Geek Girl Corporation

Trademark Trial and Appeal Board

Sep 10, 2014

No. 85435222 (T.T.A.B. Sep. 10, 2014)

Mailed:
September 10, 2014

United States Patent and Trademark Office
Trademark Trial and Appeal Board
________
In re Geek Girl Corporation
________
Serial No. 85435222
_______
Eugene R. Curry of Law Offices of Eugene R. Curry
for Geek Girl Corporation.
Alicia Collins Edwards, Trademark Examining Attorney, Law Office 115,
John T. Lincoski, Managing Attorney.
_______
Before Bucher, Taylor and Wolfson, Administrative Trademark Judges.
Opinion by Wolfson, Administrative Trademark Judge:
Geek Girl Corporation (“Applicant”) seeks registration on the Principal Register
of the mark depicted below for “Computer camps; Computer education training
services; Education services, namely, providing seminars, workshops, and classes in
the field of computer technology,” in International Class 41.1

1 Application Serial No. 85435222 was filed on September 29, 2011, based on an allegation
of first use and first use in commerce of March 13, 2008. The mark is described as “a pink
stylized image of a woman behind a pink laptop computer. There is a white stylized heart
design on the cover of the laptop. At the bottom of the mark on the left is a pink stylized
letter g. The pink stylized words geek girl appear to the right of the laptop.” The colors pink
and white are claimed as features of the mark.
This Opinion is Not a Precedent
of the TTAB
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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), contending that
Applicant’s use of its mark for its identified services is likely to cause confusion with
the mark ÜberGeekGirl (in standard character format) for “Computer consultation;
Computer network design for others; Computer software consultancy; Computer
software design, computer programming, or maintenance of computer software;
Consulting services in the field of design, selection, implementation and use of
computer hardware and software systems for others; Information technology
consultation; Installation of computer software; Integration of computer systems
and networks” in International Class 42.2
When the refusal was made final, Applicant appealed and filed a request for
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
Applicable Law
Our determination under Trademark Act § 2(d) is based on an analysis of the
probative facts in evidence that are relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the

2 Reg. No. 2467087; registered July 15, 2008; Sections 8 & 15 Combined Affidavit accepted.
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evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of differences in the essential
characteristics of the [services] and differences in the marks.” Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In
re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
A. Comparison of the Marks
In comparing the marks, we must consider the marks in their entireties as to
appearance, sound, connotation and commercial impression, to determine the
similarity or dissimilarity between them. In re Viterra Inc., 671 F.3d 1358, 1362,
101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting du Pont); Palm Bay, 73 USPQ2d
at 1692; and TMEP § 1207.01(b)-(b)(v) (April 2013). Similarity in any one of these
elements may be sufficient to find the marks confusingly similar. In re White Swan
Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84
USPQ2d 1581, 1586 (TTAB 2007); TMEP § 1207.01(b). 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 commercial impression’ such that persons who encounter the marks
would be likely to assume a connection between the parties.” Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(citation omitted). The focus is on the recollection of the average purchaser, who
normally retains a general rather than a specific impression of trademarks. See
Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB 2014).
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Applicant seeks to register the mark ; Registrant’s mark is
ÜberGeekGirl. Applicant argues that Registrant’s mark is weak; that the overall
commercial impressions of the marks are dissimilar; and that the services are
unrelated and directed to different classes of consumers. The Examining Attorney
argues that there is a likelihood of confusion because each mark incorporates the
phrase “Geek Girl” as its dominant portion, the services are related, and the
channels of trade and classes of consumers are the same.
Turning first to the strength of the cited mark under the sixth du Pont factor, we
consider the meanings of “über,” “geek,” and “girl,” and whether the combination
“übergeekgirl” is weak. There are no dictionary definitions for the terms “GEEK” or
“GIRL” in the record, but Applicant provided two dictionary definitions for “ÜBER”:
“being a superlative example of its kind or class: SUPER-<übernerd>” and “to an
extreme or excessive degree: SUPER-<übercool>.”3 With the first Office Action, the
Examining Attorney added another definition “which indicates that the term “Über”
is a humorous prefix used with nouns to mean ‘total or complete.’”4 We take judicial
notice of dictionary definitions of “geek” and “girl.”5 The term GEEK is used as a
noun to describe “a person who is socially awkward and unpopular:a usually

