FiftyThree, Inc.

Trademark Trial and Appeal Board

Apr 12, 2017

No. 86180291 (T.T.A.B. Apr. 12, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: April 12, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re FiftyThree, Inc.
_____

Serial No. 86180291
_____

Stacey J. Watson of Markery Law LLC,
for FiftyThree, Inc.
Robert Clark, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
_____

Before Bergsman, Gorowitz and Heasley,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
FiftyThree, Inc. (“Applicant”) seeks registration on the Principal Register of the
mark PAPER (in standard characters) for “computer application software for smart
phones and tablets, namely, software for use in writing on smart phones and tablets
with either a stylus or finger and sharing that content with others via a social
network,” in Class 9.1 Applicant claimed ownership of Registration No. 4457350 for

1 Application Serial No. 86180291 was filed on January 30, 2014, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and
use in commerce since at least as early as March 29, 2012.
Serial No. 86180291
- 2 -
the mark PAPER BY FIFTYTHREE (in standard characters) for the same description
of goods.
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark so resembles the registered mark BAMBOO PAPER and design,
shown below,

for, the goods set forth below, as to be likely to cause confusion:
Coordinate input devices for computers; computer cursor
control devices, namely, digitizer tablets; input tablets for
computers; electronic pens in the nature of visual display
units; touch panels for computers; electronic whiteboards;
input devices for computers; data processing apparatus;
software for computer input, namely, computer software
for operating a coordinate inputting system and for
drawing, painting; computer software for recording and
processing input information; electronic machines,
apparatus and parts therefor, namely, computer
peripheral devices; computer hardware and software for
recording hand-written digital signature; computers;
telecommunication machines and apparatus, namely,
telecommunication terminals; personal digital assistants;
image processing software; television apparatus, namely,
televisions; digital cameras; liquid-crystal displays; optical
discs, namely, blank optical discs, magnetic discs, namely,
blank magnetic discs; calculating machines; downloadable
electronic publications, namely, magazines and books in
the field of computers, art and music; game programs for
home video game machines; electronic circuits and CD-
ROMs recorded with programs for hand-held video games
Serial No. 86180291
- 3 -
with liquid crystal displays; cases especially made for
tablet computers; touch panels for PDA (personal digital
assistants), in Class 9.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We reverse the refusal to register.
Our determination 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) (“du Pont”) cited in B&B Hardware, Inc. v. Hargis
Ind., Inc., 135 S.Ct.1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have
considered each du Pont factor that is relevant and for which there is evidence of
record. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944,
1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232,
1242 (TTAB 2015) (“While we have considered each factor for which we have
evidence, we focus our analysis on those factors we find to be relevant.”). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the similarities between the goods and/or services. See In re Chatam
Int’l Inc., 380 F.2d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The

2 Registration No. 4643067, registered November 25, 2014. As the filing basis for the
application for this registration, Registrant requested an extension of protection under
Section 66 of the Trademark Act, 15 U.S.C. § 1141f.
Serial No. 86180291
- 4 -
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.”); see also
In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015).
A. The similarity or dissimilarity and nature of the goods.
Applicant is seeking to register its mark PAPER for “computer application
software for smart phones and tablets, namely, software for use in writing on smart
phones and tablets with either a stylus or finger and sharing that content with others
via a social network.” According to Applicant’s counsel, “[t]his app enables users to
sketch, draw, diagram and write on an iPad, and then share their works with friends
and colleagues through social media.”3 Counsel’s explanation is corroborated by the
review posted on the Que website (quepublishing.com), “Using a Bluetooth Stylus
with the iPad3 (The New iPad)” (May 29, 2012), which describes Applicant’s PAPER
as “a drawing and sketching tool.”4
When the app launches, you’ll see several blank virtual
notebooks displayed. …
When you tap on a notebook to open it, what’s revealed are
blank pages. Tap on any blank page to access the drawing
tools offered within the app, which include a simulated
fountain pen, sketch pencil, felt-tip marker, ballpoint pen,
paintbrush and eraser. Choose your writing instrument,
and then tap on an ink color. …
Using your stylus or finger, simply begin writing or
drawing on each blank page of the notebook. Swipe your
finger from right to left, or from left to right, to turn the

