GoingOn Networks, Inc.

Trademark Trial and Appeal Board

Jan 7, 2014

No. 85474765 (T.T.A.B. Jan. 7, 2014)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: January 7, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re GoingOn Networks, Inc.
________

Serial No. 85474765
_______

Michael J. Bevilacqua and Barbara A. Bakarat of Wilmer
Cutler Pickering Hale and Dorr LLP for GoingOn Networks,
Inc.

Leslie Richards, Trademark Examining Attorney, Law Office
106 (Mary Sparrow, Managing Attorney).
_______

Before Cataldo, Wellington and Lykos,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, GoingOn Networks, Inc., filed an
application, as amended, to register on the Principal
Register the mark GOINGON in standard characters for
(emphasis added):
computer services for academic institutions,
namely, providing an online community and non-
downloadable computer programs and computer
software development tools to academic
institutions for creating a private academic
network in which users can form virtual
communities, collaborate on projects, participate
in discussions and interactive forums, get
Ex Parte Appeal No. 85474765

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feedback from their peers, engage in social
networking, participate in and hold academic
competitions, showcase their academic skills,
facilitate interaction among users, and view and
post messages, comments, multimedia content,
videos, photos, images, text, audio and
information in the field of featuring general
interest; computer software integration
consulting services for academic institutions

in International Class 42.1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used in connection with its services,
so resembles the mark WHAT’S GOING ON previously registered
in standard characters on the Principal Register for
application service provider (ASP), namely,
providing, hosting, managing, developing, and
maintaining applications and software in the
field of social networking

in International Class 42,2 as to be likely to cause
confusion, mistake or deception.3 When the refusal was made
final, applicant appealed.
Likelihood of Confusion
Our determination of the issue of likelihood of

1 Application Serial No. 85474765 was filed on November 16, 2011,
under Section 1(a) of the Trademark Act, asserting October 2007
as a date of first use of the mark anywhere and January 1, 2008
as a date of first use of the mark in commerce.

2 Registration No. 3927641 issued on March 8, 2011.

3 The examining attorney withdrew her refusal to register under
Section 2(d) as to additional registrations.
Ex Parte Appeal No. 85474765

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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, 567 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis two key, though not exclusive,
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, 27 (CCPA 1976). See also In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed.
Cir. 1997).
Strength of the Registered Mark
We begin by addressing applicant’s argument that due
to the existence of third-party registrations for marks
that contain the term GOING, identifying services in Class
42, “it is clear that the registrant does not have
exclusive rights to this term and that many parties own
rights to the use of trademarks that include the term GOING
for computer services, and even for social networking
services.”4 In support of its arguments, applicant has made

4 Applicant’s brief, p. 4.

Ex Parte Appeal No. 85474765

4
of record printed copies of the results of the summary of a
search of the USPTO’s Trademark Electronic Search System
(TESS) for GOING-formative marks, displaying the serial
and/or registration numbers, marks and status of each as
live or dead. However, a mere listing of third-party
marks, without any accompanying indication of the goods
and/or services associated therewith has virtually no
probative value. See TBMP § 1208.02 (3d ed. rev. 2, June
2013), and the authorities cited therein.
In addition, applicant made of record copies of seven
live third-party registrations for GOING-formative marks
for a variety of services related to computers. These
include:5
Registration No. 2085087 for the mark GETTING
GOING for “computer services, namely, providing
an on-line newspaper column in the field of
investment, business, financial and general news
and information;”

Registration No. 4022783 for the mark ITSGOINGON
for “providing temporary use of on-line
nondownloadable software and applications for use
in recording and breaking down patron
demographics for restaurants and entertainment
venues;”

5 Applicant also submitted a copy of an expired registration and
two pending applications. These also are of no value. See
Action Temporary Services Inc. v. Labor Force Inc., 870 F.2d
1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989)(“[A] cancelled
registration does not provide constructive notice of anything”);
and Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d
1463 (TTAB 2003)(applications show only that they have been
filed).
Ex Parte Appeal No. 85474765

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Registration No. 3981677 for the mark IT’S GOING
TO BE MUCH LESS SAFE TO BE DANGEROUS and
Registration No. 3978214 for the mark IT’S GOING
TO BE MUCH LESS SAFE TO BE DISHONEST, registered
by the same entity, both for “providing access to
databases,” and “computer services, namely,
providing search engines for obtaining data on a
global computer network;”

Registration No. 3694719 for the mark WHAT’S
GOING ON AROUND ME RIGHT NOW? for a variety of
services including “computer services, namely,
creating an on-line community for registered
users to participate in discussions, get feedback
from their peers, form virtual communities, and
engage in social networking; providing customer-
defined generated content and content of others
automatically selected and customized based on
the known or estimated geographical location of a
mobile telephone or other wireless digital
network based customer; providing customized
computer services that permit the user to receive
personalized information regarding points of
interest, local theater listings, movie listings,
restaurants, venues and social events via hand-
held wireless mobile devices; computer services,
namely, interactive hosting services which allow
the user to publish and share their content,
namely, comments and reviews about local theater
listings, movie listings, restaurants, venues,
social events, community events, restaurants,
clubs and music shows, via wireless mobile
devices;”

Registration No. 3210238 for the mark GOING
FORWARD for “educational program, namely,
providing instruction on health awareness and
general life improvement;” and

Registration No. 3106810 for the mark GET GOING
for “providing newsletters in the field of travel
via Internet posting and via e-mail.”

