Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 ARIES SYSTEMS CORPORATION
v.
WORLD BOOK, INC.
Opposition No. 85, 395
March 1, 1993
Norman P. Soloway of Hayes, Soloway, Hennessey & Hage for Aries Systems Corp.
Jeremiah McAuliffe of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson for World Book, Inc.
Before Rice, Quinn and Hohein
Members
Opinion by Hohein
An application has been filed by World Book, Inc. to register the mark "INFORMATION FINDER" for "computer programs, compact disks for use in educational research and as a reference source containing computer-readable data, and instructional manuals, sold as a unit". [FN1]
Registration has been opposed by Aries Systems Corporation. Specifically, opposer alleges that applicant's mark, when applied to applicant's goods, so resembles opposer's previously used mark "Knowledge Finder," which is used in connection with "computer programs and compact disks for use in research and as a reference source and [on] instruction manuals" and which is registered, in the form reproduced below, for "computer programs for information retrieval on microcomputers," [FN2] as to be likely to cause confusion, mistake or deception.
Previously, in a decision reported at 23 U.S.P.Q.2d 1742, [FN3] the Board on June 29, 1992 granted opposer's motion for summary judgment with respect to the issue of likelihood of confusion as presented by the broad identifications of goods set forth in its registration and applicant's application; denied applicant's motion for leave to file its first amended answer and counterclaim seeking to restrict opposer's registration to the goods in connection with which opposer has actually used the mark "Knowledge Finder"; and deferred further consideration of applicant's cross-motion for summary judgment with respect to its counterclaim. Nevertheless, in light of opposer's consent to the filing of a counterclaim, the Board allowed applicant time to perfect its proposed counterclaim by filing an amended pleading which, at the very least, included the required fee and described in sufficient detail the restriction it desired with respect to opposer's pleaded registration, along with any appropriate limitation to the involved application, failing which applicant's cross-motion for summary judgment would be denied and a judgment sustaining the opposition would be entered in view of the granting of opposer's motion for summary judgment on the likelihood of confusion issue presented by the unrestricted identifications of the parties' goods. [FN4]
Applicant, as permitted by the Board's decision, timely submitted its second amended answer and counterclaim, together with the required fee for the latter, on July 20, 1992. In relevant part, the counterclaim requests that since "opposer has not used its mark in connection with the broad scope of goods claimed in Reg. No. 1,599,266 and has specifically not used its mark in connection with goods similar to those sold by applicant in connection with its mark," the identification of goods in opposer's registration be restricted to read as follows:
*2 computer programs for the retrieval of information from databases containing citations to and abstracts of biomedical journal articles, and instructional manuals therefor, sold as a unit primarily to medical libraries for use by medical practitioners and researchers.
Applicant's counterclaim also requests that, "if necessary," the identification of goods in its involved application be limited to:
computer programs on compact disks for use in general educational research and as a reference source containing a computer-readable database of encyclopedic and dictionary information, and instructional matters therefor, sold as a unit primarily to elementary and secondary schools, nonmedical public libraries and families.
This case is now before us for further consideration of applicant's cross-motion, filed with a certificate of mailing dated April 22, 1992, for summary judgment. As permitted by an order of the Board issued on September 2, 1992, applicant timely submitted a supplemental brief, filed with a certificate of mailing dated September 22, 1992, and opposer timely furnished a supplemental brief on October 9, 1992. Applicant, without objection from opposer, also filed a reply brief on October 28, 1992.
Applicant seeks summary judgment granting its counterclaim and dismissing the opposition on the basis that, with the imposition of the restriction it requests to the identification of goods in opposer's pleaded registration and, if needed, the limitation it offers to accept to the goods recited in its application, there is no likelihood of confusion from contemporaneous use of the marks "Knowledge Finder" and "INFORMATION FINDER". In particular, applicant contends that it is clear from the papers submitted by opposer in connection with its motion for summary judgment that opposer's "Knowledge Finder" product is found almost exclusively in medical libraries and is likely to be used solely by medical practitioners, researchers and librarians for in-depth research of medical and scientific knowledge. It is similarly undisputed, applicant notes, that its "INFORMATION FINDER" product is purchased primarily by elementary and secondary schools and nonmedical public libraries for general information research. Although conceding that a small number of its goods (about 8.2% of all units sold or fewer than 500 as of the end of March 1992) have been purchased by individual parents for use by their school-age children and that its goods may also be used as a general reference source by adults, applicant denies opposer's contention that, if the parents purchasing or using applicant's "INFORMATION FINDER" goods are physicians, medical researchers or medical librarians, such individuals would be likely to confuse or mistake the source or sponsorship of such goods with opposer's "Knowledge Finder" product.
