Alliance Wireless Technologies, Inc.

Trademark Trial and Appeal Board

Apr 19, 2013

No. 85160223 (T.T.A.B. Apr. 19, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
April 19, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Alliance Wireless Technologies, Inc.
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Serial No. 85160223
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John T. Wilson of Wilson Legal Group PC for Alliance Wireless Technologies, Inc.

Mayur Vaghani, Trademark Examining Attorney, Law Office 102 (Karen M. Strzyz,
Managing Attorney).
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Before Bucher, Kuhlke and Ritchie, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, Alliance Wireless Technologies, Inc., filed an application to
register on the Principal Register the mark DRIVESAFE in standard characters for
services ultimately identified as “monitoring vehicles for commercial purposes;
business services provided to the fleet industry, namely, collecting and analyzing
data related to business management for the review and rating of recorded and live
video and data of driver behavior based on vehicle shock and vibration events for
use by fleet managers and drivers,” in International Class 35. 1

1 Application Serial No. 85160223, filed on October 25, 2010, based on allegations of first
use and use in commerce, on July 23, 2010, under Section 1(a) of the Trademark Act, 15
Serial No. 85160223

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Registration has been refused under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground that applicant’s mark, when used with its identified
services, so resembles the registered mark DRIVESAFE in standard characters for
“telecommunications services, namely, electronic transmission of voice messages
and data between vehicles owners, a 24-hour call center, and emergency
responders,” in International Class 38,2 as to be likely to cause confusion, mistake
or deception.
When the refusal was made final, applicant appealed. The appeal is fully
briefed.
When the question is likelihood of confusion, we analyze the facts as they
relate to the relevant factors set out in In re E. I. Du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the similarities between the marks
and the similarities between the goods or services. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). The examining
attorney and applicant presented arguments and evidence on the factors of the
similarity of the marks, the relatedness of the services and channels of trade.3

U.S.C. § 1051(a). The application originally included services in International Class 38 but
these were deleted pursuant to applicant’s request in its response of August 2, 2011.

2 Registration No. 3505015, issued on September 23, 2008.

3 In its brief, for the first time, applicant argues that the registered mark DRIVESAFE is
weak. Applicant attached printouts of third-party applications and registrations in support
of this argument. The examining attorney’s objection to applicant’s untimely evidence is
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The marks DRIVESAFE are identical “in their entireties as to appearance,
sound, connotation and commercial impression.”4 Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691
(Fed. Cir. 2005) quoting du Pont, 177 USPQ at 567. Thus, we turn to consider the
du Pont factor of the relatedness of the services. We base our evaluation on the
services as they are identified in the registration and application. In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002); and Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). It is settled that it is not necessary

granted. Trademark Rule 2.142(d). In view thereof, the evidence and arguments based on
the untimely evidence relevant to this factor have not been considered. However, we add
that for the reasons articulated by the examining attorney this evidence would not change
the result herein. 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. See Smith Bros. Mfg. Co. v. Stone
Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the purchasing public is not
aware of registrations reposing in the U.S. Patent and Trademark Office); Productos
Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934
(TTAB 2011). Moreover, to the extent they could be probative as to the suggestiveness of
the term, they are for disparate goods and, as such, are not probative on this point. AMF
Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973).
Despite the lack of evidence of third-party use, we have considered the scope of protection to
be accorded the registered mark that which is accorded to a mark suggestive of the services.

