Balancz LLC

Trademark Trial and Appeal Board

Jul 21, 2017

No. 86614170 (T.T.A.B. Jul. 21, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: July 21, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Balancz LLC
_____

Serial No. 86614170

_____

Jenifer deWolf Paine and Maya L. Tarr of Proskauer Rose LLP,
for Balancz LLC.

Michelle E. Dubois, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
_____

Before Zervas, Wolfson and Masiello,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Balancz LLC (“Applicant”) seeks registration on the Principal Register of the
standard character mark REACH for “downloadable software applications for making
personal appointments” in International Class 9.1

1 Application Serial No. 86614170, filed on April 29, 2015 pursuant to Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), asserting a bona fide intent to use the mark in
commerce.
The application includes services in International Class 35. The refusal to register is
limited to the goods in International Class 9.
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The Examining Attorney refused registration of Applicant’s mark under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on Registration No. 4177080
(“the ‘080 registration”) for the standard character mark SOLUTIONREACH and
Registration No. 41770792 (“the ‘079 registration”) for the mark
,3 both owned by the same owner and both for the following
International Class 42 services:
Software as a service (SAAS) services featuring software
for use by business and their customers, patrons and
patients in electronically communicating and interacting
via the Internet, phone, email, text messages, and social
media, for creating, capturing, sharing and distributing
audio and video, for conducting, collecting and
disseminating online surveys and reviews, for providing,
accessing and monitoring business information, healthcare
information, and personal information, documents, forms
and images, for creating, monitoring and editing
appointments, for creating and editing appointments and
appointment reminders, for paying bills, for creating and
delivering e-newsletters, for sending birthday
communications, and for identifying geographical location
of customers, patrons and patients; computer services,
namely, search engine optimization.
After the Examining Attorney made the refusal final, Applicant appealed and
requested reconsideration. On remand by the Board, the Examining Attorney denied
the request for reconsideration. The appeal resumed and both Applicant and the
Examining Attorney filed briefs. We affirm the refusal to register.

2 Both cited marks registered on July 17, 2012.
3 The description of the mark in the record states, “[t]he mark consists of the wording
‘SOLUTIONREACH’ with two semi-circles above the letter ‘i’ depicting transmission waves.”
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Evidentiary Issue
Applicant submitted a list of applications and registrations from a private
company search report with its request for reconsideration to demonstrate that there
are marks which “cover software goods/services, and which do not disclaim the term
‘SOLUTION.’”4 The Examining Attorney did not address the list in her denial of the
request for reconsideration and objected to the list in her brief.5 In In re 1st USA
Realty Professionals Inc., 84 USPQ2d 1581 (TTAB 2007), the Board faced the same
situation. The Board stated:
Applicant also submitted, with its request for
reconsideration, a listing of approximately 65 marks taken
from the USPTO TESS database for marks containing the
words “FIRST” or “1ST” or “USA.” This listing is …
insufficient to make the applications and registrations of
record. In re Ruffin Gaming LLC, 66 USPQ2d 1924, 1925
n.3 (TTAB 2002). Nor can we deem the Examining
Attorney to have waived any objection to this document by
failing to advise applicant of the insufficiency, since at the
point that applicant filed the list it no longer had an
opportunity to add to the record of the application.
Accordingly, this list has not been considered.
Id. at 1583. The Examining Attorney’s objection is sustained and we give no further
consideration to the list of registrations and applications. TRADEMARK MANUAL OF
EXAMINING PROCEDURE (“TBMP”) (April 2017) § 1207.01(d)(iii) (“A list of registrations
or a copy of a search report is not proper evidence of third-party registrations. To
make registrations of record, copies of the registrations or the electronic equivalent
thereof (i.e., printouts or electronic copies of the registrations taken from the

