Digi International Inc.

Trademark Trial and Appeal Board

Mar 9, 2018

No. 87070837 (T.T.A.B. Mar. 9, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 9, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Digi Int’l Inc.
_____

Serial No. 87070837
_____

Christina M. Licursi, of Wolf Greenfield & Sacks PC,
for Digi International Inc.

Jean H. Im, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
_____

Before Lykos, Masiello, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
Digi International Inc. (“Applicant”), successor-in-interest by assignment to the
original applicant, Schechter Tech LLC,1 seeks registration on the Principal Register
of the mark shown below for “Remote monitoring of environmental sensors and
controls, namely, temperature sensors and control, to improve operational efficiency,
compliance, and quality; Analysis of data from temperature sensors and controls for

1 Schechter Tech LLC assigned the application to Digi International Inc. through an
assignment that was recorded in the USPTO Assignment Recordation Branch under
Reel/Frame 6201/0150 following the filing of Applicant’s appeal brief.
Serial No. 87070837
- 2 -

operational efficiency, compliance, and quality control; Custom design of
environmental temperature monitoring sensors and systems,” in International Class
42.2

The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark so resembles the mark TEMP ALERT in standard characters shown
in Registration No. 1475654 for “temperature sensors,” in International Class 9,3 as
to be likely, when used in connection with Applicant’s services, to cause confusion, to
cause mistake, or to deceive.
After the Examining Attorney made the refusal final, Applicant appealed and
requested reconsideration, 6 TTABVUE, which was denied. 4-5 TTABVUE. Applicant
and the Examining Attorney have filed briefs. We affirm the refusal to register.
I. Record on Appeal
The record on appeal consists of:

2 Application Serial No. 87070837 was filed on June 14, 2016 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), on the basis of Applicant’s allegation of a bona fide
intention to use the mark in commerce. Applicant originally described its services as “Remote
monitoring of environmental sensors and controls to improve operational efficiency,
compliance, and quality; Data analytics for operational efficiency, compliance, and quality
control; Custom manufacturing and design of environmental monitoring sensors and
systems,” but amended them during prosecution. The mark is described as “consist[ing] of
the word ‘TEMPALERT’ with a shield logo above the letter ‘A.’” Applicant has disclaimed the
exclusive right to use TEMPALERT apart from the mark as shown.
3 The cited registration issued on February 9, 1988 and was last renewed in February 2018.
Serial No. 87070837
- 3 -

1. A definition of “temp” from the AMERICAN HERITAGE DICTIONARY
(ahdictionary.com);4
2. A definition of “alert” from the AMERICAN HERITAGE DICTIONARY
(ahdictionary.com);5
3. Pages from Applicant’s website at tempalert.com;6
4. Third-party registrations of marks that the Examining Attorney claims
cover both goods and services identical or similar to those at issue in this
appeal;7 and
5. Webpages reflecting the offering of temperature measurement products
and related services under the same mark.8
Applicant submitted no evidence.
II. Likelihood of Confusion Refusal
Section 2(d) of the Trademark Act prohibits the registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). Our determination of likelihood of confusion under § 2(d) is based upon an
analysis of all probative facts in the record that are relevant to the likelihood of
confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177

4 July 18, 2016 Office Action at 3-5.
5 Id. at 6-8.
6 Id. at 9-16.
7 February 13, 2017 Office Action at 2-53,
8 Id. at 54-72; August 31, 2017 Denial of Request for Reconsideration at 2-25 (4 TTABVUE
2-10; 5 TTABVUE 5-19).
Serial No. 87070837
- 4 -

USPQ 563, 567 (CCPA 1973). We consider each du Pont factor that is relevant and
for which there is record evidence. See, e.g., M2 Software, Inc. v. M2 Commc’ns, Inc.,
450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA
Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015). Two key factors in every Section
2(d) case are the similarity of the marks and the similarity of the goods or services
because 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.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ
24, 29 (CCPA 1976). These factors and others are discussed below.
A. Similarity of the Marks
This du Pont factor focuses on “‘the similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and commercial impression.’” Palm
Bay Imps. Inc. v. Veuve Cliquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting duPont, 177 USPQ at 567).
“Similarity in any one of these elements may be sufficient to find the marks
confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re
White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)). “The proper test is not a side-
by-side comparison of the marks, but instead whether the marks are sufficiently
similar in terms of their commercial impression such that persons who encounter the
marks would be likely to assume a connection between the parties.” Coach Servs. Inc.
v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012).
Serial No. 87070837
- 5 -

Applicant’s mark is reproduced again below for ease of reference in following our
analysis:

