IAC Search & Media, Inc.v.ASKBOT, Spa

Trademark Trial and Appeal Board

Aug 31, 2018

No. 92060041 (T.T.A.B. Aug. 31, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: August 31, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

IAC Search & Media, Inc.
v.
ASKBOT, Spa
_____

Cancellation No. 92060041

_____

Gerald J. Ferguson of Baker & Hostetler LLP for IAC Search & Media, Inc.

ASKBOT, Spa, pro se.
_____

Before Taylor, Bergsman, and Shaw, Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:

IAC Search & Media, Inc. (“Petitioner”) has petitioned to cancel Registration No.
4323777, owned by ASKBOT, Spa (“Respondent”), for the mark ASKBOT, in standard
characters, for:
Downloadable software program for collaboration and
information management, namely, for collection of
questions, answers and comments, receiving feedback and
votes for ranking content and users; Software for
embedding widgets with aforementioned functionalities on
the websites, in International Class 9; and
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Application service provider (ASP) providing to others
temporary use of online non-downloadable software for
collaboration and information management, namely, for
collection of questions, answers and comments, receiving
feedback and votes for ranking content and users and
embedding widgets providing aforementioned
functionalities on the websites of others; Software
installation and support services, namely, technical
support services in the nature of troubleshooting of
computer software with aforementioned functionalities, in
International Class 42.1
As grounds for cancellation, Petitioner alleges priority and likelihood of confusion.
Petitioner pleaded ownership of the following registrations:2
• Registration No. 3525714 for the mark ASK (standard characters) for:
Downloadable computer software for use in providing
search engine services which is provided through a browser
tool bar, in International Class 9;
Providing consumer product information; providing
comparison shopping information, providing online
directory information services also featuring hyperlinks to
other websites, dissemination of advertising for others via
the internet; online advertising services for others, namely,
providing advertising space on internet web sites, in
International Class 35; and
Computer services, namely, providing search engines for
obtaining data on a global computer network, in
International Class 42.3
• Registration No. 2412106 for the mark for: Computer
services, namely, providing a search engine based on natural

1 Issued April 23, 2013.
2 Petitioner pleaded ownership of four additional registrations for ASK-formative marks but
they were cancelled under Section 8 during these proceedings. We consider only the goods
and services identified in Respondent’s remaining registrations. See Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014).
3 Issued October 28, 2008; Section 8 affidavit accepted and Section 15 affidavit acknowledged.
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language queries on a global computer network, in International
Class 42.4
• Registration No. 3652770 for the mark for:
Downloadable internet browser plug-ins and client server
applications in the nature of multi-function tool bar plug-
ins; downloadable computer software for use in providing
search engine services which are provided through a
browser tool bar, in International Class 9;
Business services, namely, providing links to the web sites
of others, namely, retail service providers in the field of
consumer electronics, computers, clothing, automobiles,
toys and games and a wide variety of other general
consumer products; providing links to the websites of
others in the field of consumer products and services;
promoting the goods and services of others by placing
advertisements and promotional displays on electronic
sites accessed through computer networks; providing
consumer product information; providing comparison
shopping information, providing online directory
information services also featuring hyperlinks to other
websites, dissemination of advertising for others via the
internet; online advertising services for others, namely,
providing advertising space on websites, in International
Class 35;
Providing links to websites of others in the field of
entertainment, in International Class 41; and
Providing customized on-line web pages featuring user-
defined information, which includes search engines and
online web links to other websites; providing on-line
directories, indices and searchable databases of websites
and computer networks; providing links to web sites of
others in the field of computers and technology; computer
services, namely, providing search engines for obtaining
data on global computer network, in International Class
42.5

4 Issued December 12, 2000; renewed.
5 Issued July 7, 2009; Section 8 affidavit accepted and Section 15 affidavit acknowledged.
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• Registration No. 3593278 for the mark for:
Downloadable Internet browser plug-ins and client server
applications in the nature of multi-function tool bar plug-
ins; downloadable computer software for use in providing
search engine services which are provided through a
browser tool bar, in International Class 9; and
Business services, namely, providing links to the websites
of others, namely, retail service providers in the field of
consumer electronics, computers, clothing, automobiles,
toys and games and a wide variety of other general
consumer products; providing links to the websites of
others in the field of consumer products and services;
promoting the goods and services of others by placing
advertisements and promotional displays on electronic
sites accessed through computer networks; providing
consumer product information; providing comparison
shopping information, providing online directory
information services also featuring hyperlinks to other
websites, dissemination of advertising for others via the
Internet; online advertising services for others, namely,
providing advertising space on websites; providing on-line
directories, indices and searchable databases of websites
and computer networks, in International Class 42.6
• Registration No. 2463252 for the mark ASK.COM (standard
characters) for: Computer services, namely, providing a search
engine based on natural language queries on a global computer
network, in International Class 42.7
Respondent, in its Answer, denied the salient allegations of the petition and
admitted that Petitioner owned the pleaded registrations. Both parties filed briefs
and Petitioner filed a reply brief.