3 Applicant’s Brief, p. 24 (7 TTABVUE 25).
4 December 17, 2015 Office Action, TSDR, pp. 26-27. All references to TSDR citations are to
documents in the .pdf format.
Serial No. 86180291
- 5 -
page of the notebook, or perform a pinch motion with your
fingers to exit the drawing/writing mode.5
An advertisement on the iTunes website (itunes.apple.com) describes Applicant’s
PAPER software as follows:
Paper – Notes, Photo Annotation, and Sketches by
FiftyThree
By FiftyThree, Inc.
* * *
Description
When inspiration happens, put it on Paper. Paper is the
best way to capture and connect your notes, photos, and
sketches. Create checklists, spotlight details in photos, and
sketch diagrams with unbeatable speed and ease – Paper
is like a wall of sticky notes for everything that inspires
you.6
Turning to Registrant’s mark BAMBOO PAPER, it is registered for, as
particularly relevant, the products listed below:
Coordinate input devices for computers; computer cursor
control devices, namely, digitizer tablets; input tablets for
computers; electronic pens in the nature of visual display
units; touch panels for computers; electronic whiteboards;
input devices for computers; data processing apparatus;
software for computer input, namely, computer software
for operating a coordinate inputting system and for
drawing, painting; computer software for recording and
processing input information…

5 Id.
6 December 17, 2015 Office Action, TSDR p. 14.
Serial No. 86180291
- 6 -
Registrant’s website (wacom.com) explains that its BAMBOO PAPER turns “your
tablet into a paper notebook.”7 An advertisement posted on the iTunes website
(itunes.apple.com) describes Registrant’s BAMBOO PAPER as follows:
Bamboo Paper – Notebook
By Wacom
* * *
Description
Turn your iPad into a paper notebook and capture your
ideas everywhere, anytime. Taking, notes, sketching, and
drawing is as straightforward and simple as using real pen
and paper.8
Both Applicant’s computer application software and Registrant’s “electronic
whiteboards … data processing apparatus; software for computer input, namely,
computer software for operating a coordinate inputting system and for drawing,
painting; computer software for recording and processing input information” identify
digital notebooks that simulate paper notebooks. Thus, the goods are in part
identical.
B. Established, likely-to-continue channels of trade.
Because the goods described in the application and the cited registration are in
part identical, we must presume that the channels of trade and classes of purchasers
are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012) (legally identical goods are presumed to travel in same channels of trade to

7 December 17, 2015 Office Action, TSDR p. 49. See also the June 5, 2015 Office Action,
TSDR p. 7.
8 December 17, 2015 Office Action, TSDR p. 10. See also TSDR p. 58.
Serial No. 86180291
- 7 -
same class of purchasers); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ
721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade
and classes of purchasers are considered to be the same); United Global Media Grp.,
Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); American Lebanese Syrian
Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028
(TTAB 2011).
C. The number and nature of similar marks in use on similar goods.
The point of similarity between the marks is the word “Paper.” It is the entirety
of Applicant’s mark and the noun modified by the adjective BAMBOO in the
registered mark. Applicant contends that the numerous third-party users of marks
consisting, in whole or in part, of the word “Paper” and the numerous third-party
registrations incorporating the word “Paper” prove that “Paper” is a weak term, for
the products in issue and is entitled to only a narrow scope of protection or exclusivity
of use.9 “Marks that are descriptive or highly suggestive are entitled to a narrower
scope of protection, i.e., are less likely to generate confusion over source identification,
than their more fanciful counterparts.” Juice Generation, Inc. v. GS Enters. LLC, 794
F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015) (citing Drackett Co. v. H.
Kohnstamm & Co., 404 F.2d 1399, 160 USPQ 407, 408 (CCPA 1969) (“The scope of
protection afforded such highly suggestive marks is necessarily narrow and confusion
is not likely to result from the use of two marks carrying the same suggestion as to
the use of closely similar goods.”)).

9 Applicant’s Brief, pp. 14-21 (7 TTABVUE 15-22).
Serial No. 86180291
- 8 -
The following third-party uses consisting of the word “Paper” for products related
to digital notebooks have been made of record:
1. Pen and Paper is an “app that allows you to combine multi-colored on-screen
handwriting, sketches, and drawings with typed notes in order to create virtual
notebooks.”10
2. PAPERLESS DRAW is identified as being similar to Pen and Paper.11
3. ePaper is a “Sketch, Write, Paint and Take Notes on a Digital Paper
Notebook.”12 The description of this “app” includes a comparison to Applicant’s
PAPER application (“If you want an app just like the top-rated ‘Paper’ app,
but much better with more brushes, undo and …”).
In addition to the evidence of use, in the May 6, 2014 Office Action, the Trademark
Examining Attorney refused to register Applicant’s mark under Section 2(d) citing
thirteen third-party registrations. The nine relevant registrations are listed below.13
Although that refusal was withdrawn in the November 17, 2014 Office Action, we use
these registrations in the manner of a dictionary to show how the word “Paper” is

