Digi International Inc.

Trademark Trial and Appeal Board

Oct 3, 2013

No. 85492960 (T.T.A.B. Oct. 3, 2013)

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Mailed: 10/3/2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Digi International Inc.
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Serial No. 85492960
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Marsha Stolt of Moss & Barnett for Digi International Inc.

Giancarlo Castro, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
_______

Before Quinn, Cataldo and Taylor,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
Digi International Inc. filed, on December 12, 2011, an
intent-to-use application to register the mark ANY APP,
ANYTHING, ANYWHERE (in standard characters) for the following
goods and services:
Computer hardware with embedded computer
software, namely, modules, microprocessors,
single-board computers and satellite
communications products; wireless M2M
(machine-to-machine) device networking
products, namely, wireless range extenders
and peripherals, wireless serial servers,
enterprise routers, VPN concentrators,
routing gateways, gateways, routers,
embedded modules, network adaptors, modems,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
S.N. 85492960

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network routers; computer network
connectivity hardware and computer network
connectivity software, namely, software and
middleware used to allow enterprise software
applications to interface with remote
devices and to allow connectivity, device
management, and memory storage, all via a
computer network; computer hardware, namely,
cellular routers, gateways, wireless
communication adapters, serial servers,
intelligent console servers, electronic
sensors and cameras, all used to monitor and
collect data and transmit it to a host or a
remote computer system, used to provide
alerts in the case of triggering events and
to provide surveillance, and serial cards,
namely, multi-modem communication adapters,
multiport serial adapters, USB hardware to
serial converters, USB expansion hubs, USB
remote access servers, terminal
communication servers, computer printer
servers, network device servers, and network
serial concentrators (in International Class
9);

Computer services, namely, providing
telecommunications access for device
connectivity via computer networks;
providing telecommunications access for
mobile device connectivity by means of a
host platform on the Internet; transmission
of M2M (machine-to-machine) data; wireless
data network services for others, namely,
electronic transmission of data related to
connectivity, device management, and memory
storage via wireless networks (in
International Class 38); and

Providing third-party users with access to
telecommunication infrastructure that
provides application integration with device
networks, client software, web applications
and mobile applications; providing a website
allowing users and enterprise software
applications to interface with, connect to
and manage remote devices and to provide
messaging, management and memory storage
S.N. 85492960

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services; providing temporary use of on-line
non-downloadable software allowing users or
enterprise software applications to
interface with remote devices, to connect to
and manage remote devices; platform-as-a-
service (PaaS) services featuring computer
software platforms that provide application
integration with device networks, client
software, web applications and mobile
applications; design and development of
computer software and middleware for others;
computer network design for others;
consulting with regard to computer systems,
computer network connectivity hardware and
computer network connectivity software and
middleware; computer software services,
namely, development, maintenance, repair,
installation, troubleshooting of problems,
support in the nature of diagnosing
problems, upgrade and updating, authoring,
provision of information, consultation,
design and customization of computer
software and middleware; support services
with regard to computer systems, computer
network connectivity hardware and computer
network connectivity software and
middleware, namely, troubleshooting and
diagnosing of problems; computer services,
namely, providing remote management of
remote devices via computer networks (in
International Class 42).

The trademark examining attorney refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
ground that applicant’s mark, when applied to applicant’s goods
and services, so resembles the previously registered mark ANY
APP ANY DEVICE ANYWHERE (in standard characters) for
“application service provider (ASP), namely, hosting computer
software applications of others; computer co-location services,
namely, providing facilities for the location of computer
S.N. 85492960

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servers with the equipment of others; hosting of digital content
on the Internet; software as a service (SAAS) services, namely,
hosting software for use by others for use in word processing,
e-mail, spreadsheets, databases, and other line of business
applications” (in International Class 42),1 as to be likely to
cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant argues that while the marks include common
elements, there are significant differences between the marks
that are sufficient to distinguish one from the other; according
to applicant, its mark “clearly suggests that the applicant’s
goods and services can be used to access ‘anything’ from
‘anywhere.’ This is very different from the connotation of the
registrant’s mark, which refers specifically to ‘devices.’”
(Brief, p. 9). Applicant also states that there are significant
differences between its goods and services and registrant’s
services, and that they “are related only in that both include
computer software offered via the Internet, albeit for different
purposes.” The difference is that “the focus of the
Registrant’s services is clearly hosting of digital content and
software and document management, whereas the focus of the
Applicant’s business is providing the hardware, platform and

