Atomic Data, LLCv.Atomic Information Systems Corp

Trademark Trial and Appeal Board

Dec 31, 2019

91229618 (T.T.A.B. Dec. 31, 2019)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: December 31, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Atomic Data, LLC

v.

Atomic Information Systems Corp
_____

Opposition No. 91229618
_____

Sean Ploen of Ploen Law Firm PC, for Opposer Atomic Data, LLC.

Applicant Atomic Information Systems Corp, acting pro se.
_____

Before Mermelstein, Shaw, and Dunn, Administrative Trademark Judges.

Opinion by Dunn, Administrative Trademark Judge:

On March 9, 2016, Atomic Information Systems Corp (Applicant) filed an
application under Trademark Act Section 1(b) to register the mark shown below for
“software design and development.”

(Application Serial No. 86933775).
Opposition No. 91229618

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Opposer, Atomic Data, LLC, has opposed registration of Applicant’s mark on the
ground that, as applied to Applicant’s services, the mark so resembles Opposer’s four1
previously used and registered ATOMIC marks as to be likely to cause confusion
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) (Opposer’s Section 2(d)
claim).2 Opposer claimed ownership of the registered marks listed below (emphasis
added):
1. Registration No. 4709158 (issued March 24, 2015) for the mark ATOMIC
CLOUD (in standard characters, CLOUD disclaimed) for “providing on-line
non-downloadable software for use in data storage, data management and
project management; computer services, namely, providing search engines for
obtaining data on a global computer network; application service provider
(ASP), namely, hosting computer software applications of others for use in
providing email and data backup; hosting of disaster-recovery web sites;
designing and creating disaster-recovery web sites for others; providing on-
line, non-downloadable, Internet-based software applications for businesses
and government agencies to monitor and backup data and computing
functions; computer services, namely, cloud hosting provider services,” in Class
42;
2. Registration No. 4851636 (issued November 10, 2015) for the mark ATOMIC
DATA (in standard characters, DATA disclaimed) for “database
administration services, namely, management of computer databases for

1 Two of the four marks were pleaded as pending applications and subsequently issued as
registrations. Where, as here, the applicant has received notice that the opposer intends to
rely on the applications, the Board does not require formal amendment of the pleadings to
reflect subsequent issuance as registrations. See UMG Recordings Inc. v. O’Rourke, 92
USPQ2d 1042, 1056 n.12 (TTAB 2009).
2 Opposer also asserted claim preclusion as a ground for opposition, but did not pursue the
ground in its brief, in which it sets forth the likelihood of confusion claim as “the sole issue
presented.” 32 TTABVUE 8. The Board may consider a pleaded claim to have been waived if
the party raising the claim has not pursued the claim in its brief. See Alcatraz Media, Inc. v.
Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1753 (TTAB 2013) (petitioner’s pleaded
descriptiveness and geographical descriptiveness claims not argued in brief waived), aff’d
mem., 565 F. Appx. 900 (Fed. Cir. 2014); UMG Recordings Inc. v. O’Rourke, 92 USPQ2d at
1045 (“In its main brief ... opposer lists the only question presented as whether there exists
a likelihood of confusion, and we therefore consider opposer to have waived its dilution
claim.”). Thus, because Opposer has not discussed claim preclusion in its brief, we deem
Opposer to have waived this ground for opposition.
Opposition No. 91229618

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others,” in Class 35, “information technology support services, namely,
technical advice relating to the installation of computer servers and hardware”
in International Class 37, “electronic data storage services, namely, storing
electronic data at data centers; electronic storage of files and documents” in
International Class 39, “information technology training services; provision of
information technology training services via remote access” in International
Class 41, and “computer services, namely, information technology consulting
services; information technology support services, namely, technical oversight
and administration of computer systems and software for others and
troubleshooting in the nature of diagnosing and resolving computer systems
and software problems; design, development and implementation of
computer software for others; computer software development
services; remote support services, namely, remote administration and
management of in-house and hosted datacenter devices, databases, and
software applications, and remote database administration services; remote
service desk and helpdesk services, remote monitoring of computer systems for
others; analysis and design of technical security and firewall systems for
computer networks; providing network operations center services in the nature
of computer consulting services in the area of network infrastructure systems
and in analysis, assembly, integration and monitoring of information
technology infrastructure for others; providing computer monitoring service to
track hardware and software performance and processes; remote operation of
advanced network management software for others; Web site hosting services;
computer hard drive data backup and recovery services; e-mail migration and
server migration services; migration of datacenter, server and database
applications; database design and creation services; information technology
project management services; remote backup of electronic data” in
International Class 42;
3. Registration No. 5171766 (issued March 28, 2017) for the mark ATOMIC (in
standard characters) for same services as listed in Registration No. 4851636;
and
4. Registration No. 5443621 (issued April 10, 2018) for the mark3

