Digitalmojo, Inc.v.Connect Public Relations, Inc.

Trademark Trial and Appeal Board

Feb 27, 2015

No. 92054427 (T.T.A.B. Feb. 27, 2015)

Baxley Mailed: February 27, 2015

Opposition No. 91196299
Connect Public Relations, Inc.
v.
Digitalmojo, Inc.

Cancellation No. 92054395
Cancellation No. 92054427

Digitalmojo, Inc.

v.

Connect Public Relations,
Inc.

Before Cataldo, Mermelstein, and Masiello,
Administrative Trademark Judges.

By the Board:

In the amended notice of opposition in Opposition No. 91196299, Connect
Public Relations, Inc. (“Connect”) opposes registration of Digitalmojo, Inc.’s
(“Digitalmojo”) application to register the mark CONNECT in standard
character form for goods in International Class 9 and services in
International Classes 35, 38, 42, and 451 on the ground of likelihood of

1 Application Serial No. 77714693, filed April 15, 2009, based on an assertion of a
bona fide intent to use the mark in commerce under Trademark Act Section 1(b), 15
U.S.C. § 1051(b). The identification of goods and services in the application is as
follows: “Audio recordings featuring music; video recordings featuring music;
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
This decision is not a
citable precedent of the
Trademark Trial and
Appeal Board.
Opposition No. 91196299; Cancellation Nos. 92054395 and 92054427

2
confusion with its previously used and registered marks CONNECT PUBLIC

downloadable audio and video recordings featuring music; prerecorded music on CD,
DVD and other media” in International Class 9; “Business marketing services in the
nature of agency representation of companies marketing a variety of services to
home owners and renters, namely, utility hook-ups, telecommunication services,
home security services, home warranties, home and yard maintenance, furniture
and appliance rental; comparative marketing and advertising services for providers
of residential and business telecommunications services, namely, for providers of
broadband cable, DSL, fiber-optic and satellite Internet access services, cable and
satellite television, voice over IP, and long-distance telephone services; operation of
telephone call centers for others; marketing of high speed telephone, Internet, and
wireless access, and directing consumers to access providers; providing an online
directory information service featuring information regarding, and in the nature of,
classifieds; advertising and information distribution services, namely, providing
classified advertising space via the global computer network; promoting the goods
and services of others over the Internet; providing online computer databases
and on-line searchable databases featuring classified listings and want ads; online
business networking services; providing telephone directory information via global
communications networks; providing an online interactive website obtaining users
comments concerning business organizations, service providers, and other resources;
providing information, namely, compilations, rankings, ratings, reviews, referrals
and recommendations relating to business organizations, service providers, and
other resources using a global computer network; providing telephone directory
information via global communications networks; arranging for others the initiation
and termination of telecommunication services and utility services in the nature of
water, gas and electricity and consultation rendered in connection therewith” in
International Class 35; “Providing online chat rooms for registered users for
transmission of messages concerning classifieds, virtual community and social
networking; providing on-line chat rooms and electronic bulletin boards for
transmission of messages among users in the field of general interest; providing
email and instant messaging services” in International Class 38; “Computer
services, namely, creating an on-line community for registered users to participate
in discussions, get feedback from their peers, form virtual communities, and engage
in social networking; computer software development; application service provider
(ASP) featuring software to enable uploading, posting, showing, displaying, tagging,
blogging, sharing or otherwise providing electronic media or information over the
Internet or other communications network; providing temporary use of non-
downloadable software applications for classifieds, virtual community, social
networking, photo sharing, video sharing, and transmission of photographic images;
computer services, namely, hosting online web facilities for others for organizing and
conducting online meetings, gatherings, and interactive discussions; computer
services in the nature of customized web pages featuring user-defined information,
personal profiles and information” in International Class 42; and “On-line social
networking services; internet based dating, introduction and social networking
services” in International Class 45 (emphasis added).

Opposition No. 91196299; Cancellation Nos. 92054395 and 92054427

3
RELATIONS for goods and services in International Classes 9, 16, 35, and
382 and CONNECTPR for goods and services in International Classes 9, 16,
35, and 38;3 and its previously used word mark CONNECT.4 Digitalmojo, in
its answer, denies the salient allegations of the amended notice of opposition.

