Crosswalk, Inc.

Trademark Trial and Appeal Board

Aug 2, 2007

No. 78424189 (T.T.A.B. Aug. 2, 2007)

Hearing: Mailed:
March 20, 2007 August 2, 2007
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Crosswalk, Inc.
________

Serial No. 78424189
_______

Lisa K. Koenig, Andrew Hartman and Keith J. Berets of Cooley
Godward LLP for Crosswalk, Inc.

Lana H. Pham, Trademark Examining Attorney, Law Office 115
(Tomas V. Vlcek, Managing Attorney).
_______

Before Bucher, Taylor and Bergsman, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Crosswalk, Inc. seeks registration on the Principal
Register of the mark CROSSWALK (in standard character format)
for services recited as follows, as amended:
“professional assessment, design and
technical support services, namely assessment
and design of information technology and data
storage systems for others; design,
development and implementation of software;
maintenance of information technology
software and data storage systems for others”
in International Class 42.1

1 Application Serial No. 78424189 was filed on May 24, 2004
based upon Applicant’s allegation of a bona fide intention to use
the mark in commerce.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78424189
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This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation based upon Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). The Trademark Examining
Attorney asserts that Applicant’s mark, when used in
connection with Applicant’s recited services, so resembles
the marks CROSSWALK.COM2 and CROSSWALK,3 both owned by
the same entity, and registered in connection with the
following services:
“computer services, namely, providing
multiple-user access to a global computer
information network; providing databases
featuring general news and information;
providing search engines for obtaining data
on a global computer network; hosting
websites of others on a computer server for a
global computer network; providing an online
computer database in the field of religion
and spirituality; providing temporary use of
online non-downloadable software for use as a
web filtering device” in International Class
42;

and

“computer services, namely electronic
transmission of data and documents via
computer terminals; providing
telecommunications connections to a global
computer network; providing bulletin boards

2 Registration No. 2736979 issued to Crosswalk.Com, Inc. on
July 15, 2003 based upon an application filed on September 28,
1998 claiming first use anywhere and first use in commerce in
both classes of services at least as early as September 9, 1998.

3 Registration No. 2805119 issued to Crosswalk.Com, Inc. on
January 13, 2004 based upon an application filed on September 9,
1998 claiming first use anywhere and first use in commerce in
both classes of services at least as early as September 9, 1998.
Serial No. 78424189
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and chat rooms featuring general news and
information of interest to specific groups
with specific self-defined interests” in
International Class 38.

as to be likely to cause confusion, to cause mistake or to
deceive.
Applicant and the Trademark Examining Attorney have
fully briefed the issue. We reverse the refusal to
register.
The Trademark Examining Attorney argues that
Applicant’s mark is identical to one of Registrant’s marks
and substantially the same as the second. She takes the
position that Registrant’s “Crosswalk” mark is inherently
strong when used in connection with Registrant’s recited
services. She also argues that the record demonstrates that
these respective services are closely related and that the
services will be found in the same overlapping channels of
trade.
By contrast, Applicant argues that as applied to
Registrant’s services, the cited marks have vastly different
connotations than does Applicant’s mark. Applicant has also
contended throughout the prosecution of this application
that the services Applicant offers, as described in its
application, are completely different from those offered by
the Registrant in the cited registrations. In addition to
the Trademark Examining Attorney’s alleged misunderstandings
Serial No. 78424189
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about the respective services, Applicant argues that she has
incorrectly analyzed the trade channels for the services
covered by the respective marks. Furthermore, Applicant
argues that the Trademark Examining Attorney has failed to
acknowledge appropriately the sophistication of the
potential purchasers of Applicant’s services – an important
du Pont factor in the instant case. Finally, Applicant
contends that the absence of actual confusion over a period
of contemporaneous usage of the respective marks supports a
finding of no likelihood of confusion.
LIKELIHOOD OF CONFUSION
We turn then to a consideration of the issue of
likelihood of confusion. Our determination is based upon an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on this issue. See In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). See also In re Majestic Distilling Co., Inc.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any
likelihood of confusion analysis, however, two key, although
not exclusive, considerations are the similarities between
the marks and the relationship between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also In re
Serial No. 78424189
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Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed.
Cir. 1997).
The marks
We look first at the similarity 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, 1692 (Fed. Cir. 2005).
Applicant’s CROSSWALK mark has exactly the same
appearance and sound as does Registrant’s CROSSWALK mark,
and is similar on both of these scores to Registrant’s
CROSSWALK.COM mark.
As to meaning, Applicant and the Trademark Examining
Attorney continue to disagree on whether or not there is a
significant difference in the connotations of Applicant’s
mark and the cited marks.
From the standpoint of dictionary or glossary entries,
we note two very different, alternative meanings for the
word, “Crosswalk.” As noted by applicant, the term is often
defined as the “portion of a roadway where pedestrians are
permitted to cross the roadway.” However, we note that this
term has also taken on a suggestive meaning within the
computer field where a crosswalk is a table that maps the
Serial No. 78424189
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relationships and equivalencies between databases and hence
promotes interoperability across two or more metadata
formats.4 Given the central role of “data storage” in
Applicant’s recitation of services, it seems clear that
customers of these services would pick up this suggestive
“crossing” connotation of Applicant’s mark.
By contrast, there is no reason this suggestive meaning
would occur to Registrant’s users. Rather, Applicant argues
that for Registrant’s consumers, the “term ‘crosswalk’ is a
pun on the traditional definition of a street crossing, and
a religious ‘cross’ walk (impliedly relating to Jesus’ walk
with his cross in Jerusalem).” Applicant’s reply brief at
2. In support of this interpretation, Applicant points to
the depiction of Registrant’s mark appearing on Registrant’s
website, showing a stylized version of a religious cross
(“Faith”), having a
supporting leg, that also
makes the total image
appear to be a person walking (“Life”), and that the
“intersection” of this cross/walking imagery is captured

