Asist, Inc.

Trademark Trial and Appeal Board

Mar 31, 2011

No. 77396813 (T.T.A.B. Mar. 31, 2011)

d9
Mailed: March 31, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
________

In re Asist, Inc.
________

Serial No. 77396813
Filed: February 14, 2008
_______

John J. Okuley, Mueller Smith & Okuley LLC for Asist, Inc.

Brian Pino, Trademark Examining Attorney, Law Office 114,
K. Margaret Le, Managing Attorney.
_______

Before Zervas, Mermelstein, and Wellington, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:
Applicant seeks registration of the mark

for “video teleconferencing” in International Class 38.1
The examining attorney has refused registration, having
determined that registration of applicant’s mark would lead
to a likelihood of confusion in view of Registration No.

1 Based on the allegation of first use and use in commerce as of
November 1, 2007. “The color(s) blue, red, and white is/are
claimed as a feature of the mark.”
THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77396813
2
30886582 for DITTOCAM (in standard characters) as used in
connection with “radio broadcasting services;
telecommunications services, namely, broadcasting of real
time images via the global computer network,” in
International Class 38. Trademark Act § 2(d); 15 U.S.C.
§ 1052(d). Applicant appeals from the examining attorney’s
final refusal.3
We affirm.
I. Applicable Law
Our determination under Trademark Act § 2(d) is based
on an analysis of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973); see also Palm Bay
Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003); In re Dixie Rests. Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the
evidence of record on these factors, we keep in mind that
“[t]he fundamental inquiry mandated by Section 2(d) goes to
the cumulative effect of differences in the essential

2 Issued May 2, 2006, based on use of the mark in commerce.
3 We grant applicant’s and the examining attorney’s requests that
we take judicial notice of proffered dictionary definitions. In
Serial No. 77396813
3
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
II. Discussion
A. The Similarity or Dissimilarity of the Marks in
Their Entireties

In a likelihood of confusion analysis, we compare the
marks for similarities and dissimilarities in appearance,
sound, connotation and commercial impression. Palm Bay, 73
USPQ2d at 1692. “[T]he test is not whether the marks can
be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression so
that confusion as to the source of the goods offered under
the respective marks is likely to result.” H.D. Lee Co. v.
Maidenform Inc., 87 USPQ2d 1715, 1727 (TTAB 2008). While
we must consider the marks in their entireties, it is
entirely appropriate to accord greater importance to the
more distinctive elements in the marks. “[I]n articulating
reasons for reaching a conclusion on the issue of
confusion, 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

re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Serial No. 77396813
4
conclusion rests on consideration of the marks in their
entireties. Indeed, this type of analysis appears to be
unavoidable.” In re Nat’l Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985).
As noted above, applicant’s mark is:

Applicant’s mark comprises the wording DITTOPRO,
displayed in an unremarkable sans-serif font, with the
“DITTO” portion displayed in large, red, uppercase
characters, and the “PRO” portion in smaller, blue letters,
with an initial capital. Thus, although physically
connected to “PRO,” the “DITTO” feature of the mark makes a
separate – and significantly greater – impression as a
constituant feature of the wording in the mark. We also
note that “DITTO” is the first literal part of applicant’s
mark, and therefore “most likely to be impressed upon the
mind of a purchaser and remembered.” Palm Bay, 73 USPQ2d
at 1692; Presto Prods., Inc. v. Nice-Pak Prods. Inc., 9
USPQ2d 1895, 1897 (TTAB 1988). Moreover, PRO is a
frequently-used synonym for “professional,” MERRIAM-WEBSTER
Serial No. 77396813
5
DICTIONARY, www.merriam-webster.com (March 29, 2011),4 and in
the context of applicant’s mark and goods, is suggestive of
either the quality of applicant’s services or the intended
users of them. Suggestive terms tend to be weak, and
therefore less likely to form a strong impression on the
potential consumer when distinguishing similar marks.
Visually, while applicant’s mark also includes a
design (of a globe wearing a telephone headset) we find –
as we often do – that the wording creates the dominant
impression of the mark. This is because when a mark
consists of words as well as a design, the words are used
to call for, or refer to the goods. E.g., CBS Inc. v.
Morrow, 708 F.2d 1579, 1581-82 (Fed. Cir. 1983). As a
result, we find that the term DITTO is clearly the dominant
feature of opposer’s mark.
Applicant argues that DITTO in its mark “is an acronym
for ‘Digital Interpreting, Translation, and Transliteration
Online.’” App. Br. at 13. But applicant offers no
evidence that this is an accepted meaning of “DITTO,” or
that the relevant consumers would be aware of it. On the
contrary, there is nothing in this record to suggest that
consumers (of either applicant’s or registrant’s services)