In addition to the evidence it previously furnished, [FN5] applicant with its supplemental brief has submitted, as support for its position, a third declaration, with exhibits, from John M. Murphy. [FN6] Applicant calculates from the additional information of record that in 1988, "physicians comprised only about .23% of the population of the United States". [FN7] Assuming that physicians "were similarly represented among parents with school-age children," applicant argues that "[t]he potential overlap between purchasers of KNOWLEDGE FINDER and purchasers and users of INFORMATION FINDER ... is de minimis". Applicant further contends that even among the exceedingly small number of persons who might encounter both parties' goods, confusion would be unlikely since the products are purchased by sophisticated and discriminating purchasers and are not impulse purchases. Moreover, even in the rare event that medical professionals would consult a general reference source such as applicant's product with regard to matters within the realm of their technical expertise, applicant maintains that it is unlikely that such professionals would surmise that its product shares a common origin or is otherwise affiliated with opposer's product given the differences in the applications for the parties' goods and the highly suggestive nature of the respective marks.
*3 Opposer, on the other hand, strongly insists that due to the overlap between the parties' actual and potential customers, confusion as to source or sponsorship of the respective goods is likely irrespective of any limitation and/or restriction proposed by applicant. Specifically, opposer asserts that even with the narrowing of the descriptions of the parties' goods to the particular products they currently market, the fact remains that the goods are similar since both constitute computer programs, in the form of CD-ROMs, for use as a research tool. Opposer maintains, moreover, that the proposed restriction to its registration is unwarranted inasmuch as the bulk of its customer base consists of sales of its goods by subscription to physicians, clinicians and medical researchers, many of whom use the product in their homes. Purchases of the goods on a subscription basis by medical libraries, in contrast, account only for about 15 percent of its sales, according to opposer. Opposer additionally contends that the proposed restriction is too narrow because it "has used its 'Knowledge Finder' trademark in connection with the creation of electronic text books and is considering using the mark in connection with products outside of the medical field". In consequence thereof, opposer argues that the limitation proposed by applicant is too confining and does not allow for opposer's natural area of expansion.
Besides the evidence it previously submitted, [FN8] opposer with its supplemental brief has furnished, in support of its contentions, a declaration from its president. [FN9] As to the further declaration filed by applicant, opposer urges that, far from being de minimis, the total number of physicians in the United States represents "a potential for 569,160 instances of confusion". Opposer, in this regard, argues that the Board should judicially notice that physicians, who have many years of advanced study, place a high value on education and are likely to stress the importance thereof in their homes. Because physicians, as highly educated parents, are likely to participate actively in their children's education and thus would be likely to be aware of applicant's similar educational product, opposer concludes that, notwithstanding their sophistication in the field of medical knowledge, it is probable that physicians would be confused as to the origin or affiliation of CD-ROM programs used to facilitate computerized research of information when such goods are sold under the substantially similar marks "Knowledge Finder" and "INFORMATION FINDER". Opposer, in summary, believes that to restrict its goods to a particular field of information and class of purchasers would not, even if applicant's goods were similarly limited to a different kind of information and type of customers, prevent a likelihood of confusion because users of the parties' goods would still overlap to a sufficient degree. Opposer therefore requests that applicant's cross-motion for summary judgment be denied.