4 THE DUBLIN CORE METADATA INITIATIVE (DCMI) USAGE GUIDE GLOSSARY, also
found at http://dublincore.org/documents/2005/11/07/usageguide/.
It is settled that the Board may properly take judicial notice of
dictionary definitions. See University of Notre Dame du Lac v.
J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Serial No. 78424189
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within a circle doubling as the letter “O” in the word
“crosswalk.”
Applicant quotes to Professor McCarthy: “In
determining the meaning and connotation which the trademark
projects, it is proper to look to the context of use such as
material on labels, packaging, advertising and the like.” 3
J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION
§ 23:26 - 28.
Accordingly, we agree that this is a case where the
connotation of the term is deemed to be clearly different as
applied to the respective services. For example, this Board
found that the mark PLAYERS on men’s underwear and shoes
would not result in consumer confusion as to the source of
the goods, quoting directly from that applicant’s brief:
“PLAYERS” for shoes implies a fit, style,
color and durability adapted to outdoor
activities. “PLAYERS” for men’s underwear
implies something else, primarily indoors in
nature.

In re British Bulldog, Ltd., 224 USPQ 854, 856 (TTAB 1984).
In a later underwear case at the Board, another “CROSS-
formative” mark was treated in similar fashion, albeit with
another slightly different cross connotation. See In re
Sears, Roebuck and Co., 2 USPQ2d 1312 (TTAB 1987) [CROSS-
OVER, when applied to brassieres, is suggestive of the
Serial No. 78424189
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crisscross construction of the bras, and hence is not likely
to be confused with CROSSOVER for women’s outerwear].
Here, Registrant’s recitations of services do contain
references to “the field of religion and spirituality.”
Given the importance of the symbol of the cross in the
Christian faith,5 we find that this is the commercial
impression that users and potential customers of
Registrant’s services will take from the CROSSWALK and
CROSSWALK.COM marks – a very different commercial
impression from that of Applicant’s CROSSWALK mark as
applied to its recited data storage system services.
Accordingly, this du Pont factor favors a finding of no
likelihood of confusion.
The number and nature of similar marks registered in
connection with similar goods and/or services

Applicant argues that “[t]here are many companies in
the marketplace that have registered some form of the term
‘CROSSWALK’ for use in their name or for their company
products” [emphasis supplied]. As a result, Applicant
argues that the cited marks are entitled to only a very
narrow scope of protection. See National Cable Television

5 “Then [Jesus] said to them all: ‘If anyone would come after
me, he must deny himself and take up his cross daily and follow
me.’” St. Luke, Ch. 9, Verse 23.

