Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 INFORMATION RESOURCES, INC., SUBSTITUTED FOR INFORMATION RESOURCES
X*PRESS INFORMATION SERVICES
January 12, 1988
Hearing: September 22, 1987
Opposition No. 72,814, to application Serial No. 521,259 filed February 11, 1985
Cesari & McKenna for Information Resources, Inc., substituted for Information Resources (Massachusetts), Inc.
W. David Pantle and Sherman & Howard for X*Press Information Services
Sams, Chairman, and Rice
Opinion by Rice
An application was filed by X*PRESS Information Services, a partnership composed of Data Cable Corporation and TCI Information Services, Inc., to register the mark "X*PRESS", for transmitting news and a variety of general information and data to home and business computers via satellite and cable television lines, [FN1] use since December 4, 1984 being asserted.
Registration was opposed by Information Resources (Massachusetts), Inc. [FN2] As grounds for the opposition, brought pursuant to Section 2(d) of the Trademark Act of 1946, 15 U.S.C. 1052(d), opposer pleaded prior use of the mark "EXPRESS" in connection with computer software and services relating to the analysis of information, including financial information; ownership of a registration of that mark for "information analysis software package--namely, computer programs recorded on tapes, cards or disks and a user's reference manual, sold as a unit;" [FN3] prior use of the mark "PC EXPRESS" for computer software; and a likelihood of confusion.
Applicant, in its answer to the notice of opposition, denied the allegations contained therein.
The record consists of the pleadings; the file of applicant's involved application; a status and title copy of opposer's pleaded registration, as well as a copy of a registration issued to opposer for the mark "PC EXPRESS"; [FN4] applicant's responses, with attachments, to certain of opposer's interrogatories, relied upon by opposer; a stipulation of facts; and testimony, with exhibits, in behalf of each party. Both parties briefed the case and were represented at oral hearing.
The record shows that opposer is engaged in the business of developing and marketing computer software and consulting services relating thereto. Opposer also sells some hardware in conjunction with its software. Since 1974, opposer has used the mark "EXPRESS" in connection with a computer software product intended for use by large businesses. The program is adapted for general purpose data management and information analysis, and has many applications in finance, marketing, corporate planning, and operations. The current "EXPRESS" product is described in opposer's Exhibit 20 as follows:
EXPRESS from Information Resources, Inc. is a highly integrated decision support system designed for use by executive decision makers. It incorporates an array-based multi-dimensioned data base structure that is well suited to decision support applications. The product provides a broad range of integrated components, including data base query, report generation, graphics, financial modeling, financial analysis, and statistical functions.
*2 EXPRESS is designed to assist managers and corporate executives in making better decisions in areas such as long-range and strategic planning, policy evaluation, marketing, finance, product planning, pricing analysis, acquisition analysis, etc. The tool is specifically aimed at increasing the productivity of top-level managers rather than at reducing clerical or administrative costs.
In 1977, opposer began marketing its "EXPRESS" software in combination with a computer. In 1985, opposer began selling, under the mark "PC EXPRESS", software of the same nature as its "EXPRESS" software, except that it is adapted to run on IBM compatible personal or microcomputers, and hence is suitable for use by individuals.
Over the years, opposer has developed a variety of other software products which are built within or intended for use with the "EXPRESS" and "PC EXPRESS" products. Each of these additional products is identified by a composite mark, one component of which is the term "EXPRESS". These additional products include the "EasyEXPRESS" module ("a forms-driven interface that provides unsurpassed ease of use for the novice user"); "PowerEXPRESS" module ("a powerful command language that delivers speed and advanced functionality to the experienced user"); "BuilderEXPRESS" module ("comprehensive development tools to build sophisticated applications with fully customized interfaces"); "EXPRESS EASYCAST" module ("a sales forecasting system designed to do detail product line forecasting" which "offers marketing managers and production planners a unique, interactive means of combining managerial judgment with computerized statistical forecasts"); and "EXPRESS EASYTRAC" module ("a marketing, reporting, and analysis system" that "allows marketing managers and their staff to meet all the day-to-day marketing analysis and reporting needs"). Another of opposer's said products is its "EXPRESS EASYSCAN" module, which is used for financial and planning analysis. This product is described in opposer's Exhibit 22 as "a powerful, easy-to-use financial applications product to help executives and managers analyze COMPUSTAT II data bases," Compustat being a syndicated data source which includes the financial information of major corporations throughout the world, and which is available on a subscription basis from Compustat Services, Inc.