4 Req. for Recon. at 9, 4 TTABVUE 14.
5 15 TTABVUE 7.
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electronic database of the USPTO) must be submitted.” (citations omitted.)) We point
out that, even if we were to consider the list, it would be of uncertain probative value
because it does not indicate whether the registrations are on the Principal or
Supplemental Register. In addition, several of the listed marks are the subject of
trademark applications and not registrations; third-party applications have no
evidentiary value other than to show that they were filed. Jetzon Tire & Rubber Corp.
v. General Motors Corp., 177 USPQ 467, 468 n. 3 (TTAB 1973).
Likelihood of Confusion
Our determination under Section 2(d) of the Trademark Act is based on an
analysis of the probative facts in evidence that are relevant to the factors bearing on
a 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 Imps., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Co., 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
characteristics of the goods [or services] and differences in the marks.” Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976);
see also In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014).
For purposes of the du Pont factors that are relevant to this appeal we will
consider Applicant’s involved application and the ‘080 registration. If likelihood of
Serial No. 86614170
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confusion is found as to the mark in this registration, it is unnecessary to consider
the ‘079 registration because the mark in the ‘080 registration is more similar to
Applicant’s mark than the mark in the ‘079 registration.6 Conversely, if likelihood of
confusion is not found as to the mark in the ‘080 registration, we would not find
likelihood of confusion as to the mark in the ‘079 registration. See, e.g., In re Max
Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
The Number and Nature of Third-Party REACH Marks
Applicant argues under the du Pont factor focusing on the number and nature of
similar marks in use on similar services that the existence of third-party registrations
that include REACH weighs against likely confusion. Third-party registration
evidence is “not evidence that customers are accustomed to seeing the use of other,
similar, marks in the marketplace,” In re Morinaga Nyugyo Kabushiki Kaisha, 120
USPQ2d 1738, 1745 (TTAB 2016). However, such evidence may show that a term
carries a suggestive or descriptive connotation in the relevant industry and therefore
may be considered somewhat weak. Juice Generation, Inc. v. GS Enterprises LLC,
794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015); Jack Wolfskin Ausrustung
Fur Draussen GmbH v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d
1129, 1136 (Fed. Cir. 2015).

6 The services in the two registrations, of course, are the same.
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The following screenshot from Applicant’s brief depicts the third-party
registrations which Applicant introduced to demonstrate that REACH is a weak
term: 7

7 Applicant also submitted with its February 16, 2016 response, TSDR 3, a USPTO record for
the mark EYE REACH PATIENTS (application Serial No. 86730169), which does not indicate
that the mark was registered. In its brief, however, Applicant identified this mark as
Registration No. 5079216. Because an application has no probative value in establishing that
the term REACH is a weak term and we do not take judicial notice of records residing in the
USPTO, we do not consider EYE REACH PATIENTS as a registered mark.
Serial No. 86614170
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Serial No. 86614170
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8

8 The Examining Attorney cited a pending application for the mark MINDBODY REACH as
a possible bar to registration; in the final Office Action, however, the Examining Attorney
stated the potential refusal based on this application was “withdrawn.” April 1, 2016 Office
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We give limited weight to the TEACHERREACHER9 mark because it has a very
different commercial impression than SOLUTIONREACH, due to the rhyming
nature of TEACHERREACHER. The remaining three third-party registrations are
too few in number to establish any weakness in the term REACH in the field of
registrant’s services. Compare, Juice Generation, 115 USPQ2d at 1675, involving
roughly a dozen third-party registrations of the same phrase for restaurant services;
and Jack Wolfskin, 116 USPQ2d at 1136, stating the evidence was “voluminous.”
We point out too that Applicant has not submitted evidence of actual marketplace
use of REACH by third parties. Compare, Juice Generation, 115 USPQ2d at 1674
(evidence of third parties’ use of similar marks bears on the strength or weakness of
a registrant’s mark).
In addition, Applicant argues that the cited registrations coexist with each other.10
They do so, however, because they are owned by the same entity.
In view of the foregoing, Applicant has not established any substantial weakness
in the term REACH through the number and nature of similar marks registered or
in use on similar services.
The Marks
We now compare the marks for similarities and dissimilarities in appearance,
sound, connotation and commercial impression. Palm Bay Imps., 73 USPQ2d at 1692.