Serial No. 78424189
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Ass’n v. American Cinema Editors, Inc., 937 F.2d 1572,
19 USPQ2d 1424 (Fed. Cir. 1991). In its brief, Applicant
highlights the following examples:6
CROSSWALK for “annual publication, namely pamphlets
featuring medical codes used for diagnostic
and billing purposes” in Int. Class 16;7
CROSSWALKS for “metal non-luminous and non-mechanical
signs” in International Class 6;8

In addition to these two registrations, the others that
Applicant had included as Exhibit K to its response of June
3, 2005, included the following registrations, all of which
appear to be owned by Registrant, not third parties:
CROSSWALK for “on-going radio and television programs
addressing ethical issues affecting inner city
families” in International Class 41;9

6 A third example that Applicant mentioned in Exhibit M to its
brief, Registration No. 1294615, involving the mark CROSSWALK for
“resilient hard surface type covering for floors, walls, and
other surfaces” has since been cancelled under Section 8 of the
Trademark Act.
7 Registration No. 2004932 issued to American Society of
Anesthesiologists, Inc. on October 1, 1996 based upon an
application filed on September 29, 1994 later claiming first use
anywhere and first use in commerce at least as early as October
5, 1994; renewed.

8 Registration No. 2275806 issued to Atlas Screen Printing,
Inc. on September 7, 1999 based upon an application filed on May
1, 1998 claiming first use anywhere and first use in commerce at
least as early as May 1996; Section 8 affidavit (six-year)
accepted and Section 15 affidavit acknowledged.

9 Registration No. 2463313 issued to Crosswalk.com, Inc.
[Registrant, herein] on June 26, 2001 based upon an application
filed on July 12, 1999 claiming first use anywhere and first use
in commerce at least as early as July 1998; Section 8 affidavit
(six-year) accepted and Section 15 affidavit acknowledged.

Serial No. 78424189
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CROSSWALK for “advertising and business services; namely,
preparing and placing advertisements for others on a
global communications network, and promoting the
goods and services of others by arranging for
sponsors to affiliate their goods and services with
a global communications network” in Int. Class 35;10
CROSSWALK for “outreach religious ministry services to inner
city families” in International Class 42;11
CROSSWALK for “charitable fundraising” in Int. Class 36;12 and
CROSSWALK for “publications and other printed material,
namely, brochures, manuals, reports, booklets and
cards all dealing with services and products offered
via a global communications network; ball point
pens; book covers; calendars; daily planners;
decals; desk pads; desk sets; data books; diaries;
classified directories; Bibles; file cards; file
folders; note pads; paper banners; paper signs; pen
or pencil holders; stationery; books, namely,
anniversary books, appointment books, autograph
books, baby books, address books, children’s books,
children’s activity books, coloring books,
composition books, cook books, date books,
engagement books, hymn books, notebooks, picture
books, prayer books, printed music books, recipe
books, religious books, song books, telephone number
books, wedding books, wire bound books, and journals
in the fields of family life, marriage, parenting,
spiritual life, culture, politics, home improvement,
e-commerce, career management, colleges, music,
education, personal finance and investing, business,
sports, entertainment, religion, health, news,
publishing, and technology; personal inspiration
books; and educational books, computer program
manuals, newsletters, and printed instructional and

10 Registration No. 2527874 issued to Crosswalk.com, Inc.
[Registrant, herein] on January 8, 2002 based upon an application
filed on September 9, 1998 claiming first use anywhere and first
use in commerce at least as early as September 9, 1998.
11 Registration No. 2531159 issued to Crosswalk.com, Inc.
[Registrant, herein] on January 22, 2002 based upon an
application filed on June 2, 1999 claiming first use anywhere and
first use in commerce at least as early as July 1998.

12 Registration No. 2750649 issued to Crosswalk.com, Inc.
[Registrant, herein] on August 12, 2003 based upon an application
filed on September 9, 1998 claiming first use anywhere and first
use in commerce at least as early as February 6, 2003.
Serial No. 78424189
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teaching materials, all in the fields of family
life, marriage, parenting, spiritual life, culture,
politics, home improvement, e-commerce, career
management, colleges, music, education, personal
finance and investing, business, sports,
entertainment, religion, health, news, publishing,
and technology” in International Class 16.13

