THIS DISPOSITION IS NOT
`CITABLE AS PRECEDENT OF
`THE TTAB
`
`Mailed:
`
`March 11, 2004
`Paper No. 10
`PTH
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________
`
`Trademark Trial and Appeal Board
`________
`
`In re AbleNet, Inc.
`________
`
`Serial No. 78120762
`_______
`
`Elizabeth D. Lewen of Sherrill Law Offices, PLLC for
`AbleNet, Inc.
`
`Linda E. Blohm, Trademark Examining Attorney, Law Office
`110 (Chris A. F. Pedersen, Managing Attorney).
`_______
`
`Before Quinn, Hairston and Rogers, Administrative Trademark
`Judges.
`
`Opinion by Hairston, Administrative Trademark Judge:
`
`An application has been filed by AbleNet, Inc. to
`
`register the mark shown below
`
`
`CITABLE AS PRECEDENT OF
`THE TTAB
`
`Mailed:
`
`March 11, 2004
`Paper No. 10
`PTH
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________
`
`Trademark Trial and Appeal Board
`________
`
`In re AbleNet, Inc.
`________
`
`Serial No. 78120762
`_______
`
`Elizabeth D. Lewen of Sherrill Law Offices, PLLC for
`AbleNet, Inc.
`
`Linda E. Blohm, Trademark Examining Attorney, Law Office
`110 (Chris A. F. Pedersen, Managing Attorney).
`_______
`
`Before Quinn, Hairston and Rogers, Administrative Trademark
`Judges.
`
`Opinion by Hairston, Administrative Trademark Judge:
`
`An application has been filed by AbleNet, Inc. to
`
`register the mark shown below
`
`
`
`Ser No. 78120762
`
`for an “electronic educational device with sound recording
`
`and play-back units and a plurality of switches for use in
`
`combination with a standard publication namely, a book, to
`
`provide audible play-back of text read from a designated
`
`page or facing pages of the publication by activating a
`
`designated switch from the plurality of switches.”1
`
`The Trademark Examining Attorney2 has refused
`
`registration under Section 2(d) of the Trademark Act, 15
`
`U.S.C. §1052(d), on the ground that applicant’s mark, if
`
`applied to the identified goods, would so resemble the
`
`previously registered mark BOOKWORM for an “electronic
`
`hand-held Braille reading device used for translating
`
`Braille,”3 as to be likely to cause confusion.
`
`When the refusal was made final, applicant appealed.
`
`Applicant and the Examining Attorney have filed briefs on
`
`the case.
`
`We reverse the refusal to register.
`
`Our determination under Section 2(d) of the Act is
`
`based on an analysis of all the probative facts in evidence
`
`that are relevant to the factors bearing on the likelihood
`
`of confusion issue.
`
`In re E. I. du Pont de Nemours and
`
`1 Application Serial No. 78120762, filed April 10, 2002, which
`alleges a bona fide intention to use the mark in commerce.
`2 The present Examining Attorney was not the original Examining
`Attorney in this case.
`3 Registration No. 2,438,958, issued March 27, 2001.
`
`2
`
`
`
`Ser No. 78120762
`
`Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
`
`In any
`
`likelihood of confusion analysis, however, two key factors
`
`are the similarities/dissimilarities between the marks and
`
`the similarities/dissimilarities between the goods or
`
`services.
`
`Federated Foods, Inc. v. Fort Howard Paper Co.,
`
`544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
`
`Turning first to a consideration of the respective
`
`marks, we find that they are similar to the extent that
`
`they share the word BOOKWORM.
`
`However, there are specific
`
`differences in the marks.
`
`Registrant’s mark is simply the
`
`word BOOKWORM whereas applicant’s mark consists of BOOKWORM
`
`along with a prominent and fanciful design of a worm
`
`reading a book and applicant’s name “AbleNet.”