The cited mark is TEMP ALERT in standard characters.
“[L]ikelihood of confusion cannot be predicated on dissection of a mark, that is, on
only part of a mark,” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985), but “in articulating reasons for reaching a conclusion on the issue of
confusion, there is nothing improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark, provided the ultimate
conclusion rests on consideration of the marks in their entireties.” Id. In the case of
Applicant’s composite mark containing both words and a design, “‘the verbal portion
of the mark is the one most likely to indicate the origin of the goods to which it is
affixed.’” In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d, 1905, 1908 (Fed. Cir. 2012)
(quoting CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983)).
“[T]he verbal portion of a word and design mark likely will be the dominant portion.”
Id. at 1911.
Applicant does not dispute that the word portion of its composite mark is its
primary source-identifying portion. Instead, Applicant argues that the two marks
have different dominant portions. Applicant argues that “consumers encountering
Registrant’s TEMP ALERT mark will likely perceive the separate, abbreviated, and
Serial No. 87070837
- 6 -

initial term ‘TEMP’ as the dominant portion,” 8 TTABVUE 13, but Applicant’s
“unique stylization of its logo displays its mark as the word ALERT in bold lettering”
and its “shield design seems to point to the letter A in ALERT, causing the eye of the
consumer to focus on that word and ensuring that ALERT is the dominant portion of
the mark.” 8 TTABVUE 13.
Both marks are read and spoken as TEMP ALERT. Even if the bolding of the word
ALERT and the placement of the letter A in ALERT under the shield design “caus[e]
the eye of the consumer to focus on that word,” as Applicant claims, 8 TTABVUE 13,
that is insufficient to distinguish the marks.9 The cited mark is a standard character
mark, which “is not limited to any particular font, size, style, or color . . . .” Viterra,
101 USPQ2d at 1909. We thus must assume that the cited mark TEMP ALERT could
be displayed in the same manner as the words TEMPALERT in Applicant’s mark,
with TEMP in thinner lettering than ALERT, and with ALERT bolded. See Anheuser-
Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1823 (TTAB 2015) (a
standard character mark “could be used in any typeface, color, or size, including the
same stylization actually used . . . by the other party, or one that minimizes the
differences or emphasizes the similarities between the marks.”) (citing Citigroup Inc.
v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1258-59 (Fed. Cir.
2011)); see also Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir.
1983). The dominant verbal portion of Applicant’s composite mark, TEMPALERT,

9 The shield design is much less prominent than the words and, in any event, it enhances the
literal meaning of the words as providing protection to the user of the services.
Serial No. 87070837
- 7 -

consists of the entirety of the cited mark TEMP ALERT (lacking only the space), and
we find that the marks are very similar in appearance, and are identical in sound
when they are verbalized.
With respect to connotation and commercial impression, both marks begin with
the word TEMP, which in the context of the relevant goods and services is an
abbreviation for “temperature,” AMERICAN HERITAGE DICTIONARY
(ahdictionary.com),10 and in both marks TEMP is used as an adjective to modify the
noun ALERT, which means a “signal that warns of attack or danger.” AMERICAN
HERITAGE DICTIONARY (ahdictionary.com).11 Both marks have the identical
connotation of a signal or notification regarding temperature as applied to the
identified goods and services.
The marks are identical in sound, connotation, and commercial impression, and
very similar in appearance. This duPont factor supports a finding of a likelihood of
confusion.
B. Similarity of the Goods and Services
This du Pont factor concerns the “similarity or dissimilarity and nature of the
goods or services as described in an application or registration . . . .” Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1159
(Fed. Cir. 2014). The analysis of this factor is premised on the identifications of goods
or services in the application and the cited registration. Id. at 1161-63; Octocom Sys.,

10 July 16, 2016 Office Action at 3.
11 Id. at 7.
Serial No. 87070837
- 8 -

Inc. v. Houston Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990). Relatedness may be shown on the basis of those identifications alone, without
resort to extrinsic evidence. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d
1261, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002).
“[L]ikelihood of confusion can be found ‘if the respective products [and services]
are related in some manner and/or if the circumstances surrounding their marketing
are such that they could give rise to the mistaken belief that they emanate from the
same source.’” Coach Servs. 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler,
83 USPQ2d 1715, 1724 (TTAB 2007)). It is well-established that goods can be related
to services, particularly where the services involve the goods in some manner. See,
e.g., Hewlett-Packard, 62 USPQ2d at 1004-05.
The services identified in Applicant’s application are:
• Remote monitoring of environmental sensors and controls, namely,
temperature sensors and control, to improve operational efficiency,
compliance, and quality;
• Analysis of data from temperature sensors and controls for operational
efficiency, compliance, and quality control; and
• Custom design of environmental temperature monitoring sensors and
systems.
Serial No. 87070837
- 9 -

