Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 HRL ASSOCIATES, INC.
WEISS ASSOCIATES, INC.
July 21, 1989
Hearing: April 13, 1989
Opposition No. 75,632, to application Serial No. 604,470, filed June 16, 1986
Thomas J. Moore for HRL Associates, Inc.
R. Gale Rhodes, Jr. and Jeffrey L. Miller for Weiss Associates, Inc.
Before Seeherman, Hanak and Quinn
An application has been filed by Weiss Associates, Inc. to register the mark "TMM" for "computer program software recorded on diskettes used for control of maintenance operations, e.g. maintenance inventory control, work order processing, preventive maintenance, equipment history and the like." [FN1]
Registration has been opposed by HRL Associates, Inc. on the grounds that opposer is the owner of the previously used and registered marks "TMS" and "TMS TOTAL MAINTENANCE SYSTEM" and design for a variety of goods and services related to property maintenance and management systems; [FN2] that the goods and services of the respective parties are directly competitive; that applicant's mark comprises deceptive matter and matter which falsely suggests a connection with opposer; [FN3] and that applicant's mark, as applied to applicant's goods, so resembles opposer's previously used and registered marks as to be likely to cause confusion.
Applicant, in its answer, admitted that the parties' goods and services are directly competitive, are advertised in the same publications, and are sold through the same channels of trade to the same class of customers. Applicant otherwise denied the salient allegations of the opposition. Applicant also set forth affirmative defenses, including laches. [FN4]
The record consists of the pleadings, the file of the opposed application, portions of opposer's president's discovery deposition offered by applicant, status and title copies of opposer's pleaded registrations, testimony depositions and related exhibits offered by each party, and notices of reliance on printed publications offered by each party. Both parties filed briefs on the case and were represented by counsel at an oral hearing.
The record shows that opposer is engaged in the design, development and sale of computer program software in the field of property maintenance and management. A purchaser of opposer's product (generally an individual, on behalf of a corporation or other business entity, with the title plant engineer, maintenance director, plant manager or similar title) receives the software program on a disk, a disk sleeve, a three-ring binder holding a user's manual regarding the installation, implementation and operation of the software, and a slip cover for the binder. In addition, the purchaser receives corrective maintenance work order forms used in connection with opposer's software program. The purchaser also receives software updates and, if necessary, technical assistance over the telephone. In an advertisement, opposer describes its system as follows: "helps property managers, maintenance directors, management officials effectively plan, organize, schedule and control all maintenance activities through computer-generated work orders (preventive and corrective) and eight essential management reports" (opposer's exhibit no. 19). In the same advertisement, opposer set forth the following reasons why its program is valuable: "to avoid unnecessary downtime and maintenance expenditures; to maximize staff productivity; to improve overall organization, scheduling and management of maintenance work." Henry R. Leuthy, Jr., opposer's president, testified that the average current price for the "TMS" product for use on a microcomputer by a single user is $6,295 and by a multiuser is approximately $10,000. The current price for opposer's product for use on a main frame computer is over $30,000. Opposer has promoted its goods and services under the mark in professional and trade magazines and at trade shows. The mark "TMS", as shown by two of opposer's registrations, is derived from the words "total maintenance system."
*2 George F. Weiss, applicant's president, testified that applicant's first sale of its "TMM" computer program software took place in January 1985. Mr. Weiss testified that applicant's program computerizes the maintenance departments of "large industrials" such as chemical plants, manufacturing plants and electronic plants, and institutions such as hospitals. The individuals using applicant's system are responsible for keeping plant equipment in operation and, in fulfilling their duties, these people conduct preventive and corrective maintenance on the equipment. Mr. Weiss testified that applicant's basic maintenance software package costs $3500. Optional programs are available, as for example, inventory control, which is priced at $1500. Typically, the system purchased from applicant has a total cost of $5,000 (i.e., the basic program plus inventory control option) and, with additional options, the cost may total $9,000. Applicant has promoted its system in magazine advertisements, at trade shows and through direct mailings. The mark "TMM" is derived from the terminology "total maintenance management."
Opposer has made of record status and title copies of its pleaded registrations and, accordingly, there is no issue with respect to opposer's priority. King Candy Co., Inc. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). As noted, applicant has admitted that its goods and opposer's goods and services are directly competitive; that the goods and services of the respective parties are advertised in the same media; and that the goods and services travel in the same channels of trade to the same class of potential and actual customers. In view thereof, and since the record clearly supports such a conclusion, there is no doubt as to the similarity of the parties' goods and services. The only issue before us is whether applicant's mark so resembles opposer's marks as to be likely to cause confusion. We find that confusion is likely.
