E-volve Technology Systems, Inc.

Trademark Trial and Appeal Board

Apr 2, 2012

No. 77910055 (T.T.A.B. Apr. 2, 2012)

Mailed: April 2, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re E-volve Technology Systems, Inc.
________

Serial No. 77910055
_______

Eden Brown Gaines of Amadeo & Gaines LLC for E-volve
Technology Systems, Inc.

Seth A. Rappaport, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______

Before Cataldo, Mermelstein and Bergsman,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

E-volve Technology Systems, Inc. filed an application
to register on the Principal Register the mark

for the following services (emphasis added):
Advisory services in the field of product
development and quality improvement of software;
Computer monitoring service which tracks
application software performance, performs
periodic maintenance and provides reports and
alerts concerning such performance;
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser. No. 77910055
2
Computer network design and computer software
design for the intelligence and human resources
communities;
Computer programming and software design;
Computer project management services;
Computer services, namely, providing a web-based
system and online portal featuring on-line non-
downloadable software that enables users to
access training, education, testing and
certification materials in the field of
intelligence and human resources;
Computer services, namely, remote and on-site
management of the information technology (IT)
systems of others;
Computer software consulting;
Computer software design;
Computer software design and updating;
Computer software design for others;
Computer software design, computer programming,
or maintenance of computer software;
Computer software development;
Computer software development and computer
programming development for others;
Computer software installation and maintenance;
Consultancy in the field of software design;
Consulting in the field of information
technology;
Consulting in the field of IT project management;
Consulting in the field of software and product
development in the field of intelligence and
human resources;
Consulting in the field of software development
and product development in the field of
intelligence and human resources;
Consulting in the field of software development
in the field of intelligence and human resources;
Consulting services in the field of computer-
based information systems for businesses;
Consulting services in the field of providing
online, non-downloadable software and
applications;
Creating, maintaining, and modernizing computer
software;
Design and development of computer software;
Design and development of on-line computer
software systems;
Ser. No. 77910055
3
Design for others in the field of computer
networks, software, and engineering for the
intelligence and human resource communities;
Design, development and consulting services in
the field of software for content management;
Design, development and implementation of
software;
Design, development, installation and maintenance
of computer software;
Design, installation, updating and maintenance of
computer software;
Design, maintenance, development and updating of
computer software;
Developing and updating computer software;
Developing computer software;
Development, updating and maintenance of software
and data bases;
Information technology consultation;
Installation and maintenance of computer
software;
Installation of computer software; Installation,
maintenance and repair of computer software;
Installation, maintenance and repair of software
for computer systems;
Installation, repair and maintenance of computer
software;
IT consulting services;
Maintenance and updating of computer software;
Maintenance and upgrading of computer software;
Maintenance of computer software;
Maintenance of computer software relating to
computer security and prevention of computer
risks;
Programming of computer software for others;
Software authoring;
Software design and development;
Software development and product development in
the field of intelligence and human resources;
Update of computer software;
Updating and design of computer software;
Updating and maintenance of computer software;
Updating of computer software for others;
Updating of computer software relating to
computer security and prevention of computer
risks

Ser. No. 77910055
4
in International Class 42.1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used in connection with its services,
so resembles the mark I-EVOLVE TECHNOLOGY SERVICES
(standard characters), previously registered on the
Principal Register for the following services:
Computer services, namely, remote and on-site
management of the information technology (IT)
systems of others; Information technology
consultation; Hosting the web sites of others on
a computer server for a global computer network

in International Class 42,2 as to be likely to cause
confusion.
When the refusal was made final, applicant appealed.
The appeal is fully briefed.3