6 Issued March 17, 2009; Section 8 affidavit accepted and Section 15 affidavit acknowledged.
7 Issued June 26, 2001; renewed.
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I. The Record and Evidentiary Objections
The record consists of the pleadings; by operation of Trademark Rule 2.122, 37
C.F.R. § 2.122, the file of the involved registration; and the following evidence
submitted by the parties.
Petitioner’s evidence:
1. Testimonial Deposition of Valerie Combs, Head of Global Communications for
Petitioner, with exhibits;8
2. The following exhibits, made of record via notice of reliance:9
a. Printouts from Respondent’s website;
b. Printouts from Petitioner’s website;
c. Excerpts from Respondent’s Brief in Opposition to Petitioner’s Motion for
Summary Judgment;
d. Certain of Respondent’s responses to Petitioner’s Requests for
Admissions;
e. Respondent’s Answers to Petitioner’s First Set of Interrogatories;
f. A third-party conference abstract regarding the nature of Respondent’s
ASKBOT goods and services;
g. Third-party webpages purporting to be evidence of comparable services to
Respondent’s ASKBOT goods and services;
h. An internet video featuring Ask.com’s former Vice President, Valerie
Combs, discussing Ask.com’s question and answer services; and
i. An internet video featuring Ask.com’s former and current Chief Executive
Officers discussing Ask.com’s business and its question and answer
services.
Respondent’s evidence, made of record via notice of reliance:10
1. Printouts from Respondent’s website;
2. Printouts from Petitioner’s website;
3. News stories including the term “askcom” retrieved from the Lexis/Nexis
database;

8 37 TTABVUE.
9 31 TTABVUE.
10 35 TTABVUE.
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4. Third-party U.S. trademark registrations of ASK-formative marks; and
5. Printouts from an opposition proceeding filed by Petitioner against a third
party’s application for the mark ASKVILLE.
Petitioner objects to consideration of certain evidence submitted under
Respondent’s Notice of Reliance, namely, ninety-seven news articles from the
Lexis/Nexis database for the term “askcom,” third-party registrations of ASK-
formative marks, and excerpts from an unrelated opposition in which Petitioner
opposed registration of the mark ASKVILLE.11
Regarding Petitioner’s objection to the articles from the Lexis/Nexis database on
the grounds of hearsay, the Board routinely accepts printed publications obtained
from the Lexis/Nexis database, when filed under notice of reliance, so long as the date
and source of each article are clear. See Alcatraz Media Inc. v. Chesapeake Marine
Tours Inc., 107 USPQ2d 1750, 1759 (TTAB 2013). That said, printed publications
would be hearsay if they were offered to prove the truth of the statements made
therein. To the extent that Respondent seeks to rely on the printed publications as
evidence of the statements made in the articles, Petitioner’s objection is well taken.
However, the articles are acceptable to show that the stories have been circulated to
the public. See Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400 (TTAB
1998). We have considered these articles only for that purpose. We have not
considered articles from foreign language publications absent evidence that they have
been circulated in the United States. Id. at 1405. Petitioner’s objection to the news
articles is overruled.

11 Petitioners’ Br., p. 24, 40 TTABVUE 32.
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Regarding Petitioner’s objections to the third-party registrations on the grounds
of relevance and a lack of evidence of use, the objections are overruled. Trademark
Trial and Appeal Board Manual of Procedure (“TBMP”) § 704.03(b)(1)(B) (June 2017).
Respondent’s objections to the third-party registrations go to the weight the
registrations are to be given rather than their admissibility. Even without proof of
use, third-party registration evidence may bear on conceptual weakness if a term is
commonly registered for similar goods or services. See Jack Wolfskin Ausrustung Fur
Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116
USPQ2d 1129, 1136 (Fed. Cir. 2015).
Petitioner’s objection on the grounds of relevance to selected printouts from its
Opposition Proceeding No. 91178765 against registration of the third-party mark
ASKVILLE is well taken. Respondent claims “[t]he documents are relevant because
Petitioner’s Opposition was Dismissed with Prejudice and Trademark ASKVILLE
was permitted to mature into a fully registered record.”12 The fact that an unrelated
opposition proceeding was dismissed by the consent of the parties has no relevance
to the present proceeding inasmuch as the opposed mark is different from
Respondent’s mark, Respondent was not a party to the proceeding, there was no
decision on the merits of the opposition, and there are no admissions against interest
by Petitioner. Accordingly, Petitioner’s objection is sustained and we have not
considered the documents from the ASKVILLE opposition.13

