Bigfoot Networks, Inc.

Trademark Trial and Appeal Board

Sep 17, 2009

No. 77375190 (T.T.A.B. Sep. 17, 2009)

Mailed:
17 September 2009
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Bigfoot Networks, Inc.
________

Serial No. 77375190
_______

Adam Sheehan of Larson Newman Abel Polansky & White for
Bigfoot Networks, Inc.

Renee McCray, Trademark Examining Attorney, Law Office 111
(Craig D. Taylor, Managing Attorney).
_______

Before Bucher, Drost, and Kuhlke, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On January 18, 2008, applicant Bigfoot Networks, Inc.
filed an application to register the mark Bigfoot Networks
in standard character form on the Principal Register for:
Communications software for connecting computer
network users; Computer hardware and software for
setting up and configuring local area networks;
Computer hardware and software for setting up and
configuring wide area networks; Computer network
adapters, switches, routers and hubs; Computer network
hubs, switches and routers; Computer networking
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77375190
2
hardware; Computer software for administration of
computer networks in Class 9.1

Applicant has also disclaimed the word “Networks.”
The examining attorney has refused to register
applicant’s mark under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), because of two registrations for the
mark BIGFOOT in typed or standard character form. The
first registration2 is for:
Dissemination of promotional materials for others via
electronic communications networks in Class 35.
Electronic mail services, namely distribution of
correspondence, providing access to electronic mail
messages and providing redirection, distribution,
filtration and consolidation of electronic mail
messages in Class 38.
The second registration3 is for:
Telecommunication services, namely personal and
business communication services; electronic mail
services in Class 38.

Global computer system domain name registrations
services; web hosting in Class 42.

After the examining attorney made the refusal final,
this appeal followed.

1 Serial No. 77375190. The application contains an assertion of
a date of first use anywhere and in commerce of May 5, 2005.
2 Registration No. 2353041 issued May 30, 2000. The current
owner is listed as Bigfoot Communications (Hong Kong) Limited.
See Reel/Frame No. 1759/0452.
3 Registration No. 2790353 issued December 9, 2003. Bigfoot
Communications (Hong Kong) Limited is also identified as the
registrant.
Ser No. 77375190
3
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). See also In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003); Recot, Inc. v. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000). In
considering the evidence of record on these factors, we
must keep in mind that “[t]he fundamental inquiry mandated
by § 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods [and services]
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
We begin by comparing applicant’s and registrant’s
marks. “The first DuPont factor requires examination of
‘the similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.’” Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177
USPQ at 567). Applicant’s mark is BIGFOOT NETWORKS and
registrant’s marks are both for the word BIGFOOT. The
marks are all displayed in typed or standard character
Ser No. 77375190
4
form, which means that they can be displayed in the
identical style. Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000) (“Registrations
with typed drawings are not limited to any particular
rendition of the mark and, in particular, are not limited
to the mark as it is used in commerce”); In re Cox
Enterprises Inc., 82 USPQ2d 1040, 1044 (TTAB 2007)(“We must
also consider that applicant’s mark, presented in typed or
standard character form, is not limited to any special form
or style as displayed on its goods”).
Therefore, the only difference between the marks is
the fact that applicant adds the disclaimed term
“Networks.” Disclaimed matter is often “less significant
in creating the mark’s commercial impression.” In re Code
Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001). Since
applicant’s goods are identified as being, inter alia, for
computer network users and for configuring local area
networks, it is highly descriptive of applicant’s goods.
“Regarding descriptive terms, this court has noted that the
‘descriptive component of a mark may be given little weight
in reaching a conclusion on the likelihood of confusion.’”
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1846 (Fed. Cir. 2000), quoting, In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985).
Ser No. 77375190
5
The marks are dominated by the same word, “Bigfoot.”
It is the only term in registrant’s marks and it is the
only distinctive word in applicant’s mark. Since
registrant’s services can also be used with networks (“via
electronic communications networks”), it is unlikely that
the term would be used by many purchasers to distinguish
the goods and services. Because of the identical, dominant
term BIGFOOT, which has no apparent meaning relating to the
goods or services, we conclude that the marks are very
similar in sound, appearance, meaning, and commercial
impression. In re Dixie Restaurants, Inc., 105 F.3d 1405,
41 USPQ2d 1531, 1534 (Fed. Cir. 1997) (Court held that the
addition of “The,” “Cafe” and a diamond-shaped design to
registrant’s DELTA mark still resulted in a likelihood of
confusion). In addition, “Applicant concedes that the mark
BIGFOOT NETWORKS is similar to the Cited Marks.”
Applicant’s Brief at 7.
Next, we will consider whether applicant’s and
registrant’s goods and services are related. Applicant
argues that the “description of the goods associated with
the BIGFOOT NETWORK mark nowhere refers to email, domain
name registration, or web hosting.” Reply Brief at 3.
However, in “order to find that there is a likelihood of
confusion, it is not necessary that the goods or services
Ser No. 77375190
6
on or in connection with which the marks are used be
identical or even competitive. It is enough if there is a
relationship between them such that persons encountering
them under their respective marks are likely to assume that
they originate at the same source or that there is some
association between their sources.” McDonald's Corp. v.
McKinley, 13 USPQ2d 1895, 1898 (TTAB 1989). See also In re
Opus One Inc., 60 USPQ2d 1812, 1814-15 (TTAB 2001).
We must consider the goods and services as they are
identified in the application and registration. Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods”); Dixie
Restaurants, 41 USPQ2d at 1534 (punctuation in original),
quoting, Canadian Imperial Bank of Commerce v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1816 (Fed. Cir. 1987)
(“‘Likelihood of confusion must be determined based on an
analysis of the mark applied to the … services recited in
applicant’s application vis-à-vis the … services recited in
[a] … registration, rather than what the evidence shows the
… services to be’”).
We will consider applicant’s “communications software
for connecting computer network users” and registrant’s
Ser No. 77375190
7
“electronic mail services” and “web hosting” in the ‘353
registration and “electronic mail services, namely,
distribution of correspondence, providing access to
electronic mail messages” in the ‘041 registration.4
Applicant argues that the “Office has failed to
provide any evidence that hardware and software goods
related to computer networks, such as network interface
equipment, is marketed under similar conditions.” Reply
Brief at 2. The examining attorney has submitted numerous
third-party registrations to show that “marks have been
registered by a single entity for similar
telecommunications equipment and telecommunication
services.” Brief at unnumbered p. 9. We note that the
registrations show more than the fact that
“telecommunications equipment and telecommunication
services” are registered by the same entity under a common
mark. Specifically, they suggest that applicant’s software
for connecting computer network users and registrant’s

