Test Your TTAB Judge-Ability: Are NETGARD and NETGATE Confusingly Similar for Security Software?

Here's another chance to prove your judicial potential. Applicant API Cryptek sought to register NETGARD for "computer hardware and software for encryption and controlling access to data over computer networks." Rubicon opposed, claiming likely confusion with its registered mark NETGATE for, inter alia, "computer network security software for protecting networks from unauthorized access." So the goods are "closely related." What about the marks? "Net" must be a weak formative for software, but what about the marks as a whole? Rubicon Communications, L.P. v. API Cryptek, Inc., Opposition No. 91191929 (April 11, 2012) [not precedential].

API's goods encompass those of Rubicon's registration. Because there are no limitations as to channels of trade in the application or registration, the Board presumed that the overlapping goods travel in the same, normal channels of trade to the same classes of customers.

Given the nature of the goods, purchases will not be made on impulse. Rather, purchasers will "excercise great care and correspondingly pay careful attention to the trademark for the products."

API submitted 17 third-party registrations for marks beginning with the letters N-E-T-G, in the computer field, including NETGUARD, NETGURU, NETGATE (for encryption devices), and BEST NETGUARD & Design. However, absent evidence of actual use, these registered marks do not establish that NETGATE is a weak mark. [NET effect of that evidence: nil - ed.].

As to the marks, the Board noted once again that when the goods are closely related, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

The Board noted that the prefix "net" is descriptive of network hardware and software, and so the dominant portions of the involved marks are the respective suffixes. The words "gate" and "gard" (or "guard") are separate and distinct words.

The marks share similar, but distinguishable, meanings and commercial impressions because they are suggestive of network security hardware and software. Under such circumstances, the prior use and registration of a suggestive term should not preclude the subsequent registration of a similarly suggestive, but otherwise distinguishable mark, for related goods.

Here, the marks NETGATE and NETGARD "were adopted to indicate that the products offer network access and network protection, respectively." Purchasers would recognize this indication or suggestion.

The Board concluded that the marks are more dissimilar than similar and, in view of the care that purchasers would exercise, confusion is not likely. And so it dismissed the opposition.

Text Copyright John L. Welch 2012.