Black

Trademark Trial and Appeal Board

Dec 11, 2006

No. 78456723 (T.T.A.B. Dec. 11, 2006)

December 11, 2006
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Black
________

Serial No. 78456723
_______

David M. Silverman and Brian J. Hurh of Cole, Raywid &
Braverman, L.L.P. for Amy Black.

Michael Tanner, Trademark Examining Attorney, Law Office
117 (Loretta Beck, Managing Attorney).
_______

Before Hairston, Holtzman and Walsh, Administrative
Trademark Judges.

Opinion by Walsh, Administrative Trademark Judge:

On July 26, 2004, Amy Black (Applicant) filed an
intent-to-use application to register HELLO WORLD in
standard-character form on the Principal Register for
services now identified as “electronic transmission of
live, prerecorded and interactive pictures, video, text and
audio over a global computer network; electronic store-and-
forward messaging” in International Class 38.1

1 The application, as filed, also covered services in
International Classes 35 and 41. Applicant filed and the Office
granted a request to divide with respect to the services in those
classes. The refusal on appeal is limited to Class 38.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78456723
2
The Examining Attorney has refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d),
based on a likelihood of confusion with the mark HELLO
WORLD COMMUNICATIONS in standard-character form, registered
for “rental of telephones” in International Class 382 (Reg.
No. 2152084). The registration, which issued on April 21,
1998, is active. The registration claims first use of the
mark anywhere in March of 1991 and first use of the mark in
commerce in September of 1991. The registration includes a
disclaimer of “WORLD COMMUNICATIONS.”
Applicant responded and argued against the refusal.
The Examining Attorney made the refusal final and Applicant
appealed. Both Applicant and the Examining Attorney have
filed briefs. We affirm.
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office… as to
be likely, when used on or in connection with the goods of
the applicant, to cause confusion…” Id. The opinion in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1977) sets forth the factors we may consider

2 The registration covers services in International Class 41
also, but the Examining Attorney limited the refusal to
International Class 38.

