American Tel-A-Systems, Inc. a/k/a Amtelco

Trademark Trial and Appeal Board

Oct 9, 2013

No. 85416366 (T.T.A.B. Oct. 9, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: October 9, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re American Tel-A-Systems, Inc. a/k/a Amtelco
_____

Serial No. 85416366
_____

Bart B. Torvik of Torvik Law LLC,
for American Tel-A-Systems, Inc.
Nancy L. Clarke, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
_____

Before Bucher, Adlin and Hightower,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
American Tel-A-Systems, Inc. a/k/a Amtelco (“applicant”) seeks registration on
the Principal Register of the mark miSecureMessages (in standard character format)
for the following goods and services:
computer software for transmitting messages,
particularly messages containing or concerning health or
medical information in International Class 9;
and
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computer-aided transmission of messages, particularly
messages containing or concerning health or medical
information in International Class 38.1
The examining attorney has refused registration of the mark under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), having determined that applicant’s mark
so resembles the previously registered mark SECUREMESSAGE (in standard
character format), for “computer software for the transmission of encrypted text
messages, emails and announcements among users of desktop and laptop
computers, PDAs (personal digital assistants) and mobile phones” in International
Class 9,2 that use of applicant’s mark in connection with applicant’s goods and
services is likely to cause confusion, to cause mistake, or to deceive.
After the refusal was made final, applicant appealed, its request for
reconsideration was denied, and applicant and the examining attorney filed briefs.
We affirm the refusal to register.

Analysis

Our determination under Section 2(d) is based upon an analysis of all probative
facts in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. 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 Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two

1 Application Serial No. 85416366 was filed on September 7, 2011, based upon applicant’s
claim of first use anywhere and use in commerce in both classes since at least as early as
March 1, 2011.
2 Registration No. 3690799 issued on the Supplemental Register to Bio-Key International,
Inc. on September 29, 2009.
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key considerations are the similarities between the marks and the similarities
between the goods and/or 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.”). We discuss each of the
du Pont factors concerning which applicant or the examining attorney submitted
argument or evidence.
We turn first to the relationship of the respective services and goods, and the
channels of trade, the second and third du Pont factors, respectively. In its brief,
applicant does not argue there is not a relationship between the goods and services.
“Applicant does not contest, for purposes of this appeal, that the goods and/or
services and the trade channels are similar.” Applicant’s brief at 7.
Nonetheless we note that registrant’s goods are “computer software for the
transmission of encrypted text messages, emails and announcements among users
of desktop and laptop computers, PDAs (personal digital assistants) and mobile
phones” in International Class 9. Applicant’s goods are “computer software for
transmitting messages, particularly messages containing or concerning health or
medical information” in International Class 9, and its services are “computer-aided
transmission of messages, particularly messages containing or concerning health or
medical information” in International Class 38. The examining attorney points out
that both applicant’s and registrant’s goods involve computer software that is used
for the transmission of messages. Registrant’s goods are presumed to encompass all
goods of the type described, including those in applicant’s more narrow identification, that
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is, software for transmitting messages containing health or medical information.
Precedential decisions have found that various electronic goods are related to
technology-related services. See Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d
1261, 62 USPQ2d 1001 (Fed. Cir. 2002) (holding “electronic transmission of data and
documents via computer terminals” to be sufficiently related to facsimile machines,
computers, and computer software such that confusion would be likely where the
marks at issue convey a similar commercial impression); MSI Data Corp. v.
Microprocessor Sys., Inc., 220 USPQ 655 (TTAB 1983) (holding MSI for “computer
hardware manufacturing services to the order of or specification of others” likely to be
confused with MSI for “electronic ordering systems for gathering and transmitting source
data comprising a recorder-transmitter and data receiver”); and Commc’ns Satellite
Corp. v. Comcet, Inc., 429 F.2d 1245, 166 USPQ 353 (4th Cir. 1970) (holding COMSAT
for satellite services likely to be confused with COMCET for computers because
computers can be used to receive data transmitted by satellites).
The examining attorney also included in the record copies of third-party
registrations where the same mark is registered for use in connection with
computer-aided transmission of messages, on the one hand, and computer software
for transmission of data, on the other hand, showing that they are of a kind that
may emanate from a single source. In re Infinity Broad. Corp., 60 USPQ2d 1214,
1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86
(TTAB 1993); and In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988):
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3
MESSAGEMEDIA 4 Infinite HD 5
6
SNUGTV 7
8