*4 Applicant asserts in reply that the declaration from opposer's president, like the other evidence presented by opposer, "fails to create a genuine issue of fact and offers no basis for the denial of summary judgment". The conclusory statement of Mr. Holmes as to his "understand[ing] that many" of opposer's customers use opposer's goods in their homes is insufficient, according to applicant, to raise a genuine issue of material fact since, under Fed.R.Civ.P. 56(e), any opposing affidavit (or declaration) must be made on personal knowledge and set forth specific facts showing that there is a genuine issue for trial. Applicant also observes, with respect to the indication in the declaration that opposer "has used its Knowledge Finder products to create electronic text books," that such statement "deserves no weight, because Mr. Holmes fails to indicate what mark was affixed to these electronic textbooks, how many, if any, were sold, where they were sold, or to whom such sales were made". Lastly, as to Mr. Holmes' statement that opposer is presently considering using its mark in connection with products outside of the medical field, applicant notes that in addition to being vague and conclusory, the statement is irrelevant since "in adjudicating claims for partial cancellation under Section 18 of the Lanham Act, the Board looks only to the use made by the registrant as of the date on which the restriction is sought". [FN10] Applicant consequently contends that its cross-motion for summary judgment should be granted.
A party seeking to obtain partial cancellation of a registration under Section 18 of the Trademark Act must tie the request for relief to a proper statutory ground for cancellation, such as nonuse or abandonment of the mark with respect to certain of the goods encompassed by the registration. Procter & Gamble Co. v. Sentry Chemical Co., supra at 1591. [FN11] Where, as here, a registration not over five years old has an identification of goods broad enough to encompass goods and/or trade channels in connection with which the registrant has never used its mark, a petition for partial cancellation may seek on the ground of nonuse to restrict the registration to the goods and/or trade channels as to which the registrant has actually used its mark, or to exclude specifically certain goods and/or trade channels as to which there has been no use. In any such instance, the petitioner, in order to prevail, must establish not only its standing and the nonuse of the registrant's mark as to certain goods and/or channels of trade encompassed within the scope of the identification of goods, but also must prove that the restriction sought is a commercially significant one. As stated in Procter & Gamble Co. v. Sentry Chemical Co., supra at 1592:
A restriction is "commercially significant" if its entry would avoid a finding of likelihood of confusion in the proceeding in which the restriction request has been made. Even where entry of the proposed restriction would not avoid a finding of likelihood of confusion, a proposed restriction is "commercially significant" if the evidence adduced at trial (or on summary judgment) establishes clearly and convincingly that the registrant has recited its goods in terms that so overstate either the range of goods registrant actually markets under the registered mark or the trade channels in which registrant's goods move that fairness demands that an appropriate restriction to the registration be entered.
*5 Upon consideration of all of the evidence and arguments presented, we agree with applicant that there is no genuine issue of material fact [FN12] and that, when the goods in opposer's registration and those in applicant's application are delineated as set forth below, confusion as to source or sponsorship of the parties' products is not likely to result from their respective use of the marks "Knowledge Finder" and "INFORMATION FINDER". Specifically, we find it commercially significant to restrict the identification of goods in opposer's registration to:
computer programs for the retrieval on microcomputers of information from databases containing citations to and abstracts of biomedical journal articles, sold primarily to and for use by medical professionals and institutions such as physicians, clinicians, medical researchers and medical libraries;
and to limit the goods in applicant's application to:
computer programs on compact disks for use in general educational research and as a reference source containing a computer-readable database of general encyclopedic and dictionary information, and instructional manuals therefor, sold as a unit primarily to elementary and secondary schools, nonmedical public libraries and families.
Our reasons for believing that the above changes, in addition to precluding an improper expansion of the identification of goods in both the challenged registration and the involved application, serve to avoid a finding of likelihood of confusion, are as follows.
Preliminarily, we point out that any revision to the description of goods in a registration or application cannot exceed the scope of the goods as currently identified in the registration or as set forth in the application. [FN13] See Trademark Rules 2.71(b) and 2.173(b). Applicant's request to modify opposer's registration by including the language "and instructional manuals therefor, sold as a unit" and deleting the term "microcomputers" plainly results in an identification of goods which exceeds the scope of opposer's registration, in which the goods are listed as "computer programs for information retrieval on microcomputers". [FN14] Similarly, applicant's suggestion that its goods be revised by inclusion of the language "instructional matters" impermissibly broadens its application since such item was originally identified as "instructional manuals". We consequently cannot adopt the foregoing changes. Instead, by necessity, we have utilized the word "microcomputers" in restricting the registration and the term "manuals" in limiting the application, while shunning the addition of any language relating to "instruction manuals" in modifying the registration.