Yet another such product, and one on which opposer places great stress herein, is opposer's "EXPRESS-Mate" program, a communications product for businesses, which enables a PC user to access and utilize data stored on remote mainframe computers. The program may be used, for example, by a field office sales manager to access, via existing telephone lines, data stored on a home office mainframe. The program may also be used by businesses which subscribe to the commercially available syndicated data bases of others, such as the CompuServe and the Dow Jones News/Retrieval Service data bases, to access those data bases via the telephone. The "EXPRESS-Mate" program is available for both the "EXPRESS" and "PC EXPRESS" products.
*3 The record further shows that opposer offers to its clients, under marks not including the term "EXPRESS", services whereby it furnishes to its clients proprietary data, which opposer itself has compiled, relating to the marketing of consumer goods (e.g., market profiles for test marketing; marketing tracking data; etc.). The data is stored on opposer's computers and can be distributed to its clients either electronically or via magnetic tape, or can be accessed by the clients via the "EXPRESS" and "PC EXPRESS" products (with the "EXPRESS-Mate" program) on a time sharing basis.
Opposer has promoted and advertised its products sold under its various "EXPRESS" marks through the use of direct mailers (sent to companies selected by opposer because of their size and because of the type of computer which they have), advertisements in computer trade periodicals (which also have run numerous articles describing the products), news releases, and exhibits at computer trade shows. Opposer's expenditures for the purpose for the period running from 1974 through October 1986 totalled $2,000,000 or more, while revenues from these products (including revenues from time sharing and licenses to the "EXPRESS" software as well as from outright sales of "PC EXPRESS" software and related hardware) totalled approximately $125,000,000 for the same period. The record indicates that the cost of the "EXPRESS" software to a client ranges from a low of about $35,000 to a high of around $400,000, depending upon the modules which the client needs, while the price for the "PC EXPRESS" software is approximately $1,500. All of the software is currently sold with the assistance of opposer's salesmen. It is not available in retail stores, but opposer's witness testified that opposer has "definite plans" to move the "PC EXPRESS" product into the "retail community," i.e., the traditional retail PC distribution channels, after opposer does some additional development work on the technology.
Since December 4, 1984, applicant has offered, under the mark "X*PRESS", a news service in the nature of a data stream delivered by satellite to cable television operators, who in turn deliver the data stream by television cables to the personal computers of subscribers. The news service provides stock quotes, business and financial news, and a large variety of other news and information from more than 40 sources, including news wire services, foreign newspapers, and the stock exchanges. The service is intended primarily for business and financial users, including not only office users but also residential users, as, for example, individuals who trade stocks at home. It competes with the daily newspaper and with retrieval businesses such as Dow Jones News/Retrieval, CompuServ, The Source, and GEnie from General Electric.
Applicant's news service data stream can only be delivered through cable systems. In order to receive the service, a potential subscriber has to contact (either directly or through applicant) the cable television operator that serves his household or business location. The cable operator connects the subscriber's personal computer (which the subscriber himself must provide) to the cable system through a data decoder furnished by the operator. The cable operator also provides the subscriber with "X*PRESS" software (accompanied by an "X*PRESS" instruction manual) to be inserted into the PC so that the subscriber can choose the categories of information he wants to review. When a subscriber chooses a particular category from the category selection menu, the computer selects from the news service data stream any information being broadcast in that category. The usual fee for the service is $19.95 a month plus the basic cable fee.
*4 The software for applicant's service can be obtained only by subscribing to the service--it has no value without the service, and is not marketed apart therefrom. Although applicant's service is on display in some computer stores for purposes of demonstrating a use of the computers sold in the stores, a consumer who wants to obtain the service must contact his local cable television operator to subscribe (three of the computer stores, however, will make the necessary arrangements with the cable operator for the potential subscriber). Applicant provides the computer stores with placards to be displayed next to the computers on which applicant's service is being run. The placards tell consumers that the service is available through their local cable operators.