12 Respondent’s Br., p. 7, 43 TTABVUE 8.
13 A copy of the ASKVILLE registration was included separately in Respondent’s submission
of third party registrations containing the term ASK. 35 TTABVUE 224-26. We have
considered it along with the other third party registrations.
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Petitioner also objects to Respondent’s brief as untimely.14 Respondent’s brief was
due on July 21, 2017 and was filed on July 22, 2017, i.e., a day late. Given the minimal
one-day delay, in the interest of completeness, and because it aids us in framing
Respondent’s position, we have exercised our discretion and considered Respondent’s
late brief. In view thereof, Petitioner’s motion to strike is denied.
Respondent objects to consideration of Petitioner’s deposition of Valerie Combs on
the ground that Respondent did not receive a transcript of the deposition as required
by Rule 2.125, 37 CFR § 2.125.15 The deposition of Combs took place on January 9,
2017.16 Respondent claims that it “was not aware of its existence until June 20th,
2017. Failure to receive this transcript on time hampered the ability of the
Respondent to prepare its own evidence[.]”17
In response to the objection, Petitioner submitted a declaration and supporting
evidence establishing that:
1. On November 23, 2016, “Petitioner served its Pretrial Disclosure
Statement on Registrant [via email] identifying a corporate representative
of Petitioner and topics that representative could speak on[.]”18
2. On December 21, 2016, Respondent was advised of the upcoming Combs
deposition via an email between the parties discussing settlement.
Petitioner’s email advises Respondent: “As you are aware, the parties are

14 Petitioner’s Reply Br., p. 13, 44 TTABVUE 17.
15 Respondent’s Br., p. 4, 43 TTABVUE 5.
16 37 TTABVUE 2.
17 Respondent’s Br., p. 9, 43 TTABVUE 10.
18 Declaration of Kevin M. Wallace, ¶ 3, Exh. A, 44 TTABVUE 20, 22-25.
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now in their testimony periods, and we shall be noticing the testimonial
deposition of IAC’s witness to be taken in California by the close of IAC’s
testimony period. . . . [W]e will be noticing a deposition for January 7[.]”19
Respondent replied to the email thus confirming it received it.20
3. On December 22, 2016, Petitioner served via email a notice of trial
deposition of Valerie Combs to take place on January 9, 2017.21
4. On February 8, 2017, the due date to serve Respondent with the Combs
deposition transcript under rule 2.125, Petitioner emailed a copy of the
Combs deposition transcript to Respondent’s email address.22 The email
included a ZIP compressed file attachment named “ASKBOT – Deposition
of Valerie Combs with Exhibits.zip.”23
Given that Respondent was advised on at least three separate occasions that
Petitioner intended to take testimony of its corporate representative, Respondent’s
claim that it was “was not aware of [the Combs’ deposition’s] existence until June
20th, 2017” strains credulity. If Respondent did not receive the Combs’ deposition
transcript until June 20, 2017, when it was filed with the Board, Respondent’s
remedy was “by way of a motion to the Board to reset its testimony and/or briefing
periods, as may be appropriate.” TBMP § 703.01(m) (June 2018); Syngenta Crop
Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 (TTAB 2009) (resetting

19 January 7, 2017 was a Saturday so the deposition was timely held on Monday, January 9,
2017. 37 C.F.R. § 2.196.
20 Declaration of Kevin M. Wallace, Exh. B, 44 TTABVUE 27.
21 Id. at ¶ 5, Exh. A, 44 TTABVUE 21, 22-25.
22 Id. at ¶ 7, 44 TTABVUE 21.
23 Id., Exh. D, 44 TTABVUE 37.
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adverse party’s testimony and/or briefing periods). Respondent’s objection to the
Combs’ testimony is overruled.
II. Standing and Priority
In the Board’s December 16, 2015 order granting in part and denying in part
Petitioner’s motion for summary judgment on the grounds of likelihood of confusion,
the Board granted summary judgment on Petitioner’s standing and priority.24
Accordingly, standing is not an issue. Priority also is not an issue with respect to the
goods and services covered by Petitioner’s five pleaded registrations, supra. Penguin
Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998) (citing King Candy Co.
v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)).
III. Likelihood of Confusion
Our determination under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), is
based on an analysis of all 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”); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any
likelihood of confusion analysis, however, key considerations include the similarities
between the marks and the similarities between the goods or services, the first two
du Pont factors. See 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 [and