10 “Using a Bluetooth Stylus with the iPad 3 (The New iPad),” Que website
(quepublishing.com) (May 29, 2012) attached to the December 17, 2015 Office Action, TSDR
pp. 26-27. See also Google.com/store attached to the November 17, 2014 Office Action, TSDR
p. 7 advertising the Pen & Paper app.
11 The Google/com/store website advertised Paperless-Draw as a similar app. See the
November 17, 2014 Office Action, TSDR p. 9.
12 iTunes website (itunes.apple.com) attached to the November 17, 2014 Office Action, TSDR
p. 4. The iTunes website noted that customers who bought PAPER by miSoft also bought
ePaper-Sketch.
13 Registration No. 1951474 for the mark PAPER DIRECT and design, Registration No.
2559182 for the mark PAPERDIRECT, Registration No. 4156253 for the mark PaperC, and
Registration No. 4152924 for the mark CLOUDPAPERS are registered for goods and services
that are not remotely related to Applicant’s description of goods.
Serial No. 86180291
- 9 -
used for products such as those involved in this case. See Juice Generation, 115
USPQ2d at 1675 (quoting 2 McCarthy on Trademarks and Unfair Competition
§ 11:90 (4th ed. 2015) (“Third party registrations are relevant to prove that some
segment of the composite mark which both contesting parties use has a normally
understood and well recognized descriptive or suggestive meaning, leading to the
conclusions that that segment is relatively weak.”)); see also Tektronix, Inc. v.
Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694-95 (CCPA 1976) (even if “there is
no evidence of actual use” of marks in “third-party registrations,” such registrations
“may be given some weight to show the meaning of a mark in the same way that
dictionaries are used”).14 In other words, when the word “Paper” is part of a mark for
the goods or services identified below, it suggests that the products or services may
serve as some sort of paper substitute.
Mark Reg. No. Relevant Goods/Services

PAPER WARE 1834389 Software for use in document management

PAPERS 1994581 Computer software for hospitals and other
medical businesses for use as a patient and
health care/insurance provider electronic
record system

PAPERDISK 2032916 Computer software for use in storing
digital data on paper

PC PAPERS 2200752 Computer software for generating
resumes, invitations and the like (“Papers”
disclaimed)

14 While we may assume that use-based registrations issued only after their owners asserted
to the USPTO that the marks were in use, the registrations themselves do not directly
demonstrate that the marks are in fact present in the marketplace, the extent to which they
have been used, or the extent to which customers have been exposed to them.
Serial No. 86180291
- 10 -
Mark Reg. No. Relevant Goods/Services

PUBLISHPAPER 3742586 Computer programs and software for
creating customized on-line documents,
reports, brochures, guides and newspapers

TECHPAPERS 3950327 Hosting a website through which business
and technology professionals can receive or
view whitepapers and other business-to-
business content

PAPERDIRECT 3937561 Software for word processing, document
formatting and presentation creation

BOARD PAPERS 4097384 Computer software for the collection,
editing, organizing, modifying, book
marking, transmission, storage and
sharing of data

IPAPERZ 4498985 Downloadable software in the nature of a
mobile application for the searching,
sharing and viewing of news

The third-party uses of marks consisting of the word “Paper,” in whole or in part,
and the third-party registrations for marks consisting of the word “Paper” in
connection with computer applications allowing for the substitution of digital data for
writing or drawing on paper are sufficient to prove that the word “Paper” has been
extensively adopted, registered and used as a trademark or part of a trademark for
computer software or related goods and services of this type.15 As a result, a mark
comprising, in whole or in part, the word “Paper” in connection with such goods or
services should be given a restricted scope of protection. See Anthony's Pizza & Pasta