4 Applicant contends that “in view of the overall commercial impression of the mark
DRIVESAFE in relationship to the named [services], there will not be a likelihood of
confusion between the marks.” App. Br. p. 4. Applicant does not explain the different
commercial impression, but rather simply argues that the services are different, which is
more pertinent to the factor concerning the relatedness of the services. It is possible that in
the context of applicant’s services the mark DRIVESAFE may be understood as a directive
related to driver behavior i.e., drive in a safe manner, whereas in the context of registrant’s
services the mark DRIVESAFE may be understood as statement of protection, i.e., drive
with a safety net; however, they may also engender the exact same connotation, simply a
general reference to safe driving and all that encompasses.
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that the respective services be identical or even competitive in order to find that
they are related for purposes of our likelihood of confusion analysis. That is, the
issue is not whether consumers would confuse the services themselves, but rather
whether they would be confused as to the source of the services. See In re Rexel
Inc., 223 USPQ 830 (TTAB 1984). The services need only be sufficiently related
that consumers would be likely to assume, upon encountering the services under
similar marks, that the services originate from, are sponsored or authorized by, or
are otherwise connected to the same source. See In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp.,
18 USPQ2d 1386 (TTAB 1991). Finally, where the marks are identical the
relationship between the services need not be as close to support a finding of
likelihood of confusion as would be required in a case where there are differences
between the marks. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir.
1993).
The examining attorney argues that registrant’s services “are broadly
identified to include the electronic transmission of voice messages and data between
three distinct and separate users – vehicle owners, 24-hour call centers, and
emergency responders and are not limited to only emergency messages. Therefore,
the registrant’s services can include the transmission of non-emergency and data
related to driver behavior based on vehicle shock and vibration events for use by
drivers and fleet managers as identified by Applicant.”5 In addition, the examining
attorney presented evidence to show that applicant’s vehicle monitoring services

5 E.A. Br. p. 8.
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and fleet industry data services and registrant’s data and message transmission
services, are of a kind that emanate from a single source. We note in particular the
printouts from third-party websites where applicant’s and registrant’s types of
services are offered under the same mark. See, e.g., www.mds-
inc.com/industries/distribution-delivery.aspx (“Insight USA … With StreetEagle,
business managers have the tools and resources needed to: … verify arrivals and
departures from warehouse and delivery locations … capture accurate mileage by
state for IFTA fuel tax reporting … improve driver safety by immediately notifying
dispatch in case of emergency with integrated panic button.”); www.fmsgps.com
(“Global Available Asset Tracking … FMS provides pole to pole location knowledge,
wherever needed and supports this with high availability computing resources
behind the Fleet Director Global hosted Web application. Emergency Response …
Indication of an emergency can be communicated via alerts to cell phones, by text,
email or pagers ... All use the highly reliable Iridium satellite communication
network and are delivered via FMS Fleet Director Global in near real-time …
Driver Behavior ... FMS provides the tools for implementing penalty and reward
systems that improve driver accountability and lower costs related to insurance,
legal action and incidents.”); www.teletrac.net (“Alerts ... Fleet Director Alert
provides powerful real-time vehicle tracking … Self-service alerts allow you to
easily create alert via the Web and deliver exception alerts directly to your mobile
device or desktop. Urgent customer situations or critical management decisions can
be addressed immediately, in real time … Fleet Director 8.5 gives fleet managers
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powerful new controls over fleet safety and performance. Managers can now
pinpoint unsafe driving events and analyze driving behavior patterns on a real
time, ongoing basis – helping to improve safety, mitigate risk, and make fleet
operations more efficient. Using information generated by Teletrac from a wide
range of real-time safety-related, vehicle and driver behavior data streams,
managers can track performance and safety scorecards 24/7 using any Web
browser).
In addition, the examining attorney made third-party, use-based
registrations of record, including Reg. No. 3790618 for the mark PEOPLE-
ASSISTED COMPUTER SYSTEMS (PACS) for “telecommunication services,
namely, electronic transmission of voice messages and data; outcall notification
services, namely automatic notification of airbag deployment via computer
terminals” and “providing vehicle-related services, namely, tracking, locating and
monitoring vehicles through components integrated into a motor vehicle in the
nature of transmitters, receivers, microprocessors, software and cellular phones
which interact with global positioning systems, satellites and cellular technology,
and one or more customer services centers”; and Reg. No. 3588464 for the mark
CONNECTIONS THAT DRIVE YOU for, inter alia, “data processing services,
namely, collecting, processing and outputting information regarding an
automobile’s location and position” and “telecommunication service, namely
transmission of radio and telephone communication for rescue operations relating to
automobile accidents, traffic route assistance, electronic transmission of customer-