Turning now to the issue of likelihood of confusion, we think that when the relevant factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973), are considered, imposition of the modifications we have delineated are adequate to avoid a finding of likelihood of confusion. Opposer, rather than contending that the evidence establishes genuine issues of material fact which would thus preclude the entry of summary judgment in favor of applicant, [FN15] argues that the record demonstrates that any restriction to the identification of its goods would be inappropriate since such change would not avoid a finding of likelihood of confusion. However, unlike the situation presented by opposer's motion for summary judgment, in which applicant's computer programs had to be considered legally identical to opposer's computer programs because the former were encompassed by the language used in the registration to identify the latter, applicant's cross-motion for summary judgment presents circumstances where the goods are specifically different.
*6 This is significant since, in the case of opposer's motion, which involved the parties' unrestricted identifications of goods, the parties' marks did not have to be quite as similar, in order to result in a finding of likelihood of confusion, as in the case of applicant's cross-motion, which is based on the proposed limitations to the parties' identification of goods. [FN16] When the differences in the parties' products are given consideration, as by modifying opposer's registration and applicant's application in the manner in which we have indicated, differences in the respective marks in sound and appearance, along with nuances in their connotation or meaning, may play more important roles in the likelihood of confusion analysis. Here, the word "Knowledge" in opposer's mark neither sounds nor looks appreciably like the term "Information" in applicant's mark. Moreover, when considered in their entireties, the marks have somewhat different connotations, due to their highly suggestive nature, when applied to specifically different products. [FN17] Opposer's mark suggests a product designed to locate particular knowledge about a topic, whereas applicant's mark conveys the idea of a product useful for finding more generalized information on a subject. [FN18] These distinctions in the marks make it less likely that confusion, mistake or deception will occur with respect to origin or affiliation of the parties' products.
Furthermore, and of even greater importance, when the actual goods of the parties are considered, as reflected in the restricted and limited identifications set forth above, the pronounced differences therein become commercially significant. Such products, rather than being (as opposer asserts) simply computer programs utilized for facilitating research of medical and related scientific topics, are designed to search databases of vastly different levels of content for, concomitantly, significantly different purposes. The record in this case clearly reveals that opposer has used its "Knowledge Finder" mark only in connection with computer programs, and associated literature, directed to the retrieval on microcomputers of highly technical, in-depth information from databases containing citations to and abstracts of biomedical journal articles. The typical purchasers and/or users of such goods, consequently, are medical professionals and institutions which need to locate journal articles on specific developments of interest in the biomedical field. Applicant's "INFORMATION FINDER" goods, in sharp contrast, are computer programs and related instructional manuals used for general educational research and as a reference source. Its goods are used to investigate a database of general encyclopedic and dictionary information and are sold primarily to elementary and secondary schools, nonmedical public libraries and families. Applicant's goods are thus designed to provide students and other lay users thereof with an informative overview of a subject, but are not useful for providing practitioners with the intensive degree of biomedical knowledge locatable with opposer's goods.
*7 The demarcation between the parties' goods is further highlighted by the differences in sophistication of purchasers and users of the products. Opposer's goods, in particular, are sold for use primarily by doctors, clinicians, medical researchers and other medical professionals. These well-educated and highly-trained individuals are apt to be careful and discriminating in their selection of computer programs for particular applications, such as searching for citations to and abstracts of biomedical journal reports. Applicant's goods, on the other hand, serve a more broadly based customer group which, only rarely, would desire the kind of sophisticated knowledge obtainable with the use of opposer's goods.