Action, TSDR 1. If this application matured into a registration, it is not of record and
Applicant has not relied on it in its briefs.
9 February 16, 2016 Resp., TSDR 19 – 22.
10 Applicant’s brief at 4, 13 TTABVUE 5.
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The 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 that confusion as to the source of the goods
offered under the respective marks is likely to result. Coach Servs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). Under actual
marketing conditions, consumers do not necessarily have the luxury of making side-
by-side comparisons between marks, and must rely upon their imperfect
recollections. Dassler KG v. Roller Derby Skate Corp., 206 USPQ 255, 259 (TTAB
1980). The focus is on the recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks. In re Assoc. of the United
States Army, 85 USPQ2d 1264 (TTAB 2007); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
It has not escaped our attention that Applicant’s mark is contained in its entirety
within registrant’s mark. “Likelihood of confusion often has been found where the
entirety of one mark is incorporated within another.” Hunter Indus., Inc. v. Toro Co.,
110 USPQ2d 1651, 1660 (TTAB 2014), (citing In re Mighty Leaf Tea, 601 F.3d 1342,
94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (applicant’s mark ML is similar to registrant’s
mark ML MARK LEES), Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153
USPQ 406, 407 (CCPA 1967) (THE LILLY as a mark for women’s dresses is likely to
be confused with LILLI ANN for women’s apparel including dresses), In re United
States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (CAREER IMAGE for women’s
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clothing stores and women’s clothing likely to cause confusion with CREST CAREER
IMAGES for uniforms including items of women’s clothing)).
The Examining Attorney argues that REACH forms the dominant commercial
impression in each mark and will be viewed as the primary source-indicator;11 and
that “[a]lthough the term ‘SOLUTION’ or ‘SOLUTIONS’ may be a nebulous term in
regards to what type of technology-related product or service it represents … since
the term ‘SOLUTION’ is so diluted, particularly in relation to software, consumers
will not focus on this term in the registered marks as a differentiating factor in terms
of source.”12 She relies on the following regarding the meaning of “solution” in the
software context:
● PC Magazine Encycopedia at pcmag.com:
“Cataloging a vendor’s hardware and software offerings by
industry or application. “Solutions” has become such a
marketing buzzword that many vendors tout only solutions
on their Web sites, having eliminated reference to their
products and services.”13
● The Free On-line Dictionary of Computing (Denis Howe 2010), accessed at
dictionary.com, offers the following examples of use of “solution” (identified as
“jargon”):
[A] marketroid term for something he wants to sell you
without bothering you with the often dizzying distinctions
between hardware, software, services, applications, file
formats, companies, brand names and operating systems.

11 Examining Attorney’s brief, 15 TTABVUE 5.
12 Examining Attorney’s brief, 15 TTABVUE 6.
13 April 1, 2016 Office Action, TSDR 2.
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Flash is a perfect image-streaming solution. 14
In addition, the Examining Attorney introduced a definition of “solutions
provider” from pcmag.com which discusses the word “solutions”:
An umbrella term for an organization that offers any
combination of computer hardware, software and
consulting. In the past, a solutions provider often built
custom hardware and developed custom applications for its
customers. Today, a solutions provider may use only
packaged products. The word “solutions” has become a
buzzword in the IT world, implying that rather than just
reselling products, the company solves the customer’s
problems through its expertise.15
(emphasis added.)
The record also contains the following third-party Supplemental Register
registrations, and Principal Register registrations with a disclaimer of SOLUTION,
offered by the Examining Attorney to demonstrate that “SOLUTION in Applicant’s
mark is a weak term in the context of computer software”:16
● SOLUTION SERIES, (Supplemental) Registration
No. 3443188 for “Computer software for medical practice
management, excluding human resource-related computer
programs used for payroll, personal, and time and
attendance purposes.”17
● STAFF ALLOCATION SOLUTION, (Supplemental)
Registration No. 4280936 for “Computer software for
efficiently allocating and monitoring office support
personnel.”18