Accordingly, these factors weigh in favor of a finding of likelihood of confusion.
As to the conditions under which and buyers to whom sales are made, applicant
asserts that the relevant consumers will be highly sophisticated and will use an
extremely high degree of care. However, there is no evidence to support this
speculation. Moreover, even sophisticated purchasers, when faced with substantially
similar marks, may be subject to source confusion. See In re Cynosure, Inc., 90
USPQ2d 1644 (TTAB 2009); In re Decombe, 9 USPQ2d 1812 (TTAB 1988); and In re
Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983).
As to the number and nature of similar marks in use on similar goods and
services, beyond the cited mark and applicant’s mark, the examining attorney
contends that applicant has failed to show third-party uses or registrations of any
marks containing the root of both “secure” and “message.” The mark in the closest
registration (MXSECUREMAIL for “online secure web-based messaging system,
namely, providing electronic mail, data and document delivery services”) begins

3 Registration No. 3574647 issued on February 17, 2009
4 Registration No. 3707747 issued on November 10, 2009.
5 Registration No. 3742366 issued on January 26, 2010.
6 Registration No. 3805581 issued on June 22, 2010.
7 Registration No. 3910045 issued on January 25, 2011.
8 Registration No. 3945085 issued on April 12, 2011.
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with the ostensibly distinctive prefix, “MX,” and builds the mark around the word
“Mail” rather than “Message.”9
We turn then to the single du Pont factor over which the examining attorney
and applicant have argued most contentiously, namely, the similarity or
dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression.
Applicant argues that the cited mark is merely descriptive, and therefore
entitled to protection against only extremely similar marks – which it argues its
mark is not. Applicant also argues that despite any similarities between the marks,
applicant’s mark creates a distinct commercial impression because it contains a
dominant and distinctive prefix that is dissimilar from anything in the cited, non-
distinctive mark.
As a general principle, we agree with applicant that where a merchant or
manufacturer chooses a trademark that is inherently weak, that trademark owner
will not enjoy the wide latitude of protection afforded the owners of strong
trademarks – and registrant’s cited mark is not a strong trademark. On the other
hand, we also agree with the examining attorney that the mere addition of “mi-”
does not sufficiently distinguish these marks.
Notwithstanding any alleged weakness in the cited mark, even weak marks are
entitled to a narrow scope of protection. This umbra of protection accorded to a
mark registered on the Supplemental Registration still bars the registration by a
subsequent user of a highly-similar mark for closely-related goods or services.

9 Registration No. 3359527 issued to MxSecure, Inc., on December 25, 2007.
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Despite the fact that registrant’s cited mark was earlier refused as being merely
descriptive, it was ultimately found capable of registration on the Supplemental
Register. A Supplemental Registration is a “registered” mark under Lanham Act
§ 2(d) so as to preclude later registration on the Principal Register of confusingly
similar marks by others. In re Clorox Co., 578 F.2d 305, 198 USPQ 337, 341 (CCPA
1978).
As a matter of fact, applicant has taken registrant’s SECUREMESSAGE mark,
altered it slightly by pluralizing the second word to “Messages,” and then
incorporated it into its own mark by adding the leading letters “mi-.” Inasmuch as
the pluralization of “Message” to “Messages” in the instant case cannot be deemed
to be a difference providing any legal distinction,10 we consider the addition of the
letters “mi-.”
The leading letters “mi-” represent the most significant dissimilarity between
the marks. In this regard, the examining attorney did not continue to pursue with
applicant the intended significance of this prefix. Likewise, other than arguing that
the prefix is arbitrary, applicant has failed to provide any evidence of the source-
indicating function of the “mi-” prefix. Accordingly, there is nothing definitive in the
record about what that two-letter prefix connotes, and how that understanding
affects the overall commercial impression of applicant’s mark.