3 Registration No. 5443621 states “[t]he mark consists of ‘ATOMIC’ displayed in uppercase
white letters, followed by the word ‘data’ displayed in lowercase grey letters. The literal
element ‘ATOMICdata’ is preceded by three yellow triangles arranged in such a manner as
to suggest the fallout shelter symbol. The color black in the mark represents background and
is not a feature of the mark” and also states “[t]he color(s) yellow, white and grey is/are
claimed as a feature of the mark.”
Opposition No. 91229618

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for “downloadable computer software, namely, software for use in connection
with managing electronic data and databases, database administration,
managing cloud applications, and self-automation of database-management
activities” in International Class 9, and “compliance as a service, namely,
regulatory compliance services in the nature of managing documentation
requirements and providing compliance monitoring concerning data security
laws for information systems,” in International Class 45.
Applicant, acting pro se, filed an answer which the Board construed as a general
denial of the allegations of the notice of opposition.4
I. Amendment of Applicant’s Mark
Applicant acting pro se, submitted a motion to amend the description of its mark
to indicate that the literal portion ATOMICDB was one term and not two, as
described in the application following entry of an Examiner’s Amendment.5 Because
Opposer objected to the proposed amendment as not matching the drawing, and as
futile inasmuch as the change would not decrease the likelihood of confusion between
the marks, the Board deferred consideration of the unconsented amendment until
final decision or decision on summary judgment.6 In an apparent effort to meet one
of Opposer’s objections, Applicant submitted a second motion to amend the mark and

4 4 TTABVUE (Applicant’s pleading); 7 TTABVUE (Board’s order construing Applicant’s
pleading).
5 4 TTABVUE.
6 7 TTABVUE. On August 16, 2018, in its order denying Opposer’s motion for summary
judgment, the Board found Applicant’s motion to amend deficient for failure to include a
proposed substitute drawing. 29 TTABVUE. On September 16, 2018, Applicant submitted a
drawing of the mark identical to the drawing submitted with its application. 30 TTABVUE.
Opposition No. 91229618

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included a new drawing which deleted the space between ATOMIC and DB in its
mark. Action on this motion also was deferred.
Amendments to the description or drawing of the mark under Trademark Rule
2.72(b)(2), 37 U.S.C. 2.72(b)(2), are accepted if “[t]he proposed amendment does not
materially alter the mark. The Office will determine whether a proposed amendment
materially alters a mark by comparing the proposed amendment with the description
or drawing of the mark filed with the original application.”
Mark as Published for Opposition Proposed Mark7

Here, we find the deletion of the space between the terms ATOMIC and DB in
Applicant’s mark is not a material alteration. In re Innovative Cos., LLC, 88 USPQ2d
1095 (TTAB 2008) (finding amendment from “FREEDOMSTONE” to “FREEDOM
STONE” not to be a material alteration); Paris Glove of Can., Ltd. v. SBC/Sporto
Corp., 84 USPQ2d 1856, 1862 (TTAB 2007) (finding “AQUASTOP” depicted on one
line in semicircular form not to be a material alteration of “AQUA STOP” depicted on
two lines in rectangular form). Accordingly, Applicant’s amendment is accepted. The
substitute drawing will be uploaded to the application file.

7 30 TTABVUE 2.
Opposition No. 91229618

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The Board orders the description of the mark to be amended to read:
“The mark consists of the stylized wording ‘AtomicDB’ in red above an oblong
green underline, all over a depiction of an atom formed by four grey
intersecting ovals. The nucleus of the atom is formed by a large blue circle and
a gold crescent adjoining the right side of the blue circle appearing at the center
of the intersecting ovals. A colored circle touches each of the four grey
intersecting ovals - a red circle appears near on the upper tip of one oval, a
green circle appears on the upper-left tip of another oval, an orange circle
appears on the right-most tip of another oval, and a yellow circle appears on
the bottom-left tip of the final oval.”

