Dynamic Edge, Inc.

Trademark Trial and Appeal Board

Jun 5, 2008

No. 78760920 (T.T.A.B. Jun. 5, 2008)

Mailed:
June 5, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Dynamic Edge, Inc.
________

Serial No. 78760920
_______

Christopher J. Falkowski of Falkowski PLLC for Dynamic
Edge, Inc.

Robin S. Chosid-Brown, Trademark Examining Attorney, Law
Office 102 (Karen M. Strzyz, Managing Attorney).
_______

Before Zervas, Mermelstein and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Dynamic Edge, Inc. filed a use based application for
the mark DE and design, shown below, for a wide variety of
computer related services including, inter alia,
application service provider, namely, hosting computer
software applications of others, computer network design
for others, computer security services, namely, restricting
access to and by computer networks to and of undesired
websites, media, individuals and facilities, computer
services, namely, monitoring and reporting on the
performance, availability, and errors of websites for
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78760920
2
others, computer services, namely, managing websites for
others, computer services, namely, monitoring the websites
of others to improve scalability and performance of
websites of others, customization of computer hardware and
software, design and development of online computer
software systems, technical support services, namely,
trouble shooting of computer hardware and software
problems, computer site design, computer software
consultation, computer software design for others, and
computer software development, in Class 42 (Serial No.
78760920).

Applicant described its mark as a “stylized design of a
circuit board used in conjunction with the letters D and
E.”
The Trademark Examining Attorney refused registration
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, used in
connection with the services described in its application,
Serial No. 78760920
3
is likely to cause confusion with the mark DE and design,
shown below, for “computer site design; computer software
consultation; computer software design for others; computer
software development,” in Class 42,1 and “computer software
used for the security, monitoring and management of
websites, networked web pages and other operating software
systems used for machine to machine interaction over a
network,” in Class 9.2

Our determination of likelihood of confusion 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 or
dissimilarities between the marks and the similarities or

1 Registration No. 2662972, issued December 17, 2002.
2 Registration No. 3087918, issued May 2, 2006.
Serial No. 78760920
4
dissimilarities between the goods and/or 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”).
A. The similarity or dissimilarity and nature of the
goods and services.

It is well settled that the services of the applicant
and the goods and services of the registrant do not have to
be identical or directly competitive to support a finding
that there is a likelihood of confusion. It is sufficient
if the respective goods and services are related in some
manner and/or that the conditions surrounding their
marketing are such that they would be encountered by the
same persons under circumstances that could, because of the
similarity of the marks used in connection therewith, give
rise to the mistaken belief that they emanate from or are
associated with a single source. In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993); In re
International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
Moreover, in an ex parte appeal, likelihood of
confusion is determined on the basis of the services as
Serial No. 78760920
5
they are identified in the application and the goods and
services as they are recited in the registrations. In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re William Hodges
& Co., Inc., 190 USPQ 47, 48 (TTAB 1976). See also Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority
is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to
which the sales of goods are directed”).
In its application, applicant includes all of the
services described in Registration No. 2662972 (“computer
site design; computer software consultation; computer
software design for others; computer software
development”). Therefore, applicant’s description of
services is identical in part to the registrant’s
description of services.
With respect to Registration No. 3087918, the
description of registrant’s software is “computer software
used for the security, monitoring and management of
websites, networked web pages and other operating software
Serial No. 78760920
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systems used for machine to machine interaction over a
network.” In essence, it is software for managing websites
and computer networks. Applicant is seeking to register
its mark for application service provider services,
including monitoring and reporting on the performance,
availability, and errors of websites of others, managing
and monitoring websites for others, as well as
customization of computer hardware and software and
troubleshooting of computer hardware and software problems.
In essence, applicant is managing websites for others.
Accordingly, we find that applicant’s services and
registrant’s software are complementary because they could
be used together. Applicant is seeking to register its
mark for managing websites for others while the
registrant’s mark is for software used to manage websites.
Accordingly, applicant’s services are sufficiently related
to the registrant’s software as to be likely to cause
confusion if they are marketed under similar marks.
B. The similarity or dissimilarity of established,
likely-to-continue channels of trade and classes of
consumers.