14 Req. for Recon. Exh. C, 4 TTABVUE 30.
15 April 1, 2016 Office Action, TSDR 5.
16 15 TTABVUE 6.
17 November 28, 2016 Office Action, TSDR 7-10.
18 November 28, 2016 Office Action, TSDR 30-32.
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● SERVICE ONLINE SOLUTION, (Supplemental)
Registration No. 4557710 for, inter alia, “Computer
programs for entry, tracking and transmission of service
items and requests, creating new service requests, and
transmitting service requests to vendors and
subcontractors, for the purpose of centralizing,
streamlining and automating the process of issue
resolution during the construction, purchase and warranty
period of a newly constructed home.”19
● INDIGO EHR/PM SOLUTION, Registration
No. 4170310 (“EHR/PM SOLUTION” disclaimed), for
“Medical software for electronic health records.”20
● PATHWAYS ENTERPRISE SOLUTION, Registration
No. 2375049 (“ENTERPRISE SOLUTION” disclaimed), for
“Computer software and instructional manuals sold as a
unit for use in the operation and management of
automobile collision repair facilities.”21
Applicant disagrees that SOLUTION is a weak term, and states, “even if the term
‘SOLUTION’ did have a primary technology-related connotation (which it does not),
it remains an integral part of the unitary, compound term SOLUTIONREACH, and
it is not appropriate for the Examining Attorney to discount it as ‘weak’ and therefore,
not significant in evaluating the likelihood of confusion between the marks.”22
The definition of “solution” in The New Penguin Dictionary of Computing (Penguin
Books 2001) is “an application of computers and software to a particular problem.”23

19 November 28, 2016 Office Action, TSDR 44-45.
20 November 28, 2016 Office Action, TSDR 23-24.
21 November 28, 2016 Office Action, TSDR 2-4.
22 Applicant’s brief at 11, 13 TTABVUE 12.
23 The Board may take judicial notice of reference works (University of Notre Dame du Lac v.
J. C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983)), including online reference works which exist in printed format or have
regular fixed editions (In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006)).
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See also, Merriam-Webster Dictionary of “solution” as “something that is used or done
to deal with and end a problem : something that solves a problem.” PC Magazine
Encyclopedia identifies “solutions” as a “marketing buzzword,”24 and pcmag.com
states that in addition to being a buzzword, “solution” implies that “the company
solves the customer’s problems through its expertise.”25
Certainly, SOLUTION has significance in connection with computer software and,
by extension, services involving software. In view of these definitions, we find that
the term “solution” in registrant’s mark is highly suggestive in the field of software
and therefore has limited weight as a source-identifying component of Registrant’s
mark. While we consider each mark in its entirety, 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 that our ultimate conclusion rests upon a comparison of
the marks in their entireties. In re National Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985). “Indeed, this type of analysis appears to be unavoidable.”
Id.
As for REACH, Applicant states that it too has a variety of meanings.26 Applicant
points to the definitions of “reach” as a verb from Merriam-Webster Dictionary:

24 April 1, 2016 Office Action, TSDR 2.
25 April 1, 2016 Office Action, TSDR 5.
26 Reply at 3-4, 16 TTABVUE 4-5.
Applicant also argues that Registrant’s mark is unitary because there is no space between
the terms SOLUTION and REACH. Applicant’s brief at 4, 13 TTABVUE 5. The lack of a
space in Registrant’s mark does not so transform the mark that customers would not readily
recognize it as merely a combination of the terms SOLUTION and REACH. See In re Kraft,
Inc., 218 USPQ 571, 573 (TTAB 1983).
Serial No. 86614170
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● to stretch out,
● to hand over,
● to communicate with,
● to strain after something.

The Merriam-Webster Dictionary definitions we have located at
https://www.merriam-webster.com/dictionary/reach and take judicial notice of
include “to communicate with • I tried to reach you by phone” and “to arrive at :
come • We should reach the border before noon.”27 Registrant states in its webpage
of record, “[b]ased on the principle of reaching people when and where they are most
likely to be receptive, our patient relationship management tools use the power of
digital technology to keep you connected to the people that matter the most to your
business”;28 and “[t]o help you engage every patient, Solutionreach lets you tailor the
communication method for individual patients according to what form of message will
reach them most effectively,”29 and “You’ll never need to concern yourself with the
cost of communicating with your patients.”30 The most logical meaning of “reach” in
the context of registrant’s services involving software as a service for communication
purposes, i.e., for “business and their customers, patrons and patients in
electronically communicating and interacting via the Internet, phone, email, text
messages, and social media,” is “to communicate with.”

