GoingOn Networks, Inc.Download PDFTrademark Trial and Appeal BoardJan 7, 2014No. 85474765 (T.T.A.B. Jan. 7, 2014) Copy Citation 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 2 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 3 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 5 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 6 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 7 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 8 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 9 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 10 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 11 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 12 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. Ex Parte Appeal No. 85474765 13 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 Ex Parte Appeal No. 85474765 14 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 15 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. Copy with citationCopy as parenthetical citation