10 See Wilson v. Delaunay, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957) (no material difference
between the singular and plural forms of ZOMBIE such that the marks were considered the same mark);
In re Strategic Partners, Inc., 102 USPQ2d 1397, 1399 (TTAB 2012) (“the difference between the
singular form ANYWEAR … and the plural form ANYWEARS … is not meaningful”); Chicago Bears
Football Club v. 12th Man/Tennessee LLC, 83 USPQ2d 1073, 1077 (TTAB 2007) (“we cannot attribute
much trademark significance to the difference in the plural and singular form of the word ‘Bear’ in the
marks”).
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The examining attorney contends that the letter-string “mi” could well be the
phonetic equivalent of the singular possessive adjective, “my.” Under this
interpretation, applicant’s applied-for mark will be seen, heard and understood as
merely an explicitly possessive form of registrant’s mark, also pluralized, namely,
“My SecureMessages.”
Others may well perceive this as the Spanish word “mi” – pronounced differently
– but also translated as the singular possessive adjective, “my.” Under the doctrine
of foreign equivalents, foreign words from common, modern languages are
translated into the English language in order to determine whether there is any
similarity of connotation with English words in a likelihood of confusion analysis.
See Palm Bay Import, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The doctrine is applied when it is
likely that “the ordinary American purchaser would ‘stop and translate’ [the term]
into its English equivalent.” Id. at 1696, quoting In re Pan Tex Hotel Corp., 190
USPQ 109, 110 (TTAB 1976). See generally J.T. McCarthy, 4 MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION, § 23:36 (4th ed., rev. 2013). The Board has
found that the “ordinary American purchaser” in a case involving a foreign
language mark refers to the ordinary American purchaser who is knowledgeable in
English as well as the pertinent foreign language. In re Thomas, 79 USPQ2d 1021,
1025 (TTAB 2006). Hence, this perception will create a commercial impression quite
similar to the cited mark. In fact, it may appear that applicant’s goods and services
are a particular version of registrant’s goods.
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The record also shows that applicant uses the prefix “mi-” with other of its
similarly-constructed marks, such as “miAmtelcoCloud,” “miOnCall,” “miAppointments,”
and “miReminders.” To the extent that applicant specializes in healthcare-specific
applications, this repeated prefix may well be perceived as an acronym suggesting a
family of computer software applications designed expressly for storage and
management of healthcare or medical information, as shown on applicant’s website.
Whichever one of these possible connotations may prove to be the most frequent
perception of the relevant customers, we agree with the examining attorney that in
any event this new mark does not create a meaningfully different commercial
impression from that one takes away from the cited mark. For example, extant
customers of registrant’s SECUREMESSAGE software may well assume incorrectly
that applicant’s miSecureMessages software is a new or updated version of the
SECUREMESSAGE software, now possibly also designed specifically for
transmitting encrypted medical information.
We reject applicant’s “syllogism”11 that inasmuch as registrant’s mark was
refused registration on the Principal Register as being merely descriptive, and
because its own composite mark is deemed to be inherently distinctive, the marks
cannot, as a matter of law, be found to be likely to cause confusion because logically
these marks are not “substantially identical.”

