Datum360 Limited

Trademark Trial and Appeal Board

Jun 2, 2015

No. 85883499 (T.T.A.B. Jun. 2, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 2, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Datum360 Limited
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Serial No. 85883499
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JungJin Lee and Erin C. Bray of Lee, Lee & Associates, P.C. for Datum360 Limited.

Zachary R. Sparer, Trademark Examining Attorney, Law Office 115, John Lincoski,
Managing Attorney.
_____

Before Seeherman, Taylor and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Datum360 Limited (“Applicant”) seeks registration of the mark
CLS360, in standard characters, for “Computer software development in the field of
oil and gas industry information management” in International Class 42.1 The
Examining Attorney refused registration under Section 2(d) of the Trademark Act,

1 Application Serial No. 85883499, filed March 22, 2013 under Sections 44(e) of the
Trademark Act, 15 U.S.C. § 1126(e) (claiming priority based on Section 44(d) of the Act
based on United Kingdom Registration No. 2651702) and 1(a) of the Act (based on first use
dates of February 26, 2012).
Serial No. 85883499
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15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the following
marks registered to different owners in International Class 42:
CLS in typed form for “language translation, language
interpretation, typesetting, computer software consulting,
and providing language translation and interpretation at
conferences;”2 and

for, among other services, “computer
programming; development of software programs; rental
and design of computer programs; information technology
consultancy services; updating of computer software; and
rental of computer software.”3

that use of Applicant’s mark in connection with Applicant’s services is likely to
cause confusion or mistake or to deceive. After the refusals became final, Applicant
appealed and filed a motion for reconsideration which was denied. Applicant and
the Examining Attorney filed briefs.
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative
facts in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities

2 Registration No. 2481272 (the “’272 Registration”), issued August 28, 2001; Section 8
Affidavit accepted and Section 15 Affidavit acknowledged; renewed.
3 Registration No. 2892651 (the “’651 Registration”), issued October 12, 2004; Section 8
Affidavit accepted and Section 15 Affidavit acknowledged. This registration also includes
services in International Classes 36 and 38.
Serial No. 85883499
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between the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d)
goes to the cumulative effect of differences in the essential characteristics of the
goods and differences in the marks.”).
Turning first to the marks, we must compare them “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). That is, we may
not dissect the marks into their various components. In re Nat’l Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v.
Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981).
The marks are quite similar, as Applicant’s mark incorporates and begins
with the entirety of the cited marks. See, Coca-Cola Bottling Co. v. Jos. E. Seagram
& Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL and
BENGAL LANCER & Design for related goods are confusingly similar);
International Paper Co. v. Valley Paper Co., 468 F.2d 937, 175 USPQ 704 (CCPA
1972) (DATA for “writing, typewriter and printing paper” confusingly similar to
DATA-SPEED for “paper sold in bulk rolls or bulk reams for conversion only into
business forms”); In re Fiesta Palms LLC, 85 USPQ2d 1360 (TTAB 2007) (CLUB
PALMS MVP for casino services confusingly similar to MVP for casino services
offered to preferred customers identified by special identification cards); In re Rexel
Inc., 223 USPQ 830, 832 (TTAB 1984) (“we are firmly of the opinion that purchasers
Serial No. 85883499
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who encounter applicant’s ‘LITTLE GOLIATH’ stapler kits and registrant’s
‘GOLIATH’ large diameter woodcased pencils are likely to believe … that both
products emanate from or are in some way associated with the same source”);
Johnson Publishing Co. v. International Development Ltd., 221 USPQ 155 (TTAB
1982) (EBONY for cosmetics confusingly similar to EBONY DRUM for hairdressing
and conditioner). While Applicant’s mark ends with the number “360,” which is
absent from the cited marks, consumers could perceive CLS360 as a modified
version of one of the cited marks, perhaps to indicate that Applicant’s service is a
new offering from the owner of one of the cited registrations. See generally, Nabisco
Brands, Inc. v. Kaye, 760 F.Supp. 25, 19 USPQ2d 1465, 1466 (D. Conn. 1991)
(finding A.1 and A.2 likely to be confused in part because “the use of the numeral ‘2’
as opposed to the numeral ‘1’ rather than differentiate the product, in fact,
increases the likelihood that consumers will believe that the defendant’s product is
simply a variation on the basic ‘A.1.’ sauce or a line extension which emanates from,
or is authorized by or otherwise affiliated with the same source as the ‘A.1.’
product”). Furthermore, Applicant argues that “360” not only alludes to its trade
name Datum360, but also “references the Applicant’s philosophy ‘to provide a 360
degree, all around perspective.’” 7 TTABVue 124 (Applicant’s Appeal Brief). To the
extent that “360” describes or suggests Applicant’s “all around perspective,” it is
weak and entitled to less weight in our analysis than CLS. See, Cunningham v.

