EX2 Technology LLC

Trademark Trial and Appeal Board

Dec 8, 2017

No. 86819790 (T.T.A.B. Dec. 8, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: December 8, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
_____
In re EX2 Technology LLC
_____
Serial No. 86819790
_____
Denise C. Mazour of McGrath North Mullin & Kratz, PC LLO for
EX2 Technology LLC.

Marc J. Leipzig, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
_____
Before Quinn, Wellington, and Gorowitz,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

EX2 Technology LLC (“Applicant”) seeks registration on the Principal Register of
the mark:

Serial No. 86819790
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for the following services:
Financing of broadband network systems, apparatus, and installation for
others; Financing of communications and security systems, apparatus, and
installation for others in International Class 36;

Installation and maintenance of fiber, wireless, and hybrid broadband
communication network systems; Construction project management
services; Installation and maintenance of fiber optic cables, electronics and
conduit, all being primary components of telecommunications
infrastructure in International Class 37;

Consulting services in the field of communications in International Class
38; and

Design of fiber, wireless, and hybrid broadband network systems for
others; Design of communications systems infrastructure for others in
International Class 42.1

The colors black, gold, yellow, and navy blue are claimed as features of the mark.
The Examining Attorney refused registration as to Classes 37, 38 and 42,2 under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of
confusion with the following two registered marks (owned by the same entity):

1 Application Serial No. 86819790, filed on November 13, 2015, is based on Applicant’s
allegation of first use in commerce on March 31, 2015, under Section 1(a) of the Trademark
Act, for the services identified in Classes 36, 37, and 42.
By way of its response filed on September 12, 2016, Applicant amended the application to
add the Class 38 services based on an allegation of a bona fide intent to use the mark in
connection with these services, under Section 1(b). Later in examination, it appears the
application was inadvertently amended so that all classes of services were based on a foreign
registration, under Section 44(e). The application was then amended by Applicant, on May
2, 2017, to delete the Section 44(e) basis; in doing so, Applicant asserted use in commerce,
Section 1(a), as the only basis for all classes. However, there are no first use anywhere or first
use in commerce dates or specimens of use for Class 38 in the application record. If,
ultimately, the refusal to registration is successfully appealed with respect to the Class 38
services, this will need to be addressed.
2 Although the involved application also covers services in International Class 36, the
Examining Attorney specifically states that the refusal “does not pertain to the services
listed in Class 36.” 9 TTABVUE 3 (Note 1).
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EX2 and EX2 SOLUTIONS, both for the following services:
Consulting, development, design and implementation services in the field
of software applications, integration, network and systems infrastructure
and security; hosting, monitoring and maintenance of computer software
applications and infrastructure for others in International Class 42.3

After the Examining Attorney made the refusal final, Applicant appealed and filed
a request for reconsideration. The Examining Attorney denied the request for
reconsideration and the appeal has been briefed. For the following reasons, we affirm
the refusal.
Likelihood of Confusion
Our determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on the likelihood of confusion factors. In re E.I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors
to be considered, hereinafter referred to as “du Pont factors”); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the relatedness of the goods or services. See In re Chatam Int’l Inc.,
380 F.2d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); 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 [or services] and differences in the marks.”).