Applicant's "X*PRESS" news service is advertised to potential subscribers on cable television channels, by direct mail, and, to a much lesser extent, by newspaper advertising in the local areas of the cable operators. All of the advertising includes a visual presentation of applicant's mark. In addition, applicant exhibits its "X*PRESS" service at trade shows directed to the cable industry; to providers and purveyors of information; and to manufacturers and suppliers of computer hardware and software. The service has also been exhibited at the Consumer Electronics Show. Opposer's discovery efforts indicate that in 1985, applicant spent approximately $42,000 in advertising its news service to the cable television industry; that by June 10, 1986, applicant had spent an additional $93,000 for the purpose; and that as of that date, applicant had approximately 450 paying subscribers to the service.
Applicant's record contains evidence of use in advertising of a large number of trademarks and trade names composed in part of the term "EXPRESS", or a variation thereof, for a wide variety of goods and services, including goods and services in the news service and computer fields. Examples of the latter include, among others, advertisements for "LOTUS EXPRESS" (with "EXPRESS" emphasized) for communications software for personal computers; "SILICON EXPRESS" for the mail order retail sale of computer software and hardware; "THE BAY EXPRESS COMPANY" (with "EXPRESS" set apart in stylized form) for the mail order retail sale of computer software and hardware; "COMPUTER EXPRESS INC. (with "COMPUTER EXPRESS" in stylized form) for retail computer sales, servicing, and rental services; "MICRO EXPRESS" ("EXPRESS" stylized) for computer rental and lease to purchase services; "NET EXPRESS 2100" for an office information and communications system featuring, inter alia, "NET EXPRESS" software; "EXPRESS SYSTEM", "EXPRESS TECHNOLOGY", "DEFINITION EXPRESS", "FORMS EXPRESS", "REPORTS EXPRESS", and "APPLICATION EXPRESS", all used in advertising by one company in connection with its data base software for personal computers; "PROGRAM EXPRESS PAINTER" and "PROGRAM EXPRESS", both used in one company's advertising in connection with computer software; and "X'PRESS 16" for a computer.
*5 The record also indicates that prior to the adoption of its mark, applicant ordered a trademark search to be made in connection therewith, and that the resulting trademark search report (covering federal trademark applications and registrations, state registrations, trade directories, telephone books, Thomas Register, and a data base of trade names) listed a substantial number of trademarks or trade names containing the term "EXPRESS" or a variation thereof for goods or services in the computer field, including opposer's registered mark "EXPRESS".
Inasmuch as opposer owns a subsisting registration of its pleaded mark "EXPRESS" (the mark of opposer which is the most similar to applicant's mark sought to be registered), the issue of priority of use does not arise with respect thereto. See: King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1216, 182 USPQ 108 (CCPA 1974). Aside therefrom, opposer's prior use of the mark is clearly established by the record. Thus, the only issue to be determined herein is the issue of likelihood of confusion.
Turning first to a comparison of opposer's goods and applicant's services, there is no doubt that opposer's "EXPRESS" information analysis software, and applicant's "X*PRESS" service, namely, transmitting news and a variety of general information to home and business computers via satellite and cable television lines, could be sold to the same ultimate end users; that opposer's goods and applicant's services both require the use of a computer; that applicant provides its subscribers with software bearing its mark so that the subscribers can choose the categories of information they want to review; and that opposer's "EXPRESS" product, when equipped with the "EXPRESS-Mate" program, may be used to access, via the telephone, the computer data bases of information and data retrieval services, such as CompuServ, The Source, and Dow Jones News/Retrieval, which compete with applicant's service.
At the same time, there are marked differences between opposer's goods and applicant's service. The goods sold by opposer under its mark "EXPRESS" are information analysis computer programs. These programs are very specialized in nature. Applicant does not sell goods at all, but rather sells a news service available only through cable television systems. Although applicant does, of necessity, provide software to the end users of its service, the software is incidental to the service and has no value (nor is it sold) apart therefrom. The personal computer furnished by the end user of applicant's service, the software furnished by applicant, and the cable lines of the cable operator are all simply items of equipment or "tools" necessary for the delivery of the news service.