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accessed internet maps and driving directions to motor vehicle navigation systems.”
See In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009); In re Infinity
Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons
Co., 29 USPQ2d 1783 (TTAB 1993) (third-party registrations serve to suggest that
the goods and/or services listed therein are of a kind that may emanate from a
single source).
Applicant argues that its services deal “with driver behavior reports for
internal commercial use wholly unrelated to emergency first responders.” Further,
applicant argues that its “mark targets a different end user than Registrant,
specifically, vehicle compliance departments where the system is used internally for
non-emergency situations.” The examining attorney responds that “Registrant has
not limited the services to only emergency messages and Registrant’s services can
include the transmission of messages and data related to Applicant’s vehicle data.”
E. A. Br. p. 13.
Applicant’s identification includes two services “monitoring vehicles for
commercial purposes” and “business services provided to the fleet industry, namely,
collecting and analyzing data related to business management for the review and
rating of recorded and live video and data of driver behavior based on vehicle shock
and vibration events for use by fleet managers and drivers.” Semicolons are used to
separate distinct categories of goods or services within a single class. TMEP §
1402.01(a). See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1846 (Fed. Cir. 2000) (“the identification of goods/services stated in the registration
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… frames the issue”). The evidence clearly shows use and registration of the same
mark for “monitoring vehicles for commercial purposes” and for transmitting voice
and data messages, including emergency messages.
We also find applicant’s “collecting and analyzing” services to be closely
related to registrant’s transmission services based on the evidence of record. We
note in this regard that applicant itself transmits data from fleet vehicles as shown
by its deleted services in International Class 38, namely, “wireless communication
services, namely transmission of recorded and live video and data of driver behavior
based on vehicle shock and vibration events for use by fleet managers and drivers.”
While applicant’s data collection and analysis is for specific driver behavior derived
from specific vibration and shock data, this is simply a subset of data collection and
analysis for fleet management which the record shows is offered with transmission
services.
We find that the identification in the registration is limited to the
transmission of emergency messages inasmuch as it is directed to emergency
responders. However, the evidence of record does serve to suggest that consumers
are accustomed to seeing emergency transmission services, fleet monitoring and
tracking services, and fleet data collection and analysis services emanating from the
same source. Applicant’s various arguments with respect to the services simply
point out the differences between the services and do not address the evidence of
record showing the related nature of these types of services.
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In view thereof, we find applicant’s identified services to be related to the
registrant’s identified services.6
Further, we find that the designation “vehicle owners” in the registration
encompasses fleet or commercial owners. Thus, because there are no limitations as
to channels of trade or classes of purchasers in the description of services in the
cited registration, it must be presumed that registrant’s services move in all
channels of trade normal for those services, and that they are available to all
classes of purchasers for those services. See Paula Payne Products Co. v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973); Kalart Co. v. Camera-
Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958); In re Linkvest S.A., 24
USPQ2d 1716, 1716 (TTAB 1992). That would include fleet managers and
commercial fleet operators. Applicant’s identification is limited by trade channels,
thus, the overlap in channels of trade and classes of customers would be the fleet
industry. While these services would not be purchased on impulse and the
purchaser would have some level of sophistication regarding the services, even
sophisticated purchasers are not necessarily immune from source confusion.7 In re

6 Applicant’s untimely offer to amend to the services to “ monitoring vehicles for commercial
purposes; business services provided to the fleet industry, collecting and analyzing data
related to business management for use by fleet managers and drivers“ would not change
the result herein. We further note that such an amendment would impermissibly broaden
the identification by deleting the narrowing language “for the review and rating of recorded
and live video and data of driver behavior based on vehicle shock and vibration events.” See
37 C.F.R. § 2.71(a).

7 We add that applicant did not provide evidence regarding the purchasing process in the
fleet industry.

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Cynosure, Inc., 90 USPQ2d 1644 (TTAB 2009); In re Decombe, 9 USPQ2d 1812
(TTAB 1988).
In conclusion, because the marks are identical, the services are related, and,
based on the identification, the services overlap in certain channels of trade, we
find that confusion is likely between applicant’s mark DRIVESAFE and the mark
DRIVESAFE in the cited registration. Finally, to the extent that any of the points
argued by applicant cast doubt on our ultimate conclusion on the issue of likelihood
of confusion, we resolve that doubt, as we must, in favor of the prior registrant. In
re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal to register based on a likelihood of confusion under
Section 2(d) of the Trademark Act is affirmed.