4 Citations to the briefs first reference the TTABVue docket entry number, followed by the
electronic page number where the cited passage appears. TTABVue is the Board’s electronic
docketing system.
Serial No. 85883499
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Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“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.’”);
In re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261, 1268 (TTAB 2011) (“because of the
laudatory suggestive nature of the crown design and the carrier nature of the ovals,
the absence of these elements from applicant’s mark and/or presence of them in the
cited marks are not sufficient to distinguish the marks”). And while the ’651
Registration is for the mark CLS presented in a particular stylized format, that
does not help Applicant in this case, because Applicant seeks registration of its
mark in standard character format, meaning it could display its CLS360 mark in a
manner very similar or even identical to the stylized format in which the mark in
the ’651 Registration is displayed. See, e.g., In re Viterra Inc., 671 F.3d 1358, 101,
USPQ2d 1905, 1909 (Fed. Cir. 2012), and cases cited therein.
Applicant argues that CLS in its mark “is an acronym used for the unique
‘class library solution’ feature in its Engineering Information Management
software,” while CLS in the ’272 Registration “is an acronym for ‘Corporate
Language Service,” and CLS in the ’651 Registration “is ambiguous in relation to
Registrant’s services.” 7 TTABVue 12 (Applicant’s Appeal Brief). However, there is
no evidence that consumers will understand the meaning Applicant or either
registrant allegedly intend the acronym or letters to convey (or even that they will
perceive the marks as acronyms). Nor is there evidence that consumers would
necessarily be exposed to literature or other explanatory material sufficient to
Serial No. 85883499
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understand any differences between the meanings of Applicant’s and registrants’
CLS marks.
In its brief, National suggests that the fact that the two
parties intended their marks be recognized as having
these different significances is relevant to an evaluation of
how the marks actually will be construed in the
marketplace. We disagree with this conclusion. It has long
been held that in the absence of evidence establishing
that purchasers would be aware of the term or terms from
which the marks were derived, how the marks came to be
adopted is immaterial to the issue whether confusion is
likely from their contemporaneous use … In the case
before us there is no direct evidence concerning whether
purchasers would be likely to understand the marks’
different derivations. Clearly the mere intention of the
parties to convey the marks’ derivation is meaningless.

