281 F.3d 1261 (Fed. Cir. 2002), 01-1276, Hewlett-Packard Co v. Packard Press Inc

Docket Nº:01-1276, (Opposition no. 106,540)
Citation:281 F.3d 1261
Party Name:HEWLETT-PACKARD COMPANY, Appellant, v. PACKARD PRESS, INC. (formerly Packquisition Corporation), Appellee.
Case Date:March 01, 2002
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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Page 1261

281 F.3d 1261 (Fed. Cir. 2002)

HEWLETT-PACKARD COMPANY, Appellant,

v.

PACKARD PRESS, INC. (formerly Packquisition Corporation), Appellee.

01-1276, (Opposition no. 106,540)

United States Court of Appeals, Federal Circuit

March 1, 2002

Page 1262

[Copyrighted Material Omitted]

Page 1263

Appeal from: Patent and Trademark Office TrademarkTrial and Appeal Board

Elizabeth A. Sheets, Hewlett-Packard Company, of Palo Alto, California, for appellant.

Before CLEVENGER, RADER, and DYK, Circuit Judges.

RADER, Circuit Judge.

The United States Patent and Trademark Office (PTO) Trademark Trial and Appeal Board (Board) dismissed Hewlett-Packard Company's (HP's) opposition to Packard Press, Inc.'s (Packard Press's) application for registration of the mark PACKARD TECHNOLOGIES for data processing and data transmission services. Because no substantial evidence of record supports the Board's conclusion that the parties' goods and services are not sufficiently related to warrant a finding of likelihood of confusion between the PACKARD TECHNOLOGIES mark and HP's HEWLETT PACKARD marks, and because likelihood of confusion has been established as a matter of law, this court reverses.

I.

HP owns multiple federal registrations for the marks HEWLETT PACKARD, HEWLETT-PACKARD, and HEWLETT PACKARD and design for a variety of specified goods and services. See Reg. Nos. 1,861,560, 1,732,962, 1,014,357, 1,850,493, 1,096,556, and 1,710,346. The specified goods include, among others, computers, Page 1264

data processing and data storage systems, data acquisition systems, printers and printer accessories, facsimile machines, computer software, and publications regarding data processing products. The specified services include, among others, consulting services for data processing products, rental and leasing services for data processing equipment, maintenance and repair of data processing equipment, and retail mail and telephone order services for data processing products.

Packard Press specializes as a commercial printer for legal, municipal, and financial enterprises. Packard Press markets its printing services under the federally registered marks PACKARD (stylized), Reg. No. 1,828,225, and PACKARD PRESS, Reg. Nos. 1,816,811 and 1,385,567. In October 1995, Packard Press filed intent-to-use (ITU) application number 75/000,036 to register the service mark PACKARD TECHNOLOGIES, disclaiming the word "Technologies." In its application, Packard Press seeks registration of PACKARD TECHNOLOGIES for data and information processing, electronic transmission of data and documents via computer terminals, and electronic transmission of messages and data. Additionally, Packard Press seeks registration of PACKARD TECHNOLOGIES for "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 the PACKARD TECHNOLOGIES mark, arguing that the mark was confusingly similar to thirteen of HP's previously registered HEWLETT PACKARD marks. Based on a likelihood of confusion, the Board sustained HP's opposition. Hewlett-Packard Co. v. Packquisition Corp.,1 Opposition No. 106,540, slip op. at 9 (TTAB Sept. 27, 1999). Packard Press appealed to this court, arguing that the Board incorrectly dissected the marks and applied an incorrect legal test to analyze the relatedness of the goods and services for the marks.

On appeal, this court held that the Board erred in analyzing the similarity or dissimilarity of the marks by focusing only on the "Packard" component of the marks, without considering both marks in their entireties. Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 1357, 56 USPQ2d 1351, 1353 (Fed. Cir. 2000). This court further held that the record did not disclose whether the Board applied the correct legal test to analyze the relatedness of the goods and services for the marks. Id. at 1358. This court vacated and remanded the case to the Board to analyze the similarity of the marks in their entireties and to articulate its findings and conclusions about the relatedness of the goods and services for the marks. Id. at 1357-58.

On remand, the Board...

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