Accordingly, contrary to Applicant’s position that
“[t]here are many companies in the marketplace” using this
term, we do not find that the term “Crosswalk” has been used
on numerous types of goods and services by different
companies, such that we could infer that purchasers have
been conditioned to expect different sources for these
different goods or services. This du Pont is, at best from
Applicant’s perspective, a neutral factor.14
Relationship of the services
We turn next to the du Pont factor focusing on the
relationship of the services recited in the involved
application and the services of the cited registrations.
In support of her position that Applicant’s and
Registrant’s services are provided by the same party under

13 Registration No. 2802602 issued to Caron Broadcasting, Inc.
on January 6, 2004 based upon an application filed on September
9, 1998 claiming first use anywhere at least as early as March 1,
2003 and first use in commerce at least as early as May 1, 2003.

14 If anything, this latter listing hurts Applicant’s position
on another of the du Pont factors we have not discussed at
length, namely the one focusing on the wide variety of goods and
services on which Registrant’s mark is used.

Serial No. 78424189
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the same mark, the Trademark Examining Attorney submitted
for the record the following third-party registrations:15

for “computer software and hardware
design for others; integration of
computer systems and networks;
maintenance of computer software;
creating and maintaining websites for
others; and providing multiple-user
access to global computer information
network for the transfer and
dissemination of a wide range of
information” in International Class 42;16
TERASPACE NETWORKS for, inter alia, “providing multiple-
user access to and regulated bandwidth
for a global computer information
network; providing network connections
for obtaining data on private, public,
secure, and open local, regional, and
global computer networks; and electronic
data interchange services” in
International Class 38;
“hosting websites and webpages on a
global computer network; computer
network software maintenance services”
in International Class 42;17

15 Registration Nos. 2285699 and 2337135 have since been
cancelled under Section 8 of the Act.

16 Registration No. 2111973 issued on November 11, 1997 based
upon an application filed on August 22, 1996 claiming first use
anywhere at least as early as January 1985 and first use in
commerce at least as early as February 1, 1986; Section 8
affidavit (six-year) accepted and Section 15 affidavit
acknowledged. No claim is made to the word “Computer” apart from
the mark as shown.

17 Registration No. 2572097 issued to Hillwood Development
Corporation on May 21, 2002 based upon an application filed on
June 16, 2000 later claiming first use anywhere and first use in
commerce in both classes at least as early as May 15, 2001. No
claim is made to the word “Networks” apart from the mark as
shown.
Serial No. 78424189
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TWX-21 for, inter alia, “telecommunications and
electronic data interchange services, namely, the
receipt and delivery of messages, documents and
data by electronic transmission” in International
Class 38;
“computer network access, administration and
support services, namely, providing multiple-user
access to global computer networks for the
dissemination and exchange of a wide range of
information and data, designing computer hardware
and computer software for telecommunications
networks, providing computer network systems
integration services, assisting others in the
design of computer network sites, assisting others
in the operation and maintenance of networked
computer systems by maintaining computer software
and providing computer programming for others, and
protecting the security of data transmitted over
computer networks by means of a authentication of
user identity and message content, verification of
non-repudiation of transmissions and access
control; electronic data interchange services for
a variety of business enterprises, namely,
consulting related to providing computer network
systems and providing computer network services
for sending and receiving product orders, product
and manufacturing estimates, drawings, documents,
and inventory lists, managing transportation and
delivery of products, providing electronic means
for product quality and process control, providing
means for electronic notary or authentication of
documents and data transmissions, and making
financial transactions; loading, revising and
updating of computer software for electronic data
interchange and telecommunications networks for
others; computer network support services, namely,
protecting the security of data transmitted over
computer networks by means of encryption and
cryptography” in International Class 42;18