3 From Merriam-Webster online at m-w.com; attached to Applicant’s July 26, 2012,
response.
4 Citing the MacMillan Dictionary at http://www.macmillandictionary.com; Final Office
Action dated August 27, 2012.
5 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac
v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or
regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
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intelligent person who does not fit in with other people.”6 A “girl” is a “female child”
or “young woman.”7 As a modifier of “GeekGirl,” the prefix “Über” extols
Registrant’s services, giving the impression that highly qualified (“über”) female
professionals (“geek girls”) provide Registrant’s services. Although the term “über”
is laudatory, the mark as a whole is suggestive only. In an attempt to show that the
cited mark is weak, Applicant submitted five third-party registrations of marks
incorporating the term “ÜBER,” 14 third-party registrations of marks incorporating
“GEEK,”8 and two registrations of marks incorporating “GEEK GIRL” for related
computer services.9 In general, absent evidence of actual use, third-party
registrations have little probative value because they are not evidence that the
marks are in use on a commercial scale or that the public has become familiar with
them. Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463
(CCPA 1973) (the purchasing public is not aware of registrations reposing in the
U.S. Patent and Trademark Office); Productos Lacteos Tocumbo S.A. de C.V. v.
Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011). See also Olde

6 Merriam-Webster at m-w.com.
7 Id.
8 The marks of the registrations submitted by Applicant are: SUPERGEEKS, Reg. No.
2820633; GEEK I.T. GEEK IT, Reg. No. 3882823; AMERIGEEKS, Reg. No. 4134270;
ADVISORGEEK, Reg. No. 4003529; MAJORGEEKS, Reg. No. 3243994; GEEK SQUAD and
design, Reg. No. 3957222; GEEKGINEERING, Reg. No. 4112796; GREEN GEEK, Reg. No.
4088779 (broadcasting); GEEK GATOR and design, Reg. No. 4101505; SEATGEEK, Reg.
No. 4062477; GEEKS ON SUPPORT, Reg. No. 4067075; GEEKS123, Reg. No. 4059637;
SELLGEEK, Reg. No. 4042054; and FUNDAGEEK and design, Reg. No. 4176956.
9 The additional two pending applications for marks incorporating “GEEK GIRL” that
Applicant submitted have no probative value. Third-party applications are evidence only of
the fact that they have been filed and not that the marks are in use or have made any
impact on prospective purchasers. Interpayment Services Ltd. v. Docters & Thiede, 66
USPQ2d 1463, 1468 n.6 (TTAB 2003).
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Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir.
1992) (“As to strength of a mark, however, registration evidence may not be given
any weight.”). More specifically in this case, the registrations for Über-derivative
marks consistently translate “über” as having a laudatory significance (e.g., super,
superior, elite, “the ultimate”). Therefore, we consider the term to have less overall
trademark significance than the remaining portion of the mark. With respect to the
third-party registrations for marks including the terms “geek” and “geek girl,”
however, even if we were to find that the public distinguishes marks containing the
term GEEK by the additional, different elements in the marks, we do not find that
the public has been conditioned to view the phrase “geek girl” in such a manner.
Applicant’s third-party registrations for marks containing “ÜBER,” “GEEK” and
“GEEK GIRL” do not show that the cited mark is weak. Accordingly, the cited mark
would be considered at worst suggestive, and hence, inherently distinctive. This
factor is neutral.
Comparing the marks in terms of their appearance, pronunciation, connotation,
and overall commercial impressions, we find that they are more similar than
dissimilar. Although marks must be considered in their entireties, it is settled that
one feature of a mark may be more significant than another, and it is not improper
to give more weight to this dominant feature in determining the commercial
impression created by the mark. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (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
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mark, provided the ultimate conclusion rests on consideration of the marks in their
entireties. Indeed, this type of analysis appears to be unavoidable.”). Because the
term “über” is laudatory, it is not the dominant portion of the cited mark. The
dominant portion is the suggestive phrase GEEK GIRLS. The dominant portion of
Applicant’s mark is also the phrase GEEK GIRLS. When a mark comprises both a
word and a design, the word is normally accorded greater weight because it would
be used by purchasers to request the goods or services. See In re Appetito Provisions
Co., 3 USPQ2d 1553 (TTAB 1987); CBS Inc. v. Morrow, 218 USPQ at 200 (“[I]n a
composite mark comprising a design and words, the verbal portion of the mark is
the one most likely to indicate the origin of the goods [or services] to which it is
affixed.”). See also, In re Mighty Leaf Tea, 94 USPQ2d at 1260 (“the presence of an
additional term in the mark does not necessarily eliminate the likelihood of
confusion if some terms are identical,” citing China Healthways Inst., Inc. v. Wang,
491 F.3d 1337, 83 USPQ2d 1123 (Fed. Cir. 2007); In re Max Capital Group Ltd., 93
USPQ2d 1243 (TTAB 2010) (design element in applicant’s mark for