4 We sua sponte take judicial notice of this definition, and the
definition of “cam,” infra.
Serial No. 77396813
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would understand DITTO to have anything other than its
common meaning: “same here: used instead of repeating
something that has just been said to indicate that the same
thing applies to you (informal).” MSN ENCARTA DICTIONARY
http://encarta.msn.com (Sept. 21, 2010). We thus consider
the term DITTO in both marks to share the same meaning.
The mark in the prior registration is DITTOCAM (in
standard characters). We consider “DITTO” to be the
dominant portion of the cited registrant’s mark. As was
the case with applicant’s mark, “DITTO” is the first part
of the registered mark, and therefore “most likely to be
impressed upon the mind of a purchaser and remembered.”
Moreover, the second part of the prior registrant’s mark –
CAM – is suggestive of the registrant’s “broadcasting of
real time images....” (emphasis added), inasmuch as the
likely connotation of CAM in the context of the
registrant’s services is that of a video camera. See
MERRIAM-WEBSTER DICTIONARY, www.merriam-webster.com (March 29,
2011) (“cam noun ... :CAMERA; especially: VIDEO CAMERA”).
A mark registered in standard characters must be
considered without regard to any particular font style,
size or color in which it might be displayed. Citigroup
Inc. v. Capital City Bank Group, Inc., ___ F.3d ___, ___
USPQ2d ___, slip op. at 12-13 (Fed. Cir. Mar. 28, 2011).
Serial No. 77396813
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We therefore must consider that the prior registrant’s mark
could be displayed in any font style, size, or color –
including the same way in which applicant displays the
wording in its mark.
We thus find that DITTO is clearly the dominant
feature of both marks, and that the marks are substantially
similar in appearance, sound, and meaning, a factor which
favors a finding of likelihood of confusion.
B. Similarity of the Services

Applicant’s recited services are “video
teleconferencing,” while the services set out in the cited
registration are “radio broadcasting services;
telecommunications services, namely, broadcasting of real
time images via the global computer network.”
[G]oods or services need not be identical or
even competitive in order to support a finding of
likelihood of confusion. Rather, it is enough
that goods or services are related in some manner
or that some circumstances surrounding their
marketing are such that they would be likely to
be seen by the same persons under circumstances
which could give rise, because of the marks used
or intended to be used therewith, to a mistaken
belief that they originate from or are in some
way associated with the same producer or that
there is an association between the producers of
each parties’ goods or services.

In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
In comparing the services at issue, the examining
attorney overstates his case somewhat. For instance, the
Serial No. 77396813
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examining attorney states that “it is immaterial that the
‘[r]egistrant broadcasts; Applicant does not.’” Ex. Att.
Br. at 10 (citing App. Br. at 6). While it is true that
likelihood of confusion may be found even when the services
are not identical, the relationship of the services is
certainly not immaterial; when services are more closely
related, confusion will be found to be more likely.
Similarly, the examining attorney contends that
“because of the broad wording in the registrant’s
identification, ... the respective services are identical
in part,” Ex. Att. Br. at 6, and that the registrant’s
services are “so broad as to encompass the applicant’s
services,” id. at 7. The examining attorney apparently
reaches this conclusion only because both applicant and the
registrant offer types of telecommunications services, and
because such services could be rendered using telephone
lines. But even if this is correct, it does not establish
that the services recited in the application and the
registration are identical in whole or in part, only that
they utilize similar technology.
Indeed, given the ordinary meaning of “broadcasting”
and “teleconferencing” – aided by the dictionary evidence
of record – we conclude that the services are in fact
different. Teleconferencing is “the holding of a
Serial No. 77396813
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conference among people remote from one another by means of
telecommunication devices,” App. Br. at 6 (quoting MERRIAM-
WEBSTER’S COLLEGIATE DICTIONARY (11th ed.)), and video
teleconferencing presumably adds a video component to what
might otherwise be an audio-only service. While a (tele)
conference may sometimes involve only one party speaking to
a designated group of one or more listeners, a “conference”
implies that the service at least includes ability for the
parties to confer – i.e., engage in a two-way exchange of
information.
By contrast, broadcasting5 is usually understood (at
least in this context) to be the one-way dissemination of
information, typically to a large – and often undefined –
group. This is the case with the classic radio or
television broadcast: the broadcaster transmits a signal to
an anonymous public to which individuals may (or may not)
tune in. Unlike teleconferencing, broadcasting generally
does not offer any opportunity for two-way communication.