18 Registration No. 2672390 issued to Kabushiki Kaisha Hitachi
Seisakusho, d.b.a. Hitachi, Ltd. on January 7, 2003 based upon an
application filed on July 1, 1997 claiming first use anywhere and
first use in commerce in all classes at least as early as March
14, 2001.
Serial No. 78424189
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for “licensing computer software for use in
analyzing the performance of and quality of
care provided by hospitals, and aiding
consumers to compare and select hospitals” in
International Class 35;
“providing multiple-user access to global
computer information network database in the
field of health care” in Int. Class 38;
“providing health information and analysis in
the nature of the performance of and quality
of care provided by hospitals via a global
computer network; database development
services in the field of health care; and
computer services, namely, providing access to
and analysis of computer databases in the
field of health care and computer software
development and maintenance services for
others” in International Class 42;19
EL SITI0 for “communication and telecommunication
services, namely, electronic transmission of
voice, data, images, sounds, and information
through a global computer network; providing
multiple user access to global computer
information networks for the creation,
transfer and dissemination of a wide range of
information; providing on-line chat rooms for
transmission of messages among computer users
concerning entertainment, shopping, travel,
health and financial issues; providing on-line
electronic bulletin boards for transmission of
messages among computer users concerning
entertainment, shopping, travel, health and
financial issues; electronic mail services” in
Int. Class 38;
“computer services, namely, providing an on-
line multimedia magazine in the field of
cultural and current events rendered by means
of a global computer network; computer
consultation services; computer programming

19 Registration No. 2701879 issued to HealthShare Technology,
Inc. on April 1, 2003 based upon an application filed on August
3, 2001 claiming first use anywhere in all three classes at least
as early as February 28, 2001 and first use in commerce in all
three classes at least as early as June 8, 2001. No claim is
made to the word “Quality Care” apart from the mark as shown.

Serial No. 78424189
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for others; custom design services in the
field of computer software” in Int. Cl. 42;20
CREEKPATH for, inter alia, “computer support services;
namely, providing technical advice and
troubleshooting of data storage solution
systems via telephone and over global computer
networks; providing information and consulting
in the field of computer networks and data
storage systems; design, testing, development,
installation, maintenance and updating of
computer software and computer data storage
systems; providing temporary use of non-
downloadable software used for managing,
monitoring, configuring and controlling
scaleable storage computer networks and the
storage of data thereon via local and remote
means and computer utility and network
management software; and computer network
design for others” in International Class 42;21
METATV for, inter alia, “providing multiple user
access to global computer networks and the web
via cable, satellite, telecommunications,
communications and broadcast networks” in Int.
Class 38; and
“computer services, namely computer
consultation and integration of computer
systems; computer programming services and
computer system analysis for others; design
and development for others of web, global
computer network, television, digital and
analog transmission systems and products;
computer software design and development for
others; co-location hosting the web sites of
others on a computer server for a global
computer network” in Int. Class 42.22

20 Registration No. 2770539 issued to El Sitio International
Corporation, a corporation of the British Virgin Islands on
October 7, 2003 based upon an application filed on August 3, 1999
claiming use anywhere and first use in commerce in both classes
at least as early as June 18, 1999. The English translation of
“El Sitio” is “the place.”
21 Registration No. 2811234 issued on February 3, 2004 based
upon an application filed on October 2, 2001 claiming first use
anywhere and first use in commerce at least as early as April
2000.

22 Registration No. 2815267 issued to MetaTV on February 17,
2004 based upon an application filed on November 3, 1999 claiming
first use anywhere and first use in commerce in class 38 at least
Serial No. 78424189
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The Trademark Examining Attorney seemed to be looking
for instances where the same mark was allegedly being used
on the services contained in the heart of the cited
registrations (e.g., Internet access and telecommunications
services, online chat rooms and the electronic transmission
of documents and data) as well as in services regarding the
development of infrastructure for high productivity
computing systems.
The owner of the CREEKPATH registration appears to be
the closest to being in Applicant’s field, namely,
professional services focused on the development of “data
storage systems.” On the other hand, the services of the
type Registrant markets to individual consumers, such as
Internet access and chat rooms, are nowhere to be found in
this registration.
Furthermore, we note that each of the owners of these
individual registrations, judging only from the face of the
registrations, deals with a relatively specialized and
narrow target audience: viz., individuals and companies
concerned with health care utilization (SELECT QUALITY CARE);
interactive television for large enterprises (METATV); real
estate developers of data centers (TERASPACE NETWORKS); and,

as early as May 7, 2000 and claiming first use anywhere and first
use in commerce in class 42 at least as early as March 20, 2000.

