Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE METRIPLEX, INC.
Serial No. 73/836, 597
May 5, 1992
Jerry Cohen of Perkins Smith and Cohen for applicant.
Craig D. Taylor
Senior Examining Attorney
Law Office 12
(Deborah S. Cohn, Managing Attorney)
Before Rice, Seeherman and Hanak
Members
Opinion by Seeherman
Metriplex, Inc. has applied to register the mark GLOBAL GATEWAY for the service of "transmission of data in various fields (commercial as well as personal) to subscribers to the service by means of information entry software, radio data transmission and portable terminal interface with such subscribers." [FN1] Registration has been refused by the Examining Attorney on the basis that the specimens submitted by applicant are unacceptable as evidence of actual service-mark use because they do not refer to the services identified in the application.
Applicant has appealed.
The specimens at issue (reproduced below) are, according to applicant's declaration, an example of a computer screen display that appears on a computer terminal in the course of applicant's rendering of the service. Applicant states that this screen is observed by potential subscribers in the course of demonstrations of applicant's services, and by customers who encounter the screen on the terminal as the service is being rendered.
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
We reverse the refusal to register. The gravamen of the Examining Attorney's complaint about the specimens is that they do not make reference to the service identified in the application, specifically, they do not indicate that GLOBAL GATEWAY is used in connection with the transmission of data to subscribers. The only authority the Examining Attorney has cited in support of his position is Intermed Communication, Inc. v. Chaney, 197 USPQ 501, 507 (TTAB 1977). However, that inter partes proceeding involved the question of whether the applicant had made use of its service mark prior to filing its application, and the Board found that use of the mark in a progress report which, in effect, announced future plans to use a mark, did not constitute service mark use. Thus, we do not view the language in that case--"A specimen which shows an alleged mark but which makes no reference to the services offered or performed thereunder is not evidence of service mark use"--as requiring that specimens must, in all cases, contain a statement as to the nature of the services in order to be acceptable.
The Trademark Manual of Examining Procedure, Section 1301.04, makes clear that, because by its very nature a service mark can be used in a wide variety of ways, the types of specimens which may be submitted as evidence of use are varied. Some of the specimens which the Board has found to be acceptable are a photograph of chain-link fences, where the mark sought to be registered consisted of alternately colored strands of wire arranged in the fencing, for the service of renting chain-link fences, In re Eagle Fence Rentals, Inc., 231 USPQ 228 (TTAB 1986); and a photograph of a person wearing a bird costume, where the asserted mark was a design of that bird costume, for entertainment services, namely personal appearances, clowning, antics, dance routines and charity benefits, In re Red Robin Enterprises, Inc., 222 USPQ 911 (TTAB 1984). Although the specimens in these cases did not refer explicitly to the services identified in the respective applications, they were found to show use of the mark in the rendering, i.e., sale, of the services.
*2 In the same way, the specimens herein show use of the mark in the sale of the services. As applicant explained in its declaration, the specimens show the mark as it appears on a computer terminal in the course of applicant's rendering of the service. There is no question that purchasers and users of the service would recognize GLOBAL GATEWAY, as it appears on the computer screen specimens, as a mark identifying the data transmission services which are accessed via the computer terminal. Thus, the printouts constitute specimens of the mark as used in the sale of the services. Trademark Rule 2.58(a).
It appears to us that the Examining Attorney may have been misled by the language in the Trademark Manual of Examining Procedure that "letterhead stationery or business cards bearing the mark may be accepted if the services are clearly indicated thereon." Section 1301.04. Normally, because of the intangible nature of services, it is not possible to affix a mark to them, as can be done in the case of goods. As a result, Section 45 of the Trademark Act defines service mark use as occurring when a mark "is used or displayed in the sale or advertising of services and the services are rendered in commerce...." In most cases, the specimens submitted to evidence service mark use are advertising materials. Letterhead stationery and business cards are deemed to fall into the category of advertising matter if they contain a reference to the services.
Here, however, as in the cases noted above, we have a situation where the services are rendered through the means of a tangible item, namely, a computer terminal, so that the mark can appear on the computer screen, and the specimens show such use. Because the specimens show use of the mark in the rendering or selling of applicant's services, not in the advertising thereof, the requirements specific to specimens which are advertising are not applicable.