1 Application Serial No. 77910055 was filed on January 12, 2010,
based upon applicant’s assertion of January 1, 1999 as a date of
first use of the mark anywhere and in commerce. “TECHNOLOGY
SYSTEMS, INC.” is disclaimed.
The color(s) blue, gray is/are claimed as a feature of the
mark. The mark consists of the word e-volve in blue with an
arrow beginning at the "e" and carrying through the "volve"
portion with the arrow head after the last "e" in "volve." "e-
volve" along with the arrow are lower-case letters. The phrase
"technology systems, inc." is in lower-case letters and in gray.
The phrase is on level with the point of the arrow head after "e-
volve".
2 Registration No. 3682524 issued September 15, 2009 with a
disclaimer of “TECHNOLOGY SERVICES.”
3 Applicant submitted 5 exhibits with its main brief on appeal.
Resubmission of materials already of record is duplicative and
unnecessary. Furthermore, any materials not previously made of
record during prosecution of the application are untimely if
submitted for the first time at briefing. See TBMP § 1203.02(e)
and authorities cited therein.
Ser. No. 77910055
5
Likelihood of Confusion
Turning now to the matter under appeal, our
determination of the issue of likelihood of confusion is
based on an analysis of all of the probative facts in
evidence that are relevant to the factors outlined in 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
Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). In any likelihood of confusion analysis, two key,
though not exclusive, considerations are the similarities
between the marks and the similarities between the goods
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 27 (CCPA 1976). See
also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1533 (Fed. Cir. 1997).
Similarity of the Services
Turning first to our consideration of the recited
services, we must determine whether consumers are likely to
mistakenly believe that they emanate from a common source.
It is not necessary that the services at issue be similar
or competitive, or even that they move in the same channels
of trade, to support a holding of likelihood of confusion.
It is sufficient instead that the respective services are
related in some manner, and/or that the conditions and
Ser. No. 77910055
6
activities surrounding the marketing thereof are such that
they would or could be encountered by the same persons
under circumstances that could give rise to the mistaken
belief that they originate from the same producer. See In
re International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
In this case, applicant’s “Computer services, namely,
remote and on-site management of the information technology
(IT) systems of others,” “IT consulting services,” and
“Consulting in the field of information technology” are
virtually identical to services recited in the cited
registration for purposes of the second du Pont factor.
Because these services are identical, we find that the
second du Pont factor weighs heavily in support of a
conclusion that confusion is likely.4
Channels of Trade and Classes of Consumers

4 Because we find that applicant’s “Computer services, namely,
remote and on-site management of the information technology (IT)
systems of others,” “IT consulting services,” and “Consulting in
the field of information technology” are identical to services
identified in the cited registration, we need not also determine
the similarity or dissimilarity of registrant’s services to the
other computer services identified in applicant’s application.
Similarity as to any of the services identified in the
application and/or the cited registration will suffice as a basis
for finding the respective services to be similar for purposes of
the second du Pont factor. See Tuxedo Monopoly, Inc. v. General
Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In
re Max Capital Group Ltd., 93 USPQ2d 1243, 1244; In re Davey
Products Pty Ltd., 92 USPQ2d 1198, 1202; and In re Jump Designs
LLC, 80 USPQ2d 1370, 1374 (TTAB 2006).
Ser. No. 77910055
7
It is settled that in making our determination
regarding the relatedness of the parties’ services, we must
look to the services as identified in the involved
application and cited registration. See 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 [or services] set forth in the
application regardless of what the record may reveal as to
the particular nature of an applicant’s goods [or
services], the particular channels of trade or the class of
purchasers to which the sales of goods [or services] are
directed”). See also Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973)
(“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective
descriptions of goods [or services]”). In this case, there
are no restrictions in either applicant’s or registrant’s
recitation of services as to the channels of trade in which
the services may be encountered, or type or class of
customer to which the services are marketed. Thus, in
accordance with the above authority both applicant’s and
registrant’s services must be presumed to move in all
Ser. No. 77910055
8
normal channels of trade for such services and be available
to all classes of potential consumers, including consumers
of each other’s services. See In re Elbaum, 211 USPQ 639,
640 (TTAB 1981).
As a result, we are not persuaded by applicant’s
arguments that, for instance, the primary consumer of its
services is the U.S. Government, a sophisticated consumer,
or that registrant operates mainly in Western New York.
Absent specific limitations in the application or
registration, when the services are, in part, identical, we
must assume that the channels of trade and purchasers are
also the same. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268
(TTAB 2003) (“Given the in-part identical and in-part
related nature of the parties’ goods, and the lack of any
restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
the same channels of trade”); and 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”).
Moreover, even if applicant could establish that
registrant was currently operating in a distinct or limited
Ser. No. 77910055
9
geographic area, this would not support a conclusion that
there was no likelihood of confusion when applicant and
registrant have a geographically unrestricted application
and registration. In re Infinity Broadcasting Corp. of
Dallas, 60 USPQ2d 1214 (TTAB 2001) (“Given that
registrant’s registrations encompass nationwide rights, and
that applicant is seeking a geographically unrestricted
registration, applicant's argument is unavailing”); and In
re Integrity Mutual Insurance Co., 216 USPQ 895, 896 (TTAB
1982) (“Inasmuch as applicant is seeking a geographically
unrestricted registration, the Board is constrained to
evaluate similarities in terms of potentially nationwide
markets”).
Therefore, the channels of trade and purchasers must
be considered to be the same, and this du Pont factor also
favors a finding of likelihood of confusion.
Similarity of the Marks
We now consider the similarity of the marks, noting
initially that, “[w]hen marks would appear on virtually
identical ... services, the degree of similarity [of the
marks] necessary to support a conclusion of likely
confusion declines.” See Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed.
Cir. 1992). See also ECI Division of E-Systems, Inc. v.
Ser. No. 77910055
10
Environmental Communications Inc., 207 USPQ 443, 449 (TTAB
1980).
Turing to the marks at issue, we find applicant’s
mark,