insurance services not sufficient to distinguish the mark from the cited marks MAX
and for insurance services). Because of this shared dominant element, the
marks look and sound alike.
The marks also have similar connotations and create similar commercial
impressions: Applicant’s mark creates the commercial impression of a girl who is a
geek and the cited mark creates the commercial impression of a girl who is a total,
complete, or “super” geek. Applicant’s argument that confusion is unlikely because
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there are differences in the “look and feel” of the websites since both Applicant and
Registrant use their respective marks in a stylized manner, is unavailing. We are
concerned with the marks as they appear in the application and the cited
registration, not as they appear in the marketplace. Trademark Act § 2(d), 15
U.S.C. § 1052(d). Thus, the manner in which Applicant and Registrant may use
their respective marks on the websites is immaterial. Since Registrant’s mark is in
standard characters, it may be used in a font style similar to Applicant’s or in pink
and/or white letters. Given the overall similarities in sight, sound, meaning and
commercial impression of the marks, prospective consumers of Applicant’s services
who are familiar with Registrant’s services may believe that Registrant would now
be providing a less expensive (less “über”) line of computer services.
The first du Pont factor favors a finding of likelihood of confusion.
B. Comparison of the Services; Trade Channels; Classes of Consumers
We next turn our attention to a comparison of the similarity or dissimilarity and
nature of the services described in the application and registration. In making our
determination regarding the relatedness of the services, we must look to the
services as identified in the application and the cited registration. Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161
(Fed. Cir. 2014); Octocom Sys. Inc. v. Houston Computers Servs., Inc., 918 F.2d 937,
16 USPQ2d 17893, 1787 (Fed. Cir. 1990). See also Hewlett-Packard Co. v. Packard
Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); In re Risesmart, Inc.,
104 USPQ2d 1931, 1934 (TTAB 2012). It is settled that it is not necessary that the
respective services be identical or even competitive in order to find that they are
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related for purposes of our likelihood of confusion analysis, it being sufficient that
the services are related in some manner and/or that the circumstances surrounding
their marketing are such that they would be likely to be encountered by the same
persons under circumstances that would give rise, because of the marks employed
thereon, to the mistaken belief that the services originate from or are in some way
associated with the same producer. In re Home Builders Assn. of Greenville, 18
USPQ2d 1313, 1317 (TTAB 1990).
Applicant argues that the services are unrelated, and that they are marketed in
such a way that they would not be encountered by the same persons in situations
that would create a likelihood of confusion. Applicant includes copies of webpages
from both its and Registrant’s website and argues that Registrant’s services are
directed to a more professional class of consumer.
The services identified in Applicant’s application are “Computer camps;
Computer education training services; Education services, namely, providing
seminars, workshops, and classes in the field of computer technology.” Registrant’s
services include “consulting … in the field of … use of computer hardware and
software systems for others.” Although these broadly worded recitations use
different terminology, it is clear that the services offered by both applicant and
registrant encompass guidance in the use of computer hardware and software.
Consequently, these services are legally identical. “Likelihood of confusion may be
found based on any item that comes within the identification of goods [or services]
in the involved application and registration.” In re La Peregrina Ltd., 80 USPQ2d
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1645, 1646 (TTAB 2008); see also, Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion
must be found if there is likely to be confusion with respect to any item that comes
within the identification of goods in the application and cited registration). In
addition, the Examining Attorney has submitted copies of printouts from two
Internet websites which show marks displayed in connection with the same or
similar services as those of Applicant and Registrant herein. A page taken from the
website of Eric Wardowski and Associates offers “tutoring in major software
applications” as well as “hardware diagnostics and repair.”10 A page taken from the
website of Creativity Unlimited offers “computer consultation” and “training.”11 The
Examining Attorney further submitted copies from the USPTO X-Search database
of the following third-party marks, which are registered for services that are listed
in Applicant’s application as well as services listed in Registrant’s registration:
Reg. No. 3425529 for the mark IT XPRESS UPGRADE YOUR LIFE
and design includes, inter alia, “computer camps and computer
education training services” in International Class 41 as well as
“computer consultation; computer network design for others; computer
programming; computer software consultancy; and repair of computer
software” in International Class 42.

