Packard Press, Inc v. Hewlett-Packard Co.

• Decision Date: 25 September 2000
• Docket Number: HEWLETT-PACKARD,No. 106,540,106,540
• Parties: (Fed. Cir. 2000) PACKARD PRESS, INC.(formerly Packquisition Corporation),Appellant, v.COMPANY,Appellee. (Opposition) 00-1076 DECIDED:
• Court: U.S. Court of Appeals — Federal Circuit

Page 1352

227 F.3d 1352 (Fed. Cir. 2000)

PACKARD PRESS, INC.(formerly Packquisition Corporation),Appellant, v. HEWLETT-PACKARD COMPANY,Appellee.

(Opposition No. 106,540)

00-1076

United States Court of Appeals for the Federal Circuit

DECIDED: September 25, 2000

Appealed from: Patent and Trademark Office Trademark Trial & Appeal Board

[Copyrighted Material Omitted]

[Copyrighted Material Omitted]

Timothy D. Pecsenye, Blank, Rome, Cominsky & McCauley, LLP, of Philadelphia, Pennsylvania, argued for appellant. With him on the brief was Rachel L. Brendzel.

Elizabeth A. Sheets, Hewlett Packard Company, of Palo Alto, California, argued for appellee.

Of counsel was John Tiedge.

Before MAYER, Chief Judge, CLEVENGER and RADER, Circuit Judges.

CLEVENGER, Circuit Judge.

Hewlett-Packard Company ("HP") opposes the application by Packard Press, Inc. ("Packard") to register the service mark PACKARD TECHNOLOGIES for data processing services. The United States Patent and Trademark Office Trademark Trial and Appeal Board ("Board") sustained the opposition on the ground that consumers are likely to confuse PACKARD TECHNOLOGIES with HP's marks HEWLETT-PACKARD and HEWLETT-PACKARD and design. See Hewlett-Packard v. Packquisition, ¹ Opposition No. 106,540, slip op. at 9 (TTAB Sept. 27, 1999). Because the Board erred in analyzing the HEWLETT-PACKARD marks and we are unable to determine if the Board applied the correct legal test when analyzing the relatedness of the goods, we vacate the Board's decision and remand the case to the Board for further proceedings.

I

HP owns 13 federal registrations for the marks HEWLETT-PACKARD and HEWLETT-PACKARD and design for a wide variety of computer hardware products, including computers, data processing systems, data acquisition systems, printers, printer accessories, facsimile machines, medical equipment, and associated software. Two of HP's marks are also registered for data processing consulting services.

Packard is a commercial printer specializing in legal, municipal, and financial printing, e.g., printing prospectuses, reports, and financial statements. Packard's customers include securities brokers, financial houses and law firms. Since 1957, Packard has offered its services, which include computer services to aid in its commercial printing business, under its marks PACKARD and design, U.S. Trademark Registration No. 1,828,225 and PACKARD, U.S. Trademark Registration No. 1,816,811. Packard intends to expand its products and services beyond traditional printing services to provide its customers with other means of processing information--e.g., through CD-ROMs and publishing on the Internet. To differentiate these new services from its traditional printing services, Packard selected the mark PACKARD TECHNOLOGIES.

In October 1995, Packard filed intent-to-use application number 75/000,036 to register the service mark PACKARD TECHNOLOGIES for data processing and information processing, electronic transmission of data and documents via computer terminals, electronic transmission of messages and data, and data and digital information (media duplication of), and conversion from one media form to another media (document data transfer and physical). HP filed an opposition under section 2(d) of the Trademark Act to the registration of Packard's mark, on the ground that the mark was confusingly similar to HP's 13 previously registered marks: HEWLETT-PACKARD and HEWLETT-PACKARD and design.

The Board sustained the opposition, holding that there was a likelihood of confusion between PACKARD TECHNOLOGIES and HP's HEWLETT-PACKARD marks. See Hewlett-Packard, slip op. at 9. The Board found that HEWLETT-PACKARD and PACKARD TECHNOLOGIES are identical or highly similar marks, and that HP's goods were related to Packard's services because HP's computer products are goods that "would be used in connection with the services in [Packard's] application." Id. at 7. The Board further assumed that HP's goods and Packard's services may be marketed through some of the same channels, to the same classes of purchasers. See id. at 8. Because HP did not submit any evidence in support of its argument that its HEWLETT-PACKARD marks were famous, the Board declined to consider that factor. See id. The Board also declined to consider Packard's evidence on concurrent use with no actual confusion with respect to its related mark, PACKARD for computer services. See id. This appeal followed, conferring jurisdiction pursuant to 28 U.S.C. § 1295(a)(4) (1994).

