Alternative Choice Wireless, LLC

Trademark Trial and Appeal Board

Feb 15, 2019

EX (T.T.A.B. Feb. 15, 2019)

Mailed: February 15, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re Alternative Choice Wireless, LLC
_____

Serial No. 87315247
_____
Francis J. Ciaramella of Rick Ruz PLLC
for Alternative Choice Wireless, LLC.

Louis Kolodner, Trademark Examining Attorney, Law Office 122,
John Lincoski, Managing Attorney.
_____
Before Zervas, Adlin and Goodman,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Applicant Alternative Choice Wireless, LLC seeks registration of the mark

(with WIRELESS disclaimed) for:

Internet service provider (ISP); Internet service provider
services; Internet access provider services;
Telecommunication services, namely, transmission of
voice, data, graphics, images, audio and video by means of
telecommunications networks, wireless communication
networks, and the Internet; Telecommunication services,
namely, transmission of voice, data, graphics, sound and
video by means of broadband power line or wireless
This Opinion is Not a
Precedent of the TTAB
Serial No. 87315247
2
networks.1

The Examining Attorney refused registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the regis-
tered standard character mark CHOICE WIRELESS (WIRELESS disclaimed) for
Communication services, namely, transmission of voice,
audio, visual images and data by telecommunications
networks, wireless communication networks, the Internet,
information services networks and data networks; Internet
service provider (ISP); Internet service provider services;
Telecommunication services, namely, providing internet
access via broadband optical or wireless networks;
Telecommunication services, namely, transmission of
voice, data, graphics, images, audio and video by means of
telecommunications networks, wireless communication
networks, and the Internet2

as to be likely to cause confusion. After the refusal became final, Applicant appealed
and filed a request for reconsideration which was denied. Applicant and the
Examining Attorney filed briefs.

1 Application Serial No. 87315247, filed January 26, 2017 under Section 1(a) of the
Trademark Act, alleging first use dates of December 2013. The application includes this
description of the mark: “The mark consists of the words ‘ALTERNATIVE CHOICE
WIRELESS’ in stylized font. The words ‘ALTERNATIVE CHOICE’ are in lowercase letters
and the word ‘WIRELESS’ is in uppercase letters. A black-outlined cloud design surrounds
the letters ‘ALTERNA’ in the word ‘ALTERNATIVE’. The words ‘ALTERNATIVE CHOICE’
are in black font. There is a red dot above the ‘I’ in ‘ALTERNATIVE’. There are three red
semi-concentric curved lines emanating from the red dot such that the letter ‘I’ with the red
dot and red semi-concentric curved lines create an antenna design. The word ‘CHOICE’
appears after the word ‘ALTERNATIVE’. The word ‘WIRELESS’ appears below the words
‘ALTERNATIVE CHOICE’. All of the letters in the word ‘WIRELESS’ are in red except the
‘I’ which is in black. The color white appearing in the mark represents background, outlining,
shading, and/or transparent areas and is not part of the mark.”
2 Registration No. 3921770, issued February 22, 2011; Section 8 Affidavit accepted, Section
15 Affidavit acknowledged.
Serial No. 87315247
3
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth
factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential characteristics of the goods and
differences in the marks.”).
A. Services, Channels of Trade and Classes of Consumers
Turning first to the services, they are in-part identical, because Applicant and
Registrant both offer: (1) “Internet service provider (ISP”); (2) “Internet service
provider services”; and (3) “Telecommunication services, namely, transmission of
voice, data, graphics, images, audio and video by means of telecommunications
networks, wireless communication networks, and the Internet.” We need not go
beyond our finding that Applicant’s and Registrant’s services are identical in-part. It
is sufficient for a finding of likelihood of confusion if relatedness is established for any
item encompassed by the identification of services in a particular class. Tuxedo
Monopoly, Inc. v. General Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986 (CCPA 1981).
This factor weighs heavily in favor of finding a likelihood of confusion.
Serial No. 87315247
4
Furthermore, where, as here, Applicant’s and Registrant’s services are in-part
identical, we must presume that the channels of trade and classes of purchasers for
those services are also the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels
of trade and classes of consumers, the Board was entitled to rely on this legal
presumption in determining likelihood of confusion); In re Yawata Iron & Steel Co.,
403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical
goods, the channels of trade and classes of purchasers are considered to be the same);
American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011).
The legal identity (in part) of Applicant’s and Registrant’s services and their
overlapping channels of trade and classes of consumers not only weigh heavily in
favor of a finding of likelihood of confusion, but also reduce the degree of similarity
between the marks necessary to find a likelihood of confusion. In re Viterra, 101
USPQ2d at 1908; In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed.
Cir. 2010); In re Max Capital Group Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010).3