27 (Accessed July 11, 2017.)
28 February 16, 2016 response, pp., 37-38.
29 February 16, 2016 response, p. 52.
30 February 16, 2016 response, p. 44.
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While we agree that REACH, in registrant’s mark SOLUTIONREACH, is
suggestive of a feature of registrant’s SaaS services, we find that “reach” in both
Applicant’s and registrant’s marks will have the same meaning in the context of the
goods and services, including any of the meanings proposed by Applicant.
Applicant argues in its reply brief that SOLUTION is the last word in all but one
of the third-party registrations cited by the Examining Attorney on the Supplemental
Register or on the Principal Register with a disclaimer of SOLUTION, and
This, in addition to the other numerous registrations that
include the term SOLUTION in the last position cited by
the Examining Attorney in the November 28, 2016 Office
Action, demonstrates that when used descriptively in
connection with software and technology, the term
SOLUTION is generally not in the first position. The more
unusual placement of the term SOLUTION in the first
position, which is the most distinctive portion of the mark,
distinguishes the marks in the Cited Registrations from
Applicant’s Mark such that there is no likelihood of
confusion between them.31
As the Examining Attorney’s evidence demonstrates, SOLUTION is a very highly
suggestive – and even possibly descriptive – term, and we are without persuasive
countering evidence from Applicant. We therefore find that SOLUTION is
substantially weaker than REACH in the relevant field. Even though SOLUTION is
the first term in the cited mark, we find that REACH is the dominant term for
purposes of source-identification.
In view of the foregoing, we find that the marks are similar in meaning, and due
to the similarity in meaning, are also similar in commercial impression. Further, due

31 Reply at 2, 16 TTABVUE 3.
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to the shared term REACH, the marks are similar in sound and appearance. Any
distinction in the marks caused by the additional term SOLUTION is outweighed by
the overall similarity resulting from the shared identical term REACH. The du Pont
factor regarding the similarity of the marks favors a finding of likelihood of confusion.
The Goods and Services
We now turn to the goods and services as they are identified in the application
and cited registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (goods as identified in involved
application and cited registration compared); Octocom Sys., Inc. v. Houston
Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See
also, Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001
(Fed. Cir. 2002). Applicant in its brief did not contest the Examining Attorney’s
contention that the goods and services are related.32
We may find goods and services related when the circumstances surrounding their
marketing are such that they would be likely to be encountered by the same persons
under circumstances that would give rise, because of the marks used in connection
therewith, to the mistaken belief that the goods and services originate from or are in
some way associated with the same source. In re Int’l Telephone and Telegraph Corp.,
197 USPQ 910 (TTAB 1978). It is only necessary that there be a viable relationship

32 In its reply brief, Applicant states that its services relate to making personal appointments
while registrant’s services relate to healthcare. 16 TTABVUE 5. We consider the services as
they are identified in the registration, Stone Lion, 110 USPQ2d at 1161, and the services in
the registration are not limited to the healthcare field.
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between the goods and services to support a finding of likelihood of confusion. In re
Concordia Int’l Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). If the goods and
services are described broadly, and there is no limitation as to the nature, type,
channels of trade or class of purchasers, it is presumed that the application and
registration encompass all goods and services of the type described, that they move
in all channels of trade normal for the goods and services, and that they are available
to all usual classes of purchasers. See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB
1992).
As noted earlier in this decision, Applicant’s goods are “downloadable software
applications for making personal appointments” and registrant’s services are
“software as a service (SAAS) services featuring software for use by business and
their customers, patrons and patients … for creating, monitoring and editing
appointments, for creating and editing appointments and appointment
reminders ….”
Both Applicant’s goods and registrant’s services allow users to make personal
appointments. The fact that one is a good (a downloadable software application) that
accomplishes a particular function and the other is a software service for the same
function does not distinguish Applicant’s goods from the services. The Examining
Attorney submitted approximately ten third party registrations including “software”
and “software as a service,” indicating that a single company may make its software
products available to customers in both forms. Although such registrations are not
evidence that the marks shown therein are in use or that the public is familiar with
Serial No. 86614170
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them, they nonetheless have probative value to the extent that they serve to suggest
that the goods and services listed therein are of a kind which may emanate from a
single source under a single mark. In re Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988). See,
e.g., the following registrations submitted with the November 28, 2016 Office
Action:33