11 Applicant argues in its reply brief that ultimately a straightforward syllogism proves that
these marks are not “substantially identical” as a matter of law:
PREMISE 1: SECUREMESSAGE is a merely descriptive mark (uncontested).
PREMISE 2: miSecureMessages is a distinctive mark (uncontested).
PREMISE 3: By definition, distinctive marks cannot be “substantially identical” to
descriptive marks (incontestable).
CONCLUSION: miSecureMessages and SECUREMESSAGE are not “substantially identical.”
Serial No. 85416366
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In support of this position, applicant cites to a non-precedential decision, In re
Quality Trans Parts Inc., Application Serial No. 76515615 (Nov. 22, 2005, TTAB)
(applicant’s applied-for term QUALITY was found to be merely descriptive for auto
transmissions, but no likelihood of confusion was found with QUALITEE, previously
registered on the Supplemental Register for a variety of auto parts),12 in support of
its position that the cited mark on the Supplemental Register serves as a bar only if
the marks and goods at issue are “substantially identical.” However, that decision
contained other language that applicant failed to cite, as follows:
… [A]pplicant argues that when the cited
registration is a Supplemental Register
registration, it may be cited as a Section 2(d) bar to
an application for registration on the Principal
Register only if the marks and goods at issue are
“substantially identical.” The Board rejected this
very argument in In re Smith and Mehaffey, 31
USPQ2d 1531, 1533 (TTAB 1994), and we reject it in
this case as well. See In re The Clorox Co., [citation
omitted] (same likelihood of confusion standard applies
whether cited registration is on Principal or Supplemental
Register). See also In re Research and Trading Corp., 793
F.2d. 1276, 230 USPQ 49 (Fed. Cir. 1986), in which the
cited registration was on the Supplemental Register and
in which the court undertook an analysis of all relevant
du Pont factors. Regarding the case of In re Central Soya
Company, Inc., 220 USPQ 914 (TTAB 1984), upon which
applicant relies in this case, see the Board’s discussion in
In re Southern Belle Frozen Foods Inc., 48 USPQ2d 1849,
1851-52 at n.2 (TTAB 1998). As for applicant’s reliance on
Professor McCarthy’s discussion (at 3 MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION § 19:37 (4th ed.)) of
whether a “non-mark” registered on the Supplemental
Register should be allowed to prevent registration of a
“real mark” on the Principal Register, the court has
responded to that argument by noting: “that result is
supported by the plain terms of the statute.” Towers v.

12 http://e-foia.uspto.gov/Foia/ReterivePdf?system=TTABIS&flNm=76515615-11-22-2005
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Advent Software Inc., 913 F.2d 942, 16 USPQ2d 1039,
1042 n.2 (Fed. Cir. 1990). Thus, we have undertaken the
normal du Pont likelihood of confusion analysis, but
nonetheless have kept in mind the well-settled principle
that the more descriptive and weak the cited registered
mark is, the lesser the scope of protection to which it is
entitled. See In re The Clorox Co. … .
Id. at 6-7 (emphasis supplied). Also, while the respective goods in Quality Trans
Parts were related, unlike here, they were not virtually identical.
Applicant also cites to the case of In re Hunke & Jochheim, 185 USPQ 188, 189
(TTAB 1975) (DURABUL registered on the Supplemental Register for record books
will not bar registration of HIG•DURABLE for an array of stationery items). The
Board considered the prior registration to be a play on the word “durable,”
warranting a very narrow scope of protection, and concluded that the addition of the
“HIG•” prefix was sufficient to render the marks distinguishable. We note that the
cited mark in that case, although lauditorily descriptive, did include, unlike the
marks in this case, a misspelling that creates an additional difference in appearance
and possibly commercial impression between the two marks.
In the case of Milwaukee Nut Company v. Brewster Food Service, 277 F.2d 190,
125 USPQ 399, 401 (CCPA 1960) (BEER NUTS does not block SCHNAPS NUTS under
Section 2(d) ), the Court stated:
Furthermore, if we permitted appellee to prevail here, we
would be saying, in effect, that no one else could sell this
type of merchandise employing a trademark suggestive of
the most appealing use of the goods. We do not believe
that appellee's mark warrants such protection.
We read this as holding that the term “Beer Nuts” is so highly descriptive of salted,
sweet peanuts that it creates a very small umbra. Hence, on these facts, it does not
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preclude the newcomer’s mark. The Court observed that the junior user’s mark only
suggested a type of nuts that goes well with alcoholic beverages generally. Finally,
of course, the two marks involved in that instance were different as to sound,
appearance and meaning.
Each case must be determined on its own facts, and arguably terms like
QUALITEE, DURABUL, and BEER NUTS are so highly descriptive that they cast very
circumscribed umbras, and/or terms like QUALITY, HIG•DURABLE and SCHNAPS
NUTS, respectively, were dissimilar enough from each of the senior user’s descriptive
terms to avoid a likelihood of confusion. By contrast, on the facts of the instant case,
as explained above, we find that the umbra of SECUREMESSAGE is large enough to
overlap with miSecureMessages for legally identical goods and closely-related
services.

Decision: The refusal under Section 2(d) of the Lanham Act to register the mark
miSecureMessages for both classes of goods and services is hereby affirmed.