We find that applicant’s evidence of third-party
registrations is entitled to limited probative value. The
Ex Parte Appeal No. 85474765

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registrations are not evidence of use of the marks shown
therein. Thus, they are not proof that consumers are
familiar with such marks so as to be accustomed to the
existence of the same or similar marks in the marketplace.
See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004,
177 USPQ 462 (CCPA 1973); and Richardson-Vicks, Inc. v.
Franklin Mint Corp., 216 USPQ 989 (TTAB 1982). Moreover,
Registration No. 2085087 recites services in the nature of
an online newspaper column; Registration No. 4022783
recites services providing customer demographics for
restaurants and entertainment venues; Registration No.
3210238 recites an educational program concerning health
and life improvement; and Registration No. 3106810 recites
newsletters in the field of travel. The probative value of
these third-party registrations is diminished by virtue of
the fact that the trademarks cover a variety of services
that are less closely related to the types of services
involved herein than those services are related to each
other. See Spoons Restaurants Inc. v. Morrison Inc., 23
USPQ2d 1735, 1740 (TTAB 1991), aff’d unpub., (Appeal No.
92-1086, Fed. Cir., June 5, 1992). In addition,
Registration Nos. 3981677 and 3978214, for the marks IT’S
GOING TO BE MUCH LESS SAFE TO BE DANGEROUS and IT’S GOING
TO BE MUCH LESS SAFE TO BE DISHONEST, are quite dissimilar
Ex Parte Appeal No. 85474765

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from the marks in the involved application and cited
registration.
As a result, only one of the third-party
registrations, namely, Registration No. 3694719 for the
mark WHAT’S GOING ON AROUND ME RIGHT NOW?, concerns a mark
and services similar to those at issue herein. However,
even if we were to find, based on the existence of this
single third-party registration, that registrant’s mark is
weak and entitled to a narrow scope of protection, the
scope is still broad enough to prevent the registration of
a similar mark for similar services. See In re Farah
Manufacturing Co., Inc., 435 F.2d 594, 168 USPQ 277, 278
(CCPA 1971).
The Marks
In determining the similarity or dissimilarity of the
marks, we must compare the marks 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 (Fed. Cir.
2005). The test 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
their entireties that confusion as to the source of the
Ex Parte Appeal No. 85474765

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services offered under the respective marks is likely to
result.
In this case, applicant’s mark, GOINGON, is similar to
the registered mark, WHAT’S GOING ON, inasmuch as
applicant’s mark is encompassed by that of registrant. The
only difference between applicant’s mark and the wording
“GOING ON” in registrant’s WHAT’S GOING ON mark is the
truncation of the wording GOINGON that comprises
applicant’s mark. The presence or absence of a space
between virtually the same words is not a significant
difference. Stockpot, Inc. v. Stock Pot Restaurant, Inc.,
220 USPQ 52, 54 (TTAB 1983), aff’d, 737 F.2d 1576, 222 USPQ
665 (Fed. Cir. 1984) (“There is no question that the marks
of the parties [STOCKPOT and STOCK POT] are confusingly
similar. The word marks are phonetically identical and
visually almost identical”); In re Best Western Family
Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There
can be little doubt that the marks [BEEFMASTER and BEEF
MASTER] are practically identical”). Furthermore, the term
“WHAT’S” in registrant’s mark modifies the wording “GOING
ON” and thus draws additional attention thereto. As a
result the marks are highly similar in appearance and
sound.
Ex Parte Appeal No. 85474765

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With regard to meaning or connotation, the term “GOING
ON” is defined, inter alia, as “happening.”6 Thus,
applicant’s mark means “happening” and registrant’s mark
asks “what’s happening?” We find these connotations to be
highly similar. As a result, we find that, when viewed in
their entireties, the marks GOING ON and WHAT’S GOING ON?
are more similar than they are different in appearance,
sound and connotation and, overall, convey similar
commercial impressions. That is to say, the marks appear
to be variations of each other that nonetheless point to a
common source. As such, this du Pont factor favors a
finding of likelihood of confusion.
The Services and Their Channels of Trade
We turn now to our consideration of the identified
services, noting that it is not necessary that the services
at issue be similar or competitive, or even that they move
in the same channels of trade, to support a holding of
likelihood of confusion. It is sufficient instead that the
respective services are related in some manner, and/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