Reg. No. Goods and Services in Registration
3839237 Class 9: Computer software used in healthcare to allow patients to view
and request changes of their medical record, request appointments, pay
their bill, view or print their results and retrieve other personal
healthcare information.
Class 42: Providing on-line non-downloadable software used in
healthcare to allow patients to view and request changes of their
medical record, request appointments, pay their bill, view or print their
results and retrieve other personal healthcare information.
3840487 Class 9: Computer software for allowing modeling agencies to manage
scheduling, booking, and accounting, and for uploading and
downloading text and images over a computer network.
Class 42: Providing on-line non-downloadable software for scheduling
and booking events and appointments and for performing accounting
functions all for use by modeling agencies and their clients.
2970694 Class 9: Downloadable computer software for facilitating the scheduling
of appointments for blood banks and blood centers.
Class 42: Providing temporary use of on-line non-downloadable
software for facilitating the scheduling of appointments for blood banks
and blood centers.
4592422 Class 9: Computer software for use in scheduling appointments.
Class 42: Providing temporary use of on-line non-downloadable
software for use in scheduling appointments.
4610475 Class 9: Computer software for instant appointment scheduling,
creating appointment waiting lists, setting up reminders, establishing
secure communications, providing special offers, sharing lab results,
enabling video conferencing, and collaboration and sharing of other

33 TSDR 115-144.
Serial No. 86614170
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content associated with the relationship between a consumer and a
service provider.
Class 42: Providing a website featuring non-downloadable software for
instant appointment scheduling, creating appointment waiting lists,
setting up reminders, establishing secure communications, providing
special offers, sharing lab results, enabling video conferencing, and
collaboration and sharing of other content associated with the
relationship between a consumer and a service provider.

In addition, the Examining Attorney submitted a webpage from
https://www.clickbook.net offering both scheduling software and a downloadable
software application for scheduling appointments.34
In view of the foregoing, and because Applicant has not contested the similarity of
the goods and services in its brief, we find that the du Pont factor regarding the
similarity of the goods favors a finding of likelihood of confusion.
Channels of Trade and Classes of Consumers
Applicant has not commented on the Examining Attorney’s assertion that “it is
highly likely that applicant’s downloadable software program and registrant’s
software as a service would appear in the same channels of trade and/or be advertised
together.”35 It is apparent that customers obtain downloadable software through the
internet, and also obtain access to software as a service through internet access to
the purveyor’s websites. Moreover, because both registrant’s services and Applicant’s
goods offer the scheduling of appointments, and there are no trade channel or

34 November 28, 2016 Office Action, TSDR 97 (“ClickBook free appointment scheduling
software downloads instantly into any browser and won’t slow down or interfere with your
computer’s performance”; and “the free online scheduling software is available via a mobile
app.”).
35 Examining Attorney’s brief at 12, 15 TTABVUE 16.
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purchaser restrictions in the identifications, we find it likely that the same
purchasers who are considering registrant’s service, which includes “software as a
service (SAAS) services featuring” appointment scheduling, will also consider
Applicant’s software as an alternative. We therefore find the du Pont factor regarding
the similarity of trade channels and classes of purchasers overlap.
Balancing the Factors
After considering all of the du Pont factors for which there has been evidence or
argument, including evidence and arguments not specifically mentioned in this
decision, we find that Applicant’s mark and registrant’s mark SOLUTIONREACH
are very similar, Applicant has not established any substantial weakness in
registrant’s mark due to use by third parties, the goods and services are related and
the classes of purchasers and trade channels overlap. We therefore find that the mark
REACH for “downloadable software applications for making personal appointments”
is likely to cause confusion with the mark SOLUTIONREACH for “software as a
service (SAAS) services featuring software for use by business and their customers,
patrons and patients … for creating, monitoring and editing appointments, for
creating and editing appointments and appointment reminders … .”
Decision: The refusal to register under Section 2(d) is affirmed as to the goods in
Class 9. The application will proceed to registration in Class 35 in due course.