Decision: The refusal of registration is reversed.
J. E. Rice
E. J. Seeherman
E. W. Hanak
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 73/836, 597, filed November 6, 1989 and asserting first use and first use in commerce as early as July 31, 1989. It is noted that, in the Examining Attorney's brief, he has recited the identification of services somewhat differently from the language quoted above. However, since the quoted language is taken from applicant's response filed May 16, 1991, and the Examining Attorney's Office Action following that response stated that "the amended recitation of services is acceptable," we have treated this as the actual identification.
1992 WL 169149 (Trademark Tr. & App. Bd.), 23 U.S.P.Q.2d 1315
END OF DOCUMENT
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Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 ELECTRONIC DATA SYSTEMS CORPORATION
v.
EDSA MICRO CORPORATION
May 5, 1992
Hearing: October 4, 1991
Opposition No. 77,705 to application Serial No. 73/640,942, filed January 23, 1987.
Martin Faier and James M. Faier for Electronic Data Systems Corporation.
Thomas E. Anderson and Gifford, Groh, Sprinkle, Patmore & Anderson for EDSA Micro Corporation.
Before Rooney, Seeherman & Hohein
Opinion by Seeherman
Member
Electronic Data Systems Corporation has opposed the application of EDSA Micro Corporation to register the trademark EDSA for "computer programs for electrical distribution system analysis and design." [FN1] As grounds for opposition opposer has alleged that it is the prior user of the mark EDS and of other marks with the initial formative EDS for computer programs for performing system analysis and design; that it owns a registration for EDS for the design, implementation and management of electronic data processing systems including data preparation, entry and retrieval, data systems supply services, digital computer utilization and microfilm; and that applicant's use of its mark for its goods is likely to cause confusion or mistake or deception. [FN2] Applicant has denied these allegations in its answer.
The record includes the pleadings; the file of the opposed application; the testimony, with exhibits, of Ron Verner and Ali Nasle; and a status and title copy of opposer's registration [FN3] for EDS for "computer programming services including the design, implementation and management of electronic data processing programs," made of record pursuant to a notice of reliance. [FN4] The parties have fully briefed the case, and both were represented at an oral hearing before the Board.
Opposer's evidence consists largely of the testimony of Ron Verner, its vice president of corporate communications. As part of his testimony, Mr. Verner has identified annual reports of opposer's, extending over a nineteen-year period, which show that opposer has used EDS as its trade name since 1970. Mr. Verner has also testified that opposer is a data processing services company which is involved primarily in information technology service. It has 7,000 customers in a wide range of industries, including banking, hospitals, insurance, manufacturing, telecommunications, transportation, retailing, energy, government and the military. It provides services that include personnel, hardware and software, the software being a product that runs within a data center or on a large computer. For example, it has a banking software product which is used for data processing by financial institutions. Opposer also does electronic data capture, such as sales transaction entry and credit and debit sales, and produces management reports. Among its customers are Citicorp, for which opposer provided a computer product for processing transactions in and around investment banking and investment processing.
*2 Among the "products" that opposer provides are EDS Link, which is a telecommunications link used in the financial institutions environment which allows various software products to work together, and EDMD, Electronic Document Management and Distribution, which opposer offers to the manufacturing marketplace. According to opposer's brochure, this system automates the management, control and distribution of information, and can interface with installed systems such as computer-aided design and computer-aided manufacturing. Opposer also has an internal communications medium called EDS Net, which is an on-line system that it uses to transport data between one location and another. In addition, opposer offers a product called TradePro, which is for processing stock transactions, to the financial community; a product called Enhance to small banks; and at one time offered a product called MicroNet to hospitals.
In 1984 opposer became a wholly owned subsidiary of General Motors and General Motors is now opposer's largest single customer. Among the services opposer provides for General Motors is support in the areas of computer-aided design, computer-aided engineering and computer-aided manufacturing in order to enable General Motors to get its cars to market faster. Mr. Verner described computer-aided design as a process by which an engineer or a designer can design a part or a piece of equipment by using an electronic terminal and software in order to simulate the look of the product and determine what parts and materials would be most suitable in the production of that part. He indicated that the computer-generated model of a car that appeared in the 1988 annual report eventually produced the Chevrolet Beretta.
