Precedential No. 27: Finding Computer Software and Services Related, TTAB Affirms 2(d) "ACTIVECARE" Refusal

In this questionably precedential decision, the Board affirmed a Section 2(d) refusal to register the mark ACTIVECARE for "software, namely, a software feature that automatically analyzes and repairs or optimizes performance settings for personal computers, sold as a component of personal computer performance and maintenance utility software," finding it likely to cause confusion with the registered mark ACTIVE CARE for technical support services namely, troubleshooting of electronic communications computer hardware and software problems by telephone, by e-mail, by fax and on-site; installation, maintenance and updating of electronic communications computer software" [CARE disclaimed]. In re Iolo Technologies, LLC, 95 USPQ2d 1498 (TTAB 2010) [precedential].


Applicant Iolo did not contest that the marks are substantially identical. The Board noted, once again, that "the more similar the marks at issue, the less similar the goods or services need to be for the Board to find a likelihood of confusion."

The Board agreed with Iolo that there is no per se rule that computer-related goods and services are related, but that did Applicant little good.

Here, based on the identifications themselves, we find that applicant offers a product that is complementary in function and purpose to the software installation, maintenance and updating services offered by registrant. Specifically, an optimizing software feature would be among the software tools that a computer technician might use when installing, maintaining or updating electronic communications computer software.

Examining Attorney Karen P. Severson submitted copies of use-based, third-party registrations covering goods and services of the type listed in both the application and the cited registration. She also submitted evidence from several websites to show that various types of optimization software like that identified by applicant and technical support services recited in the cited registration are advertised to consumers under the same mark.

Regarding the channels of trade, there is nothing that prevents registrant’s technical support services for troubleshooting of computer hardware and software problems from being promoted in the same channels of trade for, and to the same classes of consumers that purchase, applicant’s performance optimization software. Furthermore, since computer owners are the likely purchasers of both registrant’s services and applicant’s products, the target consumers of both registrant of both registrant and applicant are the same.

Iolo pressed the consumer sophistication factor, but offered no evidence in support. Moreover, as Board precedent dictates, "even sophisticated buyers are not immune from source confusion where, as here, the marks are substantially identical


TTABlog comment: Any thoughts as to why this decision is precedential?

Text Copyright John L. Welch 2010.