Hercules Inc. v. National Starch and Chemical Corp., 223 USPQ 1244, 1248 (TTAB
1984) (citations omitted); see also Aerojet-General Corp. v. Computer Learning and
Systems Corp., 170 USPQ 358, 362 (TTAB 1971) (“applicant’s mark and the
prominent and most significant feature of opposer’s mark, whether spelled ‘CASE’
or ‘C.A.S.E.’, are for purposes herein identical – the fact that both are acronyms
derived from different words is of no particular significance (the average person
would not be aware of the derivation)”).
In short, Applicant’s mark is similar to both of the cited marks in appearance
and sound, and there is no evidence that Applicant’s mark will convey a different
meaning than either of the cited marks. This factor therefore weighs in favor of a
finding of likelihood of confusion.
Turning to the services and channels of trade, they need not be identical or
even competitive in order to support a finding of likelihood of confusion. It is enough
Serial No. 85883499
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that the services are related in some manner or that the circumstances surrounding
their marketing are such that they would be likely to be seen by the same persons
under circumstances which could give rise, because of the marks used, to a
mistaken belief that Applicant’s and registrants’ services originate from or are in
some way associated with the same source or that there is an association between
the sources of the services. Hilson Research, Inc. v. Society for Human Resource
Management, 27 USPQ2d 1423, 1432 (TTAB 1993); In re Melville Corp., 18 USPQ2d
1386, 1388 (TTAB 1991); In re International Telephone & Telegraph Corp., 197
USPQ 910, 911 (TTAB 1978).
Here, both of the cited registrations include quite broad identifications of
computer-related services – “computer software consulting” in the ’272 Registration
and “computer programming” and “development of software programs” in the ’651
Registration. The “computer programming” and “development of software
programs” identified in the ’651 Registration are broad enough to encompass
Applicant’s identified “computer software development in the field of oil and gas
industry information management.” In other words, the services identified in the
’651 Registration are legally identical to Applicant’s services. When, as here,
services are in part legally identical, we must presume that the channels of trade
and classes of purchasers for those services are also the same. See In re Viterra Inc.,
101 USPQ2d at 1908 (even though there was no evidence regarding channels of
trade and classes of consumers, the Board was entitled to rely on this legal
presumption in determining likelihood of confusion); In re Yawata Iron & Steel Co.,
Serial No. 85883499
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403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical
goods, the channels of trade and classes of purchasers are considered to be the
same); American Lebanese Syrian Associated Charities Inc. v. Child Health
Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). Therefore, with respect to
the ’651 Registration, the du Pont factors regarding the services and channels of
trade weigh heavily in favor of a finding of likelihood of confusion.
With respect to the ’272 Registration, the identification of “computer software
consulting” services is broad enough to encompass consulting about computer
software in the field of oil and gas industry information management. Moreover,
computer software consulting services and computer software development services
may in many cases be complementary, and thus related, because a party requiring
software development may simultaneously require associated consulting services, or
vice versa. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ
1289, 1290 (Fed. Cir. 1984); General Mills, Inc. v. Fage Dairy Processing Industry
SA, 100 USPQ2d 1584, 1597-98 (TTAB 2011), judgment set aside on other grounds,
110 USPQ2d 1679 (TTAB 2014); In re Toshiba Medical Systems Corp., 91 USPQ2d
1266, 1272 (TTAB 2009).
Furthermore, the Examining Attorney has introduced evidence that
computer software consulting services and computer software development services
are offered by the same sources under the same mark, further supporting the
finding of a relationship. Specifically, the Examining Attorney has made of record
Serial No. 85883499
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15 third-party use-based registrations showing that a single mark has been
registered for both types of services, including the following:
ANCILE SOLUTIONS & Design (Reg. No. 4422244) is
registered for “computer software consulting” on the one
hand and “custom computer software development” on the
other.

NITOR BRILLIANCE @ WORK & Design (Reg. No.
4317541) is registered for “computer software consulting”
on the one hand and “custom design and development of
computer software” on the other.

TECHFLOW in standard characters (Reg. No. 4300038) is
registered for “computer consulting services focused on e-
business solutions, namely, computer software consulting
and computer software development.”

ACE FACTORY in standard characters (Reg. No.
4433375) is registered for “computer software consulting
services” on the one hand and “computer software
development and updating services” on the other.

5 SPIRE & Design (Reg. No. 4442315) is registered for
“computer software consulting” on the one hand and
“computer software development” on the other.