II

The United States Patent and Trademark Office (PTO) may refuse to register a trademark that so resembles a registered mark "as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive." 15 U.S.C. § 1052(d) (1994). Whether a likelihood of confusion exists is a question of law, based on underlying factual determinations. See Lloyd's Food Prods., Inc. v. Eli's, Inc., 987 F.2d 766, 767, 25 USPQ2d 2027, 2028 (Fed. Cir. 1993); Kenner Parker Toys Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 352, 22 USPQ2d 1453, 1455 (Fed. Cir. 1992). Likelihood of confusion is determined on a case-specific basis, applying the factors set out in In re E. I. DuPont DeNemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973) (enumerating factors that may be considered when relevant evidence is of record). The DuPont factors are: (1) the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; (2) the similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use; (3) the similarity or dissimilarity of established, likely-to-continue trade channels; (4) the conditions under which and buyers to whom sales are made, i.e., "impulse" vs. careful, sophisticated purchasing; (5) the fame of the prior mark (sales, advertising, length of use); (6) the number and nature of similar marks in use on similar goods; (7) the nature and extent of any actual confusion; (8) the length of time during and conditions under which there have been concurrent use without evidence of actual confusion; (9) the variety of goods on which a mark is or is not used (house mark, "family" mark, product mark); (10) the market interface between applicant and the owner of a prior mark; (11) the extent to which applicant has a right to exclude others from use of its mark on its goods; (12) the extent of potential confusion, i.e., whether de minimis or substantial; and (13) any other established fact probative of the effect of use. See id.

Our review of the Board's ultimate conclusion is plenary. See Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 1569, 218 USPQ 390, 394 (Fed. Cir. 1983). We uphold the Board's factual findings with respect to the DuPont factors unless they are unsupported by substantial evidence. See Dickinson v. Zurko, 527 U.S. 150, 165, 50 USPQ2d 1930, 1937 (1999); Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1327, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000) (stating that factual findings of the TTAB are reviewed for substantial evidence); In re Gartside, 203 F.3d 1305, 1315, 53 USPQ2d 1769, 1775 (Fed. Cir. 2000).

A

The first DuPont factor we consider is the similarity or dissimilarity of the marks. Packard argues that the Board erred by focusing only on the "Packard" component of both the PACKARD TECHNOLOGIES and HEWLETT-PACKARD marks. We agree with Packard that the Board erred in its analysis of this DuPont factor. The similarity or dissimilarity of the marks in their entirety is to be considered with respect to appearance, sound, and connotation. See DuPont, 476 F.2d at 1361, 177 USPQ at 567; Olde Tyme Foods, Inc. v. Roundy's, Inc., 961 F.2d 200, 202-03, 22 USPQ2d 1542, 1544-45 (Fed. Cir. 1992). All relevant facts pertaining to appearance, sound, and connotation must be considered before similarity as to one or more of those factors may be sufficient to support a finding that the marks are similar or dissimilar. See Olde Tyme Foods, 961 F.2d at 203, 22 USPQ2d at 1545; In re Nat'l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985) (stating anti-dissection rule). Once all of the features of the mark are considered, however, it is not improper to state that, for rational reasons, more or less weight has been given to a particular feature of the mark, provided the ultimate conclusion rests on consideration of the marks in their entireties. See In re Nat'l Data Corp., 753 F.2d at 1058.

We agree with Packard that the Board improperly dissected the marks. In this case, the Board only considered the similar commercial impression of part of the marks--the shared word PACKARD--before concluding that the marks were similar. See Hewlett-Packard, slip op. at 4-5. However, the Board failed to make any findings at all as to the appearance or sound of the marks, and without any explanation, considered only the PACKARD portion of HEWLETT-PACKARD. To be sure, the Board stated that it had considered the marks in their entireties. See id. at 5. But this statement, absent further explanation of the agency's reasoning, is simply insufficient for proper review of PTO factfinding. Judicial review under the substantial evidence standard, see Gartside, at 1315, 53 USPQ2d at 1775, can only take place when the agency explains its decisions with sufficient precision, including the underlying factfindings and the agency's rationale. Only then can this court engage in reasoned review of agency decision making, and thus provide the deference that this court must properly give to the PTO's factual determinations. See Zurko, 527 U.S. at 165, 50 USPQ2d at 1937; Gartside, 203 F.3d at 1315, 53 USPQ2d at 1775. Accordingly, we vacate the Board's decision on this DuPont factor, and remand the case. On remand, the Board will have the opportunity to make the relevant...