The Board orders the disclaimer to read:
No claim is made to the exclusive right to use “ATOMICDB” apart from the
mark as shown.

II. Description of Record
The record includes the pleadings and, by operation of Trademark Rule
2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the file of the application subject to the notice of
opposition.
In addition, Opposer submitted under notice of reliance (i) status and title copies
from the TSDR (Trademark Status and Document Retrieval) database of its pleaded
Registration Nos. 4709158; 4851636, 5171766, and 5443621;8 (ii) status and title
copies from the TSDR database of Registration Nos. 5083830 for the mark
ATOMICDATA and design and 5355462 for the mark ATOMICDATA SAFE SIMPLE
SMART and design, which Opposer owns, but which were not pleaded in the notice
of opposition;9 (iii) October 30, 2018 affidavit of James Wolford, Opposer’s Chief

8 31 TTABVUE 4-37.
9 31 TTABVUE 38-52.
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Executive Officer, regarding the relationship between Opposer’s goods and services
the services listed in the opposed application;10 (iv) excerpts from the proceeding file
for Opposition No. 91220158;11 (v) Internet materials, namely excerpts from
Applicant’s website, and dictionary definitions showing DB as an abbreviation for
“database”;12 and (vi) Opposer’s discovery requests, including Requests for Admission
(RFA), and the Board’s August 16, 2018 order, among other things, confirming that
the unanswered requests for admissions are deemed admitted.13 The following
admissions by Applicant are cited in Opposer’s brief:
The DB portion of Applicant’s ATOMIC DB Trademark is an abbreviation for
the term “database” (RFA 10);14

Applicant’s software design and development services specifically concern
software for database and digital information management (RFA 7)15

Applicant’s target customers for the services it provides under the ATOMIC
DB Trademark overlap with Opposer’s customers for goods and services
Opposer offers under the ATOMIC, ATOMIC DATA, and related trademarks
(RFA 9)16

Applicant’s trade channels for the services it provides under the ATOMIC DB
Trademark overlap with Opposer’s trade channels for goods and services
Opposer offers under the ATOMIC, ATOMIC DATA, and related trademarks
(RFA 8)17.

10 31 TTABVUE 217-21.
11 31 TTABVUE 53-140.
12 31 TTABVUE 141-47.
13 31 TTABVUE 148-216.
14 31 TTABVUE 160
15 31 TTABVUE 159.
16 31 TTABVUE 159
17 Id.
Opposition No. 91229618

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Applicant did not take any testimony, submit any evidence or file a brief.
III. Trademark Act Section 2(d) claim
A. Opposer’s Standing and Priority
Standing is a threshold issue 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);
John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB 2010).
Proving ownership of prior trademark registrations establishes Opposer’s direct
commercial interest and its standing to bring the notice of opposition. Cunningham
v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); N.Y.
Yankees P’ship v. IET Prods. & Servs., Inc., 114 USPQ2d 1497, 1501 (TTAB 2015).
An opposition under Trademark Section 2(d) may be predicated on either a
registration or “a mark or trade name previously used.” 15 U.S.C. § 1052(d). In an
opposition, absent a counterclaim, once the opposer makes a pleaded registration of
record, priority is removed as an issue with respect to the goods and services covered
by the registrations, even if the applicant was in fact the first to use its mark or file
its application. Massey Junior Coll., Inc. v. Fashion Inst. of Tech., 492 F.2d 1399, 181
USPQ 272, 275 n.6 (CCPA 1974); Bell’s Brewery, Inc. v. Innovation Brewing, 125
USPQ2d 1340, 1344 (TTAB 2017).
In the August 16, 2018 order denying Opposer’s motion for summary judgment on
its Section 2(d) claim, the Board found that standing and priority are no longer issues
in this proceeding inasmuch as Opposer pleaded and submitted status and title copies
Opposition No. 91229618

