Edward M. Shin

Trademark Trial and Appeal Board

Mar 24, 2009

No. 77186384 (T.T.A.B. Mar. 24, 2009)

Mailed: 3/24/09

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Edward M. Shin
________

Serial No. 77186384
_______

Edwin M. Shin, pro se.

Lourdes D. Ayala, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Quinn, Bucher and Zervas, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Edwin M. Shin filed, on May 21, 2007, an intent-to-use
application to register the mark

(in standard character form) for “electronic transmission
of voice, data, and/or audio/visual content from wireless
or wired telephones or other wireless devices to
predesignated recipients” in International Class 38.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser. No. 77186384
2
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, when used in
connection with applicant’s services, so resembles the
previously registered mark (in special form)

for “electronic transmission of messages and data;
facsimile transmission; telecommunication services, namely,
local and long distance transmission of voice, data, and
graphics by means of telephone, telegraphic, cable, and
satellite transmissions; telegram transmission” in
International Class 381 as to be likely to cause confusion.
The cited registration issued on the Supplemental Register.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.2
Applicant contends that the marks “wi-Notifi” and
“WeNotify” are different in sound, appearance, meaning and

1 Registration No. 2899273, issued November 2, 2004.
2 The examining attorney claims that applicant untimely submitted
additional evidence with his appeal brief, and requests that the
evidence not be considered. We agree with applicant’s response
in his reply brief that the examining attorney is “simply wrong.”
The evidence was previously submitted during the prosecution of
the application, and applicant merely attached the evidence to
the brief “for the Board’s convenience.” Accordingly, we have
considered this evidence.
Ser. No. 77186384
3
commercial impression. Applicant does not dispute that the
services rendered under the marks are related. In support
of his arguments, applicant relied upon an online
dictionary definition of “Wi-Fi,” and ten third-party
registrations of marks incorporating “Wi-Fi” for
telecommunications and/or Internet-related services.
The examining attorney maintains that the marks are
similar and that the services are closely related. The
examining attorney, while recognizing the slight
differences between the marks in appearance, contends that
the marks are phonetic equivalents and, therefore, sound
alike. The meanings and commercial impressions of the
marks, the examining attorney urges, likewise are similar.
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 set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, two key 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 (CCPA 1976).
Ser. No. 77186384
4
Turning first to a comparison of the services,
applicant does not dispute that they are similar. Indeed,
the services, as identified in the respective recitations,
are, in part, legally identical, or otherwise closely
related.
Inasmuch as the application and registration include
identical services, we must conclude that the purchasers
and channels of trade of applicant’s and registrant’s
services are also identical. Hewlett-Packard Co. v.
Packard Press, Inc., 281 F.2d 1261, 62 USPQ2d 1001, 1005
(Fed. Cir. 2002) (“[A]bsent restrictions in the application
and registration, goods and services are presumed to travel
in the same channels of trade to the same class of
purchasers”); 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”). These purchasers would include ordinary
Ser. No. 77186384
5
ones, who would exercise nothing more than ordinary care in
making their purchasing decisions. These du Pont factors
weigh in favor of a finding of likelihood of confusion.
The crux of the likelihood of confusion issue in this
appeal is the du Pont factor focusing on the similarity
between the marks. We must compare the marks in their
entireties as to appearance, sound, connotation and
commercial impression to determine the similarity or
dissimilarity between them. Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test, under the
first du Pont factor, is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression that confusion
as to the source of the services offered under the
respective marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks.
See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975). Finally, where, as in the present case, the marks
are used in connection with legally identical or closely
related services, the degree of similarity between the
marks that is necessary to support a finding of likely
Ser. No. 77186384
6
confusion declines. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed.
Cir. 1992).
At the outset of comparing the marks, it is important
to note that “Wi-Fi,” a commonly used and recognized term,
plays a central role in how consumers will perceive
applicant’s “wi-Notifi” mark. The abbreviation “Wi-Fi” is
defined as follows: “a brand name developed by the Wi-Fi
Alliance to ensure capability among products which
communicate data wirelessly via the IEEE 802.11
specification. Designed to be a rhyming couplet with Wi
meaning Wireless and Fi being the rhyming complement.”
(www.en.wiktionary.org). Also of record are ten third-
party registrations of marks having a “Wi-Fi” component
(disclaimed) for telecommunication and Internet-related
services. Applicant’s “wi-Notifi” mark is an obvious play
