Apple, Inc.v.Syed Ali Hasan

Trademark Trial and Appeal Board

Mar 27, 2017

No. 91214849 (T.T.A.B. Mar. 27, 2017)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: March 27, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
Apple, Inc.
v.
Syed Ali Hasan
_______
Opposition No. 91214849
to Application Serial No. 85866375
_______
Alicia Grahn Jones of Kilpatrick Townsend & Stockton LLP for Apple, Inc.
Syed Ali Hasan, appearing pro se.
_______
Before Bergsman, Shaw, and Kuczma, Administrative Trademark Judges.
Opinion by Shaw, Administrative Trademark Judge:
Applicant, Syed Ali Hasan, seeks registration of the mark, IT’S AN APP FOR
THAT, in standard characters, for services identified as:
Computer software development in the field of mobile
applications for ordering food from restaurants and
medicines from pharmacies, purchasing event tickets, and
booking appointments for services; Providing a website
featuring technology that enables users to download
applications for ordering food from restaurants and
medicine from pharmacies, purchasing event tickets, and
Opposition No. 91214849
2
booking appointments for services; Software as a service
(SAAS) services featuring software for ordering food from
restaurants and medicines from pharmacies, purchasing
event tickets, and booking appointments for services;
Software as a service (SAAS) services, namely, hosting
software for use by others as an internet and mobile
application platform for ordering food from restaurants
and medicines from pharmacies, purchasing event tickets,
and booking appointments for services, in International
Class 42.1
Opposer, Apple, Inc., has opposed registration of Applicant’s mark on the grounds
of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d).2 Opposer pleaded ownership of the following registered marks:
1. THERE’S AN APP FOR THAT,3 in standard characters, for:
Retail store services featuring computer software provided via
the Internet and other computer and electronic
communication networks; retail store services featuring
computer software for use on handheld mobile digital
electronic devices and other consumer electronics, in
International Class 35; and
Maintenance and updating of computer software; providing
information concerning computer software via the Internet
and other computer and electronic communication networks;
providing search engines for obtaining data via

1 Application Serial No. 85866375, filed on March 4, 2013 under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), alleging Applicant’s bona fide intent to use the mark in commerce.
2 Insofar as Opposer has not argued the pleaded dilution claim in its brief, in accordance
with the Board’s usual practice, we find that claim to have been waived. See, e.g., Alcatraz
Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1753 (TTAB 2013), aff’d
mem., 565 F. App’x 900 (Fed. Cir. 2014).
3 Registration No. 3884408, issued November 30, 2010, Section 8 and 15 affidavits filed and
accepted.
Opposition No. 91214849
3
communications networks; providing temporary use of
computer software and online facilities to enable users to
access and download computer software; providing online non-
downloadable computer software that generates customized
recommendations of software applications based on user
preferences, in International Class 42.
2. THERE’S AN APP FOR THAT,4 in standard characters, for:
Handheld mobile digital electronic devices for the sending and
receiving of telephone calls, electronic mail, and other digital
data, for use as a digital format audio player, and for use as a
handheld computer, personal digital assistant, electronic
organizer, electronic notepad, and camera; computer gaming
machines, videophones, prerecorded computer programs for
personal information management, database management
software, electronic mail and messaging software, database
synchronization software, computer programs for accessing,
browsing and searching online databases, computer software
and firmware, namely, operating system programs, data
synchronization programs, and application development
computer software programs for personal and handheld
computers; software for the redirection of messages, Internet
e-mail, and/or other data to one or more electronic handheld
services from a data store on or associated with personal
computer or a server; software for the synchronization of data
between a remote station or device and a fixed or remote
station or device, in International Class 9; and
Telecommunication services, namely, electronic transmission
of computer software via the Internet and other computer and
electronic communication networks; provision of connectivity
services and access to electronic communications networks for