Lastly, we acknowledge that opposer is correct that some overlap of the parties' customers could occur, especially where physicians and other medical professionals are also the parents of students. However, even assuming for purposes of summary judgment that many of the 569,160 physicians in the United States utilize their subscriptions to opposer's "Knowledge Finder" product in their homes and would also purchase a subscription to applicant's "INFORMATION FINDER" product for use at home by their children in connection with their schoolwork, we are constrained to agree with applicant that the prospects for any kind of confusion as to the source or sponsorship of the parties' goods is de minimis. Doctors, besides forming only 0.23 percent of the population, are highly sophisticated purchasers who, given the differences in the respective marks and the fact that applicant's goods do not feature the level of specialization in a particular field which opposer's goods do, would not be likely to think that the parties' products emanate from or are otherwise associated with or sponsored by the same source simply because both products are computer programs which can be used on a personal computer at home or in a library to search various topics in medical and related scientific databases.
Accordingly, applicant's cross-motion for summary judgment is granted to the extent that the counterclaim will be granted, opposer's registration will be restricted to "computer programs for the retrieval on microcomputers of information from databases containing citations to and abstracts of biomedical journal articles, sold primarily to and for use by medical professionals and institutions such as physicians, clinicians, medical researchers and medical libraries" and the opposition will be dismissed provided that applicant, no later than thirty days from the mailing date of this order, [FN19] files an amendment to its involved application which limits its goods to "computer programs on compact disks for use in general educational research and as a reference source containing a computer-readable database of general encyclopedic and dictionary information, and instructional manuals therefor, sold as a unit primarily to elementary and secondary schools, nonmedical public libraries and families". Fed.R.Civ.P. 56(c); Section 18 of the Trademark Act; and Trademark Rule 2.133(b). If, however, applicant fails to submit such amendment, the counterclaim will still be granted and the restriction to opposer's registration will be entered, [FN20] but in light of Trademark Rule 2.133(b) and our prior grant of summary judgment to opposer, the opposition will be sustained and registration to applicant will be refused.
*8 Proceedings herein remain otherwise suspended pending possible response to this order.
J.E. Rice
T.J. Quinn
G.D. Hohein
Members, Trademark Trial and Appeal Board
FN1. Ser. No. 74/022,531, filed on January 25, 1990, which alleges dates of first use of October 13, 1989. The word "INFORMATION" is disclaimed.
FN2. Reg. No. 1,599,266, issued on June 5, 1990, which sets forth dates of first use of October 1, 1986.
FN3. Familiarity with such decision is assumed in this opinion.
FN4. The Board additionally indicated, however, that if applicant complied with the decision, applicant and opposer would each, in turn, be allowed a reasonable time to file supplemental papers with respect to applicant's cross-motion for summary judgment in light of the issue(s) raised by a properly pleaded counterclaim.
FN5. Such evidence, which consists of the declarations, with exhibits, from one of applicant's attorneys, John M. Murphy, and its "Director of School and Library Services," Paul E. Rafferty, together with their supplemental declarations and a further exhibit, is described at 23 U.S.P.Q.2d 1745-46 at nn. 9-12.
FN6. Mr. Murphy avers that the exhibits constitute "true copies of pages 551 and 845 of the 1991 World Almanac and Book of Facts". Among other things, the figures in the tables therein indicate that, as of July 1, 1988, the United States had an estimated population of 119,724,000 males and 126,060,000 females, of which, as of January 1, 1988, physicians numbered 482,490 males and 86,670 females.
FN7. For the mathematically challenged: { (482,490 + 86,670) total physicians/ (119,724,000 + 126,060,000) total population} x 100 = 0.23% physicians in the population.
FN8. The evidence consists of the pertinent portions from a publication listing synonyms; an affidavit, with exhibits, from opposer's president, Lyndon S. Holmes; and an affidavit from an employee of its counsel's law firm, Teresa C. Tucker. The substance thereof is detailed at 23 U.S.P.Q.2d 1744-45 at nn. 5- 7.
FN9. Mr. Holmes attests in his declaration that:
(1) I am President of Aries Systems Corporation ("my company");
(2) Approximately 70% of my company's subscription sales are made to individual physicians, clinicians or medical researchers. I understand that many of my company's customers use their subscriptions in their homes.
(3) Only approximately 15% of my company's sales are made to medical libraries.