Because there are no restrictions as to trade channels
and classes of consumers in the application or the cited
registrations, we presume that the goods and services move
in all normal trade channels for such goods and services
Serial No. 78760920
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and are sold to all normal classes of purchasers for such
goods and services. In re Elbaum, 211 USPQ 639, 640 (TTAB
1981). See also 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”).
Having previously found that the services in
Registration No. 2662972 are in part identical to the
services in the application, we find that applicant’s
services and registrant’s services move in the same
channels of trade and are sold to the same classes of
consumers.
With respect to registrant’s software, we have found
that applicant’s services and registrant’s software are
complementary, and therefore they could be marketed to the
same classes of customers. For example, consumers using
registrant’s software may be interested in retaining
applicant (or another application service provider) to
manage their websites and computer network or to customize
and troubleshoot their software. Accordingly, we find that
the channels of trade and the classes of consumers are the
same.
Serial No. 78760920
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C. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression. In re E. I. du Pont De Nemours &
Co., 177 USPQ at 567. In a particular case, any one of
these means of comparison may be critical in finding the
marks to be similar. In re White Swan Ltd., 9 USPQ2d 1534,
1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042
(TTAB 1988). In comparing the marks, we are mindful that
the test 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 so that confusion as to the
source of the goods and services offered under the
respective marks is likely to result. San Fernando
Electric Mfg. Co. v. JFD Electronics Components Corp., 565
F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants
Inc. v. Morrison Inc., 23 USPQ 1735, 1741 (TTAB 1991),
aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992).
The proper focus is on the recollection of the average
customer, who retains a general rather than specific
impression of the marks. Winnebago Industries, Inc. v.
Serial No. 78760920
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Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108
(TTAB 1975). In this case, the average customer would be
someone who licenses software for the security, monitoring,
and management of websites and computer networks and who
would engage a contractor to manage its websites and
computer networks.
Finally, in comparing the marks, we are mindful that
where, as here, the services are in part identical, the
degree of similarity necessary to find likelihood of
confusion need not be as great as where there is a
recognizable disparity between the services. Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Real Estate One,
Inc. v. Real Estate 100 Enterprises Corporation, 212 USPQ
957, 959 (TTAB 1981); ECI Division of E-Systems, Inc. v.
Environmental Communications Incorporated, 207 USPQ 443,
449 (TTAB 1980).
The marks are set forth below.
Serial No. 78760920
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Applicant’s Mark Registrant’s Mark

The similarity in the appearance of the marks
outweighs any differences in their appearance. Both marks
consist of the white letters “De” superimposed on a square,
black background. The fact that the letters in applicant’s
mark appear as De as opposed to the D
e displayed in
registrant’s mark does not diminish the similarity of the
commercial impression engendered thereby. Also,
applicant’s circuit board design is not sufficient to
distinguish the marks because the black background
dominates applicant’s mark.
Because both marks consist of the letters DE, they
have the identical sound.
There is nothing in the record that indicates that the
letters DE have any significance when used in connection
with the applicant’s services or the registrant’s software
and services. Accordingly, the marks are arbitrary when
used in connection with the goods and services at issue,
and therefore their meaning is the same.
Serial No. 78760920
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Considering the similarities between the marks, a
purchaser who sees one mark and later encounters the other
is likely to view the marks as variations of each other,
representing a single source. Accordingly, we conclude
that the marks of the applicant and the registrant are
similar in appearance, sound, meaning, and commercial
impression.
D. The conditions under which sales are made.
With respect to the conditions under which sales are
made, applicant made the following argument:
Both the Appellant’s Mark and the two
Cited Marks are associated with
information technology services and
products purchased by business
entities, not consumers. IT expenses
constitute a growing expense for large
and small businesses. Purchasers of IT
services often involve comprehensive
Requests for Proposal (“RFPs”) and
other forms of due diligence. In
short, there is every reason to believe
that the applicable market for all
three marks consists of sophisticated
non-impulse purchasers. Such
purchasers are not likely to be
confused by any similarities between
Appellant’s Mark and the Cited Marks.3

Unfortunately, applicant does not provide any evidence
regarding the decision process used by these careful and
sophisticated purchasers, the role trademarks play in their

3 Applicant’s Brief, pp. 11-12.
Serial No. 78760920
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decision making process, or how observant and
discriminating they are in practice. See In re Vsesoyuzny
Ordena Trudovogo Krasnogo Znameni, 219 USPQ 60, 70 (TTAB
1983) (“Unfortunately we have no evidence of record to this
effect and assertions in briefs are normally not recognized
as evidence”). Moreover, the fact that purchasers are
sophisticated or knowledgeable in a particular field does
not necessarily mean that they are immune from source
confusion. See In re Decombe, 9 USPQ2d 1812, 1814 - 1815
(TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558, 560
(TTAB 1983). However, as indicated above, circumstances
suggesting care in purchasing may tend to minimize
likelihood of confusion. In this regard, licensing
software to manage a company’s website or computer network
and/or engaging a contractor to manage a company’s website
or computer network typically are not impulse decisions.
Accordingly, the conditions under which sales are made is a
likelihood of confusion factor that weighs slightly against
finding that there is a likelihood of confusion.
E. Balancing the factors.
Having found that applicant’s services are in part
identical to registrant’s services and complementary to
registrant’s software, that applicant’s services and
Serial No. 78760920
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registrant’s software and services move in the same
channels of trade and are sold to the same classes of
consumers, and that the marks are similar, we conclude that
applicant’s mark, DE and design, for the services set forth
in Class 42, is likely to cause confusion with the
registrant’s mark DE and design, for “computer site design;
computer software consultation; computer software design
for others; computer software development,” in Class 9, and
for “computer software used for the security, monitoring
and management of websites, networked web pages and other
operating software systems used for machine to machine
interaction over a network,” in Class 42. Based on the
record before us, the fact that relevant consumers may
exercise a high degree of care does not outweigh the other
relevant likelihood of confusion factors.
Decision: The refusal to register applicant’s mark is
affirmed.