1 Registration No. 4041542, issued October 18, 2011.
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operating software necessary to provide access and connectivity
to remote hardware.” (Brief, p. 13). According to applicant,
the goods and services move in different trade channels, and
purchasers of the respective goods and/or services are likely to
be knowledgeable and discriminating. Also stressed by applicant
is its view that the registered mark is entitled to only a
narrow scope of protection, given its inherent weakness and the
existence of several third-party registrations of similar marks.
In support of its arguments applicant submitted copies of third-
party registrations and applications, and a copy of registrant’s
specimen filed in its underlying application.
The examining attorney maintains that the marks are
similarly constructed, both sharing the same terms at the
beginning (ANY APP) and end (ANYWHERE) of the marks, and that
the middle term in each mark starts with ANY. As to the goods
and/or services, the examining attorney contends that they are
related, and that applicant’s arguments about their
dissimilarity are not supported by any evidence. Insofar as any
weakness of the cited mark is concerned, the examining attorney
is not persuaded by applicant’s evidence.
We will first consider an evidentiary matter raised by
certain attachments to applicant’s brief. The attachments
comprise new evidence not previously made of record, namely the
specimen in the file of the cited registration, and additional
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third-party registrations. Trademark Rule 2.142(d) provides
that the record in the application should be complete prior to
the filing of the appeal, and that the Board will ordinarily not
consider additional evidence filed with the Board after the
appeal is filed. It should be noted, however, that evidence
submitted after appeal may be considered by the Board, despite
its untimeliness, if the nonoffering party (1) does not object
to the new evidence, and (2) discusses the new evidence or
otherwise affirmatively treats it as being of record. See In re
Litehouse Inc., 82 USPQ2d 1471, 1475 n.2 (TTAB 2007). See also
TBMP § 1207.03 (2013). In the present case, the examining
attorney did not object to the new evidence, and also discussed
the new evidence. Accordingly, the Board will consider the new
evidence attached to the appeal brief as if timely made of
record.
Our determination under Section 2(d) is based on an
analysis of all of the 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 between the goods and/or services. See
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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”).
We now direct our attention to the du Pont factor of the
similarity/dissimilarity between the marks. We must compare the
marks in their entireties as to appearance, sound, connotation
and commercial impression to determine the similarity or
dissimilarity between them. Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1690 (Fed. Cir. 2005), quoting In re E. I.
du Pont de Nemours & Co., 177 USPQ at 567. Contrary to the gist
of one of applicant’s remarks, the test, under the first du Pont
factor, is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether the
marks are sufficiently similar in terms of their overall
commercial impression that confusion as to the source of the
goods and/or services offered under the respective marks is
likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
S.N. 85492960

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The marks are identical in terms of alliterative
construction; both begin (ANY APP) and end (ANYWHERE) in
identical terms, with a similar middle term (ANY DEVICE versus
ANYTHING). The difference between the middle terms, ANY DEVICE
and ANYTHING, is clearly outweighed by the similarities between
the marks. The marks in their entireties are very similar in
sound and appearance. The term ANYTHING has a very broad
connotation, and may be construed as encompassing the broad term
ANY DEVICE; thus, any difference in meaning between the marks is
minimal. The clear similarities between applicant’s mark ANY
APP, ANYTHING, ANYWHERE and registrant’s mark ANY APP ANY DEVICE
ANYWHERE result in marks that engender very similar overall
commercial impressions.
The clear similarity between the marks weighs heavily in
favor of a finding of likelihood of confusion.
Applicant’s assertion that both marks “are used in
advertising in conjunction with the owners’ names and other
trademarks” (Brief, p. 9) is irrelevant. Neither the owners’
names nor any other trademarks are shown in the applied-for and
registered marks; the comparison between the marks must be based
upon how they are depicted in the application and the cited
registration. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1688, 1691 n.4 (Fed. Cir. 1993); and Chesebrough-Pond’s Inc. v.
Soulful Days, Inc., 228 USPQ 954, 956 (TTAB 1985).
S.N. 85492960