2 The pleaded registrations for the mark CONNECT PUBLIC RELATIONS in typed
form are as follows:
Registration No. 2362916 for “Printed publications, namely, reports, press kits and
brochures in the fields of market research and consulting, public and media
relations, sales promotion, strategic marketing planning, development of market
positioning and messaging, background editorial support of sales promotion
material, and seminar creation and operation” in International Class 16, issued
June 27, 2000, renewed;
Registration No. 2373504 for “Marketing and market research and consulting
services; public and media relations services and sales promotion services”
(emphasis added) in International Class 35, issued August 1, 2000, renewed;
Registration No. 2373505 for “Prerecorded audio recordings, prerecorded video
recordings, and prerecorded audio-visual recordings featuring topics in the fields of
marketing and market research and consulting services, public and media relations
services and sales promotion services; electronic publications featuring topics in the
fields of marketing and market research and consulting services, public and media
relations services and sales promotion services on computer discs and CD-ROM” in
International Class 9, issued August 1, 2000, renewed; and
Registration No. 2383778 for Communications services, namely, delivery of
messages by electronic transmission” in International Class 38, issued September 5,
2000, renewed.
The registrations all include disclaimers of PUBLIC RELATIONS. Because the
registrations are for the mark CONNECT PUBLIC RELATIONS in typed form, they
encompass any presentation of that mark. See Citigroup Inc. v. Capital City Bank
Group Inc., 98 USPQ2d 1253, 1258 (Fed. Cir. 2011).

3 The pleaded registrations for the mark CONNECTPR in typed or standard
character form are as follows:
Registration No. 2365074 for “Communications services, namely, delivery of
messages by electronic transmission” in International Class 38, issued July 4, 2000,
renewed;
Registration No. 2366850 for “Marketing and market research and consulting
services; public and media relations services and sales promotion services” in
International Class 35 (emphasis added), issued July 11, 2000, renewed;
Registration No. 2383777 for “Prerecorded audio recordings, prerecorded video
recordings, and prerecorded audio-visual recordings featuring topics in the fields of
marketing and market research and consulting services, public and media relations
services and sales promotion services; electronic publications featuring topics in the
fields of marketing and market research and consulting services, public and media
Opposition No. 91196299; Cancellation Nos. 92054395 and 92054427

4
In the second amended petitions to cancel in Cancellation No. 92054395,
Digitalmojo seeks cancellation of Connect’s pleaded Registration No. 2366850
for the mark CONNECTPR in typed form for “Marketing and market
research and consulting services; public and media relations services and
sales promotion services” in International Class 35 on the ground of
abandonment. In Cancellation No. 92054427, Digitalmojo seeks cancellation
of Connect’s pleaded Registration No. 2373504 for the mark CONNECT
PUBLIC RELATIONS in typed form also for “Marketing and market
research and consulting services; public and media relations services and
sales promotion services” in International Class 35 on the ground of
abandonment. In particular, Digitalmojo alleges that “[Connect] has changed
its name to Connect Marketing, Inc., and is offering its ... Services under the

relations services and sales promotion services on computer discs and CD-ROMs” in
International Class 9, issued September 5, 2000;
Registration No. 2713692 for “Printed publications, namely, brochures in the fields
of market research and consulting, public and media relations, sales promotion,
strategic marketing planning, development of market positioning and messaging,
background editorial support of sales promotion material, and seminar creation and
operation” in International Class 16, issued May 6, 2003, renewed; and
Registration No. 3330353 for “Printed publications, namely, brochures comprised of
brochures, and press releases, in the fields of market research and consulting, public
and media relations, sales promotion, strategic marketing planning, development of
market positioning and messaging, background editorial support of sales promotion
materials, and seminar creation and operation” in International Class 16, issued
November 6, 2007, Section 8 accepted, Section 15 acknowledged.