Serial No. 78424189
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computer repair and maintenance for individuals and small
businesses (COMPUTER COMFORT). Finally, we suspect that the
scale, and hence, breadth, of commerce in the field of
information technology is quite different on the part of a
British Virgin Islands corporation (EL SITI0) than is the case
in the United States. Finally, Hitachi’s TWX-21 technology
is employed as a specialized electronic commerce product
mark for the Business-to-Business (B2B) market.
Accordingly, although the Trademark Examining Attorney
argues that Registrant’s and Applicant’s services are
“closely related,” these seven registrations seem to us a
relatively weak reed upon which to support a finding of the
relatedness of these respective services.
Similarly, six-pages of screen shots that the Trademark
Examining Attorney took from the Internet on July 29, 2005,
discuss in detail the business of Senticore, Inc. – a
diversified public holding company with an emphasis in real
estate, timber and sports entertainment. In December 2004,
Senticore happened to purchase PokerBook Gaming Corporation
as an investment opportunity. According to this website,
Senticore’s software development team redesigned PokerBook’s
non-downloadable gaming software in order that it could then
be licensed to gaming operators worldwide. Senticore would
Serial No. 78424189
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appear to be in neither Registrant’s nor Applicant’s fields
of business.
The failure of the third-party registrations and this
Internet evidence to show any relationship between the
parties’ respective services supports Applicant’s contention
that the services Applicant offers are completely different
from those offered by Registrant – the owner of the cited
marks.
In order to find such a difference, it is not necessary
for us to narrow the scope of the cited registrations
through a resort to extrinsic evidence, as applicant would
have us do (i.e., to conclude from information drawn from a
website apparently owned by Registrant that the cited marks
belong to a company that runs a religious Internet portal
prominently featuring scriptures, news and a chat room on
its website).
Rather, the burden is on the Trademark Examining
Attorney to show the relationships of the respective
services, and based on this record, we find that she has
failed to do so.
Instead, we find confusing the various attempts of the
Trademark Examining Attorney to paint word pictures tying
these services together. She postulates that because both
Serial No. 78424189
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Registrant and Applicant “implement databases,” the services
of the parties are related.23 Applicant responds that:
“the Examiner twists logic to reason that
since data storage systems (about which
Applicant consults) require databases and
Registrant provides databases, therefore
Applicant’s consulting services regarding
data storage systems and Registrant’s
databases are “complimentary.” [sic] This is
simply unsupported by the record, and strains
the identification of the services to the
point of breaking. The limited portion of
the Cited Mark’s identification of services
that even includes databases is specifically
‘providing an online computer database in the
field of religion and spirituality.’ There
is no other mention of ‘databases’ in any
portion of the Cited Marks’ descriptions of
services. There is nothing in the record,
and it is devoid of logic, to suggest that a
large-scale data storage system identified by
Applicant’s Mark would run on a religion and
spirituality database as identified in the
Cited Marks. The reference to a database in
the Cited Marks’ description most likely
relates to a large database of articles and
literature regarding religion and
spirituality that can be accessed on its
website. There is no relationship to data
storage systems as in Applicant’s
description.”

Applicant’s reply brief at 4.

23 “The respective parties both provide similar services with
regards to the implementation of databases and software
applications. Applicant’s services include the assessment,
design and maintenance of data storage systems. Such data
storage systems rely on a structured database. Because
registrant provides databases, such services are
complementary and are likely to originate from a common
source.”
Trademark Examining Attorney appeal brief at 5.

Serial No. 78424189
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Similarly, the Trademark Examining Attorney argues that
“consumers who seek a service to have their data and
documents electronically transmitted [referring to
Registrant’s services] may also need a data storage system
for storing such data and documents.” Trademark Examining
Attorney appeal brief at 6. Again, we agree with Applicant
that “this is a presumption with no evidence behind it and
second it is irrelevant. If someone purchases a book, she
might need to buy a lamp to read it with but this does not
mean the two items are related, nor that anyone would be
confused as to their source.” Applicant’s reply brief at 5.
Finally, the Trademark Examining Attorney contends that
“applicant’s use of the term, ‘information technology’ is so
overly broad that it can encompass virtually all of the
registrant’s offered services.” Trademark Examining
Attorney appeal brief at 6. However, Applicant’s recitation
of services does not state that it “provides information
technology.” Rather, very specific terminology
[“professional … assessment and design of information
technology systems for others … [and] maintenance of
information technology software and data storage systems for
others”] identifies professional services targeting the
development and maintenance of complex infrastructures for
data storage systems. On this record, we agree with
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Applicant that “[t]hese services are worlds away from the
provision of internet hosting, temporary use of hosted
databases and hosted software and chat rooms.” Applicant’s
reply brief at 5.
Accordingly, we find that the Trademark Examining
Attorney has not demonstrated the relationship of the
respective services, and hence, that this critical du Pont
factor favors the position of Applicant that there is no
likelihood of confusion herein.
The similarity or dissimilarity of established, likely-to-
continue trade channels