3 To the extent Applicant maintains on appeal its argument that the relevant consumers are
sophisticated and careful, it is not well-taken. We must base our decision on the “least
sophisticated potential purchasers” for the services as identified, cell phone and Internet
service provider services. Ordinary consumers at all income levels purchase these ubiquitous
services, which as identified are not limited to any particular consumers or price points. See
e.g. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1163 (Fed. Cir. 2014) (quoting Gen. Mills, Inc. v. Fage Dairy Proc. Indus. S.A., 100 USPQ2d
1584, 1600 (TTAB 2011), judgment set aside on other grounds, 2014 WL 343267 (TTAB
2014)).
Serial No. 87315247
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B. The Marks and the Strength of Registrant’s Mark
The marks are similar because they each contain CHOICE WIRELESS, and
different because Applicant’s mark also includes the word ALTERNATIVE and a
design. We find that the similarity between the marks is more important than and
outweighs the differences.
As a general proposition, consumers are likely to identify and call for the services
by the marks’ literal elements, ALTERNATIVE CHOICE WIRELESS or CHOICE
WIRELESS. This makes these literal elements more important in our analysis. In re
Viterra, 101 USPQ2d at 1911 (“the verbal portion of a word and design mark likely
will be the dominant portion”); In re Appetito Provisions Co. Inc., 3 USPQ2d 1553,
1554 (TTAB 1987) (holding that “if one of the marks comprises both a word and a
design, then the word is normally accorded greater weight because it would be used
by purchasers to request the goods or services” and “because applicant’s mark shares
with registrant’s mark that element responsible for creating its overall commercial
impression, the marks are confusingly similar”).
We are not persuaded by Applicant’s argument that the design element of its mark
is dominant and “impresses into the minds of consumers multiple and diverse
images” such that confusion is unlikely. 7 TTABVUE 5 (Applicant’s Appeal Brief at
4). In fact, as the description of Applicant’s mark indicates, the “black-outlined cloud
design surrounds the letters ‘ALTERNA’ in the word ‘ALTERNATIVE’,” drawing
attention to them and the entire word ALTERNATIVE, as well as the other words in
the mark. Furthermore, a cloud design is suggestive of, and thus not particularly
distinctive when used for, Internet and telecommunications services. See generally In
Serial No. 87315247
6
re ActiveVideo Networks, Inc., 111 USPQ2d 1581, 1587-89 (TTAB 2014) and In re
Datapipe, Inc., 111 USPQ2d 1330 (TTAB 2014) (each finding proposed marks
including the term CLOUD to be non-distinctive for a variety of computer and data-
related services, some of which are identical, similar or related to Applicant’s services
in this case). The “dot” over the “i” in the word ALTERNATIVE also is not distinctive
for Applicant’s services, because it is part of what Applicant’s description identifies
as an “antenna design.” This “antenna design” merely reinforces the word
WIRELESS in the mark as it is a simple representation of an antenna and radio
waves. It would therefore also not identify source, be a consumer’s focus, or a way the
consumer would be likely to identify or call for the services.
Furthermore, not only are the design components of Applicant’s mark non-
distinctive in meaning when used for Applicant’s services, but they are also not
sufficiently distinctive in appearance to prevent consumer confusion. That is, the
cloud and antenna designs are not particularly large, and in fact merely surround,
highlight or form part of the mark’s literal elements. This case therefore contrasts
sharply with In re Covalinski, 113 USPQ2d 1166 (TTAB 2014), one of the cases upon
which Applicant relies. Specifically, in Covalinski, the mark REDNECK RACEGIRL
& Design, depicted below,