Office Action of February 11, 2014. “Third-party registrations which cover a number
of differing goods and/or services, and which are based on use in commerce,
although not evidence that the marks shown therein are in use on a commercial
scale or that the public is familiar with them, may nevertheless have some
probative value to the extent that they may serve to suggest that such goods or
services are of a type which may emanate from a single source.” See, In re Mucky
Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1998); see also In re Davey
Prods. Pty. Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009).
Serial No. 85883499
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Accordingly, we find that the du Pont factors of the similarity of the services
and classes of consumers weigh in favor of a finding of likelihood of confusion with
respect to the ’272 Registration.
Applicant’s evidence that the owner of the ’651 Registration provides its
software development and other services to large sophisticated banks in connection
with complicated foreign financial transactions, and that the owner of the ’272
Registration provides its computer consulting services in connection with language
translation services is simply irrelevant. We are bound by registrants’
identifications and we simply cannot limit the services, channels of trade or classes
of customers to what Applicant’s evidence shows them to be. In re Bercut-
Vandervoort & Co., 229 USPQ 763, 764-65 (TTAB 1986) (“It is well settled that in a
proceeding such as this, the question of likelihood of confusion must be determined
by an analysis of the marks as applied to the goods identified in the application vis-
à-vis the goods recited in the registration, rather than what extrinsic evidence
shows those goods to be.”); see also, Tuxedo Monopoly, Inc. v. General Mills Fun
Group, Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re Thor Tech Inc.,
90 USPQ2d 1634, 1637-38 (TTAB 2009) (“we must also analyze the similarity or
dissimilarity and nature of the goods based on the description of the goods set forth
in the application and the registration at issue … we may not limit or restrict the
trailers listed in the cited registration based on extrinsic evidence”).5

5 Applicant’s reliance on In re Trackmobile Inc., 15 USPQ2d 1152 (TTAB 1990) in support
of its attempt to rely on extrinsic evidence concerning registrants’ services is misplaced.
While registrants’ identifications of “computer software consulting” and software
development services are broad, they are neither “unclear” nor technical, and Applicant has
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Applicant argues, without supporting evidence, that the relevant consumers
are sophisticated and will exercise care in purchasing Applicant’s and registrants’
services, thus reducing the likelihood of confusion. Although we accept that
consumers of software development services in the oil and gas industry and
computer software consulting services are sophisticated, it is settled that even
sophisticated purchasers are not immune from source confusion. This is especially
true where, as here, they are faced with highly similar marks. See, In re Research
Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986); Carlisle Chem.
Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA
1970); In re Decombe, 9 USPQ2d 1812, 1814-15 (TTAB 1988); see also, HRL
Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss
Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir.
1990) (similarities of goods and marks outweigh sophisticated purchasers, careful
purchasing decision, and expensive goods). In short, even assuming that this factor
weighs against a finding of likelihood of confusion, it is outweighed by the
similarities between the involved and cited marks, the relatedness (or legal
identity) of the services and the overlapping classes of consumers.
Finally, Applicant relies on the written consent of the owner of the ’651
Registration to registration of Applicant’s mark. “It need hardly be said that, in
appropriate circumstances, consent agreements are entitled to substantial weight in
determining likelihood of confusion, to the extent that the presence of a consent