Opposer is trying to take advantage of its experience with General Motors and translate it to other commercial manufacturing companies. Mr. Verner testified that opposer provides its computer-aided design service to companies like Caterpillar and Porsche, as well as to General Motors.
Opposer promotes its computer software products through brochures, direct mail and presentations. Among its promotional activities opposer distributes specialty items, such as caps, T-shirts and coffee cups, bearing the acronym EDS. Opposer also engages in a number of public relations activities, targeting them to a broad audience which ranges from its customers and prospective customers to its stockholders and employees, investment analysts, potential employees, communities where opposer has a location or a business interest and government lobbyists. It also does public relations directed at the general public in connection with its technology sponsorship of the Jason Project undersea discovery process, and through its sponsorship of a race-car program. In addition, opposer sponsored a display of the Magna Carta at the National Archives in Washington, D.C.
Opposer's expenses for creating all "corporate communications" on its behalf, and which include expenditures for presentations, brochures and annual reports, ranged from $11.6 million in 1979 to $26.7 million in 1986, and then increased to $43.4 million in 1987. These figures include activities directed towards the promotion of the company under the trade name EDS as well as the promotion of opposer's products and services under the mark EDS.
*3 Opposer's revenues have increased steadily, going from $3.7 million in 1967 to $164.1 million in 1977 to $786.1 million in 1984. Then, after its acquisition by General Motors, opposer's revenues rose dramatically, and were $3.4 billion in 1985 and $4.4 billion in 1987. [FN5]
The mark EDSA was chosen in 1980 by Ali Nasle, applicant's predecessor and its current president, to identify the computer software program he developed, the term being an acronym for "electrical distribution system analysis." Since its founding in September 1983 applicant has used this mark for its computer software programs which are used in the design and simulation of electrical power distribution systems. The programs help professional engineers in the design and analysis of electrical power transmission and distribution systems. For example, a company may need to use extremely large motors which require a great deal of power to start. Normally, without actually trying to start them there would be no way to determine whether the act of starting them will bring down the entire electrical system. Applicant's software can be used to simulate the starting of the motors.
Applicant's programs are used by a variety of industries, with customers ranging from large companies and government agencies such as General Motors, General Electric, Hughes Aircraft, Bechtel, Kennedy Space Center and the Internal Revenue Service to smaller companies which have major projects. The software costs between $5,000 and $10,000, depending on the size of the plant or the project. The programs are customized to the particular customer's needs, and applicant deals only with the Chief Electrical Engineer of the business when selling the system, since by the nature of the product no one but an electrical engineer can understand it. For the same reason, applicant advertises its programs only in trade journals directed to the electrical engineering profession, e.g., "Electrical System Design" and "Electrical Construction and Maintenance."
We turn first to a consideration of opposer's priority. Opposer has presented testimony regarding its activities under the trade name EDS in connection with computer-aided design and computer-assisted manufacturing. However, according to both Mr. Verner's testimony and documentary evidence, opposer's activities in this arena did not begin until after opposer was acquired by General Motors in 1984. This was subsequent to the use by applicant's predecessor of the mark EDSA in 1980, and to applicant's own use of the mark in 1983 for its computer programs. [FN6] Accordingly, opposer cannot demonstrate priority with respect to its computer-aided manufacturing, computer-aided engineering and computer-aided design services.
However, priority is not in issue with respect to opposer's use of EDS for "computer programming services including the design, implementation and management of electronic data processing programs," since opposer's registration of the mark for these services is of record. King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Moreover, the evidence of record demonstrates opposer's priority of use of EDS, at least as a trade name, for these services. We thus turn to a consideration of whether there is a likelihood of confusion between EDS for the services identified in opposer's registration and EDSA for the goods identified in applicant's application.
