors, opposer has failed to prove its
case. In particular, because of the differences in
commercial impressions between opposer’s REFLECTION marks
and applicant’s PERSONAL REFLECTIONS mark and because of the
absence of a viable relationship between the parties’
software products, we find no likelihood of confusion.
Decision: The opposition is dismissed.
R. F. Cissel
E. J. Seeherman
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board
Opposition No. 104,535
14
Opposition No. 104,535
15