24 9 TTABVUE. The Board denied Petitioner’s motion for summary judgment on likelihood of
confusion.
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services] and differences in the marks.”). However, any single factor may play a
dominant role in the likelihood of confusion analysis. See Shen Mfg. Co. v. Ritz Hotel
Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004); Kellogg Co. v. Pack’em Enters.
Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991). Petitioner bears the burden of
proving its claim of likelihood of confusion by a preponderance of the evidence.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir.
2000).
We focus our likelihood of confusion analysis on Registration No. 3525714 for the
mark ASK, in standard characters. This mark and the identified goods and services
are the most similar to Respondent’s mark and goods and services. If we find that
there is a likelihood of confusion with this mark, there is no need for us to consider
the likelihood of confusion with Petitioner’s other marks. Conversely, if we find there
is no likelihood of confusion with this mark, we would find no likelihood of confusion
with Petitioner’s other marks as they comprise or incorporate the word ASK with
additional matter and identify the same or less closely-related goods or services. See
In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
We address each of the du Pont factors for which the parties submitted evidence
or argument.
A. Similarity of the Goods and Services
We begin with the second du Pont factor, assessing the similarity or dissimilarity
of the parties’ goods and services. It is settled that it is not necessary that the
respective goods and services be identical or even competitive in order to find that
they are related for purposes of our likelihood of confusion analysis. The respective
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goods and services need only be “related in some manner and/or if the circumstances
surrounding their marketing [be] such that they could give rise to the mistaken belief
that they emanate from the same source.” Coach Servs. Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc.
v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).
Although we consider the relatedness of the goods and services based on the
respective identifications set forth in the registrations, “[w]hen identifications are
technical or vague and require clarification, it is appropriate to consider extrinsic
evidence of use to determine the meaning of the identification of goods [and services].”
In re C.H. Hanson Co., 116 USPQ2d 1351, 1355 (TTAB 2015) (citing Edwards
Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB 2010); In re
Trackmobile, 15 USPQ2d 1152, 1154 (TTAB 1990)). Because the goods and services
are technical and the respective identifications provide only general information, we
consider extrinsic evidence provided by the parties to clarify the specific nature of the
goods and services.
Respondent’s software and services are used for “collaboration and information
management, namely, for collection of questions, answers and comments, receiving
feedback and votes for ranking content and users.” According to Respondent’s
website, ASKBOT is used to create “Q&A forums” for “efficient question and answer
knowledge management.”25 Respondent states that the “Askbot service enables its
clients, mostly companies and educators to create new client-brandable Question and

25 Petitioner’s Exh. A, 31 TTABVUE 8.
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Answer (Q&A) community forums.”26 An excerpt from Respondent’s web page, below,
touts some of the features available to third parties seeking to create Q&A forums to
answer questions. Users can create their own Q&A forums for “question and answer
knowledge management,” choose topics for discussion, and prioritize answers.

Petitioner’s goods and services are:
Downloadable computer software for use in providing
search engine services which is provided through a browser
tool bar, in International Class 9;

26 Respondent’s Br., p. 3, 43 TTABVUE 4.
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Providing consumer product information; providing
comparison shopping information, providing online
directory information services also featuring hyperlinks to
other websites, dissemination of advertising for others via
the internet; online advertising services for others, namely,
providing advertising space on internet web sites, in
International Class 35; and
Computer services, namely, providing search engines for
obtaining data on a global computer network, in
International Class 42.
In essence, Petitioner is providing search engine services, including a specialized
search engine service focused on shopping.27 Although Petitioner offers software in
the form of a “tool bar,” the purpose of the tool bar is to provide a dedicated link to
Petitioner’s search engine, Ask.com. A search engine is defined as “computer software
used to search data (such as text or a database) for specified information” and as “a
site on the World Wide Web that uses such software to locate key words in other
sites.”28
Generally speaking, the parties’ goods and services both involve providing
answers to questions, however, the respective goods and services differ regarding who
uses the products and how the answers are provided. Respondent’s goods and services
are a programming tool used by third parties to create online forums featuring
questions and answers on a particular subject. The Q&A forums are then used by
customers of the third parties. Once created, the forums may be on the users’

27 Combs Test., p. 18, Exh. 11, 37 TTABVUE 19, 79.
28 Https://www.merriam-webster.com/dictionary/search/engine. The Board may take judicial
notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. 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 have regular fixed editions.
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websites, generally do not appear under the ASKBOT mark, and are sometimes
password protected.29 Petitioner’s software and services provide answers to
individual questions on any subject, via Petitioner’s Ask.com search engine. In other
words, Respondent’s goods and services allow users the ability to create, organize and
save both questions and answers for others, whereas Petitioner’s goods and services
allow users to directly search the internet without any predetermined search
parameters, and the results are neither organized nor saved. The parties’ goods and
services thus serve different functions within the context of asking and answering
questions on the internet. Nevertheless, the goods and services of the parties are
related because both enable end users the ability to obtain online answers to
questions, albeit via different methods. Accordingly, despite the differences in the
way in which the goods and services are used, we find that the parties’ goods and
services are related because they both provide the same end functionality: answering
online questions for others.
The du Pont factor regarding similarity of the goods and services favors a finding
of a likelihood of confusion.
B. Channels of Trade
We next consider the third du Pont factor regarding the similarity or dissimilarity
of established, likely-to-continue trade channels. Neither registration is limited in
any way as to channels of trade. Accordingly, the Board must assume that the goods
and services are available in all the normal channels of trade to all the usual