We conclude that the letter marks "TMS" and "TMM" are similar. Both contain the letters "TM" and differ by only one letter, that is, the last letter in each mark. Confusion is more likely between letter marks than between other types of marks, keeping in mind also that recall among purchasers is often hazy and imperfect. See Edison Brothers Stores, Inc. v. Brutting E.B. Sport-International G.m.b.H., 230 USPQ 530, 533 (TTAB 1986) and case cited thereat. It may well be that purchasers of the parties' goods and services are informed and discriminating individuals; it does not follow, however, that these purchasers are infallible in their recollection of trademarks.
Mr. Weiss, in his testimony, identified advertisements of third-parties for property maintenance systems sold under designations such as MMS, PMS, MTS, RMS and MCS (exhibits 13-24). [FN5] Applicant's notice of reliance further shows that letter combinations are commonly used to identify goods and services in the computer industry. The fact that others may have adopted combinations of letters to identify their goods and services in the area of property maintenance, however, is not persuasive to establish that the specific mark of opposer, "TMS", is in any way lacking in distinctiveness for opposer's goods and services. We acknowledge that the mark of opposer is intended as an abbreviation of "total maintenance system", but that fact does not diminish the likelihood of confusion between opposer's mark and a similar mark for identical goods. Moreover, the fact that the use of the mark "TMS" is often accompanied by the wording "total maintenance system" is not persuasive of a contrary result.
*3 Applicant's principal argument in support of registration centers on the alleged absence of any likelihood of confusion at the time of purchase of the parties' programs. Applicant argues, in essence, that the likelihood of initial confusion is not a ground for relief. The argument is better understood after an examination of the decision-making process involved in the purchase of the parties' goods.
A potential purchaser's first contact with either of the parties generally occurs at a trade show or by way of a magazine advertisement. The potential purchaser may obtain literature covering the respective program. If still interested, the potential purchaser may then order a demonstration kit. [FN6] Mr. Weiss testified that applicant's demonstration kit "is a full working copy of our software that has a limitation in it as to how much data it will handle to make it not usable by the client as a full system but to show him what the full system would do" (Weiss, p. 22). After receipt of the demonstration kit, there is communication back and forth between the potential purchaser and the software vendor, in both written correspondence and over the telephone. The communications allow the vendor to assist the potential customer in the evaluation of the system and address any concerns that he may have regarding the system. Mr. Weiss has stated that the communications between his company and a potential customer can extend to nine months before a final purchasing decision is made.
Applicant argues that sophisticated purchasers of computer products and services, after an extended period of evaluating competing products, are not confused as to source at the time of purchase; rather, applicant argues, the purchasers know the specific manufacturer with whom they are dealing, and that any initial confusion, if such existed, is dissipated by virtue of the long and involved purchasing decision process.
The Board, in giving full consideration to applicant's argument, will assume arguendo that there is no point of purchase confusion and that the purchasers of the parties' goods are sophisticated. [FN7]
Section 2(d) of the Trademark Act does not make a distinction between confusion arising at an early stage in the purchasing process and confusion arising at a later stage. Registration should be denied under the Trademark Act when there exists likelihood of confusion, no matter where it occurs in the marketing or sale of similar goods under similar marks. It is logical to so find, because confusion of a potential purchaser early in the purchasing decision is just as likely to cause injury to an opposer as confusion that may arise later in the purchasing decision. The Board has, in the past, found likelihood of confusion where source confusion occurred even after the point of purchase. For example, such post-sale confusion may exist among the ultimate users of the goods. See: In re Artic Electronics Co., Ltd., 220 USPQ 836 (TTAB 1983). ["MARS" for coin-operated audio video games and for electronic apparatus for recognizing money in coin and bill form is likely to cause confusion; in addition to source confusion among buyers, source confusion among ultimate users of the goods (i.e., arcade customers) is both likely and encompassed within the confusion proscriptions of Section 2(d) ]. See also: In re Star Pharmaceuticals, Inc., 221 USPQ 84 (TTAB 1984). ["STAR" and design and "STARR" and design for pharmaceutical products is likely to cause confusion; in evaluating likelihood of confusion under Section 2(d), events that may happen subsequent to the sale of the product are relevant]
*4 Just as the Board, in evaluating likelihood of confusion, has looked to events that might happen subsequent to the sale of a product, events prior to the sale are also relevant in determining likelihood of confusion. The 1962 amendments to the Trademark Act included a deletion of the qualifying term "purchasers" after referring to marks likely "to cause confusion, or to cause mistake, or to deceive." This amendment evidenced an intent to remove any limitation of such standards to purchasers of goods. That is to say, Section 2(d) relates to potential as well as actual purchasers. See: Syntex Laboratories, Inc. v. Norwich Pharmacal Co., 437 F.2d 566, 568, 169 USPQ 1, 2 (2d Cir.1971). See also: USTA Trademark Review Commission: Report and Recommendations on the United States Trademark System and the Lanham Act, 77 TMR 375, 378 (1987) citing Marathon Manufacturing Co. v. Enerlite Products Corp., 767 F.2d 214, 226 USPQ 836 (5th Cir.1985). In this case, as opposer argues, opposer may suffer injury if a potential purchaser is initially confused between the parties' respective marks, in that opposer may be precluded from further consideration by the potential purchaser in reaching his or her buying decision (which may, in turn, prevent opposer from making a sale). The sophistication of the purchasers in the purchasing scenario involved in this case is not enough to overcome the likelihood that these purchasers will be confused at an early stage in the buying decision. [FN8]
In sum, we believe that an opposition can be successful against a defense that the sophistication of the buyers and the involved nature of the purchasing decision render confusion at the point of purchase unlikely by proof of likelihood of confusion at the initial stages of the purchasing process. We find here that, even though the parties' programs are purchased by discriminating purchasers after an extended period of negotiation and deliberation, there is nevertheless a likelihood of confusion, at the initial stage of the purchasing process, when substantially identical programs are sold under the parties' similar marks.