*4 As indicated, opposer's registration is for computer programming services including the design, implementation and management of electronic data processing programs. Applicant's goods are computer programs for electrical distribution system analysis and design. Opposer has not submitted any evidence from which we can conclude that its computer data processing programming services are sufficiently related to applicant's computer programs that consumers are likely to associate them with a single source, even though the services and goods are marketed under the similar marks EDS and EDSA.
Opposer argues that the parties' products are related because each party provides software programs which process data. We decline to interpret the concept of related goods so broadly. All computer software programs process data, but it does not necessarily follow that all computer programs are related. Given the ubiquitous use of computers in all aspects of business in the United States today, this Board and its reviewing Court have rejected the view that a relationship exists between goods and services simply because each involves the use of computers. See, Octocom Systems Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed.Cir.1990); Information Resources Inc. v. X*Press Information Services, 6 USPQ2d 1034 (TTAB 1988). In particular, the fact that both parties provide computer programs does not establish a relationship between the goods or services, such that consumers would believe that all computer software programs emanate from the same source simply because they are sold under similar marks. See, Reynolds & Reynolds Co. v. I.E. Systems Inc., 5 USPQ2d 1749, 1751 (TTAB 1987).
Moreover, the issue of whether or not two products are related does not revolve around the question of whether a term can be used that describes them both, or whether both can be classified under the same general category. See, In re Cotter and Co., 179 USPQ 828 (TTAB 1973).
We recognize that opposer's data processing/information management services are applied in a wide variety of industries, including banking and insurance. Opposer has not, however, shown that computer-aided manufacturing and computer-aided design services are a part of its data processing or information management services.
Nor has opposer shown that its computer-aided manufacturing and design services are within the natural scope of expansion of the services identified in its registration. As we explained in Sheller-Globe Corp. v. Scott Paper Co., 204 USPQ 329, 333-334 (TTAB 1979):
The theory of natural expansion is, in a sense, a legal fiction. It treats the use of a trademark by an opposer on particular goods, commencing after an applicant has entered the field with a mark on its own goods, as though opposer's use had begun prior to the use by applicant. As indicated above, the rationale of the theory is that the purchasing public, through education or experience, would have thought at the time of applicant's initial appearance on the scene that applicant's mark signified a connection of its goods with opposer notwithstanding that the goods sold at the time by opposer and applicant were not so related as to support an opposition on traditional grounds of likelihood of confusion. When the doctrine of the natural expansion of use of a mark is applicable, it is not even necessary that opposer actually be in its extended business; the possibility that opposer may wish to enlarge the use of its mark into the trade served by applicant may be enough....
*5 Before the doctrine of natural expansion may be invoked by opposer, it must be shown that the new goods, i.e., the extension of the line of business from that which pre-existed applicant's arrival, evolved from the manufacturing and marketing activities of opposer and did not result from the acquisition of a new business by a diversifying company. The burden is on opposer to present evidence that is persuasive of the fact that the new business represents an expansion of, and not merely an unrelated addition to, the business that opposer conducted prior to the first use of applicant's mark on the goods for which applicant is seeking a registration. Without such evidence of a natural expansion, opposer would be asserting the dreaded right in gross to a mark....
(citations omitted)
In this case opposer has indeed expanded its services into the computer-aided design, manufacturing and engineering area. However, as indicated above, the mere fact that such an expansion occurred does not automatically establish that this expansion was within the natural scope of opposer's activities. See, SBS Products Inc. v. Sterling Plastic & Rubber Products Inc., 8 USPQ2d 1147 (TTAB 1988). Here, on the contrary, opposer's expansion was not a "natural" expansion, but was a result of peculiar circumstances, namely, opposer's acquisition by General Motors. Opposer has not met its burden of demonstrating that a provider of computer programming services involving data processing would normally or reasonably expand to include computer-aided design and manufacturing, or that purchasers would generally expect such services to emanate from the same source. ILC Industries, Inc. v. ILC, Inc., 175 USPQ 623 (TTAB 1972). Accordingly, opposer cannot bootstrap its later entry into the computer-assisted design and manufacturing area in order to interfere with applicant's intervening rights stemming from applicant's adoption and use of EDSA for "computer programs for electrical distribution system analysis and design," rights which were established at a time that opposer was involved only in the data processing field. See, Victor Comptometer Corp. v. Shakespeare Co., 184 USPQ 634 (TTAB 1974).