6 Dictionary.reference.com, attached as an exhibit to applicant’s
September 10, 2012 communication.
Ex Parte Appeal No. 85474765

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could, because of the similarity of the marks, give rise to
the mistaken belief that they originate from the same
producer. See In re International Telephone & Telegraph
Corp., 197 USPQ 910, 911 (TTAB 1978).
In this case, applicant renders computer services to
academic institutions by creating a “private academic
network” so that users, inter alia, may “engage in social
networking.” Likewise, registrant’s services involve
providing, hosting, managing, developing and maintaining
computer software “in the field of social networking.” The
examining attorney made of record numerous articles
discussing social networking, an internet-based activity
conducted through various web sites which “function like an
online community of internet users.”7 Thus, registrant’s
services enable users of computer software to participate
in an online community, and applicant’s services, inter
alia, enable students and other members of academic
institutions to participate in an online community with
other members of the institution. As recited, registrant’s
services appear to encompass applicant’s services discussed
above. At the very least, these services are closely
related, with the difference that registrant’s services

7 Whatissocialnetworking.com, attached as an exhibit to the
examining attorney’s October 17, 2012 Office action.
Ex Parte Appeal No. 85474765

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allow users to engage in social networking without stated
limitations while those of applicant appear to be
restricted to users affiliated with a particular academic
institution.8 Nonetheless, registrant’s services must be
presumed to include providing, hosting, etc., computer
software in the field of social networking for academic
institutions and those affiliated therewith.
In determining the issue of likelihood of confusion in
ex parte cases, the Board must compare applicant’s goods or
services as set forth in its application with the goods or
services as set forth in the cited registration. In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981). Where the services
in the cited registration and/or application are broadly
identified as to their nature and type (as is the case
herein with respect to the services in the cited
registration), such that there is an absence of any
restrictions as to the channels of trade and no limitation
as to the classes of purchasers, it is presumed that in
scope the identification of services encompasses not only
all the services of the nature and type described therein,
but that the identified services are offered in all

8 In addition, with her October 17, 2012 Office action, the
examining attorney introduced third-party registration evidence
suggesting a relationship between certain of the services recited
in the involved application and cited registration.

Ex Parte Appeal No. 85474765

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channels of trade which would be normal therefor, and that
they would be purchased by all potential buyers thereof.
Id.
Accordingly, we are not persuaded by applicant’s
arguments that “the services of the appellant and
registrant are completely different and will travel in
different channels of trade.”9 Simply put, under the
circumstances of this case we may not entertain
restrictions to registrant’s services, or the channels of
trade in which they may be encountered, that are not
reflected in the services as identified in the cited
registration. See, e.g., Coach Servs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 1369-70, 101 USPQ2d 1713, 1722
(Fed. Cir. 2012); and Octocom Sys. Inc. v. Hous. Computers
Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990).
As a result, the du Pont factors of the similarities
between the services and their trade channels favor a
finding of likelihood of confusion.
Sophistication of Purchasers
As discussed above, the cited registration does not
include any limitation on the customers to whom the

9 Applicant’s brief, p. 9.

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respective services are rendered so we must consider the
relevant purchasers to include all of the usual customers
for the recited services. See In re Elbaum, 211 USPQ at
640. While some of the consumers of applicant’s and
registrant’s services may be sophisticated in such matters,
the potential purchasers for these services also include
individuals exercising no more than an ordinary level of
sophistication.
Even if we accept, in considering the fourth du Pont
factor, applicant’s assertion that the involved services
may be the subject of sophisticated purchases, even careful
purchasers are likely to be confused by highly similar
marks used in connection with related services. As stated
by our primary reviewing court, “[t]hat the relevant class
of buyers may exercise care does not necessarily impose on
that class the responsibility of distinguishing between
similar trademarks for similar goods. ‘Human memories even
of discriminating purchasers ... are not infallible.’” In
re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49,
50 (Fed. Cir. 1986), quoting Carlisle Chemical Works, Inc.
v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112
(CCPA 1970).
Therefore, even if it is true in this case, the fact
that the purchasers may exercise care before purchasing
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these services does not mean there can be no likelihood of
confusion. In the present case, the similarity between the
marks and the similarity between the services as identified
outweigh any 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). As such, this du Pont factor is, at
best, neutral or slightly favors a finding of no likelihood
of confusion.
Summary
In light of the foregoing, we conclude that consumers
familiar with registrant’s services offered under its
above-referenced mark would be likely to believe, upon
encountering applicant’s services rendered under its mark,
that the services originate with or are associated with or
sponsored by the same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant and not, as urged by applicant, in its favor.
See In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6
Ex Parte Appeal No. 85474765

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USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 165, 223 USPQ 1289 (Fed. Cir.
1984).
Decision: The refusal under Section 2(d) of the Act
is affirmed.