was permitted to register over the mark RACEGIRL, in standard characters, for
Serial No. 87315247
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legally identical goods. The design element of the applicant’s mark was found to
include “the very large, prominently displayed letters RR,” which include “a
checkerboard pattern resembling a racing flag,” as well as heart designs, while most
of the literal elements of the mark were “in relatively tiny typeface.” Id. at 1168. We
found that “[t]ogether, these graphic devices serve not only to draw attention to the
RR letters apart from the wording, but also make the letters that form the ‘a-c-e’ of
the word ‘RACEGIRL’ difficult to notice.” Id. This case is nothing like Covalinski.
Indeed, here the opposite is true – the cloud and wireless network design elements
merely highlight or are part of the mark’s only literal elements. The other cases upon
which Applicant relies are also inapposite. In In re Electrolyte Laboratories Inc., 929
F.2d 645, 16 USPQ2d 1239 (Fed. Cir. 1990), both marks included design components,
and one of the marks included a “significant” additional literal term. In In re Sloppy
Joe’s Int’l Inc., 43 USPQ2d 1350 (TTAB 1997), the likelihood of confusion refusal was
affirmed, and similarly in Envirotech Corp. v. Nat’l Service Industries, Inc., 197 USPQ
292 (TTAB 1977), the opposition was sustained on the ground of likelihood of
confusion.4
Turning to the dominant portion of Applicant’s mark, ALTERNATIVE CHOICE