Each of Applicant’s International Class 42 services involves “temperature sensors,”12
which are the goods identified in the cited registration.
Applicant acknowledges that “[i]t is true that Applicant’s services relate to
temperature sensors in a broad sense,” 8 TTABVUE 9, but argues that the
“Examining Attorney has provided no persuasive evidence establishing a real
commercial relationship between Registrant’s ‘temperature sensors’ and Applicant’s
services, specifically, the custom design of temperature monitoring sensors/systems
and remote monitoring and analysis of temperature data.” 8 TTABVUE 8. With
respect to the “temperature sensors” identified in the cited registration, Applicant
argues that “there is no indication that these sensors require or allow for data
analysis or remote monitoring, let alone data analysis and remote monitoring for the
purpose of improving operational efficiency, ensuring compliance, and controlling
quality.” 8 TTABVUE 9. Applicant claims that “there is no evidence to support the
Examining Attorney’s conclusion that Registrant’s identification of goods would cover
sensors that allow data analysis and remote monitoring” or “that the term
‘temperature sensors’ in the Cited Registration would be understood to encompass
custom-designed temperature-sensing systems.” 8 TTABVUE 10.
Applicant’s arguments are unavailing. Because there are no limitations or
restrictions on the “temperature sensors” identified in the cited registration, “they
are deemed to encompass ‘all the goods of the nature and type described therein.’” In

12 The refusal to register may be affirmed as to the entire class if there is likely to be confusion
with respect to any service that comes within the recitation of services in that class. Tuxedo
Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1325, 209 USPQ 986, 988 (CCPA 1981).
Serial No. 87070837
- 10 -

re Solid State Design Inc., 125 USPQ2d 1409, 1413 (TTAB 2018) (quoting In re Jump
Designs LLC, 80 USPQ2d 1370, 374 (TTAB 2006)).13 They thus encompass
temperature sensors that “require or allow for data analysis or remote monitoring,”
8 TTABVUE 9, including the types that are monitored, analyzed, or designed by
Applicant “to improve operational efficiency, compliance, and quality,” such as the
“wireless” and “plug-and-play” sensors referred to on Applicant’s website. July 18,
2016 Office Action at 12-13.
The relatedness of the goods and services is demonstrated by the Examining
Attorney’s evidence from Applicant’s website, third-party websites, and third-party
registrations. Applicant itself provides temperature sensors in the course of
rendering its services. Applicant’s website describes Applicant’s services as involving
“Plug-and-play sensors, seamless reporting, and next-generation analytics,” refers to
the deployment of “wireless sensors,” and lists locations where “our devices” are used:

13 Elsewhere in its brief, Applicant argues that “the product instructions submitted as
Registrant’s Specimen of Use show that Registrant’s products are basic analog and digital
temperature monitoring devices that provide a narrow, separate function . . . .” 8 TTABVUE
14. The registrant’s specimen is not in the record, but even if it were, and it showed the
registrant’s temperature sensors to be as Applicant describes them, Applicant “may not
restrict the scope of the goods covered in the cited registration by argument or extrinsic
evidence.” In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008).
Serial No. 87070837
- 11 -

July 18, 2016 Office Action at 9, 12-13.
The Examining Attorney also made of record pages from third-party websites
showing that temperature sensors, and services analyzing and monitoring the
information provided by the sensors, are offered under the same mark. February 13,
2017 Office Action at 54-72; August 31, 2017 Denial of Request for Reconsideration
at 2-25.14 An example is set forth below.

14 Applicant acknowledges that this evidence comprises “screenshots from companies that
offer both temperature sensors and also monitoring, analysis, and diagnostic services,” 8
TTABVUE 11-12, but argues that “it is not clear that the entities operating those websites
offer goods and render services in the United States” and that “this meager website evidence
merits minimal probative value, if any.” 8 TTABVUE 10. We have reviewed the websites and
all of them reflect the offering of goods and services to consumers in the United States, even
if some of the site owners are located elsewhere. We also find that their quantity is more than
sufficient in the context of the record as a whole.
Serial No. 87070837
- 12 -

February 13, 2017 Denial of Request for Reconsideration at 63-64.15 This evidence is
probative of the relatedness of the goods and services. See, e.g., In re C.H. Hanson
Co., 115 USPQ2d 1351, 1355-56 (TTAB 2015); In re Davey Prods. Pty Ltd., 92
USPQ2d 1198, 1203 (TTAB 2009).
Finally, the Examining Attorney made of record what she describes as “[e]ighteen
third-party registrations for use in connection with the same and/or similar goods and
services.” 10 TTABVUE 9. February 13, 2017 Office Action at 2-53. Although the
majority of the registrations cover goods and services that differ somewhat from the
goods and services identified in the cited registration and in the application, eight of
the use-based registrations have some probative value on the issue of relatedness to
the extent that they show the same registered mark for the same goods and services
at issue here, or legally-equivalent goods or services.16 See In re Aquamar, Inc., 115