Ser No. 78456723
3
in determining likelihood of confusion. Here, as is often
the case, the crucial factors are the similarity of the
marks and the similarity of the goods of the applicant and
registrant. Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)(“The
fundamental inquiry mandated by Section 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods [services] and differences in
the marks.”). Below we will discuss all factors as to
which Applicant or the Examining Attorney argued or
presented evidence.
The Marks
In comparing the marks we must consider the
appearance, sound, connotation and commercial impression of
both marks. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005).
As to the marks, Applicant argues, “… the two marks at
issue actually have a different connotation and convey a
different commercial impression, as demonstrated by the
disclaimer of WORLD COMMUNICATIONS in the Registered Mark…
Potential customers see Applicant’s mark as HELLO WORLD
where ‘WORLD’ is used as noun (sic), while they are likely
to view that word in Registrant’s mark as an adjective
Ser No. 78456723
4
modifying ‘COMMUNICATIONS.’” On the other hand, the
Examining Attorney argues that the inclusion of
“COMMUNICATIONS” in the registered mark is insufficient to
distinguish the marks.
We agree with the Examining Attorney. Applicant’s
reliance on the disclaimer is misplaced. The existence of
the disclaimer has no bearing on how relevant purchasers
will perceive the registered mark; we must assume that the
relevant public would have no knowledge of this entry in
the cited registration. Norton Co. v. Talbert, 202 USPQ
542, 544 (TTAB 1979). Cf. Marriott Corp. v. Fairmont Foods
Co., 171 USPQ 58, 63 (TTAB 1971). We likewise reject
Applicant’s argument that the use of WORLD as a noun in her
mark versus the use of WORLD as an adjective in the
registered mark will have a significant impact on the
perception of the marks.
It is significant that both marks begin with HELLO
WORLD. Presto Products, Inc. v. Nice-Pak Products Inc., 9
USPQ2d 1895, 1897 (TTAB 1988)(“… [it is] a matter of some
importance since it is often the first part of a mark which
is most likely to be impressed upon the mind of a purchaser
and remembered.”). Here it is of particular importance
because the phrase HELLO WORLD is more than the mere sum of
its parts. It is a phrase which resonates with a
Ser No. 78456723
5
particular meaning, namely, a bold declaration of
introduction. Cf. In re Thomas, 79 USPQ 1021, 1025 (TTAB
2006). Applicant’s unsupported assertion that this
significance will be lost in the registered mark is not
persuasive.
Rather, we find the Examining Attorney’s argument
persuasive -- that is, that the inclusion of the highly
descriptive or even generic term “COMMUNICATIONS” in the
registered mark fails to distinguish the marks. Cf. M2
Software Inc. v. M2 Communications Inc., 450 F.3d 1378, 78
USPQ2d 1944, 1948 (Fed. Cir. 2006). It is more likely that
relevant purchasers will perceive the registered mark with
a recognition of the phrase “HELLO WORLD” rather than in
the manner Applicant suggests with “HELLO” standing alone
and with “WORLD” as a descriptive modifier of
“COMMUNICATIONS.” Accordingly, we conclude that HELLO
WORLD is applicant’s entire mark and that HELLO WORLD is
the dominant element in the mark in the cited registration.
We have also considered and rejected Applicant’s other
arguments related to the marks. First, Applicant points
out that a company with which she was formerly associated,
Hellonetwork.com, Inc., had previously applied to register
HELLO WORLD, that the application was approved, published
for opposition and not opposed, and that the application
Ser No. 78456723
6
was finally abandoned due to the failure to file a
statement of use. Applicant argues that the Office did not
refuse registration in the previous application even though
the HELLO WORLD COMMUNICATIONS registration was in effect
at the time, and therefore, that it is improper to refuse
registration here on that basis. We find this argument
unpersuasive. This Board has generally rejected the
premise that evidence that similar marks previously
“coexisted” on the register precludes a refusal which is
otherwise proper. See Mattel, Inc. v. Funline Merchandise
Co., Inc., __ USPQ2d __, Cancellation No. 92040128 (TTAB,
November 7 2006). See also In re Wilson, 57 USPQ2d 1863,
1871 (TTAB 2001). Furthermore, we must consider the
refusal before us on the merits without regard to actions
taken by examining attorneys in other applications. In re
Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001); See also In re Sunmarks Inc., 32 USPQ2d
1470, 1472 (TTAB 1994). Also, even active third-party
applications have no probative value other than as evidence
that the applications were filed. In re Phillips-Van
Heusen Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002).
In similar fashion, Applicant also refers to three
registrations for marks which consist entirely of or
include HELLO WORLD. Applicant argues that these
Ser No. 78456723
7
registrations and the cited registration coexisted at one
time, and that the refusal here is not consistent with the
actions taken on those applications/registrations.
Applicant also suggests that this demonstrates that the
registered mark is weak, and as such, entitled to a narrow
scope of protection.
Only one of the marks Applicant references is the
subject of an active registration – Reg. No. 2081449 for
the mark HELLO WORLD PUBLICATIONS for a “series of
nonfictions books regarding computer programming.” As to
the referenced cancelled or expired registrations, such
registrations ordinarily have no evidentiary weight. Cf.
Mattel, Inc. v. Funline Merchandise Co., Inc., supra at 9-
10. As to the one active registration, the goods in that
registration appear to be distinguishable from the services
of Applicant and registrant at issue here. More
importantly, as noted above, we are not bound by decisions
by examining attorneys in prior applications; we must
consider the record in the case before us. In re Nett
Designs, Inc., 57 USPQ2d at 1566. Accordingly, the prior
registrations of record of marks which include HELLO WORLD
do not dictate a course of action here, nor do they
demonstrate that the registered mark is weak.
Ser No. 78456723
8
Applicant also relies on registrations for marks which
include either “HELLO” or “WORLD,” but not both terms, in
an attempt to demonstrate that the registered mark here is
weak.3 The registrations which Applicant has made of record
have little probative value because the marks differ
markedly from the two marks at issue here in that they do
not include the entire phrase “HELLO WORLD.” Furthermore,
third-party registrations are entitled to little weight on
the question of likelihood of confusion. See, e.g., In re
Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983). Such
registrations are not evidence that the marks are in use
nor that the public is familiar with them. See, e.g., AMF
Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 177
USPQ 268 (CCPA 1973). Therefore, we have no basis to
conclude that the cited registered mark is weak - though it
may be somewhat suggestive - or otherwise not entitled to
the same scope of protection accorded any registered mark.