4 Applicant also relies on nonbinding cases, but these too are distinguishable. In fact, this
case is unlike Ass’n of Co-operative Members, Inc. v. Farmland Industries, Inc., 684 F.2d 1134,
216 USPQ 361 (5th Cir. 1982) for essentially the same reason it is unlike Covalinski -- the
design elements of Applicant’s mark are not “more conspicuous” than the literal elements,
nor is there any evidence than they are more “well known” than the literal elements. This
case is also unlike Omaha Nat’l Bank v. Citibank (South Dakota), N.A., 633 F.Supp. 231, 229
USPQ 51 (D. Neb. 1986), in which the Court evaluated the marketplace use of the mark,
which is irrelevant here, and pointed out that the literal term in question was “affixed
between a prominent photo of the Citicard being placed in a billfold/wallet and a box
containing the words ‘Citibank Financial Account.’” Id. at 54 (emphasis added).
Serial No. 87315247
8
WIRELESS, it is obviously quite similar to the cited mark CHOICE WIRELESS in
appearance and sound, the only difference being that Applicant’s mark begins with
the word “ALTERNATIVE.” This is not sufficient to avoid confusion when the
remaining literal terms in Applicant’s mark are identical to Registrant’s mark. It is
irrelevant that the literal portion of Applicant’s mark is depicted in a stylized manner
because the cited registration is in standard characters, and could therefore be
displayed in any font, size or color, including in a manner similar to Applicant’s
display of CHOICE WIRELESS. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1909 (Fed. Cir. 2012). Moreover, the word “ALTERNATIVE” modifies the word
“CHOICE” in Applicant’s mark, and therefore consumers, many of whom have
imperfect memories, would be more likely to remember CHOICE WIRELESS as the
essence of Applicant’s mark. See Geigy Chemical Corp. v. Atlas Chemical Indus., Inc.,
438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971) (finding a likelihood of confusion due
in part to “the fallibility of memory over a period of time”).
As for meaning and commercial impression, Registrant’s mark is likely to convey
to many consumers that Registrant provides high quality wireless and Internet
services, while Applicant’s mark is likely to convey to many consumers that Applicant
offers distinct or unique wireless and Internet services, which are distinguishable
from those offered by other providers. In both cases, the marks tout the wireless and
Internet services they identify, and to this extent convey somewhat similar meanings.
Consumers who are familiar with Registrant could also interpret Applicant’s mark
as referring to Registrant specifically, perhaps conveying that Applicant is one of
Serial No. 87315247
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Registrant’s direct competitors, and that Applicant’s services are an attractive
alternative to Registrant’s specific offerings. Other consumers could interpret
Applicant’s mark as identifying Registrant’s spinoff or related company, or one of
Registrant’s “alternative” offerings, perhaps a different type of cell phone plan or
Internet service. In any event, the mark’s meanings and commercial impressions do
not sufficiently distinguish them given their similarities in appearance and sound.
We often find that adding a term to the beginning of a registered mark will not
prevent confusion. For example, in affirming a refusal to register VANTAGE TITAN
based on a registration for TITAN, we stated: “Applicant has taken registrant’s mark
and added its ‘product mark’ to it. It is not clear why the addition of the word
VANTAGE would avoid confusion.” In re Toshiba Medical Systems Corp., 91 USPQ2d
1266, 1271 (TTAB 2009). See also Stone Lion Capital Partners, L.P. v. Lion Capital
LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (finding STONE LION
CAPITAL confusingly similar to LION and LION CAPITAL); In re Fiesta Palms LLC,
85 USPQ2d 1360, 1367 (TTAB 2007) (affirming refusal to register CLUB PALMS
MVP based on prior registration of MVP, finding consumers “likely to believe that
the CLUB PALMS MVP casino services is simply the now identified source of the
previously anonymous MVP casino services”); In re Pierce Foods Corp., 230 USPQ
307, 309 (TTAB 1986) (in dicta, stating that even if Applicant’s proposed amendment
to its drawing was accepted, “Applicant’s institutional purchasers, aware of
registrant’s CHICKEN BAKE coating mix, may well believe that applicant’s PIERCE
CHICK’N BAKE pre-seasoned chicken is a product produced under license from
Serial No. 87315247
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registrant or otherwise sponsored or produced by registrant.”); In re Riddle 225 USPQ
630 (TTAB 1985) (affirming refusal to register RICHARD PETTY’S ACCU TUNE &
Design based on registration for ACCU-TUNE); In re Christian Dior, S.A., 225 USPQ
533 (TTAB 1985) (LE CACHET DE DIOR for men’s dress shirts likely to be confused
with CACHET for toilet soap, dresses and cologne).
For all of these reasons, we find that the similarities between the literal elements
ALTERNATIVE CHOICE WIRELESS and CHOICE WIRELESS in appearance,
sound, meaning and commercial impression easily outweigh the differences.
Furthermore, considering the marks in their entireties, the differences in how
Applicant’s mark appears resulting from its design elements are outweighed by the
similarities between the marks in their entireties. Applicant’s argument that “the
Board will find that a likelihood of confusion does not exist when viewing the [marks]
side-by-side,” 7 TTABVUE 4 (Applicant’s Appeal Brief at 3), is not well-taken. The
test is not whether the marks are distinguishable when considered side-by-side.
Rather, the test is whether the marks are sufficiently similar in terms of their overall
commercial impression that confusion as to the source of the services offered under
the marks is likely to result. San Fernando Elec. Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v.
Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991).
Applicant also argues that the cited mark is weak, and submitted a relatively
large number of third-party registrations for marks which contain the term CHOICE
and identify services identical or related to Registrant’s services. Office Action
Serial No. 87315247
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response of March 23, 2018 Ex. A. We accept Applicant’s argument that the term
CHOICE is conceptually weak for Internet service provider and wireless
communications services.5 In fact, the third-party registrations essentially function
as a dictionary in this situation, and “show the sense in which [the term CHOICE] is
used in ordinary parlance.” Juice Generation, Inc. v. GS Enterprises, LLC, 794 F.2d
1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015) (“‘[a] real evidentiary value of third
party registrations per se is to show the sense in which … a mark is used in ordinary
parlance.’ 2 McCarthy on Trademarks and Unfair Competition § 11:90 (4th ed. 2015)
(emphasis added). ‘Third party registrations are relevant to prove that some segment
of the composite marks which both contesting parties use has a normally understood
and well recognized descriptive or suggestive meaning, leading to the conclusion that
that segment is relatively weak.’ Id.”). In short, CHOICE is not distinctive in this
field. Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694-95 (CCPA
1976); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USQ2d 1458, 1471
(TTAB 2014).6