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of its valid and unchallenged registrations.18 Because the evidence of record
submitted at trial demonstrates that Opposer remains the current owner of the
pleaded registrations, Opposer has established its standing and that priority is not
an issue with respect to the goods and services identified in the registrations.
B. Likelihood of Confusion
Our determination under Trademark Act 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) (du Pont factors). Opposer bears the burden of proving
its claim of likelihood of confusion by a preponderance of the evidence. Cunningham
v. Laser Golf Corp., 55 USPQ2d at 1848.
As we did in the order denying summary judgment, we focus our analysis on the
marks in Opposer’s pleaded Registration Nos. 5171766 for the mark ATOMIC and
4851636 for the mark ATOMIC DATA. If we find that there is a likelihood of
confusion between these marks and Applicant’s mark, there is no need for us to
consider the likelihood of confusion with Opposer’s other pleaded marks. Conversely,
if we find there is no likelihood of confusion with these marks, we would find no
likelihood of confusion with Opposer’s other pleaded marks. See N. Face Apparel
Corp. v. Sanyang Indus. Co., 116 USPQ2d 1217, 1225 (TTAB 2015) (citing In re Max
Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010)).
We address in turn each of the du Pont factors bearing on our determination.

18 29 TTABVUE 6.
Opposition No. 91229618

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1. Similarity of the Services, Customers, and Channels of Trade

We address the second and third du Pont factors, assessing the similarity or
dissimilarity of the parties’ services, customers, and trade channels. Our
determination must be based on the recitation of services in the pleaded registrations
and subject application. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014). That is because the goods or
services recited in an application determine the scope of the benefit of registration.
Id. Applicant’s services are “software design and development,” while Opposer’s
services, identical in Registration Nos. 5171766 and 4851636, include the same
services with only a slight variation in wording, namely “design, development and
implementation of computer software for others; computer software development
services.” We find that Applicant’s services are legally identical to some of the services
listed in the pleaded registrations. See Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp.,
648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (“[L]ikelihood of confusion must be
found if the public, being familiar with appellee’s use of MONOPOLY for board games
and seeing the mark on any item that comes within the description of goods set forth
by appellant in its application, is likely to believe that appellee has expanded its use
of the mark, directly or under a license, for such item.”); In re Aquamar, Inc., 115
USPQ2d 1122, 1126 n.5 (TTAB 2015) (“[I]t is sufficient for finding a likelihood of
confusion if relatedness is established for any item encompassed by the identification
of goods within a particular class in the application.”).
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Because the services described in the application and the pleaded registrations
are legally identical, we must presume that the channels of trade and classes of
purchasers are the same. See 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); Am. Lebanese Syrian
Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028
(TTAB 2011) (for legally identical services, marketing channels of trade and targeted
classes of consumers are the same).
In addition, as set forth above, Applicant has admitted “Applicant’s trade channels
for the services it provides under the ATOMIC DB Trademark overlap with Opposer’s
trade channels for goods and services Opposer offers under the ATOMIC, ATOMIC
DATA, and related trademarks” and “Applicant’s target customers for the services it
provides under the ATOMIC DB Trademark overlap with Opposer’s customers for
goods and services Opposer offers under the ATOMIC, ATOMIC DATA, and related
trademarks.” Finally, we note the testimony of Opposer’s Chief Executive Officer that
Opposer has offered and performed “software design and development services,” the
services listed in the opposed application, under the trademarks ATOMIC and
ATOMIC DATA since at least as early as 2010.19
With respect to the similarity or dissimilarity of the parties’ services, customers,
and trade channels, we find these du Pont factors support a finding of likelihood of
confusion.

