Keeping Tabs on the TTAB

• Published in: Allen's Trademark Digest Vol. 23; no. 3; p. 7
• Main Author: Welch, John L
• Format: Trade Publication Article
• Language: English
• Published: New York Aspen Publishers, Inc 01.09.2009
• Subjects: Federal court decisions; Fraud; Lanham Act 1946-US; Manycompanies; Patent law; Registration; Regulatory agencies; Revisions; Textiles; Trademarks; United States > US

To determine whether the marks are confusingly similar, the Board considers their appearance, sound, connotation, and commercial impression. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).The Board observes that although CCH 's mark is in stylized form, it is a very simple stylization, and inasmuch as registrant's mark is depicted in typed form, it can be displayed in the same stylization as CCH's mark. Squirtco v. Tomy Corp. , 697 F 2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983). The Board notes that the fact that registrant's mark has an extra "X" would not significantly change the meaning, pronunciation, appearance, or commercial impression of the mark because slight differences in marks do not normally create dissimilar marks. In re Great Lakes Canning, Inc. , 227 USPQ 483, 485 (TTAB 1985). CCH argued that registrant, Software Brokers of America, Inc. , does business as Intcomex and that the inclusion of the extra "X" in the cited mark may tend to link the mark to Intcomex, which also ends in "X. " The Board explains that this supposition does not affect the Board's likelihood-ofconfusion analysis. First, CCH's current marketing practices are subject to change, and the Board does not consider CCH's or registrant's practices to distinguish otherwise similar marks; and second, even if the Board did consider this fact, it is at best a dubious proposition that the marks are not similar because consumers would somehow link the double X in the middle of the word NEXXT with the single X at the end of registrant's business name, Intcomex. SEASENSE, subject of an application to register by Force Technology (FT) for "nautical and optical apparatus and instruments, namely, accelerometers, wave gauges, bending moment sensors, sensors for measuring green water on ship deck, gyrocompasses, gyroscopes, motion reference units, wind and draught sensors, optical frequency metrology devices; apparatus and instruments for weighing, measuring, signaling, checking, life saving and teaching, namely, meteorological instruments, sensing and signaling devices for dynamic positioning of ships, and for measurement of ship hull motion and acceleration, current sea state and wave motion, green water on ship deck, parametric roll, and ship hull load; blank magnetic data carriers and blank optical discs; computers; computer programs for use in dynamic positioning of ships and for real-time onboard ship heavy weather decision support, monitoring of ship behavior and heavy sea navigation; downloadable software for use in dynamic positioning of ships and for real time onboard ship heavy weather decision support, monitoring of ship behavior and heavy sea navigation; data processing apparatus, namely data processors; navigation apparatus and instruments, namely, global positioning system (GPS), programmable logic controller (PLC), computer, computer software, transponder, transducer, transmitters, receivers, interlaces for computers, and interfaces for detectors" in International Class 9; "printed matter, namely, manuals, handbooks and instructional and teaching material in the field of metrology, dynamic position systems, and maritime navigation, sensing and measuring systems; computer program manuals for dynamic positioning of ships and for real time onboard ship heavy weather decision support, monitoring of ship behavior and heavy sea navigation" in International Class 16; and "scientific services, namely, scientific research and development, creation of control programs for automated measurement, assembly, adjustment, and related visualization; data acquisition and collection for calibration and coordinate- measurement purposes, measurement evaluations in the field of maritime navigation, ship performance and monitoring, and meteorology; technological services, namely, technological consultation in the field of maritime technology, dynamic positioning, meteorology, metrology, sensor based process control, computer hardware systems, and sensor and measurement technologies; design and testing of ships, offshore structures and maritime facilities, navigation and meteorological computerized systems, and dynamic positioning computer controlled systems; installation, design and development of computer software" in International Class 42, is not likely to cause confusion with the previously registered mark SEA SENSE ("sea" disclaimed) for "metal fasteners for marine use, namely, shackles, snap hooks, swivel hasps, clamps, clips, screws, bolts, and washers; marine boat anchors; metal chains for anchors; metal hooks for boats; metal ladders for boats; metal locks for oars; metal cleats for attachments to boats; metal drain plugs for boats; metal safety chains, metal locks, and metal plugs for boat trailers, metal safety chains; non-electric cables, namely winch cables; metal u-bolts for boat trailers; metal outboard motor locks; marine boat engine parts, namely metal non- prefabricated fuel lines and fuel line fittings; metal drain plugs fitted for boats" in International Class 6; "fuel filters, fuel primer bulbs, and engine flushers in the nature of a mechanical valve to flush salt and ocean residue from marine engines; boat trailer parts, namely winchers; hydraulic jacks for boat trailers" in International Class 7; "hand operated jacks for boat trailers" in International Class 8; "electric switches, fuses, plugs and sockets for marine use; unfitted antenna mounts for boats; electrical wiring harnesses and electric light connection plugs for boat trailers; navigation lights for boats" in International Class 9; "spotlights and solar-heated showers for boats" in International Class 11; "boat paddles and oars; cleats for attachment to boats; beverage holders fitted for attachment to boats; air horns for boats and component part therefor, namely, compressed air canisters for air horns for boats; trailer stands; boat trailer hitch component parts, namely, trailer balls and fitted trailer ball covers, tail lights for boat trailers; trailer parts for boats, namely, metal bow stops and metal bow rollers, metal trailer rollers, and roller shafts; fitted antenna mounts for boats; marine boat engine parts, namely prefabricated fuel lines and fuel line fittings; structural parts for trolling motors, namely trolling motor electrical connectors for boats; ball bearings for boat trailer wheels" in International Class 12; and "cord, rope, all-purpose straps for marine use, and tie down straps and winch straps for boat trailers; padding materials not of rubber or plastic for boat trailer bunks" in International Class 22. Registration had been finally refused under Section 2(d) of the Trademark Act.