4 Registration No. 4091498, issued January 24, 2012.
Opposition No. 91214849
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transmission or reception of computer software, in
International Class 38.
Applicant denied the salient allegations of the notice of opposition.
The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of the involved application. The parties have stipulated
that witness testimony may be offered by affidavit.5 Opposer submitted the following
evidence:
1. The testimony affidavit of Thomas La Perle, Esq., Assistant Secretary of Apple
and a Director in Apple’s legal department, and accompanying exhibits.
2. Opposer’s First Notice of Reliance comprising copies of Opposer’s pleaded U.S.
Trademark Registrations and printouts showing the current status and title of
the registrations printed from the USPTO’s Trademark Electronic Search
System (TESS) database.
3. Opposer’s Second Notice of Reliance comprising Applicant’s Responses to
Opposer’s First Set of Interrogatories.
4. Opposer’s Third Notice of Reliance comprising Applicant’s Responses to
Opposer’s First Requests for Admission.
5. Opposer’s Fourth Notice of Reliance comprising Applicant’s Responses to
Opposer’s First Requests for Production of Documents and Things.
6. Opposer’s Fifth Notice of Reliance comprising portions of the discovery
deposition and accompanying exhibits of Applicant Syed Ali Hasan.
7. Opposer’s Sixth Notice of Reliance comprising a sample of unsolicited print
publications available to the general public.

5 24 TTABVUE.
Opposition No. 91214849
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8. Opposer’s Seventh Notice of Reliance comprising printouts of publicly
available web pages and other documents printed from the Internet.
Applicant did not submit any testimony or evidence.6
Standing and Priority
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015). Our primary
reviewing court, the U.S. Court of Appeals for the Federal Circuit, has enunciated a
liberal threshold for determining standing, namely that a plaintiff must demonstrate
that it possesses a “real interest” in a proceeding beyond that of a mere intermeddler,
and “a reasonable basis for his belief of damage.” Empresa Cubana Del Tabaco at
1062 (citing Ritchie v. Simpson, 170 F.3d 1902, 50 USPQ2d 1023, 1025-26 (Fed. Cir.
1999)). A “real interest” is a “direct and personal stake” in the outcome of the
proceeding. Ritchie v. Simpson, 50 USPQ2d at 1026.
In this case, Opposer made of record by notice of reliance copies of its pleaded
registrations showing their current status and title to Opposer. In view thereof,
Opposer has established its standing. In addition, priority is not in issue with respect
to the marks and the services set out in its pleaded registrations. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); King Candy
Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).

6 Applicant’s brief was filed four days late. In the interests of completeness we have
exercised our discretion and considered Applicant’s untimely brief.
Opposition No. 91214849
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Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence relevant to the factors set forth in In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (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 services and the similarities between the marks. 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 [or services] and differences in the marks.”). The relevant
du Pont factors in the proceeding now before us are discussed below.
1. The similarity or dissimilarity of the services, trade channels and classes of
consumers
We first consider the du Pont factors regarding the similarity or dissimilarity of
the parties’ respective services, their channels of trade and classes of consumers. In
making our determination, we must look to the services as identified in the involved
application and Opposer’s registration. Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting
Octocom Sys., Inc. v. Houston Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990)). It is sufficient for an Opposer to prevail on a likelihood of
confusion claim by showing that relatedness between any service encompassed within
a class in the identification of services in the application and the pleaded
Opposition No. 91214849
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registrations. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209
USPQ 986, 988 (CCPA 1981).
Applicant’s services include, inter alia, “Providing a website featuring technology
that enables users to download applications for ordering food from restaurants and
medicine from pharmacies, purchasing event tickets, and booking appointments for
services.” These services, enabling users to download applications, are similar to
Opposer’s “retail store services featuring computer software provided via the Internet
and other computer and electronic communication networks” and “providing
temporary use of computer software and online facilities to enable users to access and
download computer software.” Both services are similar because they encompass
offering downloadable software to others via an internet website. The fact that
Applicant’s downloadable software and services are limited to restaurants,
pharmacies, events, and appointments do not distinguish the services inasmuch as
Opposer’s provided software and services are not limited to any particular field.
In disputing the similarity of the parties’ services, Applicant argues that Opposer
is confused as to the nature of Applicant’s product, which,
[W]hen live, will not serve as an app store from which many
apps could be downloaded. It will be a single app listed on
a variety of app stores for a potential user to download and
perform a variety of actions to facilitate day to day
activities such as shopping etc.7
This argument is unpersuasive. Applicant’s services identify activities such as
“computer software development . . .” and “providing a website . . . that enables users