4 Connect alleges previous use of the CONNECT mark for “prerecorded audio
recordings, prerecorded video recordings, and prerecorded audio-video recordings;
electronic publications featuring public and media relations services and sales
promotion services;” “printed publications;” “marketing and market research and
consulting services; public and media relations services and sales promotion
services;” and “communications services, including delivery of messages by electronic
transmission.”
Opposition No. 91196299; Cancellation Nos. 92054395 and 92054427

5
mark CONNECT MARKETING, and not” its pleaded marks. Second
amended petitions to cancel, paragraph 8. Therefore, Digitalmojo alleges that
Connect has ceased use of its pleaded marks in International Class 35 and
intends not to resume such use. Id., paragraph 9. Connect, in its answers,
denies the salient allegations of the second amended petitions to cancel. The
above-captioned proceedings were consolidated in a February 23, 2012 order.
This case now comes up for consideration of (1) Connect’s motion (filed
April 29, 2014) for summary judgment in each of the above-captioned
proceedings; and (2) Digitalmojo’s cross-motion (filed October 16, 2014) for
summary judgment in the above-captioned cancellation proceedings that was
incorporated into its brief in response to Connect’s motion.5
The cancellation proceedings are the equivalent of compulsory
counterclaims in the opposition proceeding. See Trademark Rules
2.106(b)(2)(ii) and 2.114(b)(2)(ii). In deciding cases that include compulsory
counterclaims, the Board generally decides the counterclaims first.6 See, e.g.,
Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458,
1461-62 (TTAB 2014); Tea Board of India v. Republic of Tea Inc., 80 USPQ2d
1881, 1886 (TTAB 2006). The Board therefore turns first to the parties’ cross-

5 Digitalmojo, on May 22, 2014, filed a motion for leave to take discovery under Fed.
R. Civ. P. 56(d) prior to responding to the motion for summary judgment. The Board
denied that motion in a September 16, 2014 order and reset Digitalmojo’s time in
which to respond to the motion for summary judgment.

6 By deciding the counterclaim first, the Board determines whether the plaintiff in
an opposition or cancellation proceeding can rely upon the registration that is the
subject of the counterclaim in support of the opposition or cancellation.

Opposition No. 91196299; Cancellation Nos. 92054395 and 92054427

6
motions for summary judgment on the abandonment claims in the
cancellation proceedings.
Connect, in support of its motion, contends that it adopted and
commenced use of its pleaded registered CONNECT PUBLIC RELATIONS
and CONNECTPR marks in 1998 for the recited services in International
Class 35 and has not subsequently discontinued such use. Accordingly,
Connect contends that there is no genuine dispute that it has not abandoned,
or even discontinued use, of those pleaded registered marks and that it is
therefore entitled to dismissal of the cancellation proceedings as a matter of
law.
Connect’s evidence in support of its motion for summary judgment in the
cancellation proceedings includes the affidavit of its founder and president,
Neil Myers (“Myers”), who avers that, “in the early 1990s,” he founded
Connect’s predecessor, Network Associates Consulting, Inc. (“Network”),
which was “engaged in providing marketing, including business marketing,
market research, consulting, public relations, media relations, and sales
promotion services; that Network changed its name to Connect in the spring
of 1998; that Connect adopted and began use in interstate commerce of the
CONNECT PUBLIC RELATIONS, CONNECTPR, and CONNECT marks at
the time of that name change; that Connect obtained nine registrations for
the CONNECT PUBLIC RELATIONS and CONNECTPR marks, including
the two registrations in International Class 35 that are at issue in the
Opposition No. 91196299; Cancellation Nos. 92054395 and 92054427

7
cancellation proceedings; that Connect has not discontinued use of the
pleaded marks for any period of time; and that, since such adoption, it has
promoted its goods and services under those marks in a variety of mediums,
including its own websites, sales brochures, advertisements in nationally
distributed magazines, business cards, and trade shows. Exhibits submitted
through the Myers affidavit consist of: (1) a 1998 marketing brochure which
purports to demonstrate Connect’s adoption and use of the CONNECT,
CONNECT PUBLIC RELATIONS, and CONNECTPR marks in interstate
commerce; (2) an August 1998 magazine advertisement showing use of the
CONNECT, CONNECT PUBLIC RELATIONS, and CONNECTPR marks; (3)
a “recent proposal for a potential client in the telecommunications industry”
that demonstrates Connect’s use of the CONNECT and CONNECT PUBLIC
RELATIONS marks; (4) an excerpt from Connect’s former website, printed
March 21, 2013, showing Connect’s use of the CONNECT and CONNECT
PUBLIC RELATIONS marks; and (5) an excerpt from Connect’s current
website, printed April 4, 2014, showing Connect’s use of the CONNECT,
CONNECT PUBLIC RELATIONS, and CONNECTPR marks.
In response and in support of its cross-motion, Digitalmojo contends that
the documents submitted through the Myers affidavit do not support ongoing
use of the CONNECT PUBLIC RELATIONS and CONNECTPR marks. In
particular, Digitalmojo contends that the website excerpts that Connect
submitted “appear to be ... ‘mock up[s]’” with wording overlayed on top of
Opposition No. 91196299; Cancellation Nos. 92054395 and 92054427

