Friday, March 19, 2010

TTAB Reverses 2(d) Refusal of "FLEXILOGIC" for Noise Reduction Software over Same Mark for Software Design Services

Despite the identity of the marks, the Board reversed a Section 2(d) refusal to register FLEXILOGIC for "computer hardware and software for noise reduction, spatial and strength processing, temporal tracking and gesture recognition of touch devices," finding it not likely to cause confusion with the same mark for "computer software design for others." The Board found no evidence that the goods and services are related or move through the same channels of trade, and it concluded that, on their faces, Applicant's goods are sold to "sophisticated purchasers who would exercise great care." In re STMicroelectronics NV, Serial No. 77500550 (March 10, 2010) [not precedential].

The Examining Attorney contended that registrant's design services could include design in the field of noise reduction, etc. Applicant urged that "its complex components deliver specific performance features to touch input electronic devices" such as PDA's and mobile phones.

The Board pointed out that there is no per se rule that every computer program is related to all software design services. The Examining Attorney relied on 16 third-party registrations, but they had no probative value because none listed high-tech components like Applicant's.

The fact that a single source might offer certain specialized types of software alongside software design services targeted to the design of those same specialized types of software does not support the Trademark Examining Attorney’s contention that applicant's specialized software is related to software design services generally. [emphasis in original].

Likewise, the Board cannot presume that Applicant's software would travel in the same channels of trade as Registrant's services, or to the same classes of consumers.

Finally, as to sophistication, even without any evidence from Applicant the Board concluded that Applicant's goods have a niche market, and that "manufacturers of touch input electronic devices (PDA’s and smartphones) will consummate a purchase of
applicant’s type of components only after the exercise of great care."

Consequently, the Board reversed the refusal to register.

TTABlog comment: The cited registration issued in 2003. One would have thought that, at that time, the Examining Attorney might have required more specificity in the recitation of services.

Text Copyright John L. Welch 2010.


At 3:50 PM, Anonymous Anonymous said...

If you check the ID Manual online, "Computer software design for others" is an acceptable ID, with an effective date of 1991. So, the examining attorney was not required to ask for further specificity. And, judging by the more recent additions (mostly Trilateral IDs), the PTO doesn't seem too concerned with making applicant's specify the types of software being designed. Much like when "computer software" used to be an acceptable ID (without the need to specify the function or purpose of the software), the PTO should start requiring software design to specify at least the field(s) of use to help avoid cases like these.


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