Applicant would have us narrow Registrant’s market to
Christian consumers. Based on this record, that may well be
an accurate characterization of Registrant’s primary market.
However, in identifying the trade channels most relevant to
our likelihood of confusion determination, we find more
compelling Applicant’s arguments about its own channels of
trade. Looking only to the four corners of the involved
application, we find that Applicant offers highly complex,
professional services dealing with computerized data storage
systems. The target audience is presumably corporate
executives responsible for information technology, and
information technology professionals comfortable in an
ecosystem of high productivity computing. Whether or not
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one restricts Registrant to a Christian audience, we find
that the only overlap involves executives and IT
professionals who are not likely to believe that the
services of the Applicant and Registrant emanate from the
same source. Accordingly, we believe that this du Pont
factor weighs in favor of finding that there is no
likelihood of confusion.
The conditions under which and buyers to whom sales are
made, i.e. "impulse" vs. careful, sophisticated purchasing.

As seen above, the reality of the marketplace in which
Applicant’s mark is used necessarily frames our analysis.
Only enterprises with highly specialized or complex
computerized data storage systems would need to hire
Applicant or one of its competitors. Given the obvious cost
and complexity of Applicant’s services, the relevant buyer
class of these services is going to be composed of
sophisticated, professional purchasers who make this
contracting decision within their professional capacity.
These decision makers will deliberate and evaluate competing
proposals most carefully. It would require a high degree of
sophistication simply to understand how these components
will fit, if at all, into an enterprise’s IT infrastructure.
We agree with Applicant that the Trademark Examining
Attorney failed to acknowledge appropriately the
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sophistication of the potential purchasers of Applicant’s
services. Hence, this du Pont factor is an important factor
under the relevant legal precedent, and clearly favors the
position of Applicant herein.
Period of contemporaneous use without actual confusion
Finally, we turn to the du Pont factor dealing with the
length of time during and conditions under which there has
been concurrent use without evidence of actual confusion.
Although this is an intent-to-use application, Applicant
argues that coexistence over a period of years provides
strong evidence that confusion is not likely to occur in the
future. As to whether there has been sufficient opportunity
for confusion to occur, the record contains no indication of
the level of sales or advertising by Applicant. The absence
of any instances of actual confusion is a meaningful factor
only where the record indicates that, for a significant
period of time, an Applicant’s sales and advertising
activities have been so appreciable and continuous that, if
confusion were likely to happen, any actual incidents
thereof would be expected to have occurred and would have
come to the attention of one or both of these trademark
owners. Similarly, we have no information concerning the
nature and extent of Registrant’s use, and thus we cannot
tell whether there has been sufficient opportunity for
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confusion to occur, as we have not heard from the Registrant
on this point.
All of these enumerated factors materially reduce the
probative value of Applicant’s argument regarding asserted
lack of actual confusion. Therefore, Applicant’s claim that
no instances of actual confusion have been brought to
Applicant’s attention is not indicative of an absence of a
likelihood of confusion. See Gillette Canada Inc. v. Ranir
Corp., 23 USPQ2d 1768, 1774 (TTAB 1992).
In any event, we are mindful of the fact that the test
under Section 2(d) of the Act is likelihood of confusion,
not actual confusion.
Conclusion: Likelihood of Confusion

In conclusion, the du Pont factors favoring a finding
of likelihood of confusion include the presumption that the
respective services might move through the same channels of
trade, and perhaps, the seeming variety of goods and
services on which Registrant’s mark is used. In reaching
our determination, these factors are outweighed by the
du Pont factors favoring a finding of no likelihood of
confusion, namely, the different connotations and commercial
impressions of the marks, the Trademark Examining Attorney’s
failure to demonstrate the relationship of the services, and
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the relative sophistication of Applicant’s purchasing class.
Neutral factors include whether similar marks are used or
registered for related goods, any indications of an absence
of actual confusion over the past several years, and the
renown of the cited mark.
Decision: The refusal under Section 2(d) of the Lanham
Act is hereby reversed.