15 The Trademark Examining Attorney agrees, having asserted that “[t]he word ‘PAPER’ in
each mark brings to mind the same idea of using the goods to write, sketch and take notes
like one would with pen and paper.” Trademark Examining Attorney’s Brief, 9 TTABVUE 6.
Serial No. 86180291
- 11 -
Int’l Inc. v. Anthony's Pizza Holding Co., 95 USPQ2d 1271, 1278 (TTAB 2009), aff’d,
415 Fed. Appx. 222 (Fed. Cir. 2010) (cited in Juice Generation, 115 USPQ2d at 1675).
In this regard, we note that Applicant is the owner of Registration No. 4457350
for the mark PAPER BY FIFTYTHREE (in standard characters) for the same goods
as are in the application at issue.16 This registration, in conjunction with the evidence
of the third-party uses and registrations discussed above, leads us to the following
conclusions:
● Registrant was satisfied to register its mark BAMBOO PAPER and design side-
by-side with all the other PAPER marks by requesting an extension of protection
under Section 66 of the Trademark Act, 15 U.S.C. § 1141f;
●The USPTO has been registering PAPER marks for computer software and
related services for creating and utilizing digital data so long as there has been
some difference between the marks as a whole or between the goods or services;
and
● The number of registrations for various PAPER marks reflects a determination
by the USPTO that various PAPER marks can be used and registered side-by-side
without causing confusion, provided there are minimal differences between the
marks and the goods or services.

16 Registration No. 4457350 for the mark PAPER BY FIFTYTHREE was registered on
December 31, 2013, based on an application filed May 11, 2012 and published for opposition
on October 15, 2013. By contrast, the mark in the cited registration (Registration No.
4643067) was registered on November 25, 2014, based on an application filed August 12,
2013.
Serial No. 86180291
- 12 -
See In re Hartz Hotel Servs. Inc., 102 USPQ2d 1150, 1153 (TTAB 2012) (citing Plus
Prods. v. Natural Organics, Inc., 204 USPQ 773, 779 (TTAB 1979); Jerrold Electronics
Corp. v. The Magnavox Company, 199 USPQ 751, 758 (TTAB 1978) (third-party
registrations “reflect a belief, at least by the registrants, who would be most
concerned about avoiding confusion and mistake, that various ‘STAR’ marks can
coexist provided that there is a difference.”); In re Sien Equipment Co., 189 USPQ
586, 588 (TTAB 1975) (the suggestive meaning of the word “Brute” explains the
numerous third-party registrations incorporating that word with other wording or
material no matter how little additional significance they may add to the word
“Brute” per se)).
We find that Registrant’s mark BAMBOO PAPER and design is not entitled to
such a broad scope of protection so as to bar the registration of every mark
comprising, in whole or in part, the word “Paper,” or variations thereof; it will only
bar the registration of marks “as to which the resemblance to [Registrant’s mark] is
striking enough to cause one seeing it to assume that there is some connection,
association or sponsorship between the two.” Anthony's Pizza & Pasta, 95 USPQ2d
at 1278 (quoting Pizza Inn, Inc. v. Russo, 221 USPQ 281, 283 (TTAB 1983)).
D. The similarity or dissimilarity of the marks.
We now turn to the du Pont likelihood of confusion 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.
The marks have the word “Paper” in common. However, as noted above, the word
Serial No. 86180291
- 13 -
“Paper,” when used as a mark or part of a mark for software for creating and utilizing
digital data, is a weak term, entitled to a very narrow scope of protection.
The Examining Attorney contends that the word “’BAMBOO in registrant’s mark
modifies ‘PAPER’ in effect, telling which kind of paper it is, and therefore emphasizes
the ‘PAPER’ portion, itself an arbitrary term as applied to the goods at issue.”17 To
the extent the Examining Attorney is arguing that PAPER is the dominant term in
the registrant’s mark and the entirety of Applicant’s mark, thereby making confusion
more likely, we disagree. As we have discussed, “Paper” is a weak term for the
involved goods, and thus we view BAMBOO as the dominant term in Registrant’s
mark.
The record establishes that Registrant uses BAMBOO to identify the source of a
line of products related to software for creating digital data and accessories for
creating digital data. For example, Registrant uses BAMBOO as a standalone mark,
as shown below, on its stylus used in connection with its BAMBOO PAPER and
BAMBOO SMART software.18

17 Examining Attorney’s Brief, 9 TTABVUE 6.
18 Applicant’s June 17, 2016 Request for Reconsideration (4 TTABVUE 63). See also 4
TTABVUE 37, 44, 47, 54, 55, 64 and 66.
Serial No. 86180291
- 14 -
In the text of Registrant’s website, Registrant refers to its stylus as the “Bamboo
stylus.”19 Also, Registrant promotes “Tips and News from Bamboo” explaining that
“From inspiration to execution. Bamboo is here to help you make your ideas
happen.”20
Other examples of Registrant using BAMBOO to identify items in its line of
products are listed below:
1. Registrant uses the marks BAMBOO SMART,21 BAMBOO PAPER,22 and
BAMBOO LOOP, 23 all shown below, for software for capturing digital data.

