Zarak Systems Corp.

Trademark Trial and Appeal Board

Dec 19, 2001

No. 75843132 (T.T.A.B. Dec. 19, 2001)

12/19/01 Paper No. 8
BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Zarak Systems Corporation
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Serial No. 75/843,132
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Lucy B. Arant of Russ, August, Kabat & Kent for Zarak
Systems Corporation.

Amy L. Hermansen, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Acting Managing Attorney).
_______

Before Hairston, Walters and Chapman, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:
On November 8, 1999, Zarak Systems Corporation filed
an intent-to-use application to register on the Principal
Register the mark ABACUS for the following goods:
“computer hardware and software for testing communications
systems and equipment by generating and switching telephone
traffic” in International Class 9.1 Subsequently, applicant
filed an Amendment to Allege Use, with claimed dates of

1 In its brief on appeal applicant proposed an amendment to its
identification of goods whereby the wording after “systems” would
be deleted. The Examining Attorney denied the proposed amendment
because it broadens the scope of the identification of goods in
violation of Trademark Rule 2.71(a).
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/843132
2
first use and first use in commerce of 1995, which was
accepted by the Examining Attorney.
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when used on its identified
goods, so resembles the registered mark ABACUS for
“computer software for automatic call distribution
management” in International Class 9,2 as to be likely to
cause confusion, mistake or deception.
Applicant has appealed, and briefs have been filed,
but applicant did not request an oral hearing.
We affirm the refusal to register. In reaching this
conclusion, we have followed the guidance of the Court in
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973).
The marks are identical. This fact “weighs heavily
against applicant.” In re Martin’s Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
“The greater the similarity in the marks, the lesser the
similarity required in the goods or services of the parties
to support a finding of likelihood of confusion.” 3 J.