(4) My company has used its Knowledge Finder products to create text books and my company is presently considering using its Knowledge Finder trademark in connection with products outside of the medical field.
FN10. Applicant cites Procter & Gamble Co. v. Sentry Chemical Co., 22 U.S.P.Q.2d 1589, 1593 (TTAB 1992), as authority for its proposition. While we point out that applicant is correct that such case provides that a determination of what restriction, if any, may be appropriate to impose is to be decided as of the time a restriction is sought instead of the time of registration, we think that the following also gives an indication that, in deciding whether a restriction is warranted, a registrant's normal area of expansion is not to be ignored where relevant evidence thereof is present:
In seeking a restriction of opposer's registration under Section 18, applicant is asking, in essence, for an equitable remedy. We must ask, therefore, whether equity demands that, in determining whether to limit opposer's registration, we look to the nature of the use made by opposer as of the time it sought registration of its ... mark or, instead, to the use made by opposer as of the time applicant sought to restrict opposer's registration. We believe equity demands that we look to the latter date.
If, in considering the question of restriction of a registration under Section 18, we were to look to the nature of the use made by the registrant as of the time it sought registration of its mark, as opposed to the time a restriction to the registration is sought, we would be injecting into the trademark registration system a strain of uncertainty. Any normal expansion of commerce, in the form of either a new product formulation or a new trade channel for the registrant's goods, would bring with it the question of whether such expansion of trade was protected by the existing registration or whether, to the contrary, the registration was vulnerable to a restriction under Section 18. This was not a result intended by Section 18.
Id.
FN11. Unlike abandonment, which is available as a basis for restriction of a registration at any time during the life of the registration, nonuse may be asserted as a ground for partial cancellation only if the registration sought to be restricted is not more than five years old. Compare Section 14(3) of the Trademark Act with Section 14(1) thereof. Consequently, in dealing with a registration in the cited case which was more than five years old, the Board noted that:
Where a party seeks to restrict or narrow in some manner the goods recited in its party opponent's ... registration, the ground for such relief will ordinarily be that the party opponent has not used its mark on the entire range of goods comprehended by the statement of goods included in the ... registration. Such a ground for ... cancellation may be asserted ... against a registration less than five years old.
A different issue arises where the Board is asked, under authority of Section 18, to restrict a Principal Register registration that was issued more than five years prior to the request for restriction (partial cancellation) of that registration, because Section 14(c) of the Trademark Act limits the grounds on which most Principal Register registrations more than five years old may be cancelled. Non-use (as opposed to abandonment) may not be asserted as a ground for cancellation of a registration over five years old. .... We specifically reiterate here that the ground of abandonment is properly established by a party who pleads and proves that the owner of a registration (including a registration in existence for more than five years) is not using (or has never used) its mark on certain goods that are within the scope of the goods recited in the certificate of registration; that the registrant has no intention to resume (or commence) use on such goods; and that the restriction is a commercially significant one.
Id. at 1591-1592. A claim of abandonment in the latter circumstance, however, is akin to a claim of nonuse since, as further pointed out in Sentry, "the owner of a registration for goods broadly described, who has not commenced use on the full range of goods encompassed by the recitation, may be held to have abandoned its mark, for those goods on which no use has been made, by failing to 'commence use' on all such goods and not having 'intent to commence use' on such goods". Id. at 1592.
FN12. We note, in passing, that applicant's standing to bring its counterclaim for partial cancellation is inherent in its position as defendent in this opposition, which position demonstrates that applicant has an interest in this controversy beyond that of the general public. See Alberto-Culver Co. v. F.D.C. Wholesale Corp., 16 U.S.P.Q.2d 1597, 1603 (TTAB 1990) and General Mills, Inc. v. Nature's Way Products, Inc., 202 USPQ 840, 841 (TTAB 1979).
FN13. To do otherwise, in the case of a registration, or of an application when the mark which is the subject thereof has been published for opposition, would fail to give full effect to the requirement in Section 12(a) of the Trademark Act that the mark "be published in the Official Gazette of the Patent and Trademark Office".