29 ASKBOT website, Petitioner’s Exhs. A and B, 31 TTABVUE 7-11.
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purchasers for such goods and services. See Packard Press, Inc. v. Hewlett-Packard
Co., 227 F.3d 1352, 56 USPQ2d 1351, 1357 (Fed. Cir. 2000); Octocom Sys., Inc. v.
Houston Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Respondent states that its ASKBOT products are delivered online “via provision
of a subscription-based service that allows to create [sic] client-owned Question and
Answer online communities.”30 ASKBOT products and services also are offered via
third-party software development websites such as github.com and python.org.31 In
contrast, Petitioner’s search engine services are offered for free at Petitioner’s
Ask.com web site.32 Petitioner’s “ASK Toolbar is a free software plugin which is
sometimes bundled with third-party software products and distributed by third
parties such as Oracle.”33
Both parties’ software and services are offered online. But “the mere fact that
goods and services may both be advertised and offered through the Internet is not a
sufficient basis to find that they are sold through the same channels of trade. The
Internet is such a pervasive medium that virtually everything is advertised and sold
through the Internet.” Parfums de Couer Ltd. v. Lazarus, 83 USPQ2d 1012, 1021
(TTAB 2007). The parties’ goods and services are not offered through the same online
sources. Respondent’s products are offered through its website and through
specialized third-party programming sites such as github.com and python.org.34

30 Respondent’s Br., p. 20, 43 TTABVUE 21.
31 Respondent’s answer to Interrogatory No. 3, 31 TTABVUE 45.
32 Combs Test., p. 11, Exh. 5, 37 TTABVUE 12, 61-62.
33 Petitioner’s Br., p. 7, 40 TTABVUE 15.
34 Respondent’s answer to Interrogatory No. 3, 31 TTABVUE 45.
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Petitioner’s services are offered through its website or bundled with third-party
software.
The parties’ goods and services also are offered at significantly different costs to
users. Respondent’s services are offered on a subscription basis with plans starting
at $15.00 per month and going up to $45.00 or more per month.35 Petitioner’s goods
and services are free. We recognize that users of Petitioner’s Ask.com search engine
who are looking for Q&A software could be directed to Respondent’s ASKBOT
products. However, this nexus between Petitioner’s ASK search engine and
Respondent’s ASKBOT Q&A products is too tenuous to give rise to the mistaken
belief that the goods and services of the parties emanate from the same source. See
Elec. Design & Sales Inc. v. Elec. Data Sys. Corp., 954 F.2d 713, 21 USPQ2d 1388,
1391 (Fed. Cir. 1992) (“We are not concerned with mere theoretical possibilities of
confusion, deception, or mistake or with de minimis situations but with the
practicalities of the commercial world, with which the trademark laws deal.”). We
find that the trade channels for the parties’ goods and service are dissimilar.
The du Pont factor relating to channels of trade weighs in favor of a finding that
confusion is not likely.
C. Consumer Sophistication
Turning to the fourth du Pont factor, the conditions under which and buyers to
whom sales are made, Respondent argues that its customers are “sophisticated users
and could not confuse services provided by Askbot with those provided by the

35 Respondent’s web page, Petitioner’s Exh. C, 31 TTABVUE 13.
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petitioner.”36 Respondent stated that “Customers of Askbot are Corporations,
Nonprofit Organizations, Teachers and Hobbyists.”37 As discussed supra,
Respondent’s website shows that its customers are providing information to others
via Q&A forums. Petitioner’s customers are in the opposite position—they are seeking
information on the internet.
Moreover, inasmuch as Respondent’s customers would need to be able to
understand basic computer programming skills, we find it likely that they also would
be able to distinguish the parties’ products. And given that Petitioner’s services are
free and Respondent’s services require a monthly subscription, Respondent’s
customers would be expected to exercise a higher degree of care in the purchasing
decision.
This du Pont factor weighs in favor of a finding that confusion is not likely.
D. Strength of Petitioner’s Mark
We next consider the strength of Petitioner’s mark in order to evaluate the scope
of protection to which it is entitled.
In determining strength of a mark, we consider both inherent strength, based on
the nature of the mark itself, and fame or commercial strength. Couch/Braunsdorf
Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1476 (TTAB 2014); see also In
re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A
mark’s strength is measured both by its conceptual strength (distinctiveness) and its
marketplace strength (secondary meaning).”); MCCARTHY ON TRADEMARKS AND