3 In presenting this argument Applicant also refers to certain
search results indicating specified numbers of registrations for
marks which include either “HELLO” or “WORLD,” in general, and in
International Class 38, in particular. Applicant did not provide
records for all of the enumerated registrations. The numbers
alone from search results have no probative value and have not
been considered. Cf. In re Duofold Inc., 184 USPQ 638, 640 (TTAB
1974).

Ser No. 78456723
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Accordingly, we conclude that the marks HELLO WORLD
and HELLO WORLD COMMUNICATIONS are similar in appearance,
sound, connotation and commercial impression.
The Services
With respect to the services, Applicant identifies her
services as “electronic transmission of live, prerecorded
and interactive pictures, video, text and audio over a
global computer network; electronic store-and-forward
messaging” in International Class 38. The services in the
cited registration are simply identified as “rental of
telephones” also in International Class 38.
The services need not be identical to find that the
services are related under Section 2(d) of the Trademark
Act. The services need only be related in such a way that
the circumstances surrounding their marketing would result
in relevant consumers mistakenly believing that the
services originate from the same source. On-Line Careline
Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471
(Fed. Cir. 2000).
Furthermore, in comparing the services and the
channels of trade for the services, we must consider the
services as identified in the application and registration,
as Applicant acknowledges. CBS Inc. v. Morrow, 708 F.2d
Ser No. 78456723
10
1579, 218 USPQ 198, 199 (Fed. Cir. 1983); In re Melville
Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
Also, the proper inquiry is not whether the services
could be confused, but rather whether the source of the
services could be confused. Safety-Kleen Corp. v. Dresser
Indus., Inc., 518 F.2d 1399, 186 USPQ 476, 480 (CCPA 1975);
In re Rexel, Inc., 223 USPQ 830, 831 (TTAB 1984).
Applicant argues that her services differ from those
in the cited registration. In an attempt to distinguish
her services from “rental of telephones” Applicant states,
“What the Examiner ignores is that Applicant’s services do
not involve telephones at all, since they are provided over
‘a global computer network,’ i.e., the Internet. In the
same way that such services do not involve telephones
(rented or otherwise), the Registrant’s telephone rental
services are unlikely to include Applicant’s Internet-based
transmission services.” On the other hand, the Examining
Attorney argues that the services of Applicant and
registrant are related, stating, “The widespread existence
of telephone rental and data transmission services offered
from a single source undermines the applicant’s contention
that these services are not related in the mind of the
consuming public. As the evidence of record overwhelmingly
Ser No. 78456723
11
demonstrates, the respective services while somewhat
different do emanate from a single source.”
The Examining Attorney has provided evidence in
support of his position that the services of Applicant and
registrant are related, including used-based, third-party
registrations showing registration of the same mark for
both types of services in International Class 38. The
following registrations are representative of the
registrations of record:
Reg. No. 2103018 for the mark PHONE GURU for
“telecommunication services, namely, rental of
telecommunication equipment, providing
telecommunications connections to a global computer
network … personal communication services, telephone
communication services, and cellular telephone
services; and data transmission services, namely,
electronic transmission of data via computer
terminals, facsimile transmission services, and voice-
on-demand transmission services”;

Reg. No. 2356719 for the mark UNICEL for “cellular
telephone services; paging services;
telecommunications services, namely, personal
communication services; mobile radio communication;
wireless digital messaging services; wireless voice
mail services; voice mail services; audio
teleconferencing; telecommunications gateway services;
outcall notification services; electronic transmission
of messages, voice and data; delivery of messages by
electronic transmission; electronic store-and-forward
messaging; rental of telecommunication equipment”;

