Appgraft LLC

Trademark Trial and Appeal Board

Jul 9, 2015

No. 85843178 (T.T.A.B. Jul. 9, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: July 9, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Appgraft LLC
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Serial No. 85843178
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Arnold S. Weintraub of The Weintraub Group, P.L.C.,
for Appgraft LLC
Timothy Schimpf, Trademark Examining Attorney, Law Office 113,
Odette Bonnet, Managing Attorney.
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Before Bucher, Wellington, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Appgraft LLC seeks registration on the Principal Register of the mark
OBSERVANT OWL for “computer software for digital video monitoring and
recording for use with video surveillance systems” in International Class 9.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
of a likelihood of confusion with the mark OBSERVANT for goods and services

1 Application Serial No. 85843178 was filed on February 7, 2013, based on Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
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including, in most relevant part, “computer software, namely, fully downloadable
software for wireless sensing, remote sensing, monitoring, measuring, recording,
reporting, data processing, data transmission, management and control” in
International Class 9.2
After the Trademark Examining Attorney made the refusal final, Applicant
appealed. We reverse the refusal to register.
Our determination under Section 2(d) is based on 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 Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods. 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

2 Registration No. 4398801, issued September 10, 2013 from an application filed August 28,
2012. In full, the registration identifies “electronic devices for monitoring, measuring and
recording data; electronic devices for performing computations on recorded data, reporting
on recorded data and communicating recorded data to other electronic devices through
wireless and wired transmission means; electronic devices for management and control of
other apparatus; computer software, namely, fully downloadable software for wireless
sensing, remote sensing, monitoring, measuring, recording, reporting, data processing, data
transmission, management and control; Computer software, namely, fully downloadable
software, for the storage, retrieval, display, manipulation and processing of data stored
either locally or remotely” in International Class 9 and “software as a service (SAAS)
services, namely, hosting software for use by others for remote storage, processing,
accessing, displaying and reporting of data; computer services, namely, remote
management of software applications for others; customizing computer software for others”
in International Class 42.
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the cumulative effect of differences in the essential characteristics of the goods and
differences in the marks.”).
We first address the second du Pont factor, the similarity of the goods. We must
look to the goods and services as identified in the involved application and cited
registration, not to extrinsic evidence of actual use. Stone Lion Capital Partners, LP
v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014).3
We find that Registrant’s identified “computer software, namely, fully
downloadable software for wireless sensing, remote sensing, monitoring, measuring,
recording, reporting, data processing, data transmission, management and control”
is broad enough to encompass Applicant’s identified “computer software for digital
video monitoring and recording for use with video surveillance systems.” The second
du Pont factor thus weighs in favor of a finding that confusion is likely.
We turn next to the first du Pont likelihood of confusion factor, which focuses on
“the similarity or dissimilarity of the marks in their entireties as to appearance,
sound, connotation and commercial impression.” 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). “The proper test is not a side-
by-side comparison of the marks, but instead whether the marks are sufficiently
similar in terms of their commercial impression such that persons who encounter
the marks would be likely to assume a connection between the parties.” Coach

3 For that reason, our decision does not rest on the printouts from Registrant’s website
submitted by Applicant during prosecution and also attached to Applicant’s appeal brief.
See June 16, 2014 Response to Office Action at 2-13; 4 TTABVUE 7-18.
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Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721
(Fed. Cir. 2012) (citation omitted).
Because the similarity or dissimilarity of the marks is determined on the marks
in their entireties, our analysis cannot be predicated on dissecting the marks into
their various components; that is, the decision must be based on the entire marks,
not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005,
212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). On the other hand, there is nothing improper
in stating that, for rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. In re Nat’l Data, 224 USPQ at 751.
The cited mark is OBSERVANT and Applicant’s mark is OBSERVANT OWL,
both in standard characters. The initial term in Applicant’s mark constitutes the
entirety of the cited mark OBSERVANT, an adjective meaning “noticing everything
that happens.”4 However, we find that the additional term OWL in Applicant’s
mark significantly distinguishes the meaning and overall commercial impression of
Applicant’s mark from that of the cited mark. Although the Examining Attorney
introduced Internet evidence that owls have excellent vision – particularly night
vision – and are characterized in one source as “sometimes hav[ing] a watchful,

4 July 3, 2014 Final Office Action at 2, from MacmillanDictionary.com (American English
definition).
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thoughtful look,”5 Applicant’s mark as a whole clearly invokes a specific type of bird
commonly associated with wisdom rather than observation, while the cited mark
connotes only the adjective “observant.” The shared term “observant,” moreover, is
highly suggestive of computer software for monitoring and recording. On the record
before us, there is no reason to believe that the word OWL would be viewed as
designating a variation of software goods from the same source as the cited mark
OBSERVANT.
Each case must be decided on its own merits. See In re Nett Designs Inc., 236
F.3d 139, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). Here, the fact that both marks
contain the term OBSERVANT is not a sufficient basis for us to conclude that the
marks are confusingly similar. Rather, we find that when these respective marks
are considered in their entireties, their differences in connotation and overall
commercial impression outweigh their similarity. Considering the specific marks
and goods before us, under the first du Pont factor, we find the meaning and overall
commercial impression made by the mark OBSERVANT OWL to be sufficiently
dissimilar from the cited mark OBSERVANT to render confusion unlikely even
though the goods are overlapping. In this case, the dissimilarity of the marks is
determinative. See Kellogg Co. v. Pack’em Enters. Inc., 951 F.2d 330, 21 USPQ2d
1142, 1145 (Fed. Cir. 1991).
Decision: The refusal to register Applicant’s mark OBSERVANT OWL is
reversed.

5 See id. at 3-10.
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- o O o -
Opinion by Wellington, Administrative Trademark Judge, dissenting:
I respectfully dissent from the majority decision because I do not view the marks
OBSERVANT and OBSERVANT OWL as creating significantly different
commercial impressions. Although the registered mark, OBSERVANT, is a word
that suggests a purpose or quality of monitoring and recording software, Applicant’s
addition of the word OWL does not necessarily negate this suggestive element for
the same goods. That is, OBSERVANT, as the primary element in Applicant’s mark
and despite being used as an adjective for OWL, still connotes a quality or purpose
of Applicant’s monitoring and recording software.
I believe the marks are sufficiently similar that, when used on the same goods
being offered for sale through the same trade channels to the same consumers,
there is a likelihood of confusion. I would therefore affirm the refusal.