on or a permutation of the well-known “Wi-Fi” term. We
find that the purchasing public will rely on its knowledge
of this term, and its role in applicant’s mark, to
distinguish this mark from registrant’s mark.
With regard to appearance, although the marks share
some similarities, the marks are specifically different.
Applicant’s mark comprises two components, “wi-” and
“Notifi,” and is visually distinctive by the use of the
Ser. No. 77186384
7
letter “i” at the end of both components of the mark, the
later “i” resulting in a misspelling of the word “notify.”
Registrant’s mark, on the other hand, comprises two
standard English terms. We find that the visual
differences between the marks outweigh the similarities.
As to sound, although there is no correct
pronunciation of a trademark, applicant’s evidence gives us
a reasonable basis upon which to find that the marks are
likely to be pronounced differently. The prefix “wi-” in
applicant’s mark, especially when coupled with “-fi” at the
end of the mark, is likely to be pronounced as “why,” the
same as the “wi” in “Wi-Fi.” The first component of
applicant’s mark, “wi-,” would be readily perceived and
recognized by consumers as being pronounced “why” to rhyme
with the sound of “fi.” The third-party registrations of
“Wi-Fi” marks buttress the notion that consumers for
telecommunication services would likely pronounce the “wi-”
component of the mark as “why.” This is contrasted with
the “we” portion of registrant’s mark that will be
pronounced as “wee.”
Insofar as meaning and commercial impression are
concerned, there are significant differences between the
marks. Again, these differences are based on the “Wi-Fi”
foundation of applicant’s mark. Applicant’s mark suggests
Ser. No. 77186384
8
some unspecified relationship between applicant’s services
and wireless telecommunications and/or the Internet, based
on applicant’s use of the “wi-” prefix coupled with the “-
fi” portion of the second component. This is contrasted
with registrant’s mark that describes an action, namely
that registrant provides telecommunication services that
involve some type of notification to others. These
differences in meaning engender different overall
commercial impressions in the marks “wi-Notifi” and
“WeNotify.”
In making our decision we are mindful that the cited
registration is registered on the Supplemental Register,
meaning that the term is not registrable on the Principal
Register and is only capable of someday becoming a “mark”
upon acquisition of acquired distinctiveness. See In re
Clorox Co., 578 F.2d 305, 198 USPQ 337 (CCPA 1978). Given
the mark and services of the cited registration, it is
clear that the registered mark is merely descriptive. As a
result, consumers are not likely to assume that all similar
marks or permutations of registrant’s mark indicate a
common source. In this case, where the cited mark is weak,
and the different spellings of the marks give different
meanings and commercial impressions to them, these
differences are sufficient to distinguish the marks. This
Ser. No. 77186384
9
is a circumstance where consumers would rely on what would
otherwise be relatively slight differences between the
marks to distinguish the marks.
We recognize that the services are, in part, legally
identical, but each of the du Pont factors may, in any
particular case, play a dominant role. In re E. I. du Pont
de Nemours & Co., 177 USPQ at 567. See also Kellogg Co. V.
Pack’em Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142
(Fed. Cir. 1991). In the present case, the weakness of
registrant’s mark and the differences in the marks deserve
greater weight in the likelihood of confusion analysis. As
the Court said in Sure-Fit Products Co. v. Saltzson Drapery
Co., 254 F.2d 158, 117 USPQ 295, 297 (CCPA 1958):
It seems both logical and obvious to us
that where a party chooses a trademark
which is inherently weak, he will not
enjoy the wide latitude of protection
afforded the owners of strong
trademarks. Where a party uses a weak
mark, his competitors may come closer
to his mark than would be the case with
a strong mark without violating his
rights. The essence of all we have
said is that in the former case there
is not the possibility of confusion
that exists in the latter case.

Thus, when we weigh the relevant du Pont factors, we
find that applicant’s mark for its recited services is not
likely to cause confusion with registrant’s mark for its
recited services.
Ser. No. 77186384
10
In view of the weakness of registrant’s mark, the
differences between the marks are sufficient to distinguish
applicant’s mark “Wi-Notifi” from registrant’s mark
“WeNotify,” despite the fact the services are legally
identical, must be deemed to travel in the same trade
channels, and be purchased by ordinary consumers who do not
exercise a great deal of care. See, e.g., In re Central
Soya Co., 220 USPQ 914 (TTAB 1984) (POSADA for lodging and
restaurant services registered on the Supplemental Register
no bar to registration of POSADA for frozen Mexican food);
In re Texas Instruments, Inc., 193 USPQ 678 (TTAB 1976)
(Supplemental Registration is given only a narrow scope of
protection; no confusion between COPPER CLAD (and design)
and COPPERCLAD); and In re Hunke & Jochheim, 185 USPQ 188
(TTAB 1975) (cited Supplemental Register registration
creates likely confusion only with respect to substantially
identical format for substantially similar goods; no
confusion between applicant’s HIG-DURABLE and Supplemental
Registration of DURABUL).
Decision: The refusal to register is reversed.