8
other wording, “hardly the way one would expect [Connect] to use ‘all [its
pleaded marks] in commerce;’” and that the CONNECTPR mark is not
among the “four parts of [Connect’s] new brand” which were adopted when
Connect became CONNECT MARKETING.
Summary judgment is an appropriate method of disposing of cases in
which there are no genuine disputes as to any material fact, thus leaving the
case to be resolved as a matter of law. See Fed. R. Civ. P. 56(c). The party
moving for summary judgment has the initial burden of demonstrating that
there is no genuine issue of material fact remaining for trial and that it is
entitled to judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S.
317 (1987); Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560,
4 USPQ2d 1793 (Fed. Cir. 1987). The nonmoving party must be given the
benefit of all reasonable doubt as to whether genuine issues of material fact
exist, and the evidentiary record on summary judgment, and all inferences to
be drawn from the undisputed facts, must be viewed in the light most
favorable to the nonmoving party. See Opryland USA, Inc. v. Great American
Music Show, Inc., 970 F. 2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
When the moving party's motion is supported by evidence sufficient to
indicate that there is no genuine dispute as to any material fact, and that the
moving party is entitled to judgment, the burden shifts to the nonmoving
party to demonstrate the existence of specific genuinely-disputed facts that
must be resolved at trial. The nonmoving party may not rest on the mere
Opposition No. 91196299; Cancellation Nos. 92054395 and 92054427

9
allegations of its pleadings and assertions of counsel, but must designate
specific portions of the record or produce additional evidence showing the
existence of a genuine dispute as to any material fact remaining for trial. In
general, to establish the existence of disputed facts requiring trial, the
nonmoving party "must point to an evidentiary conflict created on the record
at least by a counterstatement of facts set forth in detail in an affidavit by a
knowledgeable affiant." Octocom Systems Inc. v. Houston Computer Services
Inc., 918 F.2d 937, 941, 16 USPQ2d 1783, 1786 (Fed. Cir. 1990).
Trademark Act Section 45, 15 U.S.C. § 1127, states in relevant part as
follows: “A mark shall be deemed to be ‘abandoned’ ... [w]hen its use has been
discontinued with intent not to resume such use. Intent not to resume may be
inferred from circumstances.”7 Therefore, as the party moving for summary
judgment on the abandonment claims that are asserted against it, Connect
must establish that there is no genuine dispute that (1) there was no
discontinuation of use of the CONNECT PUBLIC RELATIONS and
CONNECTPR marks or (2) there was no intent not to resume use of those
marks. To prevail on its cross-motion, Digitalmojo must establish that there
is no genuine dispute as to any material fact regarding both Connect’s (1)
discontinuation of use of the involved marks, and (2) intent not to resume
such use.

7 The pleaded abandonment claims are not based on three consecutive years of
nonuse. See Trademark Act Section 45.
Opposition No. 91196299; Cancellation Nos. 92054395 and 92054427

10
Regarding the CONNECT PUBLIC RELATIONS mark, Connect’s motion
is supported by the Myer declaration, wherein Connect’s founder and
president avers, among other things, that Connect has not discontinued use
of the CONNECT PUBLIC RELATIONS mark for any period of time since it
commenced use of that mark in 1998 and has not abandoned or intended to
abandon that mark. That declaration is supported by 2013 and 2014 excerpts
from Connect’s website, which provide URLs and access dates necessary to
make those excerpts of record for purposes of deciding the parties’ motions.
See Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031 (TTAB 2010).
Although the nature of Connect’s use of the CONNECT PUBLIC
RELATIONS mark changed from a house mark to a mark for one of the four
categories of services that Connect renders, the 2013 and 2014 website
excerpts clearly indicate that the CONNECT PUBLIC RELATIONS mark is
still being used on the services identified in Connect’s Registration No.
2373504. Accordingly, we find that Connect has met its initial burden of
establishing that there is no genuine dispute that Connect did not
discontinue use of the CONNECT PUBLIC RELATIONS mark when it
changed its house mark to CONNECT MARKETING.
In response, Digitalmojo essentially attacks the website excerpts
submitted by Connect as being “mockup[s],” but provides no contrary archival
website excerpts which indicate that the website excerpts that Connect
submitted are in any way fabricated or otherwise fail to show use of its marks
Opposition No. 91196299; Cancellation Nos. 92054395 and 92054427