Moreover, there is no "per se" rule mandating that likelihood of confusion is to be found in all cases where the goods or services in question involve computer software and/or hardware. As we stated in the case of In re Quadram Corp., 228 USPQ 863 (TTAB 1985), at page 865:
*6 ... while we have found a likelihood of source confusion in connection with items of computer hardware versus software, we do not think these prior decisions stand for a per se rule that source confusion will be found in all cases involving any and all items of computer software, on the one hand, and any and all items of computer software [sic, should be "hardware"], on the other hand, when sold under similar trademarks. As a result of the veritable explosion of technology in the computer field over the last several years and the almost limitless number of specialized products and specialized uses in this industry, we think that a per se rule relating to source confusion vis-a-vis-computer hardware and software is simply too rigid and restrictive an approach and fails to consider the realities of the marketplace.
Added to the differences between opposer's goods and applicant's services are the differences between opposer's mark "EXPRESS" and applicant's mark "X*PRESS". Although these two marks are quite similar in sound, prospective purchasers are likely to encounter the marks visually rather than orally, and the marks differ significantly in appearance. As to meaning, opposer's mark, when applied to its goods, is likely to suggest the speed and efficiency of its software (i.e., as opposer's witness testified, that opposer's product is a "much faster way of addressing the systems problems that the product was designed to address"). When applicant's mark "X*PRESS" is applied to its services, on the other hand, it suggests not just speed (in transmission) but also, because of the separation of the term "PRESS" from the letter "X", something to do with journalism. [FN5] Considering the marks of the parties in relation to their differing goods (opposer) and services (applicant), we think that they create distinctly different commercial impressions.
Further, the evidence of widespread use, both in the computer field and elsewhere, of marks and trade names containing the term "express," or a variation thereof, indicates that the parties hereto and others have adopted marks and/or trade names containing this term, or a variation thereof, to convey its dictionary meaning and hence that the inclusion of this term, or a variation thereof, in two marks may be alone an insufficient basis upon which to predicate a holding of likelihood of confusion if the marks are otherwise distinguishable (as are the two marks here). See: Tektronix, Inc. v. Daktronics, Inc., 187 USPQ 588 (TTAB 1975), affirmed, 534 F.2d 915, 189 USPQ 693 (CCPA 1976), and Safeway Stores, Inc. v. Captn's Pick, Inc., 203 USPQ 1025 (TTAB 1979).
Finally, we note that the goods and services involved in this case are relatively expensive items purchased with a certain amount of care and thought, rather than inexpensive items purchased on impulse.
*7 For the foregoing reasons, we conclude that there is no real likelihood of confusion in this case.
Decision: The opposition is dismissed.
D. W. Peterson
J. D. Sams
Members, Trademark Trial and Appeal Board
FN1. Serial No. 521,259, filed February 11, 1985.
FN2. During the course of the proceeding, Information Resources (Massachusetts), Inc. was merged into Information Resources, Inc., which has been substituted as party plaintiff herein. The term opposer is used herein to refer to these two companies as well as to a predecessor in interest.
FN3. Reg. No. 1,154,650, issued May 19, 1981, affidavit Sec. 8 accepted, affidavit Sec. 15 received.
FN4. Reg. No. 1,393,056, issued May 13, 1986, based on an application filed June 27, 1985. This registration issued approximately seven months after the filing of the notice of opposition herein, and was made of record by opposer, without objection from applicant, as an exhibit to the testimony of opposer's witness. The registration includes a disclaimer of the term "PC" apart from the mark as shown.
FN5. We note, in this regard, that the adjective "express" is defined in Webster's New World Dictionary (Second College Edition, 1986) as, inter alia, "characterized by speed or velocity," while the adverb form of the word is defined as, inter alia, "any method or means of swift transmission." The noun "press" is defined in the same dictionary as, inter alia, "newspapers, magazines, news services, etc. in general, or the persons who write for them; journalism or journalists."