It is important to keep in mind in this case that the parties' systems are virtually identical, travel in the same channels of trade to the same class of purchasers, and are advertised in the same publications. These factors weigh heavily in our conclusion that presale confusion is likely between the marks "TMS" and "TMM." As has been stated in prior cases, a lesser degree of similarity between two parties' marks is required when the marks are applied to identical goods or services. See: In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983). See also: Callman, Unfair Competition, Trademarks & Monopolies, § 20.02 (4th ed. 1983).
We have reached our conclusion without giving much weight to opposer's evidence of actual confusion. [FN9] Opposer has relied upon the deposition of John Tusai, the manager of a preventive maintenance program for equipment at a pharmaceutical manufacturing plant. Mr. Tusai, in a letter to Mr. Weiss regarding this instance of his alleged confusion, indicated that he had requested and received literature from approximately thirty companies in order to make a comparison of available systems. Pursuant to his investigation, Mr. Tusai ordered and received one of applicant's "TMM" demonstration kits. A month later, when contacted on the telephone by one of opposer's sales representatives regarding opposer's "TMS" demonstration kit, Mr. Tusai indicated to one Maria Pesarillo that he already had a "demo disk" ordered. When told that opposer had no record of such an order, and that opposer's demonstration kit cost $45, Mr. Tusai then realized he had ordered applicant's "TMM" demonstration kit for $25. Mr. Tusai testified (at p. 14) as follows:
*5 There was some minor confusion on the TMM and TMS software package. When she caught me, she caught me off guard. And I've been reviewing a numerous amount of software packages. So the TMM and TMS threw me off, because I reviewed AMMS and a lot of others, so it just kind of threw me off guard. And that's why I thought I ordered her package.
In the letter to Mr. Weiss, Mr. Tusai stated that his "mistake occurred during my conversation with [Maria Pesarillo], not at the time of placing the order [for the demonstration kit]." Mr. Tusai, during his deposition, clarified the point that he did not purchase the "TMM" demonstration kit by mistake and that he knew exactly from whom he was buying when he purchased the kit (Tusai deposition, pgs. 20-21).
Opposer is straining when it attempts to draw a connection between Mr. Tusai's "mistake" and actual confusion. Mr. Tusai is clear on the point that there was no confusion on his part in ordering applicant's demonstration kit. The mistake was more in the nature of an oral misunderstanding (and, thus, has little or no bearing on likelihood of confusion), rather than a classic case of actual confusion as to source or origin of the goods.
Likewise, West Shore Community College's contact with opposer is not probative of actual confusion. The college apparently had ordered and received demonstration kits from both parties. Upon completion of its analysis of the "TMS" and "TMM" programs, the college returned both demonstration kits to opposer in one box. On these facts alone, we can only speculate as to the reason or reasons why applicant's materials were returned to opposer.
The third example relied upon by opposer for purposes of showing actual confusion concerns Joanna Western Mills Company. The proffered evidence of this confusion is a handwritten note by one of opposer's sales representatives that, in a discussion with Joanna Western's production engineer, "he confused their [applicant's] product with ours [opposer's]." Aside from the hearsay problem, this mere note alone falls far short of a probative showing of actual confusion.
Although opposer's evidence is not persuasive to show actual confusion, as has often been stated, actual confusion is but one factor in a likelihood of confusion analysis and an opposer is not required to prove actual confusion in order to prevail in an inter partes proceeding.
We conclude, on the basis of the foregoing, that the opposer's "TMS" marks and applicant's "TMM" mark are sufficiently similar in commercial impression that customers familiar with opposer's "TMS" computer maintenance system goods and services would, upon encountering applicant's "TMM" computer maintenance software, be likely to believe that the parties' goods and services originated from the same entity or that they were associated with or sponsored by the same source. [FN10]
Finally, we concede that this is a close case. However, if there is any doubt as to the likelihood of confusion, that doubt must be resolved against the newcomer. Giant Food, Inc. v. Nation's Food Service, Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed.Cir.1983).