11
by Connect.8 Indeed, the website excerpt that Digitalmojo submitted as an
exhibit to the second amended petition to cancel in Cancellation No.
92054427 shows use of the CONNECT PUBLIC RELATIONS mark.9 In
addition, Digitalmojo essentially concedes in its brief that Connect is using
the CONNECT PUBLIC RELATIONS mark. See Digitalmojo brief at 8
(“[Digitalmojo] asserts that Myers’ statement that [ConnectPR] is using
CONNECT PUBLIC RELATIONS in this same graphic is an admission that
the presentation of these three words together, regardless of the differences
in size between “connect” and “public relations,” is a use of CONNECT
PUBLIC RELATION [(sic)], and not a use of CONNECT.”). Moreover,
Digitalmojo alleges no date on which Connect supposedly discontinued use of
the CONNECT PUBLIC RELATIONS mark and provides no evidence to
support any allegation of intent not to resume use of that mark. Based on the
foregoing, we find that there is no genuine dispute that Connect did not
discontinue use of that mark and that Connect is therefore entitled to entry
of summary judgment on the abandonment claim in Cancellation No.
92054427. Accordingly, Connect’s motion for summary judgment on the

8 To the extent that Digitalmojo alleges that Connect’s website excerpts appear to be
mockups, we note that websites often do not print out as neatly as they appear in
screenshots.

9 The Board allowed Cancellation No. 92054427 to go forward notwithstanding that
website excerpt because, other than status and title copies of pleaded registrations,
the Board does not consider exhibits to pleadings. See Trademark Rule 2.122(c). In
addition, the screenshot of that website excerpt was not properly of record because it
did not include the date of access thereof. See Safer Inc., supra.
Opposition No. 91196299; Cancellation Nos. 92054395 and 92054427

12
abandonment claim in Cancellation No. 92054427 is granted, and
Digitalmojo’s cross-motion for summary judgment on that claim is denied.
Regarding the CONNECTPR mark, we find that, in view of the absence of
that mark from the undated “recent proposal for a potential client in the
telecommunications industry” that shows only Connect’s use of the
CONNECT and CONNECT PUBLIC RELATIONS marks and the excerpt
from Connect’s former website, printed March 21, 2013, which does not show
Connect’s use of the CONNECTPR, we find that disposition of Cancellation
No. 92054395 by summary judgment is inappropriate. At a minimum, there
are genuine disputes as to whether Connect discontinued use of the
CONNECTPR mark with intent not to resume such use and as to whether
Connect’s use of the CONNECT PR (two words) mark in the excerpt from its
present website, printed April 4, 2014, constitutes a readoption of that mark
following an abandonment. See First National Bank of Omaha v. Autoteller
Systems Service Corp., 9 USPQ2d 1740 (TTAB 1988). In view thereof,
Connect’s motion for summary judgment and Digitalmojo’s cross-motion on
the abandonment claim in Cancellation No. 92054395 are both denied.
We now turn to Connect’s motion for summary judgment on the Section
2(d) claim in Opposition No. 91196299. As a party moving for summary
judgment in its favor on its Section 2(d) claim, Connect must establish that
there is no genuine dispute that: (1) it has standing to maintain this
proceeding; (2) it is the prior user of its pleaded marks or owner of
Opposition No. 91196299; Cancellation Nos. 92054395 and 92054427