In reaching our conclusion that there is no likelihood of confusion between EDS for computer data processing programming/information management services and EDSA for computer programs for electrical distribution system analysis and design we have taken into consideration opposer's contention that its mark is famous. Applicant has essentially conceded this point, so we need not make a determination of whether opposer has produced sufficient evidence for us to otherwise conclude that EDS is famous. There is no question that fame of a mark is entitled to great weight in determining likelihood of confusion in cases featuring a famous or strong mark. Kenner Parker Toys Inc. v. Rose Art Industries, Inc., --- F.2d ----, --- USPQ2d ----, Appeal No. 91-1399 (Fed.Cir., April 15, 1992); Specialty Brands v. Coffee Bean Distribs., 748 F.2d 669, 223 USPQ 1282 (Fed.Cir.1984). But, while fame of a mark may have a great bearing on the commercial impression and the consequent confusing similarity of a mark with a famous mark, fame is not the only factor that must be considered. If that were so, the owner of a famous mark would have a right in gross, and would be able to prevent another party's use of the same or a similar mark for any goods or services. That is clearly not contemplated by the trademark law, as was recently reaffirmed by the Court of Appeals for the Federal Circuit in Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388 (Fed.Cir.1992). In that case the Court stated, in reversing the Board's finding of likelihood of confusion between Electronic Data Systems Corp.'s (the opposer herein) mark EDS for "computer programming services including the design, implementation and management of electronic data processing programs and telecommunications services" and the applicant's mark E.D.S. for power supplies or battery chargers, that the Board had failed to assess properly the differences in purchasers, channels of trade, and what each company sold, and overlooked the sophistication of the purchasers, and that the Board accorded too much weight to the renown and strength of Electronic Data's mark.
*6 In our view, the case before us presents a factual situation closer to that in Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., supra, than in Kenner Parker Toys Inc. v. Rose Art Industries, Inc., supra and in Specialty Brands v. Coffee Bean Distribs., supra. We think that some of the same factors that the Court found persuasive in Electronic Design & Sales, Inc. v. Electronic Data Systems Corp. militate against a finding of likelihood of confusion here. As we stated previously, the only "relationship" which opposer has shown between the services identified in its registration and for which it has made prior trade name use, and applicant's goods, is that they both involve computer programs. Even the expanded scope of protection which must be accorded a famous mark cannot encompass applicant's goods on this basis alone, given the use of computers in virtually all aspects of life today.
With respect to the point about common customers, we note that the parties have some large industrial and governmental agencies in common as purchasers and prospective purchasers. However, the fact that a large company, which buys a myriad different products and services, may purchase opposer's and applicant's services and goods, does not either make the services and goods related or demonstrate that confusion is likely to occur because of the use of similar marks. On the contrary, applicant's evidence shows that, because of the technical nature of its product, it deals only with the Chief Electrical Engineer of its customers and prospective customers. [FN7] Opposer has not provided any evidence that its computer data processing programming services are marketed to people in the same position. We find no support in the record for the statement in opposer's reply brief that "opposer markets a line of products to a chief engineer." Reply brief, p. 9.
Further, because of the nature and cost of opposer's services and applicant's goods, both parties' offerings would be carefully scrutinized by prospective purchasers, and any purchasing decisions would be made after careful consideration. The sophistication and discrimination of purchasers also support our conclusion that confusion is not likely to result from the contemporaneous use of the parties' marks on their respective services and goods. We reject opposer's argument, based on a scenario that applicant's product will fail and cause a city-wide blackout, with resultant news reports about EDSA software, that the sophistication of opposer's customers and prospective customers will not mitigate confusion. Section 2(d) of the Trademark Act is concerned about the likelihood of confusion, not some theoretical possibility built on a series of imagined horrors.
In summary, despite the similarity of the parties' marks [FN8] and the conceded fame of opposer's mark, opposer has failed to meet its burden of proving a sufficient connection between the services for which its mark is registered, and for which it made trade name use prior to applicant's first use, and applicant's identified services, such that we can conclude that confusion is likely.