19 Applicant’s June 17, 2016 Request for Reconsideration (4 TTABVUE 65). See also
4 TTABVUE 74 (“Bamboo Stylus solo”).
20 Applicant’s June 17, 2016 Request for Reconsideration (4 TTABVUE 58).
21 Applicant’s June 17, 2016 Request for Reconsideration (4 TTABVUE 32). Registrant
advertises that “[t]he precision and accuracy of the Bamboo Smart is only matched by your
pen and paper writing.” (4 TTABVUE 33).
22 Applicant’s June 17, 2016 Request for Reconsideration (4 TTABVUE 38). See also
4 TTABVUE 101.
23 Applicant’s June 17, 2016 Request for Reconsideration (4 TTABVUE 96).
Serial No. 86180291
- 15 -
2. Registrant uses the marks BAMBOO FINELINE 2,24 BAMBOO SOLO,25
BAMBOO DUO,26 BAMBOO ALPHA,27 and BAMBOO STYLUS,28 all shown
below, to identify a particular stylus used in connection with its BAMBOO
PAPER and BAMBOO SMART software.

We find that the marks are distinguishable because BAMBOO is the dominant
part of Registrant’s mark and Applicant’s mark PAPER is very weak because it is
highly suggestive, if not descriptive. See Knight Textile Corp. v. Jones Investment Co.,

24 Applicant’s June 17, 2016 Request for Reconsideration (4 TTABVUE 52).
25 Applicant’s June 17, 2016 Request for Reconsideration (4 TTABVUE 72). See also
4 TTABVUE 54.
26 Applicant’s June 17, 2016 Request for Reconsideration (4 TTABVUE 62).
27 Applicant’s June 17, 2016 Request for Reconsideration (4 TTABVUE 82).
28 Applicant’s June 17, 2016 Request for Reconsideration (4 TTABVUE 92).
Serial No. 86180291
- 16 -
75 USPQ2d at 1316. See also New England Fish Co. v. The Hervin Co., 511 F.2d 562,
184 USPQ 817, 819 (CCPA 1975) (“there is no arbitrary rule of law that if two product
marks are confusingly similar, likelihood of confusion is not removed by use of a
company or housemark in association with the product mark. Rather, each case
requires a consideration of the effect of the entire mark including any term in addition
to that which closely resembles the opposing mark.”); Couch/Braunsdorf Affinity,
Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1478 (TTAB 2014) (“The addition of
matter has been found sufficient to distinguish the marks under circumstances where
the common element is descriptive or highly suggestive and/or has been frequently
used and/or registered by others in the same or related fields.”); Rocket Trademarks
Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1076 (TTAB 2011) (because the shared
term “Elements” is suggestive, consumers viewing applicant’s mark ZU ELEMENTS
will “focus on the larger, more prominent and more distinctive term, ZU, while
attributing a meaning to the latter, smaller term ELEMENTS that is suggestive of
apparel items.”); In re Fiesta Palms LLC, 85 USPQ2d 1360, 1364 (TTAB 2007); In re
Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (“where … the product marks
in question are highly suggestive or merely descriptive or play upon commonly used
or registered terms, the addition of a housemark and/or other material to the
assertedly conflicting product mark has been determined sufficient to render the
marks as a whole sufficiently distinguishable.”)
We find that Applicant’s mark PAPER and Registrant’s mark BAMBOO PAPER
and design are sufficiently different to avoid likelihood of confusion. We recognize
Serial No. 86180291
- 17 -
that Applicant’s mark differs from the cited mark by only Registrant’s inclusion of
the word “Bamboo.” However, because of the highly suggestive nature of the word
“Paper,” the proliferation of registered marks consisting in part of the word “Paper,”
and the unregistered uses of PAPER marks in connection with digital notebooks,
Applicant’s use of the word “Paper” as its mark is sufficiently different from the
registered mark BAMBOO PAPER to avoid finding a likelihood of confusion..
Accordingly, we find that Applicant's mark PAPER for “computer application
software for smart phones and tablets, namely, software for use in writing on smart
phones and tablets with either a stylus or finger and sharing that content with others
via a social network” is not likely to cause confusion with Registration No. 4643067
for the mark BAMBOO PAPER and design for, inter alia, “electronic whiteboards …
data processing apparatus; software for computer input, namely, computer software
for operating a coordinate inputting system and for drawing, painting; computer
software for recording and processing input information.”
Decision: The refusal to register Applicant’s mark PAPER is reversed.