13
registrations for those marks; and (3) contemporaneous use of the parties'
respective marks on their respective services would be likely to cause
confusion, mistake or to deceive consumers. See Hornblower & Weeks, Inc. v.
Hornblower & Weeks, Inc., 60 USPQ2d 1733, 1735 (TTAB 2001). If the
nonmoving party fails to make a sufficient showing on an essential element of
its case with respect to which it would have the burden of proof at trial,
judgment as a matter of law may be entered in favor of the moving party. See
Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. at 322-23.
In view of the dismissal of Cancellation No. 92054427, Connect can rely
upon Registration No. 2373504 for the mark CONNECT PUBLIC
RELATIONS for “Marketing and market research and consulting services;
public and media relations services and sales promotion services” in
International Class 35 in support of its motion for summary judgment in the
opposition on its pleaded Section 2(d) claim. That registration by itself
provides a sufficient basis for granting Connect’s motion for summary
judgment in International Class 35.
In view of Connect’s submission of copies of current printouts of
information from the TSDR database records of the USPTO showing the
current status and title of Connect’s pleaded registrations other than
Registration No. 2366850, there is no genuine dispute as to Connect’s
standing to maintain that opposition. See Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). Likewise, Section 2(d)
Opposition No. 91196299; Cancellation Nos. 92054395 and 92054427

14
priority is not an issue in this case as to the marks and the goods and
services covered by the pleaded registrations other than Registration No.
2366850. King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108, 110 (CCPA 1974).
In determining likelihood of confusion issues, two key factors are the
degree of similarity of the parties' marks and the degree of similarity of their
goods and services at issue. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). As to the marks at issue,
Connect’s CONNECT PUBLIC RELATIONS mark (with PUBLIC
RELATIONS disclaimed) and Digitalmojo’s CONNECT mark differ only by
Connect’s inclusion in its mark of disclaimed matter which identifies one of
the services that Connect renders under that mark. The disclaimer
constitutes an admission of the merely descriptive nature of PUBLIC
RELATIONS in connection with Connect’s services in International Class 35,
and an acknowledgment of the lack of an exclusive right therein at the time
of the disclaimer. See Quaker State Oil Refining Corp. v. Quaker Oil Corp.,
453 F.2d 1296, 172 USPQ 361, 363 (CCPA 1972). Moreover, the wording
PUBLIC RELATIONS is at least plausibly descriptive of some of
Digitalmojo’s services in International Class 35, such as “[b]usiness
marketing services in the nature of agency representation of companies
marketing a variety of services ...” and “promoting the goods and services of
others over the Internet.” Descriptive or generic matter may have little or no
Opposition No. 91196299; Cancellation Nos. 92054395 and 92054427

15
significance in likelihood of confusion determinations. See Swatch AG
(Swatch SA) (Swatch Ltd.) v. M. Z. Berger & Co., 108 USPQ2d 1463, 1470
(TTAB 2013) (common use of generic term does not render marks similar).
This is especially true where the wording is descriptive with respect to both
parties’ services. In view of the disclaimer of PUBLIC RELATIONS in a mark
for a registration in connection with services that include “public ... relations”
in the recitation of services, Connect has established, prima facie, that
CONNECT is the dominant term in its CONNECT PUBLIC RELATIONS
mark. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 750
(Fed. Cir. 1985). Because Digitalmojo’s CONNECT mark consists in its
entirety of the dominant term in Connect’s CONNECT mark, we find that
Connect has met its initial burden of showing that there is no genuine
dispute that the marks CONNECT PUBLIC RELATIONS and CONNECT
have substantially similar connotations and overall commercial impressions.
With regard to the services at issue, the Board's determination of
likelihood of confusion is based upon the parties' services as they are
identified in the application and registrations at issue, not on how the parties
may actually use their marks. See Canadian Imperial Bank v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992). The Board must
presume that the scope of the services at issue encompasses all of the services
of the nature and type described, that they travel in all channels of trade
normal for those services, and that they are sold to all classes of prospective
Opposition No. 91196299; Cancellation Nos. 92054395 and 92054427

16
purchasers for those services. See In re Elbaum, 211 USPQ 639, 641 (TTAB
1981).
In Board inter partes proceedings, likelihood of confusion may be found
with respect to a particular international class based on any single item
within the identification of goods or services for that class. See Tuxedo
Monopoly Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986,
988 (CCPA 1981); Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d
1066 (TTAB 2011). That is, if likelihood of confusion is found with respect to
any item within a particular class, that finding applies to the entire class at
issue.
Connect’s recited services in pleaded Registration No. 2373504 include
“sales promotion services,” whereas Digitalmojo’s involved services in
International Class 35 include “promoting the goods and services of others
over the Internet.” Because we must presume that the parties’ services both
encompass sales promotion services conducted over the Internet, there is no
genuine dispute that these services are at least overlapping. Based on the
foregoing, we find that Connect has met its initial burden of establishing that
there is no genuine dispute as to any material fact regarding its Section 2(d)
claim regarding Digitalmojo’s CONNECT mark in International Class 35
based on likelihood of confusion with its CONNECT PUBLIC RELATIONS
mark for the services identified in its pleaded Registration No. 2373504.
Opposition No. 91196299; Cancellation Nos. 92054395 and 92054427

