TTAB Affirms 2(d) Refusal of "PROTIVA" for Smart Cards over "PROTEVA" for Computers
Because "computers" is "an extremely broad term encompassing a wide range of devices which could be sold to a wide range of potential purchasers," the Board sustained a Section 2(d) opposition to registration of the mark PROTIVA for "multi-factor authentication apparatus for logical access consisting primarily of encoded smart cards, digitally encoded tokens, and authentication software." Despite the sophistication of Applicant's purchasers, the Board found Applicant's mark likely to cause confusion with the registered mark PROTEVA for "electrical and scientific apparatus, specifically computers."
The Board, not surprisingly, found the marks "highly similar." As to the goods, Applicant argued that its products are "marketed toward and purchased by highly sophisticated customers," whereas registrants computers "are marketed towards the general public." Examining Attorney Ahsen Kahn, however, provided "substantial evidence in support of the position that the respective goods are overlapping and closely related." The Board particularly focused on a dictionary definition of "computer" in rejecting Applicant's argument:
"The Merriam-Webster’s Collegiate Dictionary (11th ed. 2003) defines 'computer,' in relevant part, as 'a programmable usu. electronic device that can store, retrieve and process data.' There is nothing in this definition, nor in the identification of goods, which would limit the sales of 'computers' to the general public. In fact, 'computer,' as defined here, and as generally understood, is an extremely broad term encompassing a wide range of devices which could be sold to a wide range of potential purchasers."
The PTO evidence demonstrated that "smart cards" fall within the definition of "computer"; that smart cards and other authentication apparatus may be incorporated into a computer; and that these goods are also used with and complementary to computers. Third-party registration evidence also showed that these goods "are of a type which may emanate from the same source." Therefore, the Board concluded that the involved goods are "closely related, if not identical."
Applied argued "most strenuously" that the sophistication of its purchasers would make confusion unlikely. The Board assumed that these purchasers would have "significant relevant technical expertise," but found that this, when considered in view of the highly similar marks and closely related goods, "would not diminish the likelihood of confusion."
Taking into account all the evidence and arguments bearing on the duPont factors, the Board found confusion likely and it affirmed the refusal to register.
TTABlog comment: What is an applicant to do when faced with a broad registration like this one? One approach for the applicant may be a Section 18 petition for partial cancellation. (See, for example, the TTABlog posting here.) Suppose the cited registration were narrowed to cover only personal computers sold to the general public? Would that have cleared the way for Applicant's registration? Would third-party registration evidence still pose a major problem?
TTABlog query: A reader points out that the word "computers" is included in the PTO's Acceptable Identification of Goods and Services Manual, found here. What effect would the inclusion of "computers" in the ID Manual have on a Section 18 proceeding? Suppose the cited registration covering "computers" issued under Section 44 or 66, without use in the United States? How could that registration be restricted under Section 18?
Text Copyright John L. Welch 2008.