`
`Turning next to a consideration of the respective
`
`goods, it is well settled that goods need not be identical
`
`or even competitive in order to support a finding of
`
`likelihood of confusion. Rather, it is sufficient that the
`
`goods or services are related in some manner, or that the
`
`circumstances surrounding their marketing are such, that
`
`they would be likely to be encountered by the same persons
`
`in situations that would give rise, because of the marks
`
`used thereon, to a mistaken belief that they originate from
`
`or are in some way associated with the same source or that
`
`there is an association or connection between the sources
`
`3
`
`
`
`Ser No. 78120762
`
`of the respective goods or services. In re Melville Corp.,
`
`18 USPQ2d 1386 (TTAB 1991); and In re International
`
`Telephone & Telegraph Corp., 197 USPQ2d 910 (TTAB 1978).
`
`Applying these principles to the present case, we find
`
`that the Examining Attorney has failed to establish that
`
`applicant’s and registrant’s goods are similar or related
`
`in any way that would result in source confusion.
`
`Applicant’s goods are an “electronic educational
`
`device with sound recording and play-back units and a
`
`plurality of switches for use in combination with a
`
`standard publication, namely, a book, to provide audible
`
`play-back of text read from a designated page or facing
`
`pages of the publication, by activating a designated switch
`
`from a plurality of switches.”
`
`Registrant’s goods are an
`
`“electronic hand-held Braille reading device used for
`
`translating Braille.”
`
`The Examining Attorney contends that the goods are
`
`related because “[t]he function of each of these products
`
`is to enhance a users [sic] ability to read a publication.”
`
`(Brief, p. 6).
`
`According to the Examining Attorney, a non-
`
`sighted person could very well avail him or herself of
`
`applicant’s product, and both applicant’s and registrant’s
`
`goods may be sold in electronic stores, bookstores and
`
`other specialty stores.
`
`The Examining Attorney has
`
`4
`
`
`
`Ser No. 78120762
`
`submitted a printout of a newspaper article about applicant
`
`which indicates that applicant produces products for
`
`persons with disabilities.
`
`Notwithstanding the Examining Attorney’s contentions,
`
`we are not convinced that applicant’s and registrant’s
`
`goods would travel in the same channels of trade to the
`
`same class of purchasers.
`
`It is obvious that the class of
`
`purchasers of registrant’s electronic hand-held Braille
`
`reading device used for translating Braille is non-sighted
`
`persons.
`
`While applicant’s identification of goods
`
`contains no limitations as to class of purchasers, i.e.,
`
`non-sighted persons are not excluded, it nonetheless seems
`
`to us that an electronic educational device with a
`
`plurality of switches and a book with regular text is not
`
`the type of device that would usually be marketed to non-
`
`sighted persons.
`
`In point of fact, there is no evidence in
`
`the record to indicate that this type of device is marketed
`
`to non-sighted persons.
`
`Further, although it appears that
`
`applicant produces products for persons with disabilities,
`
`there is no evidence which suggests that applicant produces
`
`products for non-sighted persons.
`
`The respective goods, as
`
`identified, do not appear to be competitive or
`
`complementary, and there is no evidence on which we may
`
`conclude that the goods are otherwise related in any way.
`
`5
`
`
`
`Ser No. 78120762
`
`Further, there is no evidence that the types of goods
`
`involved in this case travel in the same channels of trade.
`
`In view of the highly specialized nature of registrant’s
`
`electronic hand-held Braille reading device, we are not
`
`persuaded that this type of device would be sold in
`
`electronics stores and bookstores, or even the same
`
`“specialty” stores as applicant’s goods. However, even
`
`assuming that applicant’s and registrant’s goods would be
`
`sold in the same specialty stores, i.e., stores
`
`specializing in products for persons with disabilities of
`
`all types, it would appear that purchasers of registrant’s
`
`highly specialized device would be knowledgeable with
`
`respect to the source of electronic devices for reading
`
`Braille, and thus are likely to know that a company
`
`offering an electronic educational device and a standard
`
`book is not likely to be the source of electronic devices
`
`for reading Braille.
`
`In sum, in view of the specific differences in
`
`applicant’s and registrant’s marks and because the goods
`
`are not sufficiently related, we find that there is no
`
`likelihood of confusion in this case.