4 Registration is properly refused if confusion is likely if
applicant’s mark is used with any of its identified goods.
Tuxedo Monopoly, Inc. v. General Mills Fun Group, 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”).
Ser No. 77375190
8
email and web hosting services are related. See
Registration No. 3531660 (“communications software for
connecting computer network users,” “creating, designing,
and maintaining web sites for others” and “electronic mail
services”); No. 3307137 (“communications software for
connecting computer network users for communicating and
sharing data” and “electronic mail services”); No. 3117861
(“communications software for connecting computer network
users and global computer networks” and “electronic mail
services”); No. 2849243 (“communications software for
connecting global computer networks,” “web hosting
services” and “electronic mail services”); and No. 2836788
(“communications software for connecting computer network
users and global computer networks,” “hosting the web sites
of others on a computer service for a global computer
network” and “electronic-mail services”). These
registrations suggest that the same source may provide both
web hosting and email services and computer software for
connecting computer network users. See In re Mucky Duck
Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988) (Although
third-party registrations “are not evidence that the marks
shown therein are in use on a commercial scale or that the
public is familiar with them, [they] may have some
probative value to the extent that they may serve to
Ser No. 77375190
9
suggest that such goods or services are the type which may
emanate from a single source”). See also In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993). We
also note the following article which suggests that an ASP
provides email services and software that connects computer
network users.
What is an ASP?

Software companies create software solutions.
Application service providers are business partners
who leverage software solutions. A software vendor
can be leaned on for bug support and new features;
where as an ASP can be leaned on to understand the
industry, its trends, manage clients’ success and
growth, and continue to push out releases while
maintaining minimal downtime.

Don’t mistake a Web-based application for an ASP, the
two are very different. Gmail is a web-based
application. Google Office is a web-based
application. Neither provide any “service” to the
customer outside of the software. An ASP provides
infrastructure, service, software and support.

www.douglaskarr.com.

Therefore, we conclude that applicant’s goods and
registrant’s services are related. Regarding the channels
of trade and purchasers, applicant asserts they are
different. Brief at 11. We cannot agree. In a case like
this, “where the goods [or services] in a cited
registration are broadly described and there are no
limitations in the identification of goods [or services] as
to their nature, type, channels of trade or classes of
Ser No. 77375190
10
purchasers, it is presumed that the scope of the
registration encompasses all goods [or services] of the
nature and type described, that the identified goods [or
services] move in all channels of trade that would be
normal for such goods, and that the goods would be
purchased by all potential customers.” In re Elbaum, 211
USPQ 639, 640 (TTAB 1981). Inasmuch as these goods and
services originate from the same sources and are provided
by such companies as application service providers, we
cannot find that there is a significant difference in the
channels of trade that would cause us to find that
confusion is unlikely. Also, purchasers of these goods and
services would overlap. Network administrators, business
managers, and others would likely be purchasers of software
that connects computer network users and email and web
hosting services. While applicant points out that its
purchasers “would include computer games, computer network
technicians and engineers, and other technically
sophisticated purchasers” (Brief at 11-12), these
purchasers are not immune to trademark confusion. In re
Total Quality Group Inc., 51 USPQ2d 1474, 1477 (TTAB 1999)
(“[E]ven careful purchasers are not immune from source
confusion”). See also In re Hester Industries, Inc., 231
USPQ 881, 883 (TTAB 1986). When marks as similar as
Ser No. 77375190
11
BIGFOOT and BIGFOOT NETWORKS are used on network-related
goods and services, even sophisticated purchasers are
likely to be confused.
When we consider that the marks are very similar, the
goods and services are related, and that the purchasers and
channels are not distinct, we conclude that there is a
likelihood of confusion in this case.
Decision: The refusal to register applicant’s mark
under Section 2(d) is affirmed.