Reg. No. 2508628 for the mark SHOWKIT.COM for
“electronic mail services; electronic storage of data
and messages; electronic store-and-forward messaging;
electronic transmission of data via computer
terminals; rental of telecommunications equipment; and
personal and business communications services”;
Ser No. 78456723
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Reg. No. 2609056 for the mark NEW ULM TELECOM and
Design for “delivery of messages by electronic
transmission … electronic mail services; electronic
store-and-forward messaging; electronic transmission
of data and documents via computer terminals;
electronic voice messaging, namely, the recording,
storage and subsequent transmission of voice messages
by telephone … providing multiple-user access to a
global computer information network; providing
telecommunications connections to a global computer
network; rental of telecommunication equipment …
telecommunications services, namely, personal
communication services; telephone communication
services; telephone voice messaging services; and
voice mail services”;

Reg. No. 2875235 for the mark WEBSPHERE for
“telecommunications services, namely, electronic
transmission of data and documents by computer
terminals and computer-aided transmission of data;
telephone, telex, facsimile, telegram, and message
storage, retrieval and transmission services; services
for the transmission of data and of information by
electronic, computer, telecopier, television, radio,
electronic mail, laser beam, or communication
satellite means; rental of communications, facsimile,
teleconferncing, and video conferencing apparatus and
instruments”;

Reg. No. 2854501 for the mark TAP INTO THE NETWORK for
“communication services, namely electronic mail
services and electronic transmission of data and
documents via computer terminals; facsimile
transmission services; rental of telephone, facsimile,
or modems; video teleconferencing”; and

Reg. No. 2842929 for the mark 1-800-RIDE-QWEST for
“telecommunications services; namely, … electronic
transmission of voice, data, video and messages;
providing access to a fiber optic telecommunications
network; providing access to a global information
network; wireless communications services, namely
wireless digital messaging services, wireless voice
mail services, and wireless data transfer services;
leasing and rental of telecommunications equipment;
video transmission over telecommunications network,
Ser No. 78456723
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namely vdsl (video digital subscriber line); dsl
(digital subscriber line) services; frame relay
services; atm (asynchronous transfer mode) services;
ip telephony services; private line services; virtual
private network services, namely, virtual private data
network services, virtual private network access
services, and virtual private voice network services;
paging services; public telephone services; and video
teleconferencing services.”

Applicant essentially posits that the rental of
telephones exists in a separate world or marketplace apart
from online services, that is, services rendered over
computer networks. The evidence of record illustrates
quite the opposite. In fact, the third-party
registrations, as well as the evidence from web pages
provided by the Examining Attorney, demonstrate that a wide
range of services involving telephone services, including
rental of telephones, and computer network services may
emanate from the same source. Furthermore, the evidence
indicates that telephone services, including rental of
telephones, and various online services are integrated.
For example, many of the third-party registrations include
both rental of telecommunications equipment, or telephones,
and various types of electronic and/or voice messaging
services.
In comparing the services of applicant and registrant,
as identified in the application and cited registration,
the most obvious relationship appears to exist between the
Ser No. 78456723
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registrant’s “rental of telephones” and Applicant’s
“electronic store-and-forward messaging” services.
However, it is also apparent that the remainder of
Applicant’s services are related to registrant’s services
in a marketplace where the offer of multiple, integrated
services, including telephone and other types of
communications services, prevails.
In Applicant’s attempt to draw a distinction between
the services, Applicant fails to acknowledge the close
functional relationship between her services and those in
the cited registration. For example, basic telephone
service is essentially a service which enables people to
communicate with one another over distances. The online
messaging service applicant identifies serves the very same
function.
Also, the stark distinction applicant attempts to draw
between telephones and online services is artificial. In
fact, telephone services can be rendered over computer
networks, including the Internet, telephones can be used to
transmit and receive text messages and content in other
forms, and telephones can be used to access computer
networks, again including the Internet. Thus, we reject
Applicant’s broad, unsupported assertion that, “the
Internet is not a telecommunications network.” (Emphasis
Ser No. 78456723
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in original.) The definition of “telecommunications” in
the Dictionary of Data & Telecommunications (1999) states:
“1. Meaningful wired/cabled or wireless transmission and
receipt of signals over distance. 2. Broadcast,
telegraph, and computer network communications frequently
with a ‘give-and-take’ quality or by choice of the
receiving party, carried through a variety of media,
including wires, fibers, air, etc…”4
Furthermore, “rental of telephones” is not limited in
any way. It may include wire, cellular or satellite or any
other specific type of phone. Also, the “rental of
telephones” is necessarily related to a communications
service. The rental of a telephone without the ability to
use it to communicate would serve no purpose.
Furthermore, we reject Applicant’s attempt to limit
the scope of the registrant’s services through extraneous
evidence. See In re Bercut-Vandervoort & Co., 229 USPQ
763, 764 (TTAB 1986)(extrinsic evidence and argument
suggesting trade-channel restrictions not specified in
application rejected). Applicant asks us to consider
evidence she offered allegedly related to the registrant’s