*7 Decision: The opposition is dismissed.
L.E. Rooney
E.J. Seeherman
G.D. Hohein
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 73/640,942, filed January 23, 1987 and asserting first use as early as January 1980 and first use in interstate commerce as early as February 1981.
FN2. In its brief opposer argues that applicant has not made trademark use of its mark, but since this issue was neither pleaded nor tried, we have not considered it as an additional ground for opposition.
FN3. Registration No. 952,895, issued February 6, 1973; Section 8 affidavit accepted; Section 15 affidavit received.
FN4. Opposer submitted a notice of reliance referring to four registrations for EDS and EDS-prefixed marks, and requesting that the Patent and Trademark Office provide a copy of each registration. Attached to the notice of reliance was an order letter, asking the Office to provide the Board and opposer with status copies of the registrations. Apparently the order letter was not separated from the notice of reliance, and because it was placed in the opposition file the order was not filled.
The mere ordering of a status and title copy of a registration does not make it of record, see Trademark Rule 2.122(d), and, normally, an order filed at the time of filing a notice of reliance would not be filled in time for a party to submit the copy during its testimony period. While the Board regrets that the order was not properly forwarded, this clerical error does not excuse opposer from following the rules regarding the proper manner for making registrations of record. It is also noted that opposer requested, in its order letter, that the Office provide it with status copies of each registration, so that opposer should have been alerted to the possibility of a problem when the copies were not received. Further, it is obvious from the fact that opposer did not receive such copies that it never served them on applicant.
We cannot treat the registrations as having been stipulated into evidence since applicant did not treat them as being of record, but specifically stated, in its trial brief, that it never received the notice of reliance or copies of the registrations.
However, opposer, with its notice of reliance, attached copies or facsimiles of the registrations which it sought to order, and the copy of the registration for the mark EDS is a status and title copy prepared and issued by the Office shortly prior to the filing of the opposition. Accordingly, this registration is of record.
Opposer has also attempted to make of record, pursuant to Trademark Rule 2.122(e), copies of its annual reports from 1970 through 1987. Annual reports are not considered printed publications which may be submitted under this rule, and opposer cannot make them of record through its notice of reliance. See, Midwest Plastic Fabricators Inc. v. Underwriters Laboratories Inc., 12 USPQ2d 1267 (TTAB 1989), affd 906 F.2d 1568, 15 USPQ2d 1359 (Fed.Cir.1990). However, they are of record because they were introduced during the testimony of opposer's witness.
FN5. It is noted that opposer's main brief has indicated that Verner Exhibit 41 supports the statement made in its brief regarding its revenues for the years 1988 and 1989. The exhibit, however, does not provide revenue figures after 1987. Although opposer may have merely been attempting to update the record with figures that were unavailable at the time the exhibit was produced, the rules do not provide for the submission of new evidence with the trial brief; accordingly, the additional figures have not been considered.
FN6. Opposer concedes in its trial brief that substantially all of opposer's revenues at the time of applicant's alleged first use of its mark related to electronic data processing. Main brief, p. 19.
FN7. Opposer argues in its brief that "applicant no doubt markets to more than chief engineers" because "[l]ooking at applicant's list of customers, many of those firms probably have no person with the title of 'Chief Engineer' or, if they do, he probably is not an electrical engineer." Reply brief, p. 9. Opposer has provided no evidentiary support for these contentions, and we decline to accept opposer's speculations as to whether applicant deals with any non-Chief Electrical Engineers since applicant's evidence as to this is unrebutted. For the same reason, we have given no consideration to opposer's speculation that "applicant advertises in trade magazines which no doubt reach non-'Chief Engineers'." Id.
FN8. Opposer also makes what might be called a trade-dress argument, based on the fact that one of applicant's brochures depicts applicant's mark in a color blue that is similar to the color blue that opposer uses. While trade dress may be considered in connection with the commercial impression engendered by a mark, see Kenner Parker Toys Inc., v. Rose Art Industries, Inc., supra, one example of the common use of a primary color is not a sufficient basis for us to conclude that the trade dress is similar. In any event, we have deemed the marks to be similar.