5 Nevertheless, many of the third-party registrations Applicant cites use CHOICE in a
descriptive or otherwise non-trademark manner, several of the cited marks are unitary, some
include the word CHOICE as part of a subsidiary slogan and many are for unrelated goods
or services, among other issues.
6 Applicant has not established commercial weakness, however, because it has not
established widespread use (as opposed to registration) of marks containing CHOICE, much
less CHOICE and WIRELESS together, in this field. Third-party registrations alone are “not
evidence of what happens in the market place or that customers are familiar with them.”
AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973); In re
Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745-46 (TTAB 2016). While a much
larger number of third-party registrations used for the same or closely related services might
suggest commercial weakness, the number of registrations Applicant submitted is not
sufficient. In re Inn at St. Johns, LLC, 126 USPQ2d 1742, 1745 (TTAB 2018); In re Morinaga,
Serial No. 87315247
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Nevertheless, to the extent Applicant argues that the cited mark is descriptive (as
opposed to merely suggestive) of Registrant’s goods, this is an impermissible
collateral attack on the cited registration. In this ex parte proceeding, “inasmuch as
the cited mark is registered on the Principal Register, we must assume that it is at
least suggestive.” In re Fiesta Palms, 85 USPQ2d 1360, 1363 (TTAB 2007) (citing In
re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997)).
Moreover, it is settled “that likelihood of confusion, mistake or deception is to be
avoided as much between weak marks as between strong marks.” In re Colonial
Stores, Inc., 216 USPQ 793, 795 (TAB 1982) (citing King Candy Co. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974)). Accordingly, while
we agree that Registrant’s mark is conceptually weak, it is not so weak that
Applicant’s similar mark is entitled to registration for in-part identical services.
Accordingly, the similarity of the marks also weighs in favor of finding a likelihood of
confusion, but only slightly, given the weakness of Registrant’s mark.7
C. Absence of Actual Confusion
The absence of confusion is not relevant here because there is no evidence

120 USPQ at 1746 & n.8. Cf. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v.
New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015) and Juice
Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671 (Fed. Cir. 2015).
7 Applicant’s argument that Registrant’s mark is not “famous” is essentially irrelevant. In
fact, “in an ex parte appeal the ‘fame of the mark’ factor is normally treated as neutral because
the record generally includes no evidence as to fame.” In re Mr. Recipe, LLC, 118 USPQ2d
1084, 1086 (TTAB 2016). “[I]t is settled that the absence of such evidence is not particularly
significant in the context of an ex parte proceeding.” In re Davey Products Pty Ltd. 92 USPQ2d
1198, 1204 (TTAB 2009).

Serial No. 87315247
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regarding the extent of Applicant’s use of its marks. Therefore, we cannot gauge
whether or the extent to which there has been an opportunity for confusion to occur
if it were likely to occur. See Nina Ricci S.A.R.L. v. E.T.F. Enters. Inc., 889 F.2d 1070,
12 USPQ2d 1901, 1903 (Fed. Cir. 1989) (“The absence of any showing of actual
confusion is of very little, if any, probative value here because (1) no evidence was
presented as to the extent of ETF’s use of the VITTORIO RICCI mark on the
merchandise in question in prior years ….”); In re Kangaroos U.S.A., 223 USPQ 1025,
1026-27 (TTAB 1984). Moreover, a lack of evidence of actual confusion carries little
weight in an ex parte case such as this. Majestic Distilling, 65 USPQ2d at 1205. “[I]t
is unnecessary to show actual confusion in establishing likelihood of confusion.” Giant
Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir.
1983). This factor is neutral.
II. Conclusion
The goods are in-part identical and we therefore must presume that the channels
of trade overlap and the classes of purchasers are the same. In addition, the marks
are more similar than dissimilar, notwithstanding the conceptual weakness of the
cited mark. We therefore find a likelihood of confusion between Applicant’s mark
and Registrant’s mark CHOICE WIRELESS.

Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.