not shown that they have any particular meaning within a particular field. We do not
require extrinsic evidence to understand either registrant’s identification.
Serial No. 85883499
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agreement may be the predominant factor in such a determination.” In re Donnay
International, Societe Anonyme, 31 USPQ2d 1953, 1955 (TTAB 1994). See also,
Bongrain Int’l (Am.) Corp. v. Delice De France, Inc., 811 F.2d 1479, 1 USPQ2d 1775
(Fed. Cir. 1987); In re E.I. DuPont, 177 USPQ at 563.
In this case, however, the consent “agreement” is unpersuasive. The entirety
of the consent is: “As the owner of U.S. Trade Mark Registration No. 2892651 for
CLS (Stylised), we hereby consent to the use and registration of CLS 360 by
[Applicant] in Class 42 in respect of the following services: Class 42 computer
software development in the field of oil and gas industry information management.”
Request for Reconsideration August 8, 2014. This consent is even less detailed and
substantive than the consent at issue in In re Mastic Inc., 829 F.2d 1114, 4 USPQ2d
1292 (Fed. Cir. 1987). There, our primary reviewing court explained:
The consent does not evidence a bilateral “agreement.” It
is simply a statement signed on behalf of [the owner of the
cited registration]. Whatever agreement – if any – may
exist between the parties with respect to trade channels,
for example, has not been disclosed. Thus the consent
here is a “naked” consent. There are no undertakings of
record between the parties which enter into the likelihood
of confusion determination, and the board did not err in
giving that characterization to the consent … The consent
is conspicuously silent on what are the underlying facts
which led the parties to their conclusion of no likelihood of
confusion.

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Id. at 1295. Here, as in Mastic, the consent by the owner of the ’651 Registration is
“naked” and we find it is outweighed by the similarities between the marks, services
and classes of customers.6
There is no relevant evidence or argument concerning the remaining
likelihood of confusion factors, and we therefore treat them as neutral.
Conclusion
We acknowledge Applicant’s frustration that one of the cited marks is
apparently used primarily for software development services related to complicated
foreign financial transactions, while the other is apparently used for computer
consulting services in connection with language translation services. However, as
we stated in In re Cook Medical Technologies LLC, 105 USPQ2d 1377, 1384 (TTAB
2012), we must “decide this ex parte appeal based on the information on the face of
the cited registration[s]; we do not read in limitations.” As we also stated in Cook
Medical Technologies, Applicant had options available to it, including obtaining
more detailed and substantive consent agreements from the owners of the cited
registrations or restricting the services identified in those registrations:

6 In Mastic, the Federal Circuit pointed out that the involved application was “based solely
upon treaty rights, not upon use in United States commerce,” 4 USPQ2d at 1295, calling
into question the extent to which the registrant’s consent was carefully considered. Here, by
contrast, Applicant claims use of its mark in United States commerce. We nevertheless find
that Mastic is applicable here, because the consent from the owner of the ’651 Registration
is completely naked, and therefore, like the consent at issue in Mastic, it “appears simply to
be an arrangement between the parties with no regard to whether it reflects the realities of
no likelihood of confusion if and when both marks are concurrently used in United States
commerce.” Id. at 1296.

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applicant was not without possible remedies here,
including seeking a consent from the owner of the cited
registration, or seeking a restriction of the registration
under Section 18 of the Trademark Act, 15 U.S.C. § 1068.
Although we are sympathetic to applicant's concerns
about the scope of protection being given to the cited
registration, applicant did not avail itself of the remedy
afforded by Section 18 that gives the Board the equitable
power to cancel registrations in whole or in part, or to
“otherwise restrict or rectify…the registration of a
registered mark.” See Trademark Rule 2.133(b). See also
TBMP § 309.03(d) and cases cited therein. A party in
applicant's position can file a petition for cancellation of
the cited registration, requesting a restriction or
modification of registrant's description of its mark on the
basis that the description is “ambiguous or overly broad
and not specific to the mark actually used” in the
marketplace. … Such a claim can be used to modify overly
broad identification of goods (for example, “computer
programs”). See IdeasOne Inc. v. Nationwide Better
Health Inc., 89 USPQ2d 1952, 1954-55 (TTAB 2009),
citing In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB
2000).

Id. at 1384.
In any event, after considering all of the evidence of record as it pertains to
the relevant du Pont factors, including all of Applicant’s arguments and evidence,
even if not specifically discussed herein, we find that confusion is likely because the
marks are similar, the services in the case of the ’651 Registration are legally
identical and in the case of the ’272 Registration related, and the classes of
consumers overlap.
Decision: The refusal to register Applicant’s mark based on each of the cited
registrations under Section 2(d) of the Act is affirmed.