36 Respondent’s Br., p. 17, 43 TTABVUE 18.
37 Respondent’s answer to interrogatory No. 29, 31 TTABVUE 51.
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UNFAIR COMPETITION § 11:83 (5th ed. June 2018) (“The first enquiry focuses on the
inherent potential of the term at the time of its first use. The second evaluates the
actual customer recognition value of the mark at the time registration is sought or at
the time the mark is asserted in litigation to prevent another’s use.”).
1. The inherent strength of Petitioner’s ASK mark.
Respondent argues that the term “‘ask’ is one of the most commonly used English
verbs”38 and submitted thirty-five third-party registrations for marks comprised
solely or in part of the term ASK.39
When assessing the inherent strength of a mark, third-party registrations for
similar goods or services may be relevant to show the sense in which a mark is used
in ordinary parlance; that is, an element common to both parties’ marks may have a
normally understood and well-recognized descriptive or suggestive meaning, leading
to the conclusion that the common element is relatively weak. Jack Wolfskin 116
USPQ2d at 1136.
All of the third-party marks comprised solely of the term ASK are of little
probative value because they are registered for goods or services completely unrelated
to those of the parties.40 In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744,
1751 (Fed. Cir. 2017) (disregarding third-party registrations for other types of goods
where the proffering party had neither proven nor explained that they were related
to the goods in the cited registration); In re Thor Tech Inc., 90 USPQ2d 1634, 1639

38 Respondent’s Br., p. 4, 43 TTABVUE 5.
39 Respondent’s Exhs. E and F, 35 TTABVUE 190-279.
40 Respondent’s Exh. E, 35 TTABVUE 190-223.
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(TTAB 2009) (the third-party registrations are of limited probative value because the
goods identified in the registrations appear to be in fields which are far removed from
the goods at issue).
The following third-party marks comprised in part of the term ASK and registered
for goods and services more closely related to the parties’ goods and services are the
relevant to determining the inherent strength of Petitioner’s ASK mark:
Mark Reg. No. Goods or Services
ASK A CPA 4284114 Downloadable software . . . for use in financial and
accounting database management and, accounting
questions and answers, in International Class 9.
ASK ENERWIZ 4543915 Providing an internet website featuring
information in the field of environmental science;
providing a website featuring a search engine for
obtaining information on energy efficiency,
renewable energy, environmental science, natural
resources and for obtaining energy efficient
products, in International Class 42.
ASKJIM.BIZ &
design
3355073 Providing the ability to search a database of
business information and advice, namely,
providing search engines for obtaining business
information and advice on a global computer
network, in International Class 42.
ASKBIG-
QUESTIONS.ORG
3787908 Computer services, namely, creating an on-line
community for users to participate in discussions,
get feedback from their peers, form virtual
communities, and engage in social networking, in
International Class 42.
ASK MARILYN 2640630 Providing information at the specific request of
end-users by means of a global computer
networks, in International Class 42.
ASKME 2495731 Computer services, namely, services allowing
users of computer networks and global computer
networks to conduct searches for information and
obtain information and consultations on a wide
variety of subject matters, in International Class
42.
ASK MR. ROBOT 4197446 Computer services, namely, creating an online
community for computer users to participate in
Cancellation No. 92060041
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Mark Reg. No. Goods or Services
discussions, share information and scores, get
feedback from peers, form virtual communities,
and engage in social networking services in the
field of computer games, in International Class 42.
ASKONLINE 2891359 Providing temporary use of on-line non-
downloadable software for use in providing a
distance learning environment for education via
chat rooms, bulletin boards and electronic mail, in
International Class 42.
ASK THE CAR
PEOPLE
4385293 Computer services, namely, hosting online web
facilities for others for organizing and conducting
online meetings, gatherings, and interactive
discussions, in International Class 42.
ASKVILLE 4428987 Computer services, namely, providing information
at the specific request of end users by means of a
global computer network, providing answers to
natural language search engine queries made by
customers via the internet on a variety of topics on
a computer network, providing a website for users
to supply information or perform services in
response to requests from other users over a global
computer network; providing specific information
as requested by users via the Internet; providing
on-line web pages featuring user-defined
information, which includes search engines and
on-line web links to other web sites; creating
indices of information, sites and other resources
available on computer networks, in International
Class 42.
ASK REDDIT 4160112 Computer services, namely, providing a website
featuring technology that enables users to submit,
rate, share, bookmark, index, store, collect, and
showcase content in electronic form in the nature
and fields of current events, politics, news,
gaming, comedy, relationships, technology,
photos, videos, religion, science, movies, and
music; providing customized on-line web pages
featuring user-defined information, including
search engines and on-line web links to other
websites, in International Class 42.