17
In response, Digitalmojo contends that there are genuine disputes as to
the trade channels and classes of purchasers of the respective services.10
However, because there is no genuine dispute that the parties’ services are
overlapping, if not essentially identical, we must also presume that the
parties’ services are sold in all channels of trade normal for those services to
all classes of prospective purchasers for those services. In re Smith and
Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the same channels of
trade, and be sold to the same class of purchasers”). Thus neither argument
nor evidence that a party’s goods or services are in reality sold in narrower
channels of trade or to a narrower group of consumers can raise a genuine
issue of material fact for trial. See Paula Payne Prods. Co. v. Johnson Publ’g
Co., Inc., 473 F.2d 901, 177 USPQ 76, 77–78 (CCPA 1973) (“[W]e give full
sweep to appellant’s registration description of goods and view the goods and
modes of distribution as the same.”).

10 In its brief, Digitialmojo asserts that the parties market their services in different
trade channels to different classes of purchasers. In particular, Digitalmojo contends
that it markets its services “directly to consumers,” whereas Connect’s services are
“directed to businesses.” This assertion, however, is directly contradicted by the
plain language of Digitalmojo’s recitation of services in International Class 35,
which begins with the wording “[b]usiness marketing services in the nature of
agency representation of companies marketing a variety of services to home
owners and renters, namely, utility hook-ups, telecommunication services, home
security services, home warranties, home and yard maintenance, furniture and
appliance rental; comparative marketing and advertising services for
providers of residential and business telecommunications services, namely,
for providers of broadband cable, DSL, fiber-optic and satellite Internet access
services, cable and satellite television, voice over IP, and long-distance telephone
services.” (emphasis added).
Opposition No. 91196299; Cancellation Nos. 92054395 and 92054427

18
Digitialmojo further contends that there are genuine disputes as to the
scope of protection to which Connect is entitled in view of third-party
registrations for the word CONNECT in connection with other goods and
services and third-party registrations for marks containing the word
CONNECT in connection with marketing services. However, third-party
registrations cannot justify the registration of another mark that is so similar
to a previously registered mark as to create a likelihood of confusion, or to
cause mistake, or to deceive. See e.g., In re Max Capital Grp. Ltd., 93
USPQ2d 1243, 1248 (TTAB 2010); In re Toshiba Med. Sys. Corp., 91 USPQ2d
1266, 1272 (TTAB 2009).
Digitialmojo contends in addition that entry of summary judgment is
inappropriate in this case because there is no evidence of record regarding
the level of sophistication of purchasers of the goods and services at issue.
However, even sophisticated purchasers are not immune from source
confusion, especially in cases such as the instant one involving highly similar
marks and overlapping goods. See Cunningham, 55 USPQ2d at 1846.
Digitalmojo relies in part upon a declaration of its attorney, Thomas W.
Cook, as an exhibit to its brief in support of its cross-motion and in opposition
to Connect’s motion. The Cook declaration consists largely of legal argument
and makes of record the third-party registrations upon which Digitalmojo
relies. To the extent that Cook presents opinions regarding likelihood of
confusion between the marks at issue in that declaration, the record indicates
Opposition No. 91196299; Cancellation Nos. 92054395 and 92054427

19
that he was not disclosed as an expert witness. See Trademark Rule
2.120(a)(2); TBMP § 401.03. More importantly, likelihood of confusion is an
issue which must be determined by the Board after consideration of all of the
evidence of record. We may not abdicate that responsibility by deferring to
Digitalmojo’s counsel who — unsurprisingly — opines that there are genuine
disputes of material fact remaining for trial. Quaker Oats Co. v. St. Joe
Processing Co., Inc., 232 F.2d 653, 109 USPQ 390, 391 (CCPA 1956).
Moreover, except under limited circumstances not at issue herein, an
attorney generally should not appear as a witness in a proceeding in which
he is an advocate. See Patent and Trademark Rule 11.307. Accordingly, we
have considered the Cook declaration only to the extent that it introduces the
third-party registrations upon which Digitalmojo relies.
Based on the foregoing, we find that Digitalmojo has failed to raise a
genuine dispute as to whether there is a likelihood of confusion between
Connect’s registered CONNECT PUBLIC RELATIONS mark and
Digitalmojo’s CONNECT mark in International Class 35. In view thereof,
Connect’s motion for summary judgment is hereby granted in International
Class 35. The opposition is sustained and registration is refused as to that
class only.
With regard to the remaining classes in Digitalmojo’s involved
application, however, we find that disposition of this proceeding by summary
judgment is inappropriate. At a minimum, there is a genuine dispute as to
Opposition No. 91196299; Cancellation Nos. 92054395 and 92054427