3 Registrations Nos. 3226951 (EX²) and 3226954 (EX2 SOLUTIONS) issued on April 10, 2007,
and have been renewed.
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We limit our likelihood of confusion analysis in this case to the registered EX2
mark vis-à-vis Applicant’s mark, EX2 (stylized). This registered mark, without the
additional term SOLUTIONS, is more similar to Applicant’s mark than the other
cited registered mark, and the two registrations cover the same services. Thus, should
it ultimately be determined that there is no likelihood of confusion with the registered
EX2 mark, confusion would not be likely with the registered mark EX2 SOLUTIONS.
A. Similarity of the Marks
We find Applicant’s mark, , and Registrant’s EX2 mark are very similar
“in their entireties as to appearance, sound, connotation and commercial impression.”
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at
567). The two marks consist of the same literal term, namely, EX followed by a raised
numeral “2.” Although there is a visual difference due to Applicant’s stylized lettering
versus the registered mark having a more standard font, consumers verbalizing
either mark are likely pronounce them identically. That is, either mark may be
spoken equally as “E X squared” or “EX Squared” or “EX two.” This is significant
because this will be how consumers, in speaking with others, request or identify
Applicant’s or Registrant’s services. In re Dakin's Miniatures Inc., 59 USPQ2d 1593,
1596 (TTAB 2001); In re Appetito Provisions Co.,3 USPQ2d 1553, 1554 (TTAB
1987); Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB
1985). Thus, although the marks can be distinguished when presented side-by-side,
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this is not the test and when consumers describe, refer or recall both marks
by verbalizing them the same way, confusion may ensue as to which of the two marks
is being referenced.
In terms of meaning or connotation, the term EX2 (or EX2) has no significance in
connection with the involved services. Thus, consumers are either likely to perceive
its presence in the marks as an arbitrary term or, if some connotation is attached to
this term, it would be the same for Applicant’s or Registrant’s mark.
Considering the marks in their entireties, we find the appearance, sound,
connotation and commercial impression of Applicant’s mark, , to be extremely
similar to the registered mark, EX2. Accordingly, the du Pont factor regarding the
similarity of the marks weighs in favor of finding confusion likely.
B. Relatedness of the Services
We next consider the relatedness of the services. In doing so, we keep in mind our
finding that the marks are overall very similar to each other and the general
proposition that “the greater the degree of similarity between applicant's mark and
the cited registered mark, the lesser the degree of similarity between the applicant's
goods or services and the registrant's goods or services that is required to support a
finding of likelihood of confusion.” In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB
2001); see also, Amcor, Inc. v. Amcor industries, Inc., 210 USPQ 70 (TTAB 1981). It
is also not necessary that the respective services be competitive, or even that they
move in the same channels of trade to support a holding of likelihood of confusion;
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rather, we need only find that they are related in some manner, or that the conditions
and activities surrounding the marketing of the services 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 entity. Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir.
2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007). See
also On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471
(Fed. Cir. 2000); In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ
1289 (Fed. Cir. 1984).
At the outset, we note a substantial difference between Applicant’s and the
Examining Attorney’s construction or interpretation of Registrant’s identified
services. Specifically, Applicant argues that the term “software” in Registrant’s
services:
Consulting, development, design and implementation services in the field
of software applications, integration, network and systems infrastructure
and security; hosting, monitoring and maintenance of computer software
applications and infrastructure for others. (emphasis added)

should be read as “clearly identif[ying] and relat[ing] to a singular field, namely,
software.”4 In other words, Applicant asserts that Registrant’s field of services should
be understood as not just involving “software applications,” but also modifying each
term that follows and is separated by commas, i.e., “software integration … software
network … software systems infrastructure … and software security,” as well as

4 7 TTABVUE 12.
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“software infrastructure for others” in the second part of the recitation following the
semi-colon.
The Examining Attorney, on the other hand, asserts that with respect to
Registrant’s recitation of services:5
The semi-colon separates registrant’s consulting, development, design and
implementation services from the hosting, monitoring and maintenance
services. In the first part of registrant’s recitation of services, the use of
commas serves to delineate the various fields (not a single field, as argued
by applicant) of use of registrant’s services. Rather than simply being
subsets within the singular field of “software,” registrant’s services are
offered in various fields, including network and systems infrastructure and
security – the use of the word “field” must be read in the context of what
follows, namely, a series of fields in which registrant provides services.

We agree with the Examining Attorney that Registrant’s field of services is not
entirely restricted or modified by “software.” In cases like this where
the punctuation in a registrant's identification of services creates ambiguity as to the
scope of the identification, we should resolve any doubt in favor of the registrant. In
re C.H. Hanson Co., 116 USPQ2d 1351 (TTAB 2015). Moreover, with regard to the
services in the registration here, it does not appear that “software” would be
appropriate for purposes of modifying the additional terms, such as “network and
systems infrastructure and security.” Rather, it appears more likely that Registrant’s
services should interpreted intuitively as including “consulting, development, design
and implementation services in the field of … network and systems infrastructure
and security.”