Cancellation No. 92060041
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All of the foregoing registrations include the term ASK used in connection with
providing information to online users. These registrations establish that the term
ASK has some inherent weakness when used in connection with the parties’ goods
and services. That is, given that one must “ask” a question in order to get an answer,
“ask” is suggestive of the function of online information products. We find, therefore,
that Petitioner’s ASK mark is not inherently or conceptually strong when used in
connection with Petitioner’s goods and services.
2. The commercial strength of Petitioner’s ASK mark.
Petitioner contends that “[i]t is undisputed that the ASK Marks are strong, and
indeed, famous marks under a likelihood of confusion analysis, which should be
entitled to broad protection.”41 Fame, if it exists, plays a dominant role in the
likelihood of confusion analysis because famous marks enjoy a broad scope of
protection or exclusivity of use because they have extensive public recognition and
renown. Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305
(Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897
(Fed. Cir. 2000).
“[L]ikelihood of confusion fame ‘varies along a spectrum from very strong to very
weak.’” Joseph Phelps Vineyards, LLC v. Fairmount Holdings, LLC, 857 F.3d 1323,
122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (quoting Palm Bay Imps. Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694
(Fed. Cir. 2005) (internal citations omitted)). Fame may be measured indirectly by

41 Petitioner’s Br., p. 16, 40 TTABVUE 24.
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the volume of sales of and advertising expenditures for the goods and services
identified by the mark at issue, “the length of time those indicia of commercial
awareness have been evident,” widespread critical assessments and through notice
by independent sources of the products identified by the marks, as well as the general
reputation of the products and services. Bose Corp. v. QSC Audio Prods. Inc., 63
USPQ2d at 1305-06 and 1309. Although raw numbers of product sales and
advertising expenses sometimes suffice to prove fame, raw numbers alone may be
misleading. Some context in which to place raw numbers may be necessary (e.g., the
substantiality of the sales or advertising figures for comparable types of products or
services). Id. at 1309.
Petitioner introduced evidence to establish that its ASK marks are famous. The
following evidence is the most relevant:
• Testimony that the Ask.com website was launched in 1998 and has been in
use since then.42
• Testimony that Petitioner has spent “of millions and millions of dollars over
the course of two decades” on advertising the “ASK brand,” including
television commercials billboards, cinema advertising, and online
advertising.43

42 Combs Test., p. 7, 37 TTABVUE 8.
43 Id. at 12, 37 TTABVUE 13.
Cancellation No. 92060041
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• Confidential testimony regarding user traffic on the Ask.com website
showing that between 2013 and 2016 the website received hundreds of
millions of views each month.44
• A “comScore” ranking of top search engines, showing that, as of February
2016, the “ASK Network” is the fourth most popular search engine in the
U.S.45
Petitioner’s evidence shows that it has been using ASK-formative marks since as
early as 1995. Petitioner’s original search engine was launched under the name ASK
JEEVES! but the “JEEVES!” portion was “retired” in 2006 and no longer appears on
Petitioner’s website.46 Petitioner also has used ASK.COM, ASK KIDS, and other ASK
marks to identify its various services. Based on long use of the marks, number of
searches conducted, and advertising expenditures, Petitioner concludes that
“Millions of people know [the ASK brand], and the awareness around the brand is
extremely high.”47
Petitioner’s evidence regarding fame, however, has significant shortcomings. It
does not distinguish between Petitioner’s uses of various ASK-formative marks. For
example, Petitioner used ASK JEEVES! as a mark until 2006, but it is not clear
whether consumers recognize the ASK portion of ASK JEEVES! as a separate mark.
See H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1727 (TTAB 2008) (“[T]here
is no evidence from which to infer from opposer’s advertising expenses and revenues