2 Registration No. 2,242,546, issued May 4, 1999 to NEC
Corporation.
Ser. No. 75/843132
3
McCarthy, McCarthy on Trademarks and Unfair Competition,
§23:20.1 (4th ed. 2000).
We turn to a consideration of the goods in the cited
registration and applicant’s goods. Applicant’s position
is that its goods (“computer hardware and software for
testing communications systems and equipment by generating
and switching telephone traffic”) and the registrant’s
goods (“computer software for automatic call distribution
management”) are dissimilar because applicant makes “a
testing communication system” to test the computer
equipment that generates and switches telephone traffic,
while registrant’s identified computer software is an entry
level management information system for users of small
departmental call centers.
Applicant also contends that its product costs
thousands of dollars and is purchased by producers of
computer software (such as registrant), through applicant’s
direct sales force or exclusive distributors.
The Examining Attorney points out that even though
applicant argues that “Applicant’s product does not
generate and switch telephone traffic” (brief, p. 2), in
the information sheet about applicant (submitted by
applicant on October 10, 2000) the following statement
appears: “Abacus is a modular and expandable test system
Ser. No. 75/843132
4
that creates telephone traffic (bulk call generator) or
switches telephone traffic (central office emulator).”
Further, the Examining Attorney argues that the parties’
goods are closely related because applicant’s software may
be used in connection with registrant’s software; that
registrant’s software for “automatic call distribution
management” “most likely includes switching telephone
traffic as part of its distribution function” (brief, p.
4); and that the term “management” in registrant’s
identification of goods is very broad and could encompass a
testing function. In support of her position, the
Examining Attorney submitted dictionary definitions of the
words “switching” and “distribution.”
It is, of course, well settled that goods or services
need not be identical or even competitive in order to
support a finding of likelihood of confusion. Rather, it
is sufficient that the goods or services are related in
some manner or that the circumstances surrounding their
marketing are such that they would be likely to be
encountered by the same persons in situations that would
give rise, because of the marks used thereon, to a mistaken
belief that they originate from or are in some way
associated with the same producer or that there is an
association between the producers of the goods or services.
Ser. No. 75/843132
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See In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); and
In re International Telephone & Telegraph Corp., 197 USPQ
910 (TTAB 1978).
Also, it has been repeatedly held that, when
evaluating the issue of likelihood of confusion in Board
proceedings regarding the registrability of marks, the
Board is constrained to compare the goods and/or services
as identified in the application with the goods and/or
services as identified in the registration. See Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1990); and Canadian Imperial
Bank of Commerce, National Association v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
In this case, we agree with the Examining Attorney
that applicant’s goods are closely related to registrant’s
goods, as identified. Both parties provide computer
software relating to telephone traffic. Applicant’s
computer hardware and software clearly relates to testing
communications systems by generating and switching
telephone traffic, and the previously registered mark is
for automatic call distribution. Applicant acknowledges
that registrant might utilize applicant’s testing system
for registrant’s software. Applicant’s argument that
registrant’s computer software is actually an entry level
Ser. No. 75/843132
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management information system specifically for users of
small departmental call centers is not persuasive because
registrant’s identification of goods is not so limited.
Moreover, the identifications of goods are not
restricted as to the channels of trade and/or the intended
purchasers. Because neither party’s identification
restricts the trade channels or purchasers, the Board must
consider that the parties’ respective goods could be
offered and sold to the same classes of purchasers through
all normal channels of trade. See Canadian Imperial Bank
v. Wells Fargo Bank, supra; In re Smith and Mehaffey, 31
USPQ2d 1531 (TTAB 1994); and In re Elbaum, 211 USPQ 639
(TTAB 1981).
Even assuming that purchasers of applicant’s computer
hardware and software are sophisticated and its products
are expensive, when the identical mark is used on closely
related goods, the relevant purchasers are likely to be
confused as to the source of the goods, despite the care
taken. Purchasers may believe that registrant is now
providing a testing system for its computer software for
automatic call distribution management.
According to applicant, there have been no instances
of actual confusion in six years of coexistence of
applicant’s mark and the mark in the cited registration.
Ser. No. 75/843132
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However, there is no evidence of applicant’s and
registrant’s geographic areas of sales, or the amount of
the sales under the respective marks. Further, there is no
information from the registrant. In any event, the test 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); and In re Kangaroos U.S.A.,
223 USPQ 1025 (TTAB 1984).
Finally, applicant argues that ABACUS is a weak mark
in the computer field, “as well as in the field of
telecommunications services.” (Applicant’s response to the
first Office action, filed October 10, 2000.) Applicant
submitted with that response to the Office action,
printouts from the Nexis database showing numerous pending
applications and registrations, all of which consist of or
include the word ABACUS in some manner. A trademark search
report from a private database is not evidence of the
applications and/or registrations listed therein; and the
Board does not take judicial notice of registrations
residing in the USPTO. See In re Duofold Inc. 184 USPQ 638
(TTAB 1974); Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB
1992); and In re F.C.F. Inc., 30 USPQ2d 1825 (TTAB 1994).
However, the Examining Attorney did not object to or
address this material so that applicant could correct its
Ser. No. 75/843132
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submission. Therefore, the Board has considered the Nexis
report. It is, however, of limited probative value because
the existence of pending applications or even of
registrations does not prove use of the involved marks and
that the relevant public is aware of them. Thus, there is
no evidence of record herein on the number and nature of
similar marks in use on similar or related goods or
services.
In its brief on appeal, applicant referred to a typed
list of eleven third-party registrations (brief, pp. 7-8)
and stated that copies thereof were attached. No copies
were attached, and mere typed lists of registrations are
not sufficient to make them of record. These materials
were untimely offered into the record pursuant to Trademark
Rule 2.142(d) and were not considered.3
Even if applicant had shown that the cited mark is
weak, such marks are still entitled to protection against
registration by a subsequent user of the same or similar
mark for the same or closely related goods. See Hollister
Incorporated v. Ident A Pet, Inc., 193 USPQ 439 (TTAB
1976).

3 We note that even if considered, the third-party registrations
referred to in applicant’s brief would not alter our decision
herein because several of the registrations were for marks which
create a different commercial impression, for example, ABACUS-THE
EVOLUTION OF TRAVEL, ABEKAS, ABACO BRIDGE.
Ser. No. 75/843132
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Based on the identity of the marks, the relatedness of
the goods, and the similar or overlapping trade channels
and purchasers, we find that there is a likelihood that the
relevant purchasing public would be confused when applicant
uses the mark ABACUS for “computer hardware and software
for testing communications systems and equipment by
generating and switching telephone traffic” in view of the
previously registered mark ABACUS for “computer software
for automatic call distribution management.”
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.