Netgard vs NetgateIn Netgard the applicant filed an intent to use application for the mark “Netgard” for use in computer hardware and software for encryption and controlling access to data over computer networks. The opposer, opposed the registration on the ground of likelihood of confusion with its “Netgate” mark. The Board performed a likelihood of confusion analysis.

The Board first examined the similarity or dissimilarity and nature of the products described in the application and the registration. The opposer’s marks is used to identify computer security software for protecting networks from unauthorized access. The applicant’s mark is intended for use in connection with computer hardware and software for encryption and controlling access to data. The opposer testified that the applicant’s description of goods is broad enough to encompass opposer’s goods. The Board found the products were closely related.

The Board next examined the similarity of or dissimilarity of the likely-to-continue trade channels and classes of consumers. Because there were no restrictions as to channels of trade or classes of consumers in the description of goods in the application or opposer’s pleaded registration, the Board presumed that both opposer and applicant’s goods are sold in all of the normal channels of trade to all of the normal purchasers for such goods. So while the opposer’s goods are sold over the internet whereas the applicant’s goods are sold only to the federal government, the Board found that the goods move in the same channels of trade and are sold to the same classes of consumers.

The next consideration was the conditions under which and buyers to whom sales are made (i.e., “impulse” vs. careful, sophisticated purchasing. The Board found the relevant purchasers would exercise great care and pay careful attention to the trademark for the products as a result of the high cost and level of technology involved in the products.  The Board did not find the opposer’s evidence that its customers do not exercise a high degree of care persuasive as the nature of the product is a complex product, sold to a consumer with a focused need for the product.

The Board next considered the number and nature of similar marks in use on similar goods.  Applicant introduced 17 third-party registrations for marks beginning with the letters N-E-T-G to show that “Netgate” is a weak term. However, absent evidence of actual use, third-party registrations have little probative value because they are not evidence that the marks are in use on a commercial scale or that the public has become familiar with them.

The Board then turned to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. The Board noted that note that where, as here, the goods are closely related, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the goods. The Board noted that the prefix “net” was descriptive of the network hardware and software and therefore had little trademark significance. Turning to the suffix of the marks, “gate” and “gard” the Board found the terms to be similar but distinguishable. Under such circumstances, the prior use and registration of a suggestive term should not preclude the subsequent registration of a similarly suggestive, but otherwise distinguishable mark, for related goods. In this case the marks “NETGATE” and “NETGARD” were adopted to indicate that the products offer network access and network protection respectively, and that this indication or suggestion is readily apparent to prospective purchasers.  The Board found the marks more dissimilar than similar.

Because the marks are more dissimilar than similar and because consumers exercise a high degree of care when purchasing network security hardware and software products, the Board found that applicant’s mark “NETGARD, was not likely to cause confusion with NETGATE”.