E. J. Seeherman
E. W. Hanak
T. J. Quinn
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 604,470, filed June 16, 1986, alleging dates of first use of January 16, 1985.
FN2. Opposer owns the following valid and subsisting registrations: Reg. No. 1,270,227, issued March 13, 1984, for the mark "TMS TOTAL MAINTENANCE SYSTEM" and design ("Maintenance" and "System" disclaimed) for consulting and supporting services in the field of property maintenance and management; Reg. No. 1,278,323, issued May 15, 1984, for the mark "TMS" for consulting and supporting services in the field of property maintenance and management; Reg. No. 1,316,112, issued January 22, 1985, for the mark "TMS TOTAL MAINTENANCE SYSTEM" in stylized letters ("Maintenance" and "System" disclaimed) for consulting and supporting services in the field of property maintenance and management; and Reg. No. 1,471,300, issued January 5, 1988, for the mark "TMS" for computer programs in the field of property maintenance and management systems, recorded on disks, for use on microcomputers, minicomputers and main frame computers and manuals for computer programs in the field of property maintenance and management systems, for use on microcomputers, minicomputers and main frame computers. Applicant, in its brief on the case, appears to attack the validity of Reg. No. 1,471,300. To the extent that the remarks at pages 24-26 constitute an attack on this pleaded registration, the remarks will not be considered in view of the absence of a counterclaim to cancel the registration.
FN3. Opposer, in its main brief on the case, does not argue this ground for opposition. Moreover, on the record before us, opposer has failed to prove a claim under Section 2(a) of the Act.
FN4. No testimony or evidence regarding the laches defense was introduced. Moreover, this issue was not raised in the briefs. Accordingly, no consideration has been given to this defense.
FN5. Opposer objected to the introduction of these exhibits to the extent that they were offered to prove that the particular systems were actually on sale. Clearly, if offered to show use, without further testimony or evidence, the objection is well taken. As applicant has pointed out, however, the exhibits are admissible as evidence of the "print media environment".
FN6.The cost of opposer's demonstration kit is $45; applicant's kit costs $25.
FN7.There is a dispute over the admissibility of evidence upon which applicant bases its argument that opposer has admitted that "no confusion at the point of purchase is possible." In a letter dated September 23, 1986, from Mr. Leuthy to Mr. Weiss, Mr. Leuthy wrote as follows:
I'm sure that a buyer of TMM or TMS is not confused about whose system they are buying. Confusion occurs when a prospective buyer of a maintenance system sees similar or identical acronyms and product descriptions appearing in the form of ads or product releases. (emphasis in original)
The letter in dispute is, in essence, a proposal to avoid litigation.
While Mr. Leuthy's statements may fall under the protection of the second sentence of Fed.R.Evid. 408, we believe that opposer's objection is of no moment in our consideration of the merits of the case. While we believe that applicant reads too much into Mr. Leuthy's remarks, even in the face of a concession of no point of purchase confusion, we still find the existence of a likelihood of confusion. See generally Wright & Graham, Federal Practice and Procedure: Evidence § 5307 (1980).
FN8. See generally, Charles E. Bruzga, Sophisticated Purchaser Defense Avoided Where Pre-Sale Confusion Is Harmful--A Brief Note, 78 TMR 659 (1988) and cases cited therein. The note examines an evolving line of case law in the District Courts wherein a Trademark Act action can be successful against a defense that the sophistication of the buyers guarantees lack of confusion at the point of purchase. The note does point out, however, a prior Board decision wherein the Board, in dictum, stated:
The words "sophisticated" and "knowledgeable" are not talismans which, when invoked, act magically to dissipate a likelihood of confusion. It must also be shown how the purchasers react to trademarks, how observant and discriminating they are in practice, or that the decision to purchase involves such careful consideration over such a long period of time that even subtle differences are likely to result in a recognition that different marks are involved before an irrevocable decision is made.
Refreshment Machinery Inc. v. Reed Industries, Inc., 196 USPQ 840, 843 (TTAB 1977).
The author, while approving the notion that there are limitations on the sophisticated purchaser defense, refers to this language as "a simplistic view, which is believed superseded by the case law discussed in this article." We believe that our decision herein is more in line with the view of the District Courts that have addressed the issue now under consideration.
FN9. To some testimony with respect to alleged instances of actual confusion, the parties have exchanged objections grounded on hearsay. Suffice it to say that where the testimony has been offered to prove the truth of the matter allegedly uttered by the declarants, it has been excluded.
FN10.In finding in opposer's favor on the issue of likelihood of confusion, we do so without giving merit to opposer's allegations of bad faith adoption by applicant. The record simply does not support such an allegation.