7 Applicant’s Br., p. 3, 40 TTABVUE 3.
Opposition No. 91214849
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to download applications. . . .” These services are significantly broader than the
“single app” suggested by Applicant in his argument, therefore, given the breadth of
Applicant’s identification of services, it is inappropriate to limit discussion of the
similarity of Applicant’s and Registrant’s services to a “single app.” We do not read
limitations into the identification of goods. Squirtco v. Tomy Corp., 697 F.2d 1038,
216 USPQ 937, 940 (Fed. Cir. 1983) (“There is no specific limitation here, and nothing
in the inherent nature of [Opposer’s] mark or goods that restricts the usage of
SQUIRT for balloons to promotion of soft drinks. The Board, thus, improperly read
limitations into the registration.”). Rather, we must look to the services as identified
in the involved application and cited registration. See Octocom Sys., 16 USPQ2d at
1787 (“The authority is legion that the question of registrability of an applicant’s
mark must be decided on the basis of the identification of goods set forth in the
application regardless of what the record may reveal as to the particular nature of an
applicant’s goods, the particular channels of trade or the class of purchasers to which
the sales of goods are directed.”).
Moreover, even if we focus on Applicant’s “single app,” we find the services to be
related because Applicant’s “software for ordering food from restaurants and
medicines from pharmacies, purchasing event tickets, and booking appointments for
services” is intended to be sold via application store web sites similar to Opposer’s, as
well as on Opposer’s APP STORE website. Applicant testified:
Q: And so did you anticipate, once the app was developed, applying to Apple’s
app store for distribution?
Opposition No. 91214849
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A: Absolutely. We had the apps launched from both the app store as well as
the Android space, the Google Place [sic] store.
* * *
Q: [Y]ou plan on releasing that first to Apple’s App Store application
marketplace and then to Google’s application marketplace; is that correct?
A. That’s right.8
It is well recognized that confusion may be likely to occur from the use of the same
or similar marks for goods, on the one hand, and for the services of selling those goods,
on the other. See, e.g., In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025
(Fed. Cir. 1988) (BIGGS for retail grocery and general merchandise store services
likely to be confused with BIGGS for furniture); In re Thomas, 79 USPQ2d 1021, 1024
(TTAB 2006) (“It is clear that consumers would be likely to believe that jewelry on
the one hand and retail stores selling jewelry on the other emanate from or are
sponsored by the same source if such goods and services are sold under the same or
similar marks.”); see also 4 J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition § 24:25 (4th ed. March 2017) (“Where the services consist of retail
sales services, likelihood of confusion is found when another mark is used on goods
which are commonly sold through such a retail outlet.”). Thus, Applicant’s intent to
sell its software on third-party application store websites, much less on Opposer’s
website, establishes that the services are related for purposes of likelihood of
confusion.