5 Our focus here is on “broadcasting” as it is used in the cited
registration, given the ordinary meaning of that term. We reject
applicant’s contention that “[r]egistrant ... utilizes its mark
in conjunction with radio broadcasting services for radio shows,
such as the Rush Limbaugh show, and incidental Internet video
broadcasts – streaming one-way video – of the radio show.” App.
Br. at 7. An applicant may not restrict the scope of the
services covered in the cited registration by extrinsic evidence.
In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986).
We thus consider the cited registration to cover all types of
broadcasting consistent with the recitation of services.
Serial No. 77396813
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Thus, although they are both broadly involved with the
dissemination of information, teleconferencing and
broadcasting are two different services.
Nonetheless, that does not end our inquiry. As the
examining attorney correctly notes, the fact that the
relevant services are not identical or even competitive is
not in itself dispositive. The question is not whether the
goods or services could be confused, but whether use of the
marks in connection with the identified services “would
give rise to the mistaken belief that the services come
from a common source.” Ex. Att. Br. at 10; See, e.g., On-
line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56
USPQ2d 1471, 1475 (Fed. Cir. 2000) (“although the services
are different, it is reasonable to believe that the general
public would likely assume that the origin of the services
are the same.” (citing Recot v. M.C. Becton, 214 F.3d 1322,
54 USPQ2d 1894, 1898 (Fed. Cir. 2000))).
In this regard, the examining attorney has submitted a
number of third-party use-based registrations6 covering both
broadcasting services and video teleconferencing services

6 The examining attorney submitted 15 registrations. One
(2995724) did not explicitly list broadcasting services of the
type identified in the cited registration; two others (3477183
and 3469785) are for word and design versions of the same mark.
Accordingly, for these purposes, we consider the total to be 13
registrations.
Serial No. 77396813
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as recited in the subject application and the cited
registration. Third-party registrations which individually
cover a number of different items and which are based on
use in commerce may serve to suggest that the listed goods
are of a type that may emanate from a single source. See
In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB
1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1469
(TTAB 1988), aff'd (unpublished) No. 88-1444 (Fed. Cir.
Nov. 14, 1988). These registrations indicate that third
parties have registered the same marks for a variety of
telecommunications services, including both applicant’s and
registrant’s identified services.
Applicant complains that
many of the registrations cited by the Examiner
are for marks used in connection with goods and
services that run the gamut of the
telecommunications class.... [Such marks] should
be viewed distinctly from marks used in
conjunction with individual, specialized
telecommunication services, such as Applicant's
and Registrant's identified services.
Telecommunications companies that provide the
infrastructure and connectivity required for
accessing the Internet will necessarily be
involved in almost all types of communication
services. This is common, and even
unsophisticated consumers would surely
differentiate those marks utilized with such
broad types of services from companies that offer
specific types of communications and related
services.