Reg. No. 4176369 for the mark CREO includes, inter alia, “computer
education training services” in International Class 41 and “computer
consultation” in International Class 42;

Reg. No. 4073319 for the mark MICROASSIST includes, inter alia,
“computer education training services” in International Class 41 and
“computer services, for others, namely, computer hardware
development; computer software design, development, installation,

10 Attached to Office Action dated January 28, 2012.
11 Id.
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maintenance, repair and updating; computer programming; consulting
services in the field of design, selection, implementation and use of
computer hardware and software systems for others” in International
Class 42.

Reg. No. 4052623 for the mark MOTIVATIONAL DESIGN includes,
inter alia, “computer education training services” in International
Class 41 and “computer consultation; computer network design and
computer software design for the interactive internet marketing
industry; computer programming and software design” in
International Class 42.

Reg. No. 4148821 for the mark SOURCEFABRIC and design includes,
inter alia, “computer education training” in International Class 41 and
“scientific and technological services, namely, designing and
developing of computer software; providing search engines for the
internet; computer programming” in International Class 42.

These printouts have probative value to the extent that they serve to suggest
that the services listed therein are of a kind that may emanate from a single source.
In re Infinity Broad. Corp. of Dallas, 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky
Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).
We also note that of the registrations submitted by Applicant, Reg. No. 3957222 for
the mark GEEK SQUAD and design also covers “Providing training in the use of
computers and consumer electronics products” in International Class 41 and
“Design of computers, computer software and computer networks; Design
consultation in the field of computers and consumer electronics” in International
Class 42.12

12 Attached to Applicant’s July 26, 2012 response at p. 27.
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Further, because both the application and registration describe the services
broadly and there are no limitations as to their nature, type, channels of trade or
classes 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 potential customers. See In re Melville
Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (“With reference to the channels of
trade, applicant’s argument that its goods are sold only in its own retail stores is not
persuasive… . There is no restriction [in its identification of goods] as to the
channels of trade in which the goods are sold.”); TMEP § 1207.01(a)(iii). As to the
services that are legally identical, we must presume that the identified services are
offered in the same channels of trade to the same potential buyers. 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”). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of
trade and classes of consumers, the Board was entitled to rely on this legal
presumption in determining likelihood of confusion); In re Smith and Mehaffey, 31
USPQ2d 1531 (TTAB 1994) (In view of the identity of the goods and trade channels,
the goods must be presumed to be sold to the same class of purchasers). Since the
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services are broadly offered to the general public, potential customers include
ordinary purchasers.
Accordingly, these du Pont factors weigh heavily in favor of a finding of
likelihood of confusion.
C. Sophistication of Purchasers
Applicant argues that Registrant’s customers are sophisticated, based on the
statement in its website that it “provides professional technology services to clients
that require the utmost in privacy, security, and performance.”13 Even were we to
accept this statement as true, it does not avoid a likelihood of confusion. Applicant’s
clients may also require privacy, security and professional performance. Moreover,
Board precedent requires our decision to be based “on the least sophisticated
potential purchasers,” Gen. Mills, Inc. v. Fage Dairy Proc. Indus. S.A., 100 USPQ2d
1584, 1600 (TTAB 2011), judgment set aside on other grounds, 110 USQP2d 1679
(TTAB 2014), which in this case includes ordinary purchasers. Further, it is settled
that even sophisticated purchasers are not immune from source confusion,
especially in cases such as the instant one involving similar marks and legally
identical or closely related services. See Stone Lion, 110 USPQ2d at 1163-64; In re
Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), citing
Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ
110, 112 (CCPA 1970) (“Human memories even of discriminating purchasers ... are
not infallible.”). We find that the similarity between the marks and the identity of

13 Appeal Brief p. 13, 8 TTABVue 18.
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the goods sold thereunder outweigh any presumed sophisticated purchasing
decision. See HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB
1989), aff’d, Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks outweigh
sophisticated purchasers, careful purchasing decision, and expensive goods).
Accordingly, this factor is neutral.
In view of similarity of the marks and the relatedness of the services, we find
that registration of Applicant’s mark for computer camps and
computer educational services is likely to cause confusion with the cited registration
ÜberGeekGirl for computer services.
Decision: The refusal to register Applicant’s mark under Section 2(d) is
affirmed.