20
whether the identified goods and services in International Classes 9, 38, 42,
and 45 in Digitalmojo’s involved application are related to Connect’s pleaded
goods and services in International Classes 9, 16, 35, and 38 in a way that is
likely to give rise to source confusion.11 See In re St. Helena Hosp., 774 F.3d
747, 113 USPQ2d 1082 (Fed. Cir. 2014). In view thereof, Connect’s motion for
summary judgment is denied in those classes.
Proceedings herein are resumed. These consolidated proceedings will go
forward only in Opposition No. 91196299 with regard to the Section 2(d)
claim against Digitalmojo’s involved application in International Classes 9,
38, 42, and 45 and in Cancellation No. 92054395 with regard to the
abandonment claim against Connect’s pleaded Registration No. 2366850.12
Remaining dates are reset as follows.13

11 The parties should not infer that this is the only issue remaining for trial in the
opposition.

12 The parties are reminded that our decision granting partial summary judgment is
interlocutory in nature and may not be appealed until a final decision is rendered in
the proceeding. See Copeland's Enterprises Inc. v. CNV Inc., 887 F.2d 1065, 12
USPQ2d 1562 (Fed. Cir. 1989).
Evidence submitted in connection with the motions for summary judgment is of
record for the consideration of those motions only. To be considered at final hearing,
any such evidence must be properly introduced in evidence during the appropriate
trial period. See Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464
(TTAB 1993); Pet Inc. v. Bassetti, 219 USPQ 911 (TTAB 1983); American Meat
Institute v. Horace W. Longacre, Inc., 211 USPQ 712 (TTAB 1981).

13 Connect’s pretrial disclosures were due two days prior to the filing of its motion for
summary judgment. The Board presumes that Connect served those pretrial
disclosures. Connect is reminded that it has an ongoing duty to supplement and/or
correct the pretrial disclosures in a timely manner, as needed. See Fed. R. Civ. P.
26(e).

Opposition No. 91196299; Cancellation Nos. 92054395 and 92054427

21
Connect's 30-day testimony period as plaintiff in the
opposition to close:
April 13, 2015
Digitalmojo's pretrial disclosures due: April 28, 2015
Digitalmojo's 30-day testimony period as defendant
in the opposition and as plaintiff in the cancellation
to close:
June 12, 2015
Connect's pretrial disclosures for rebuttal in the
opposition and as defendant in the cancellation due:
June 27, 2015
Connect's 30-day testimony period as defendant in
the cancellation and for rebuttal as plaintiff in the
opposition to close:
August 11, 2015
Digitalmojo's rebuttal disclosures as plaintiff in the
cancellation due:
August 26, 2015
Digitalmojo's 15-day rebutal testimony period as
plaintiff in the cancellation to close:
September 25, 2015
Brief for Connect as plaintiff in the opposition due: November 24, 2015
Brief for Digitalmojo as defendant in the opposition
and as plaintiff in the cancellation due:
December 24, 2015
Brief for Connect as defendant in the cancellation
and reply brief, if any, as plaintiff in the opposition
due:
January 23, 2016
Reply brief, if any, for Digitalmojo as plaintiff in the
cancellation due:
February 7, 2016
In each instance, a copy of the transcript of testimony, together with
copies of documentary exhibits, must be served on the adverse party within
thirty days after completion of the taking of testimony. Trademark Rule
2.125. An oral hearing will be set only upon request filed as provided by
Opposition No. 91196299; Cancellation Nos. 92054395 and 92054427

22
Trademark Rule 2.129. If either of the parties or their attorneys should have
a change of address, the Board should be so informed promptly.