Tuesday, June 17, 2008

TTAB Affirms 2(d) Refusal Despite Sophistication of Customers for Computer Software and Services

Although the relevant consumers of the involved products and services may exercise a high degree of care, the Board nonetheless affirmed a Section 2(d) refusal to register the mark shown below left, for various computer related services, finding it likely to cause confusion with the registered mark shown below right, for computer design and development services and for software. In re Dynamic Edge, Inc., Serial No. 78760920 (June 5, 2008) [not precedential].

Applicant's recitation of services was identical in part to the services in one cited registration, and its services were complementary to the software identified in the other registration. The Board not surprisingly found that the services, being identical, would move in the same channels of trade to the same classes of customers. Likewise, the software and Applicant's services, both directed to the management of websites, have the same channels of trade and classes of consumers.

Turning to the marks, the Board first found that "the average customer would be someone who licenses software for the security, monitoring, and management of websites and computer networks and who would engage a contractor to manage its websites and computer networks." It then observed for the millionth time that, when the involved services are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

The Board concluded that the similarity of the marks in appearance outweighs any differences.

"Both marks consist of the white letters "De" superimposed on a square, black background. The fact that the letters in applicant’s mark appear as De as opposed to the De displayed in registrant’s mark does not diminish the similarity of the commercial impression engendered thereby. Also, applicant’s circuit board design is not sufficient to distinguish the marks because the black background dominates applicant’s mark." [TTABlog comment: It seems to me that the letters dominate, not the black background].

Moreover, "[b]ecause both marks consist of the letters DE, they have the identical sound." Nothing in the record indicated that "DE" has any significance in the field, and therefore the marks are considered to be arbitrary and to have the same "meaning."

Applicant argued that the applicable market "for all three marks" [sic] consists of sophisticated, non-impulse purchasers. The Board, however, found no evidence regarding the "decision process used by these careful and sophisticated purchasers, the role trademarks play in their decision making process, or how observant and discriminating they are in practice." Even sophisticated or knowledgeable people, the Board once again noted, are not immune from source confusion.

Nonetheless, the Board recognized that "licensing software to manage a company's website or computer network and/or engaging a contractor to manage a company's website or computer network are typically not impulse decisions." Therefore, it ruled that the conditions of sale is a factor that weights "slightly against" a likelihood of confusion finding.

Balancing all the factors, the Board concluded that confusion is likely, and it therefore affirmed the refusal.

Text Copyright John L. Welch 2008.


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