19 31 TTABVUE 220-21.
Opposition No. 91229618

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2. Similarity of the Marks
We now consider the similarity or dissimilarity of Applicant’s mark
and Opposer’s marks ATOMIC and ATOMIC DATA, both in
standard characters, when compared in their entireties in terms of appearance,
sound, connotation and commercial impression, keeping in mind that where, as here,
the parties’ services are identical, the degree of similarity necessary to find likelihood
of confusion need not be as great as where there is a recognizable disparity between
the services. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012); Bell’s Brewery, Inc. v. Innovation Brewing, 125
USPQ2d at 1347. “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 Servs., Inc. v. Triumph Learning LLC, 101
USPQ2d at 1721 (citation omitted). The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks. Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430
(TTAB 2013). Here, the average purchaser is an ordinary purchaser of software
design and development services.
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While Applicant’s and Opposer’s ATOMIC and ATOMIC DATA
marks exhibit differences, the similarities outweigh the differences. Notwithstanding
Applicant’s description of the literal portions of its mark as the one term ATOMICDB,
and not the two terms ATOMIC DB, our assessment of the mark must comprise the
mark as a whole. Removing a space between two literal terms in a mark generally
does not alter the commercial impression of the mark. See Stock Pot, Inc. v. Stockpot
Rest., Inc., 220 USPQ 52, 54 (TTAB 1983), aff’d 737 F.2d 1576, 222 USPQ 665 (Fed.
Cir. 1984) (“There is no question that the marks of the parties [STOCKPOT AND
STOCK POT] are confusingly similar. The word marks are phonetically identical and
visually almost identical.”); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1025
(TTAB 2009) (“[T]he spaces that respondent places between the words [DESIGNED
TO SELL] do not create a distinct commercial impression from petitioner’s
presentation of his mark [DESIGNED2SELL] as one word.”); In re 3Com Corp., 56
USPQ2d 1060, 1062 (TTAB 2000) (“There is nothing in this record to show that
ATMLINK as one word would be perceived as having a connotation which differs from
ATM and LINK as a two-word term”).
Here, the term ATOMIC is distinguished from the letters DB by being shown in a
mix of upper and lower case letters, while DB is shown in upper case letters. In
addition, the term ATOMIC is highlighted and reinforced by the large and colorful
atom design. For these reasons, as well as the descriptive nature of the term DB, we
Opposition No. 91229618

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find that the literal portion of Applicant’s mark will not be regarded
as a coined term ATOMICDB but as a combination of the separate terms ATOMIC
and DB.
We also find that the terms DB and DATA in the parties’ marks, both of which
have been disclaimed,20 are not so distinctive or dissimilar as to alter the similar
commercial impressions created by the marks and ATOMIC and
ATOMIC DATA. As set forth above, Applicant admitted that its “software design and
development services specifically concern software for database and digital
information management” and “[t]he DB portion of Applicant’s ATOMIC DB
Trademark is an abbreviation for the term ‘database.’” The terms “data” and
“database” occur frequently in the recitation of Opposer’s services. Opposer submitted
dictionary definitions showing DB as the abbreviation for “database,” and defining
“database” as “a collection of information organized in such a way that a computer
program can quickly select desired pieces of data” and “an organized collection of

20 Although it is less clear why this was required, Applicant also agreed to a disclaimer of the
term ATOMIC in an Examiner’s Amendment to its application. There is no evidence in the
record bearing on the meaning of ATOMIC with respect to Applicant’s services. We
accordingly consider the term arbitrary.
Opposition No. 91229618

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data.”21 Applied to the same software design and development services offered by both
parties, services which include database services, the terms DB and DATA create the
same commercial impression of a term describing the services. The prospective
consumer of software design and development services who encounters the marks
ATOMIC DB, ATOMIC, and ATOMIC DATA will perceive the term ATOMIC as
creating the dominant commercial impression, and the terms DB and DATA as
offering highly similar descriptions of the services offered. Accordingly, we find the
literal portions of the marks create the same commercial impression, and the addition
of the large atom design does not alter the commercial impression, particularly since
Opposer’s marks are in standard characters and can be displayed in any typeface
including one similar to Applicant’s.
In sum, based on the common first term ATOMIC, reinforced in Applicant’s mark
by the design element, In re Wine Soc’y of Am., 12 USPQ2d 1139, 1142 (TTAB 1989)
(“[D]esign features merely emphasize, in a pictorial way, the main word portion of
the cited mark”), the record evidence of similar connotations of the additional
descriptive and disclaimed terms DB and DATA, and in view of the legal identity of
the services, channels of trade and classes of consumers, with respect to the similarity
of the parties’ marks, we find this du Pont factor also supports a finding of likelihood
of confusion.

21 31 TTABVUE 146-47.
Opposition No. 91229618

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In balancing the du Pont factors, we find that Applicant’s mark
for “software design and development” is likely to cause confusion with Opposer’s
marks ATOMIC and ATOMIC DATA for, inter alia, “design, development and
implementation of computer software for others; computer software development
services.” Opposer has proven priority and likelihood of confusion, and thus has
established its Section 2(d) claim.
IV. Decision
The opposition is sustained, and registration to Applicant is refused.