5 9 TTABVUE 9.
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We also point out, and the authority is legion on this principle, that our analysis
regarding the relatedness of the services is governed by how they are described in the
respective application and cited registration(s); that is, if the services are described
broadly, and there is no limitation as to their nature, type, channels of trade, or class
of purchasers, it is presumed that the application and registration encompass all
services of the type described, that they move in all normal channels of trade, and
that they are available to all classes of purchasers. See, e.g., Levi Strauss & Co. v.
Abercrombie & Fitch Trading Co., 719 F.3d 1367, 1373, 107 USPQ2d 1167, 1173 (Fed.
Cir. 2013); In re Thor Tech, Inc., 90 USPQ2d 1634, 1638 (TTAB 2009) ("We have no
authority to read any restrictions or limitations into the registrant’s description of
goods."); In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006).
With this in mind, we conclude that within each class of services in the application
for which registration has been refused, there is an overlapping or encompassing
service in the cited registration. Specifically, with respect to Class 37, Registrant’s
broader “maintenance of computer software applications and infrastructure for
others” necessarily encompasses Applicant’s “maintenance of fiber, wireless, and
hybrid broadband communication network systems.” That is, Registrant’s
maintenance of infrastructure for others includes maintaining communications
infrastructures and this would be the same as Applicant’s maintenance of the
communication network systems. Likewise, as to Class 38, Applicant’s consultation
services in the field of communications would include Registrant’s consulting services
in the field of network and systems infrastructure or vice-versa. As noted, the field of
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“network and systems infrastructure” is broad enough to include communications
networks and communications infrastructures. Finally, in regard to Class 42 of the
application, Applicant’s “design of communications systems infrastructure” is clearly
overlapping with Registrant’s “design … in the field of … network and systems
infrastructure.
In addition to our findings that the involved services, as identified in the
application and registrations, we are further persuaded there is a relationship
between Applicant’s and Registrant’s services based on the internet evidence
submitted by the Examining Attorney. This evidence consists of third-party websites
offering consultation and design services in the field of network integration and
systems infrastructure as well as in the field of communications.6 For example, the
record includes printouts from the Tricom Communications, Inc. website advertising
“consulting and design services” for various types of communication systems.7
Another website, Amplitel Technologies LLC, touts its “consulting, installation”
services for organizations and these services involve “computer and communications
hardware and software” in various types of systems, infrastructure and networks.8
This evidence is relevant because it shows that consumers are accustomed to the
same entities rendering services that are the same as, or very similar to, those
described in both the application and cited registrations.

6 Attached to Office Action issued on October 20, 2016.
7 Id. at pp. 9-11.
8 Id. at pp. 15-17.
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C. Trade Channels for the Services
As to the channels of trade and classes of purchasers, because the involved
services are overlapping, and thus identical at least in part for each class, we must
presume that the channels of trade and classes of purchasers of these services, where
overlapping, are also the same. Stone Lion Capital Partners, LP v. Lion Capital LLP,
746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); In re Fat Boys Water Sports
LLC, 118 USPQ2d 1511, 1518-19 (TTAB 2016); see also In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this
legal presumption in determining likelihood of confusion). Even without such a
presumption, we note the third-party website evidence also shows that Applicant’s
and Registrant’s services may not only be offered by the same entity but also
advertised to others via the websites. This demonstrates the services have at least
one common trade channel and will be offered to some of the same classes of
purchasers.
Accordingly, the du Pont factors relating to the similarity of the services, channels
of trade, and classes of purchasers all favor a finding of likelihood of confusion.
Conclusion
Based on the overall similarity of Applicant’s mark with the registered mark, the
overlapping of services in Classes 37, 38 and 42, and the overlap in trade channels
and classes of consumers, we find that Applicant’s mark, , is likely to cause
confusion with the registered mark, EX2.
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Decision: The refusal to register Applicant’s mark in International Classes 37,
38, and 42 is affirmed. The application will be forwarded, in due course, for
publication in International Class 36.