`
`Decision:
`
`The refusal to register under Section 2(d)
`
`is reversed.
`
`6
`
`
`
`Ser No. 78120762
`
`Rogers, Administrative Trademark Judge, dissenting:
`
`I agree with the majority's conclusion that the
`
`applicant's mark and the mark in the cited registration are
`
`similar.
`
`Moreover, because the involved identifications of
`
`goods include products that would be marketed to blind or
`
`visually impaired individuals, the identical pronunciation
`
`of registrant's mark, BOOKWORM, and the clearly dominant
`
`portion of applicant's mark, ABLENET BOOKWORM and design,
`
`is particularly significant.
`
`As for the goods and prospective purchasers or users
`
`thereof, I start with the cited registration and its
`
`identification, which reads "electronic hand-held Braille
`
`reading device used for translating Braille."
`
`Braille is
`
`defined as "a system of lettering, devised by [Louis]
`
`Braille for use by the blind, in which each character is a
`
`combination of raised dots that are read by touch" and "to
`
`write in Braille characters."
`
`The Random House College
`
`Dictionary 163 (revised ed. 1982).
`
`Registrant's hand-held
`
`device for translating Braille could be a device that would
`
`translate Braille characters to visually readable text,
`
`perhaps as an item that a sighted person might use to read
`
`something written in Braille by a blind or visually
`
`impaired person.
`
`On the other hand, the device could be a
`
`7
`
`
`
`Ser No. 78120762
`
`hand-held speech synthesizer that would translate Braille
`
`into audible sounds for a blind or visually impaired person
`
`to listen to.
`
`Because our analysis of likelihood of
`
`confusion must be based on the identification as written in
`
`the registration, we must conclude that it could encompass
`
`both of the items I have described, even if independent
`
`investigation might reveal that the registrant actually
`
`uses its mark for only one of these items or, for that
`
`matter, something different that I have not contemplated by
`
`my reading of the identification.
`
`As for applicant's identification, it specifies that
`
`applicant's product is an "electronic educational device
`
`with sound recording and play-back units and a plurality of
`
`switches for use in combination with a standard publication
`
`namely, a book, to provide audible play-back of text read
`
`from a designated page or facing pages of the publication
`
`by activating a designated switch from the plurality of
`
`switches." While this is a lengthy identification, it
`
`still is not entirely clear what the product does.
`
`However, I construe the identification to include any item
`
`that "reads" the designated page or pages of a book,
`
`synthesizes the text into speech and records it, allowing
`
`the user to play the recording back as needed.
`
`Such an
`
`item would be especially useful for a blind or visually
`
`8
`
`
`
`Ser No. 78120762
`
`impaired person wanting to read a particular book, without
`
`having to search out a recording by some individual reading
`
`the book aloud.
`
`For example, a blind or visually impaired
`
`student could use the device to help read a textbook.
`
`I
`
`would so construe applicant's identification even if the
`
`record did not reveal that applicant markets products for
`
`the disabled (including, presumably, the blind or
`
`individuals suffering from disabling illness or injury
`
`affecting their vision).
`
`In short, I view the involved identifications each as
`
`encompassing devices that can help blind or visually
`
`impaired individuals read books, whether they are in
`
`Braille or in printed form, by creating an audible English
`
`version.
`
`Thus, even if the products would not be
`
`competitive, in that one is used to translate Braille,
`
`while the other is used to transform text into sound, they
`
`both would be marketed to the same class of prospective
`
`purchasers.
`
`In addition, since neither identification
`
`includes a restriction on channels of trade, we must
`
`presume that the identified goods can be marketed in any
`
`channel of trade that would normally be used to market
`
`products of this type to blind or visually impaired
`
`individuals, i.e., the goods could be marketed in the same
`
`channels of trade.
`
`9
`
`
`
`Ser No. 78120762
`
`On this record, I would affirm the refusal of
`
`registration under Section 2(d) of the Lanham Act.
`
`10
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