8 Testimony Deposition of Applicant, pp. 38, 121, 33 TTABVUE 10, 23.
Opposition No. 91214849
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Regarding channels of trade, the foregoing testimony indicates that Applicant
intends for his software to be sold by Opposer in its APP STORE. Thus, by Applicant’s
own admission, his software is intended be offered via the same channels of trade and
to the same classes of consumers as Opposer’s products and services. Indeed,
Applicant’s and Opposer’s channels of trade and intended consumers are literally the
same.
For the foregoing reasons, we find that the du Pont factors of the similarity of the
services, channels of trade and classes of consumers weigh in favor of a finding of
likelihood of confusion.
2. Strength of Opposer’s Mark
We turn now to the du Pont factor regarding the strength of Opposer’s THERE’S
AN APP FOR THAT mark. Opposer argues that its mark is strong and entitled to a
broad scope of protection. In support of its position, Opposer submitted testimony and
documents regarding sales and advertising from 2009-2015.9 Opposer’s sales and
marketing numbers are quite substantial. Consumers have downloaded over 100
billion applications through Opposer’s APP STORE10 since its launch, and Apple’s
2009 television campaign featuring the THERE’S AN APP FOR THAT mark is
estimated to have received over 4 billion views.11 In addition, Opposer has received

9 Testimonial affidavit of Thomas La Perle, 37 TTABVUE. Because Opposer has designated
the La Perle affidavit as confidential, we refer to it in only general terms.
10 Id., 37 TTABVUE 17.
11 Id., 37 TTABVUE 18-19.
Opposition No. 91214849
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awards and extensive unsolicited media attention featuring THERE’S AN APP FOR
THAT.
Opposer does not assert that its mark is famous, and we note that Opposer has
not placed its figures in a context that would prove fame. See Bose Corp. v. QSC Audio
Prods., 63 USPQ2d 1303, 1309 (Fed. Cir. 2002). However, even the raw numbers of
product sales and advertising expenses are sufficient to show that Opposer’s mark
has had a significant degree of exposure. Based on the evidence of record, we find that
Opposer’s THERE’S AN APP FOR THAT mark is an arbitrary and strong mark and
entitled to a concomitantly broad scope of protection. This du Pont factor weighs in
favor of a finding of likelihood of confusion.
3. The similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression
We next consider the marks, comparing them for similarities and dissimilarities
in appearance, sound, connotation and commercial impression. See Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). Similarity in any one of these elements is sufficient to support a
determination of likelihood of confusion. See Krim-Ko Corp. v. The Coca-Cola Co., 390
F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either
form, spelling or sound alone is likely to cause confusion.”).
To repeat, Applicant’s mark is IT’S AN APP FOR THAT whereas Opposer’s mark
is THERE’S AN APP FOR THAT. The only difference between the marks is that
Applicant has substituted the word IT’S in its mark for the word THERE’S in
Opposer’s mark. This difference is not sufficient to distinguish the marks inasmuch
Opposition No. 91214849
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as both marks create nearly identical connotations and commercial impressions,
namely, that a software application exists to solve some particular but undefined
need. In addition, both marks are similar in appearance and sound because they both
begin with a contraction, IT’S and THERE’S, followed by the phrase AN APP FOR
THAT.
Applicant argues that his mark is nevertheless entitled to registration because
Opposer’s mark was not cited as a bar to registration by the Examining Attorney:
“considering the USPTO, which is my filter . . . found no grounds for confusion
between my trademark and Apple trademark, I request that the board reject the
opposition and allow me to use the trademark when my product is ready.”12 This
argument is unpersuasive. The fact that an Examining Attorney did not issue a
refusal of Applicant’s mark under Section 2(d) is of little relevance. The Board is not
bound by the decisions of Examining Attorneys in allowing marks for registration.
See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001).
Accordingly, the du Pont factor regarding the similarity of the marks weighs in
favor of finding a likelihood of confusion.
4. Balancing the factors
After considering all of the applicable du Pont factors, including any factors not
discussed herein, we find that Applicant’s mark, IT’S AN APP FOR THAT, for the
identified computer software services is likely to cause confusion with Opposer’s
mark, THERE’S AN APP FOR THAT, for similar computer software services.

12 Applicant’s Br., pp. 3-4, 40 TTABVUE 3-4.
Opposition No. 91214849
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Decision: The opposition is sustained and registration of the mark is refused.