Serial No. 77396813
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App. Br. at 10-11 (emphasis added). But applicant misses
the point – it is precisely because many companies offer a
broad range of telecommunications services that consumers
are likely to think that such services may – when offered
under similar marks – come from a common source.7
We therefore conclude that, although the services are
not the same, they are nonetheless of a type which come
from a single source, and are at times identified in use-
based registrations for the same mark.
C. Channels of Trade
The examining attorney cites the channels of trade for
the relevant services as a factor supporting refusal of
registration. Ex. Att. Br. at 3. Nonetheless, most of the
examining attorney’s analysis of this issue, see ex. Att.
Br. at 6-9, relates to the similarity of the services,
rather than their respective channels of trade.
While it is true that in ex parte examination,
consideration of the trade channels begins with an analysis

7 We do not find that the third-party registration show that
“registrant’s services encompass the applicant’s ... services,”
as applicant complains that the examining attorney has done.
App. Br. at 9-10. Applicant also disagrees with the examining
attorney’s comments (in the Final Office Action) that the
involved services are within the “normal field of expansion of
either party.” We need not address this question because
expansion of trade is an matter related to priority, which is not
an issue in an ex parte appeal. In re Ginc UK Ltd., 90 USPQ2d
1472, 1480 n.9 (TTAB 2007).

Serial No. 77396813
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of the involved services, it does not end there – it is
still necessary to determine how those services are
promoted and rendered in commerce. The examining attorney
mistakenly assumes – because neither recitation of services
includes an explicit limitation as to trade channels or
classes of customers – “that the respective services do not
have any limitation as to the trade channels or particular
customers. Therefore, both parties may offer their
services to any customer in any trade channel.” Ex. Att.
Br. at 12-13 (emphasis added).
The examining attorney is correct that we must
determine the channels of trade by considering the
identified goods or services; we will not import extrinsic
limitations based on the applicant’s or the registrant’s
actual business activities. However, the absence of
explicit trade channel limitations in an application or
registration does not mean that such goods or services “do
not have any limitation” or that they are sold “to any
customer in any trade channel.” What it means is that the
goods or services are presumed to be sold in any trade
channel and to any class of consumer normal for such goods
or services. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)
(citing Kalart Co., Inc. v. Camera-Mart, Inc., 119 USPQ 139
(CCPA 1958)) (“it is presumed that ... the identified goods
Serial No. 77396813
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move in all channels of trade that would be normal for such
goods, and that the goods would be purchased by all
potential customers.” (emphasis added)). Although it
follows that if the services at issue are identical, then
the channels of trade and classes of customers must also be
considered to be identical, Genesco Inc. v. Martz, 66
USPQ2d 1260, 1268 (TTAB 2003), that is not true when the
services are not identical, as in this case.
Here, the examining attorney offers no evidence as to
the normal channels of trade or normal purchasers for video
teleconferencing or broadcasting services, and it is not
readily apparent to us that these trade channels or groups
of consumers would necessarily overlap. Indeed, applicant
argues that they are “distinctly different,” App. Br. at
12, but in doing so relies mostly on the differences in the
services themselves, and not on the normal channels of
trade or classes of purchasers for them. Again, if the
services are not identical, we will not presume that the
channels of trade are identical; but neither will we
presume that they are entirely distinct. But in any event,
it is the examining attorney’s burden to show likelihood of
confusion, so the failure of applicant to show entirely
distinct channels of trade does not count against it.
Serial No. 77396813
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We conclude that the du Pont factor addressing the
channels of trade for the identified services is neutral,
or possibly leaning slightly in applicant’s favor.
III. Conclusion
We have carefully considered the entire record and all
of the arguments and evidence submitted by applicant and
the examining attorney. As discussed, applicant’s mark is
similar to that of the cited registrant, and the involved
services are related in that they are of a type which
emanate from a common source. The factor of the relevant
channels of trade for the involved services is either
neutral or (to be generous) slightly in applicant’s favor,
but in any event, this factor does not outweigh the
similarity of the marks and relationship of the services.
Although our ultimate decision may not be entirely
free from doubt, “reasonable doubt as to the likelihood of
confusion is resolved against the newcomer, ‘for the
newcomer has the opportunity of avoiding confusion, and is
charged with the obligation to do so.’” In re Mighty Leaf
Tea, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010).
Decision: The refusal to register under Trademark Act
§ 2(d) is accordingly affirmed.