EX2 Technology LLCDownload PDFTrademark Trial and Appeal BoardDec 8, 2017No. 86819783 (T.T.A.B. Dec. 8, 2017) Copy Citation 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. 86819783 _____ 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 standard character mark EX2 TECHNOLOGY 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 Serial No. 86819783 - 2 - 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 Applicant has disclaimed the term TECHNOLOGY. 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 registered marks (owned by the same entity): 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. 1 Application Serial No. 86819783, 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; and based on an allegation of a bona fide intent to use the mark in commerce, under Section 1(b) of the Trademark Act, with respect to the Class 38 services. 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). 3 Registrations Nos. 3226951 (EX²) and 3226954 (EX2 SOLUTIONS) issued on April 10, 2007, and have been renewed. Serial No. 86819783 - 3 - 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.”). A. Similarity of the Marks We find Applicant’s EX2 TECHNOLOGY mark and Registrant’s EX2 and EX2 SOLUTIONS marks are 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). In comparing the latter registered mark with Applicant’s mark, we initially note that both begin with the same term, EX2. This obviously creates a strong visual resemblance between the two marks and makes them sound similar. Whether consumers pronounce this term as “ex two” or “e … x … two,” it would be the same for either mark. There is significance to the fact that Serial No. 86819783 - 4 - the same term appears first because it is “most likely to be impressed upon the mind of a purchaser and remembered.” See Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). We do not ignore the additional word that follows EX2 in each mark -- SOLUTIONS in the registered mark and TECHNOLOGY in Applicant’s mark;4 however, these terms are suggestive, if not descriptive, and are ubiquitous in connection with software, computers and technology. In contrast, EX2 has no demonstrated meaning in the context of the services and, as an arbitrary term, plays a larger role in forming the marks’ overall commercial impressions versus the secondary terms, SOLUTIONS and TECHNOLOGY. See Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1354 (Fed. Cir. 2000) (“Once all the features of the mark are considered, . . . it is not improper to state that, for rational reasons, more or less weight has been given to a particular feature of the mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties.”). As to the other registered mark, EX2, it differs from Applicant’s mark to the extent that the numeral “2” appears in superscript or as an exponent. Nevertheless, because Applicant seeks to register its mark in standard characters, we keep in mind that, if registered, protection would extend to the mark being presented in any color, font style or size. See In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); see also 37 C.F.R. § 2.52(a). Thus, although an exponent or superscript 4 As noted, Applicant disclaimed the term TECHNOLOGY in its original application. Serial No. 86819783 - 5 - character cannot be expressed in a standard character mark,5 Applicant may present its mark in a manner whereby the numeral “2” approximates that of a superscript or exponent. Indeed, the specimen of use Applicant submitted with its application, shows use of its mark in the following manners: and .6 Consumers viewing the “EX2” portion of Applicant’s mark, presented in either of the above manners, are likely to perceive it in the same manner as Registrant’s EX² mark, whether it connotes “EX squared” or simply “EX with ‘2’ superscript.” Again, Applicant’s addition of the disclaimed term TECHNOLOGY does little to distinguish the marks and consumers are more likely to focus on the initial and arbitrary terms, EX2 and EX2. See Packard Press, 56 USPQ2d at 1354. Considering the marks in their entireties, we find the appearance, sound, connotation and commercial impression of Applicant’s EX2 TECHNOLOGY mark to be very close to that of both of the cited marks, EX2 and EX2 SOLUTIONS. Accordingly, the du Pont factor regarding the similarity of the marks weighs in favor of finding confusion likely. 5 “Superscripts, subscripts, [and] exponents” are specifically not permitted in standard character marks. TMEP § 807.03 (October 2017). 6 Specimen; TSDR November 13, 2015. Serial No. 86819783 - 6 - 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; 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 Serial No. 86819783 - 7 - 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.”7 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 “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:8 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 7 7 TTABVUE 12. 8 9 TTABVUE 9. Serial No. 86819783 - 8 - 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.” 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 Serial No. 86819783 - 9 - service in the cited registrations. 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 “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, are overlapping or encompassing of one another, 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.9 For example, the record includes printouts from the Tricom 9 Attached to Office Action issued on October 20, 2016. Serial No. 86819783 - 10 - Communications, Inc. website advertising “consulting and design services” for various types of communication systems.10 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.11 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. 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 10 Id. at pp. 9-11. 11 Id. at pp. 15-17. Serial No. 86819783 - 11 - 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 each of the registered marks, 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, EX2 TECHNOLOGY, is likely to cause confusion with the cited registered marks, EX2 and EX2 SOLUTIONS. 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. Copy with citationCopy as parenthetical citation