44 39 TTABVUE.
45 Combs Test., p. 17, Exh. 9, 37 TTABVUE 18, 69-74.
46 Combs Test., p. 8, Exh. 2, 37 TTABVUE 9, 36-45.
47 Combs Test., p. 12, 37 TTABVUE 13.
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the extent to which consumers recognize the ONE TRUE FIT mark standing alone
and outside the context of the LEE trademark.”). Similarly, the testimony regarding
advertising of the “ASK brand” does not break out amounts for the different marks,
particularly the ASK JEEVES! mark which has a very different commercial
impression from ASK alone.
Although Petitioner’s internet traffic and share of searches are impressive and
indicative of commercial success, we can only speculate about the actual impact of
that success in creating brand awareness in the minds of consumers. That is, the
evidence of internet traffic and share of searches fails to demonstrate that the
successful marketing of ASK products translates into widespread recognition of the
ASK mark among relevant consumers.
Regarding advertising expenditures, there is no testimony or evidence regarding
whether the expenditures are large or small vis-à-vis other comparable internet
search companies. And there are few recent examples of unsolicited media referring
to the renown of Petitioner’s ASK-formative marks.
Accordingly, we find that Petitioner has failed to show that ASK, by itself, is
famous.
Although the record does not support a finding of fame, such that it plays a
dominant role, we find that Petitioner’s ASK mark nevertheless has attained some
commercial strength for the identified goods and services despite the inherent
weakness of the term ASK, discussed above. On balance, because ASK is inherently
weak, third-parties frequently use the term ASK in connection with other information
Cancellation No. 92060041
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websites, and Petitioner has not established the fame of ASK alone, the ASK mark
cannot be regarded as particularly strong and entitled to broad protection.
E. Similarity of the Marks
We next consider the first du Pont factor, the similarity of the parties’ marks. In
a likelihood of confusion analysis, we compare the marks in their entireties for
similarities and dissimilarities in appearance, sound, connotation and commercial
impression. Palm Bay Imps., 73 USPQ2d at 1691. “The proper test is not a side-by-
side comparison of the marks, but instead 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, 101 USPQ2d at 1721.
Petitioner’s mark is ASK and Respondent’s mark is ASKBOT. Both marks are
presented in standard character form, which encompasses use of the respective
marks in any typeface or stylization. Citigroup Inc. v. Capital City Bank Grp. Inc.,
637 F.3d 1344, 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011). Respondent has
appropriated the entirety of Petitioner’s mark and merely added the descriptive term
BOT, which is defined as “a computer program that performs automatic repetitive
tasks.”48 While there is no per se rule that the marks are similar where the junior
user incorporates the entirety of the senior user’s mark, the fact that Respondent’s
mark subsumes Petitioner’s mark increases their similarity. See China Healthways
Inst. Inc. v. Xiaoming Wang, 491 F.3d 1337, 83 USPQ2d 1123, 1125 (Fed. Cir. 2007)

48 Https://www.merriam-webster.com/dictionary/bot.
Cancellation No. 92060041
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(CHI PLUS is similar to CHI both for electric massagers); In re Toshiba Med. Sys.
Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (VANTAGE TITAN for medical magnetic
resonance imaging diagnostic apparatus confusingly similar to TITAN for medical
ultrasound diagnostic apparatus); Broad. Network Inc. v. ABS-CBN Int’l, 84 USPQ2d
1560, 1568 (TTAB 2007) (ABS-CBN is similar to CBN both for television broadcasting
services).
Additionally, although we have considered the marks in their entireties, the term
ASK is entitled to greater weight in our assessment of likelihood of confusion because
it forms the entirety of Petitioner’s mark and comes first in Respondent’s mark.
Consumers in general are inclined to focus on the first word or portion in a trademark,
in this case, ASK. Presto Prods., Inc. v. Nice-Pak Prods, Inc., 9 USPQ2d 1895, 1897
(TTAB 1988) (“[I]t is often the first part of a mark which is likely to be impressed
upon the mind of a purchaser and remembered”); see also Palm Bay Imps., 73
USPQ2d at 1692.
Further, the descriptive term BOT in Respondent’s mark has less source-
identifying significance and is clearly subordinate to ASK. In re Nat’l Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“[I]n articulating reasons for reaching
a conclusion on the issue of confusion, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a particular feature of a mark,
provided that the ultimate conclusion rests on consideration of the mark in their
entireties.”). In the context of Respondent’s goods and services, the term BOT conveys
the impression that the software or service will perform repetitive search functions.
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Consumers familiar with Petitioner’s ASK search engine services would likely think
that Respondent’s ASKBOT Q&A software and services were related and merely
performed automated repetitive search tasks.
Although we agree with Respondent that the word ASK is hardly a unique or
arbitrary term when used with online Q&A services, we do not find that the term is
without any trademark significance. As the cases above indicate, although a mark
may not be strong, a junior party normally cannot appropriate another party’s mark,
add descriptive matter to it, and avoid a finding that the marks are similar.
In sum, we find that the marks are more similar than dissimilar in appearance,
sound and meaning, and have substantially similar overall commercial impressions.
The addition of the descriptive term BOT simply is insufficient to distinguish the
marks ASK and ASKBOT.
F. Balancing the factors
Although the marks are similar and the goods and services are related, the term
ASK is relatively weak when used in connection with the parties’ goods and services.
Moreover, the respective goods and services are offered in different channels of trade
to different consumers, and consumers are likely to exercise a greater degree of care
when purchasing Respondent’s products. When we balance the relevant du Pont
factors, we find that confusion is unlikely to occur among consumers in the
marketplace.

Decision: The petition to cancel is dismissed.