15 This site, like Applicant’s and others in the record, establishes that temperature sensors
and related monitoring and analytical services may be offered together as a package or
system. Such bundling of the sensors and the services is itself indicative of their relatedness.
16 February 13, 2017 Office Action at 2, 21-23, 24-26, 27-29, 39-41, 42-44, 45-47, and 51-53.
Serial No. 87070837
- 13 -

USPQ2d 1122, 1126 n.5 (TTAB 2015); In re Mucky Duck Mustard Co., 6 USPQ2d
1467, 1470 n.6 (TTAB 1988).
The record as a whole shows that temperature sensors, and the services of
monitoring, analyzing and designing temperature sensors, are related,17 and that
“the circumstances surrounding their marketing are such that they could give rise to
the mistaken belief that they emanate from the same source,” Coach Servs., 101
USPQ2d at 1722, when they are offered under the very similar marks here. This
duPont factor supports a finding of a likelihood of confusion.
C. Similarity in Channels of Trade
The third du Pont factor concerns “[t]he similarity or dissimilarity of established,
likely-to-continue trade channels.” Stone Lion, 110 USPQ2d at 1159. Applicant
argues that there “is no overlap in customers between the Applicant’s services and
Registrant’s goods because the parties offer their respective goods in separate
channels of trade.” 8 TTABVUE 10. In the portion of its brief discussing consumer
sophistication, Applicant argues that its services “are for remote monitoring and data
analysis tied to the separate field of operational efficiency, compliance, and quality
control and the custom design of temperature monitoring sensors and systems,” while
the temperature sensors identified in the cited registration “are purchased by

17 Applicant cites In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082 (Fed. Cir. 2014),
for the proposition that “the Examining Attorney must show ‘something more’ than the mere
fact that the goods and services are ‘used together.’” 8 TTABVUE 9 (quoting St. Helena Hosp.,
113 USPQ2d at 1087). The Examining Attorney does not rely solely on the complementary
nature of the identified goods and services, but has provided evidence that it is not uncommon
for them to be offered together under the same mark.
Serial No. 87070837
- 14 -

individual consumers interested in observing the temperature of their consumer
products.” 8 TTABVUE 14. Applicant concludes that “the parties’ respective goods
and services are directed to different consumers in different channels of trade, further
obviating any likelihood of confusion.” 8 TTABVUE 14.
As discussed above, Applicant cannot limit, by extrinsic evidence or argument, the
unrestricted identification of the “temperature sensors” in the cited registration, and
the record shows that temperature sensors and the services of monitoring, analyzing,
and designing temperature sensors are frequently offered together through the same
channels of trade to the same consumers. This duPont factor supports a finding of a
likelihood of confusion.
D. Sophistication of Purchasers
The fourth du Pont factor concerns the “conditions under which and buyers to
whom sales are made, i.e. ‘impulse’ vs. careful, sophisticated purchasing,”
respectively. Stone Lion, 110 USPQ2d at 1159. Applicant argues that its “services of
custom design and monitoring and analysis for operational efficiency, compliance,
and quality control are rendered to discerning consumers who will exercise care and
deliberation when making their purchasing decisions.” 8 TTABVUE 10. According to
Applicant, its “customers are sophisticated entities—hospitals, research labs, biotech
companies, and the like—who are interested in Applicant’s data analysis in order to
take corrective action related to incident management before their critical assets are
damaged by inconsistent temperature fluctuations,” and who are “facilities managers
and operations staff who are responsible for worksite safety compliance and incident
management.” 8 TTABVUE 10-11. Applicant argues that these consumers will
Serial No. 87070837
- 15 -

“exercise a high degree of care and deliberation when making purchasing decisions,”
8 TTABVUE 13, and concludes that they “would take considerable care in their
purchasing decision, and would distinguish between a custom solution for their lab
or facility and a ‘temperature sensor.’” 8 TTABVUE 11.
Given the nature of the services, we can assume that some higher degree of care
will be exercised by prospective purchasers. This du Pont factor therefore supports a
finding of no likelihood of confusion.
E. Conclusion
The marks are identical in sound, connotation, and commercial impression, and
very similar in appearance. The goods and services identified in the application and
in the cited registration are related, and the record shows that they are frequently
offered by entities, including Applicant itself, under the same marks, and that the
channels of trade and classes of customers for the identified goods and services
overlap. These duPont factors all support a finding of a likelihood of confusion. To the
extent that the consumers of Applicant’s services are sophisticated and purchase with
an elevated degree of care, that duPont factor supports a finding that confusion is not
likely, but it is outweighed in the balancing of the factors by the others. In re Max
Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010) (although consumers of
insurance services “would exercise care in obtaining them,” that duPont factor was
“outweighed by the similarity of the marks and the identity of the services.”). We find
that confusion as to the source or sponsorship of Applicant’s services is likely.
Decision: The refusal to register is affirmed.