is similar to registrant’s I-EVOLVE TECHNOLOGY SERVICES
mark in that they contain the nearly identical term E-VOLVE
or I-EVOLVE as the first portion thereof. E-VOLVE and I-
EVOLVE are highly similar in sound and meaning, and because
registrant’s mark is presented in typed or standard
character form, registrant’s mark may appear in size, color
and font identical to that of applicant’s mark. Cunningham
v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847
(Fed. Cir. 2000) (“Registrations with typed drawings are
not limited to any particular rendition of the mark and,
in particular, are not limited to the mark as it is used in
commerce”); and In re Cox Enterprises Inc., 82 USPQ2d 1040,
1044 (TTAB 2007) (“We must also consider that applicant’s
mark, presented in typed or standard character form, is not
limited to any special form or style as displayed on its
goods”).
With regard to the “TECHNOLOGY SYSTEMS, INC. portion
of applicant’s mark, and “TECHNOLOGY SERVICES” portion of
Ser. No. 77910055
11
registrant’s mark, we observe that both share the identical
highly descriptive or generic term TECHNOLOGY along with
the generic terms SYSTEMS, INC. and SERVICES, respectively.
We find, however, that this wording, which is disclaimed in
applicant’s and registrant’s marks, is subordinate to the
E-VOLVE and I-EVOLVE portions thereof, which appear to be
arbitrary or, at worst, suggestive of the services. See In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, (Fed.
Cir. 1985) (“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”). For instance, “that a particular feature is
descriptive or generic with respect to the involved goods
or services is one commonly accepted rationale for giving
less weight to a portion of a mark….” Id. at 224 USPQ at
751. In this case, TECHNOLOGY SYSTEMS, INC. and TECHNOLOGY
SERVICES clearly are highly descriptive or generic of the
recited services, and thus entitled to less weight in our
determination of the similarity of the marks.
Moreover, the significance of E-VOLVE in applicant’s
mark and I-EVOLVE in registrant’s mark is reinforced by
their location as the first word in both marks. Presto
Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895,
Ser. No. 77910055
12
1897) TTAB 1988) (“it is often the first part of a mark
which is most likely to be impressed in the mind of a
purchaser and remembered”). See also Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the
marks, consumers must first notice the identical lead
word). Thus, E-VOLVE and I-EVOLVE are the portions of the
marks to which the viewer is drawn, as well as the portions
that the viewer is most likely to remember.
The arrow design in applicant’s mark, though visually
somewhat prominent, is less significant than the wording
therein. This is because when a mark comprises both
wording and a design, the wording would be used by
customers to request the identified goods or services. See
In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
Further, the arrow design bisects the term E-VOLVE and thus
appears to reinforce the term’s commercial impression
rather than creating a separate and distinct impression.
In this case, for the above reasons we find E-VOLVE to be
the most dominant portion of applicant’s mark. This is
nearly identical to I-EVOLVE in the registered mark and,
when taken as a whole, applicant’s

Ser. No. 77910055
13
mark and registrant’s I-EVOLVE TECHNOLOGY SERVICES mark are
highly similar in appearance, sound and meaning and,
overall, convey highly similar commercial impressions.
Accordingly, this du Pont factor favors a finding of
likelihood of confusion.
Strength of the Mark in the Cited Registration
In coming to our determination regarding the
similarity of the marks, we have considered applicant’s
argument that “there is no evidence in the record that the
conflicting mark is famous”5 and that “the Examining
Attorney did not make findings or otherwise consider the
length of use of the conflicting mark, the volume of sales
or advertising.”6 In support, applicant cites to several
inter partes cases discussing fame of a plaintiff’s mark in
an opposition or cancellation proceeding. However,
applicant cites to no authority for its apparent position
either that the examining attorney must consider the fame
of a mark in a cited registration for purposes of raising a
Section 2(d) refusal, or that the Board must consider the
fame of a cited mark in our determination in an ex parte
appeal. Furthermore, the owner of the cited registration
is not a party to this proceeding and thus cannot introduce

