Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE TIE/COMMUNICATIONS, INC.
Serial No. 501,553
July 23, 1987
Amster, Rothstein & Ebenstein for applicant.
Mary C. Coyle
Trademark Examining Attorney
Law Office 1
(Joseph Webb, Managing Attorney)
Before Sams, Krugman and Cissel
Members
Opinion by Sams
TIE/Communications, Inc. has appealed from the Trademark Examining Attorney's final refusal to register its mark "DATA STAR" for goods described in the application as "voice/data communications terminals and parts thereof." [FN1] The Examining Attorney refused registration, under Section 2(d) of the Trademark Act, in view of a prior registration of the mark "DATA STAR" in the form shown below, for "computer programs recorded on magnetic media." [FN2]
There is no dispute that applicant's mark "DATA STAR" and the mark cited under Section 2(d) are virtually identical. The only issue to be decided, then, is whether confusion is likely in the contemporaneous use of the mark "DATA STAR" on the goods recited in applicant's application and those recited in the cited registration. We believe confusion is likely and, therefore, affirm the refusal to register.
The Examining Attorney's position is premised on her finding that applicant's goods are a combination telephone system and computer system. Relying on cases in which the Board has found confusion likely in the marketing of both computer hardware and computer software under the same or similar marks, the Examining Attorney concluded that confusion is likely in this case, where the nearly identical mark is applied to computer programs and a combination telephone and computer system.
Applicant disputes the Examining Attorney's finding of fact that its goods are a combination telephone system/computer system. Applicant argues that its goods are in fact telephone communications systems which have, as an optional feature, the capability of transmitting information between computers and computer peripheral equipment, but that computers and computer peripheral equipment are not part of the telephone systems marketed under its "DATA STAR" mark. Applicant argues, further, that, although data can be transmitted using applicant's communications terminals, operation of those terminals would not require the purchase or use of computer programs. Applicant emphasizes also that purchasers of these goods are sophisticated, a fact which diminishes the likelihood of confusion.
On the basis of the advertising literature made of record by applicant, we find that applicant's mark "DATA STAR" is not used on goods that could fairly be described as computer hardware and that the telephone communications systems in connection with which the "DATA STAR" mark is used are not, as the Examining Attorney inferred, a combination telephone and computer. Nonetheless, we also find that applicant's product literature makes clear that its "DATA STAR" telephone systems are highly sophisticated communications equipment designed for use with display terminals connected to computer systems. Thus, while it would be inappropriate in this case to find confusion likely because the products involved are computer hardware, on one hand, and computer software, on the other, the hardware--software product relationship is not the only one which may give rise to confusion as to source.
*2 The goods listed in the cited registration are "computer programs recorded on magnetic media." As such, they are not limited in scope to any particular field and we must, therefore, read the identification of goods as covering all computer programs recorded on magnetic media. We find it likely that the business customers for applicant's sophisticated telephone communications systems used in conjunction with terminals and computer systems would also be customers for at least some types of computer programs recorded on magnetic media. When those customers encounter the mark "DATA STAR" on both sorts of goods, they would likely assume both goods emanate from the same source. That the customers for the communications equipment offered by applicant under its "DATA STAR" mark are likely to be sophisticated business persons does not diminish the likelihood that they would be confused as to source upon seeing a computer program bearing the identical mark, which program could conceivably be used in conjunction with computer hardware hooked into the "DATA STAR" communications system. Even sophisticated purchasers are not immune from source confusion where identical marks are applied to related sorts of goods.
We distinguish the present fact situation from the fact situations involved in In re Quadram Corp., 228 USPQ 863 (TTAB 1985) and In re Fesco Inc., 219 USPQ 437 (TTAB 1983), cases upon which applicant relies for support of its position that confusion is not likely in this case. In re Quadram Corp. involved the mark "MICROFAZER" for "buffers for storing data to allow microcomputers, on the one hand, and associated printers and/or modems, on the other hand, to operate independently of each other" and "FASER" for "computer programs recorded on magnetic disc media in the field of energy conservation and management." Not only did the recitation of goods for the mark "FASER" limit the computer programs to a particular field, but the marks involved in the case were found by the Board to be "specifically different in appearance and pronunciation". In re Fesco Inc. involved the marks "FESCO" (with a design) for "distributorship services in the field of farm equipment and machinery" and "FESCO" for, inter alia, fertilizer and fertilizer processing equipment and machinery. The Board found that the goods and services involved in the case did not "move in common trade channels" and that the customers for farm equipment and machinery would not "come into contact with the factory equipment by means of which fertilizer is manufactured and processed." Here, customers for the telephone communications equipment recited in the application would likely also be business customers for registrant's goods, computer programs. Moreover, the marks involved here are virtually identical.
Decision: The refusal to register is affirmed.
J.D. Sams
G.D. Krugman
R.F. Cissel
Members, Trademark Trial and Appeal Board
FN1. Serial No. 501,533, filed September 28, 1984.
FN2. Registration No. 1,329,271, issued April 9, 1985.