4 We take judicial notice of this dictionary definition under
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).

Ser No. 78456723
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actual business. She states, “Thus, it is apparent that
Registrant’s telephone rental business is ancillary to its
primary business, which relates to video productions.”
Applicant then suggests that the registrant renders its
“rental of telephones” service only in conjunction with
video productions. Applicant also argues that we should
look to the identification of services in other classes in
the cited registration and construe “rental of telephones”
in view of those identifications which relate to the video
production business. It would be improper to use either
extraneous evidence or identifications in other classes to
limit the scope of the plain language in International
Class 38 in the cited registration. Id. We must construe
“rental of telephones” to include any services the language
encompasses and to include all ordinary channels of trade
for such services. In re Melville Corp., 18 USPQ2d at
1388.
We also reject Applicant’s argument that this is a
case of holding goods or services related merely because
they are offered over the Internet citing Sports Authority
Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782 (TTAB
2002) and other cases. The record here establishes that
the services of Applicant and registrant are related in a
Ser No. 78456723
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functional sense and that they may emanate from the same
source under the same mark.
Accordingly, we conclude that the services of
Applicant and registrant are related and that the services
of Applicant and registrant could travel through the same
or overlapping channels of trade.
Other Factors
Applicant argues briefly that there has been no actual
confusion between her mark and the mark of the registrant.
We do not consider this factor to be significant in this
case. First, there is no evidence of the extent to which
the services of Applicant and registrant have been offered
in the same territory such that there would have been an
opportunity for actual confusion. More importantly, in an
ex parte proceeding, “uncorroborated statements of no known
instances of actual confusion are of little evidentiary
value.” In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1205 (Fed. Cir. 2003). See also In re
Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984).
In her reply brief Applicant also apparently argues
that the purchasers of the registrant’s services are
sophisticated and therefore less likely to be confused.
Here too the argument rests on the assumption that the
purchasers of registrant’s “rental of telephones” service
Ser No. 78456723
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are limited to “sophisticated purchasers of video
production equipment and services.” As we indicated above,
we cannot and do not assume that registrant’s channels of
trade are so limited. Based on the identifications of
services in both the application and registration we assume
that the purchasers for both could include the general
public. Furthermore, even sophisticated purchasers are not
immune from trademark confusion. In re Pellerin Milnor
Corp., 221 USPQ 558, 560 (TTAB 1983). Accordingly, we
conclude that the evidence in this application bearing on
the sophistication of the potential purchasers fails to
indicate a diminished likelihood of confusion.
Conclusion
In conclusion, after considering all evidence of
record in this case bearing on the du Pont factors, we
conclude that there is a likelihood of confusion between
Applicant’s mark and the mark in the cited registration.
We conclude so principally due to the similarity of the
marks and the fact that the services of Applicant and
registrant are related and could travel through the same or
overlapping trade channels to the same purchasers.
Decision: We affirm the refusal to register
Applicant’s mark under Section 2(d) of the Trademark Act.