Thursday, May 25, 2006

TTAB Finds "MAPCAD" and "CADMAP" Not Confusingly Similar, but Affirms Indefiniteness Refusal

Purchaser sophistication and the differences in the marks led the Board to reverse a Section 2(d) refusal of the mark MAPCAD for "computer software for professionals in the field of civil engineering excluding software used in drafting and mapping in the field of photogrammetry." The Board found Applicant Mapcad, Inc.'s mark not likely to cause confusion with the registered mark CADMAP for "computer software for use in the field of drafting, map drawing and photogrammetry." In re Mapcad, Inc., Serial No. 78312371 (May 11, 2006) [not citable].

MAPCAD specimen of use

The Board first affirmed the PTO's refusal to register based upon the indefiniteness of Applicant's identification of goods. For computer software, TMEP Section 1402.03(b) states that "[t]ypically, indicating only the intended users, field, or industry will not be deemed sufficiently definite to identify the nature of a computer program." The Board noted that "[t]he field of civil engineering is broad and ... use of software in one area of civil engineering would not necessarily mean that there was confusion with a similar trademark used on different software used in other fields of civil engineering."

Turning to the Section 2(d) issue, the Board pointed out that the marks are composed of two terms that are "admittedly generic or common" and that are not particularly strong when used in association with the identified goods. The terms are used in reverse order, "which changes their commercial impression, appearance, and sound." The Board concluded that "while the marks are similar, there are also significant differences."

CADMAP screenshot

As to the goods, the Board found "at least some overlap inasmuch as registrant's goods could similarly include mapping and drafting software for civil engineering professionals not in the field of photogrammetry." Applicant's declaration evidence that Registrant's MAPCAD software is in fact used strictly for photogrammetry was irrelevant, since Registrant's identification of goods is not so limited.

Turning to the "final significant factor," the sophistication of purchasers and the conditions of sale, the Board found, with the help of declarations from 16 professionals that "purchasers of these overlapping products ... would be sophisticated purchasers who would carefully consider software used in their professions[,] especially software related to obtaining precise measurements.

Considering all the evidence, the Board found that confusion is not likely. However, as indicated, it upheld the refusal to register based on indefiniteness.

Text Copyright John L. Welch 2006.


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