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We next turn to consider the second du Pont factor
regarding the similarity/dissimilarity between the goods and/or
services. It is well settled that the goods and services of
applicant and the services of registrant need not be identical
or competitive, or even be offered through the same channels of
trade, to support a holding of likelihood of confusion. It is
sufficient that the respective goods and/or services of
applicant and registrant are related in some manner, and/or that
the conditions and activities surrounding the marketing of the
goods and/or services are such that they would or could be
encountered by the same persons under circumstances that could,
because of the similarity of the marks, give rise to the
mistaken belief that they originate from the same source. See
Hilson Research, Inc. v. Society for Human Resource Management,
27 USPQ2d 1423 (TTAB 1993); and In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The issue, of
course, is not whether purchasers would confuse the goods and/or
services, but rather whether there is a likelihood of confusion
as to the source of the goods and/or services. In re Rexel
Inc., 223 USPQ 830 (TTAB 1984).
We make our determination regarding the similarities
between the goods and/or services, channels of trade and classes
of purchasers based on the goods and/or services as they are
identified in the application and cited registration,
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respectively. See Octocom Systems Inc. v. Houston Computers
Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990). It is sufficient if likelihood of confusion is found
with respect to use of the mark on any item that comes within
the identification of goods in each class in an application or
registration. Tuxedo Monopoly, Inc. v. General Mills Fun Group,
648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); and Rocket
Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1073 (TTAB
2011) (“Inasmuch as opposer has opposed all three classes of
goods in the subject application, we address the similarity of
goods for each class, keeping in mind that a likelihood of
confusion may be found with respect to a particular class based
on any item within the identification of goods for that
class.”). Neither applicant nor the examining attorney
submitted any evidence bearing on the relatedness of the goods
and/or services.
Registrant’s recitation of services is broadly worded, and
includes services such as “hosting software applications of
others,” and “hosting of digital content on the Internet.”
Applicant is seeking registration of its mark for computer-
related goods and services, including the following: “computer
network connectivity software, namely, software and middleware
used to allow enterprise software applications to interface with
remote devices and to allow connectivity, device management, and
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memory storage, all via a computer network” (in Class 9);
“providing telecommunications access for mobile device
connectivity by means of a host platform on the Internet;
electronic transmission of data related to connectivity, device
management, and memory storage via wireless networks” (in Class
38); and “providing a website allowing users and enterprise
software applications to interface with, connect to and manage
remote devices and to provide messaging, management and memory
storage services; providing temporary use of on-line non-
downloadable software allowing users or enterprise software
applications to interface with remote devices, to connect to and
manage remote devices” (in Class 42).
The recited computer goods and/or services may have
specifically different applications, but, when offered under the
highly similar marks ANY APP, ANYTHING, ANYWHERE and ANY APP ANY
DEVICE ANYWHERE, the goods and/or services are sufficiently
related for purposes of the likelihood of confusion analysis.
That is to say, registrant’s broadly worded recitation of
services of “hosting computer software applications of others”
is not limited and, thus, the services may include the hosting
of software applications of the same or similar type as
applicant’s software in Class 9, namely computer network
connectivity software. It is well recognized that confusion may
be likely to occur from the use of the same or similar marks for
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goods, on the one hand, and for services involving those goods,
on the other. See, e.g., In re Hyper Shoppes (Ohio), Inc., 837
F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); and Steelcase Inc. v.
Steelcare Inc., 219 USPQ 433 (TTAB 1983).
Further, the hosting services for such software would be,
at the very least, related to applicant’s services in Class 38
that involve providing telecommunications access for mobile
device connectivity by means of a host platform on the Internet;
and in Class 42 involving applicant’s offer of access to
software on a website.
The similarity between the goods and/or services weighs in
favor of a finding of likelihood of confusion. Due to this
similarity, the goods and/or services are likely to move through
similar trade channels to similar classes of purchasers,
including end users. In addition, there is nothing in the
recitations of goods and services to suggest that such goods and
services move in separate or distinct trade channels.
Applicant next contends that the computer goods and/or
services are bought by knowledgeable and discriminating
purchasers, as indicated by the sophisticated nature of the
goods and services. It should be noted that applicant did not
introduce any evidence on this point. However, even assuming
that a careful selection is involved, it is settled that even
sophisticated purchasers are not immune from source confusion,
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especially in cases such as the instant one involving very
similar marks and related goods and/or services. See In re
Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed.
Cir. 1986), citing Carlisle Chemical Works, Inc. v. Hardman &
Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)
(“Human memories even of discriminating purchasers...are not
infallible.”). See also In re Decombe, 9 USPQ2d 1812 (TTAB
1988). We find that the similarity between the marks and the
relationship between the goods and/or services sold thereunder
outweigh any presumed sophisticated purchasing decision. See
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).
We appreciate applicant’s argument that the cited mark is
inherently weak. Weak designations may be entitled to a
narrower scope of protection than an entirely arbitrary or
coined word. Indeed, both marks are suggestive, but, as noted
above, the suggestions conveyed by the marks are virtually
identical. Moreover, even a weak mark is entitled to protection
against the registration of a similar mark for related goods
and/or services. See King Candy Co. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974).
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In its attempt to show that the cited mark is weak,
applicant submitted several third-party registrations of marks
that include the terms “any app” or “any device,” most of which
are not currently subsisting. This evidence does not prove that
the cited mark is a weak mark in the computer software industry.
Absent evidence of actual use, third-party registrations have
little probative value because they are not evidence that the
marks are in use on a commercial scale or that the public has
become familiar with them. Smith Bros. Mfg. Co. v. Stone Mfg.
Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the purchasing
public is not aware of registrations reposing in the U.S. Patent
and Trademark Office); and Productos Lacteos Tocumbo S.A. de
C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB
2011). See also Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d
200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992) (“As to strength of a
mark, however, registration evidence may not be given any
weight.”). Likewise, the third-party applications are not
probative. In re Brown-Forman Corp., 81 USPQ2d 1284, 1286 n.3
(TTAB 2006) (expired or cancelled registrations are evidence
only of the fact that the registrations issued); and Glamorene
Prods. Corp. v. Earl Grissmer Co., Inc., 203 USPQ 1090, 1092 n.5
(TTAB 1979) (applications are evidence only of the fact that the
applications were filed and nothing else). Accordingly, this du
Pont factor is neutral.
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We conclude that the similarity between applicant’s mark
ANY APP, ANYTHING, ANYWHERE and registrant’s mark ANY APP ANY
DEVICE ANYWHERE, coupled with the relatedness of the computer
goods and services offered under the respective marks, mandates
a conclusion that confusion is likely to occur.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6
USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.