5 Applicant’s brief, p. 4.
6 Id. at 4-5.
Ser. No. 77910055
14
evidence regarding its use of the mark protected thereby.
As we have noted in the past, fame is rarely a significant
factor in an ex parte appeal. In re Thomas, 79 USPQ2d
1021, 1027, n. 11 (TTAB 2006) (“Because this is an ex parte
proceeding, we would not expect the examining attorney to
submit evidence of fame of the cited mark”). As a result,
fame of registrant’s mark simply is not at issue in this
proceeding.
In addition, applicant argues that “a routine Internet
search reveals at least nine information technology
companies, in addition to Applicant, which use the word
‘evolve’ or ‘evolve technology’ to sell information
technology services.”7 In support of its argument,
applicant has made of record a listing of 9 businesses with
EVOLVE-formative names, their internet website addresses,
and a brief description of their services. For the
following reasons, we find applicant’s evidence
unpersuasive.
The results summaries are truncated to such an extent
that they contain insufficient information upon which we
may ascertain the nature of the use, if any, of the term
“EVOLVE.” Truncated results from search engines are

7 Id. at 5.

Ser. No. 77910055
15
entitled to little weight. In re Bayer Aktiengesellschaft,
488 F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007):
Bayer asserts that the list of GOOGLE search
result summaries is of lesser probative value
than evidence that provides the context within
which a term is used. We agree. Search engine
results—which provide little context to discern
how a term is actually used on the webpage that
can be accessed through the search result link—
may be insufficient to determine the nature of
the use of a term or the relevance of the search
results to registration considerations.

Similarly, in this case the proffered Google search
summaries do not provide sufficient context for us to
discern the extent to which the use of “EVLOVE” is
trademark use or otherwise is relevant to our determination
of the strength of the cited mark.
We accordingly find that, on the record in this case,
the mark in the cited registration is entitled to more than
a narrow scope of protection for the recited services. See
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735,
1740 (TTAB 1991), aff’d unpub., (No. 92-1086 Fed. Cir. June
5, 1992). Cf. In re Broadway Chicken, Inc., 38 USPQ2d 1559
(TTAB 1996). In any event, even if we were to find, based
on applicant’s evidence, that registrant’s mark is weak and
entitled to a narrow scope of protection, the scope is
still broad enough to prevent the registration of a highly
similar mark for services that are, in part, identical.
Ser. No. 77910055
16
See In re Farah Manufacturing Co., Inc., 435 F.2d 594, 168
USPQ 277, 278 (CCPA 1971).
Actual Confusion
A further du Pont factor discussed by applicant is
that of the lack of instances of actual confusion.
Applicant asserts that the absence of actual confusion for
7 years suggests no likelihood of confusion. However, it
is not necessary to show actual confusion in order to
establish likelihood of confusion. See Weiss Associates
Inc. v. HRL Associates Inc. 902 F.2d 1546, 223 USPQ 1025
(Fed. Cir. 1990). Particularly in an ex parte proceeding,
applicant’s assertion of the absence of actual confusion is
of little probative value in our determination on the issue
of likelihood of confusion because the Board cannot readily
determine whether there has been a significant opportunity
for actual confusion to have occurred, such that the
absence of confusion is meaningful. See In re Opus One
Inc., 60 USPQ2d 1812, 1817 (TTAB 2001); In re Kangaroos
U.S.A., 223 USPQ 1025 (TTAB 1984); and In re Jeep Corp.,
222 USPQ 333 (TTAB 1984). In those rare situations where
the Board has recognized the absence of actual confusion as
probative in an ex parte setting, there existed a
“confluence of facts” which together strongly suggested
that the absence of confusion was meaningful and should be
Ser. No. 77910055
17
given probative weight. See In re Opus One Inc., supra;
and In re Jeep Corp., supra. There is no evidence that
such a “confluence of facts” is present in this case. As a
result, this du Pont factor appears to be neutral.
Summary
In summary, we have considered all of applicant’s
arguments and evidence in support or registration,
including any evidence not specifically discussed herein.
Weighing all of the relevant du Pont factors, we find that
a likelihood of confusion exists.
Decision: The refusal of registration under Section
2(d) of the Trademark Act on the ground of likelihood of
confusion is affirmed.