FN14. Although opposer pleaded in the notice of opposition that it previously has used its mark on instruction manuals as well as in connection with computer programs and compact disks for use in research and as a reference source, it is not necessary that opposer's common-law rights in its mark for associated instruction manuals be encompassed by its registration for computer programs. Instead, since any instruction manual or other documentation on which opposer uses its mark pertains to its computer programs on compact disks (i.e., CD-ROMs), it is obvious that if there is no likelihood of confusion from the use by opposer and applicant of their respective marks on computer programs on compact disks, there is no likelihood of confusion from the use by opposer of its mark for related instruction manuals and applicant's use of its mark for CD-ROMs and associated instruction manuals therefor.
FN15. We additionally note that while opposer, in the affidavit from its president which it submitted with its motion for summary judgment, set forth certain advertising and sales figures for its "Knowledge Finder" products and included samples of advertising for and articles about the goods, opposer in its response to applicant's cross-motion has not raised the argument that its mark is famous and, hence, entitled to a correspondingly wider latitude of protection. See Kenner Parker Toys Inc. v. Rose Art Industries Inc., 963 F.2d 350, 22 U.S.P.Q.2d 1453, 1456 (Fed.Cir.1992). Opposer, instead, simply asserts that sales of and attendant publicity for its goods have created secondary meaning for its mark. While, for purposes of summary judgment, we have treated opposer's mark as being distinctive, it is clear from the record that, in any event, there is no genuine issue that whatever fame, if any, opposer's mark may be said to have obtained is limited to computer programs for use as a research tool in the biomedical field and not to computer programs in general or for use as a research tool in such other educational areas as general health and science.
FN16. We note, as a general proposition, that as pointed out by Professor McCarthy, "[t]he degree of similarity of the marks needed to prove likely confusion will vary with the difference in the goods ... of the parties. Where the goods ... are directly competitive, the degree of similarity required to prove a likelihood of confusion is less than in the case of dissimilar products". 2 J. McCarthy, McCarthy on Trademarks and Unfair Competition, § 23:03[2] (3d ed. 1992) at [23-40]. See, e.g., Gillette Canada Inc. v. Ranir Corp., 23 U.S.P.Q.2d 1768, 1773 (TTAB 1992); ECI Division of E-Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443, 449 (TTAB 1980); and Jules Berman & Associates, Inc. v. Consolidated Distilled Products, Inc., 202 USPQ 67, 70 (TTAB 1979).
FN17. Nothing in this observation is at odds with the statement in our prior decision which, with respect to legally identical goods, noted that, "although highly suggestive of the respective goods of the parties, the marks 'Knowledge Finder' and 'INFORMATION FINDER' nevertheless are virtually identical in connotation and create essentially the same commercial impression when applied to computer programs and related materials used in research and as a CD-ROM reference source". 23 U.S.P.Q.2d 1747.
FN18. We stated in our earlier opinion that, as indicated by the dictionary definitions of record, " 'information' is a synonym for 'knowledge' since the former 'generally applies to knowledge, commonly accepted as true, of a factual kind usu. gathered from others or from books' and that 'finder' principally means 'one that finds'." 23 U.S.P.Q.2d 1745-46 at n. 9. We further note that, according to the definition of record set forth in Webster's Third New International Dictionary (1981) at 1252-53, "knowledge" signifies "2: the fact or condition of knowing a(1): the fact or condition of knowing something with a considerable degree of familiarity gained through experience of or contact or association with the individual or thing so known ... (2): acquaintance with or theoretical or practical understanding of some branch of science, art, learning, or other area involving study, research or practice and the acquisition of skills ... b(1): the fact or condition of being cognizant, conscious, or aware of something ... (2): the particular existent range of one's information or acquaintance with facts: the scope of one's awareness: extent of one's understanding...."
FN19. See Patent Rule 1.7, as made applicable by Trademark Rule 2.1, for a response date falling on a Saturday, Sunday or a federal holiday.
FN20. While, in the absence of the limitation to the goods identified in applicant's application, the restriction to the goods in opposer's registration would not alone avoid a finding of likelihood of confusion, we think that the identification of goods in opposer's registration so overstates opposer's range of goods and trade channels that fairness demands modification of opposer's registration.