Inmobi Pte Ltd.

Trademark Trial and Appeal Board

Mar 27, 2018

No. 86574054 (T.T.A.B. Mar. 27, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 27, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Inmobi Pte Ltd.
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Serial No. 86574054
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James R. Robinson of Robinson Law Office, PLLC,
for Inmobi Pte Ltd.
Andrea Koyner Nadelman, Trademark Examining Attorney, Law Office 110,
Chris A. F. Pedersen, Managing Attorney.
_____

Before Zervas, Wolfson, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
Inmobi Pte Ltd. (“Applicant”) seeks registration on the Principal Register of the
mark STRANDS in standard characters for “Advertisement for others on the
Internet; Advertisement via mobile phone networks; Advertising and advertisement
services; Advertising on the Internet for others; Advertising via electronic media and
specifically the internet,” in International Class 35.1

1 Application Serial No. 86574054 was filed on March 24, 2015 under Sections 1(b) and 44 of
the Trademark Act, 15 U.S.C. §§ 1051(b) and 1126, on the basis of Applicant’s allegation of a
bona fide intention to use the mark in commerce and its prior filing in Singapore of an
application to register the same mark for the same services. The Singapore application
Serial No. 86574054
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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), on the ground that it
so resembles the mark MONEYSTRANDS in standard characters shown in
Registration No. 3751147 for “Advertising services, namely, promoting the goods and
services of others by providing hypertext links to the web sites of others; promoting
the goods and services of others by providing a web site which features
advertisements for the goods and services of others on a global computer network;
business services, namely, providing consumer product information via the internet
and electronic communication networks; compilation and systemization of financial
information into computer databases,” in International Class 35,2 as to be likely,
when used in connection with the services identified in the application, to cause
confusion, to cause mistake, or to deceive. 15 U.S.C. § 1052(d).
When the refusal was made final, Applicant appealed and requested
reconsideration, 1 and 4 TTABVUE, which was denied. 5 TTABVUE. Applicant and
the Examining Attorney have filed briefs. We affirm the refusal to register.
I. Record on Appeal
The record on appeal consists of Applicant’s Singapore Registration No.
T1418094I for the mark STRANDS for “Advertisement for others on the Internet;

subsequently matured into a registration, and Applicant amended its application to seek
registration under Section 44(e) of the Trademark Act, 15 U.S.C. § 1126(e).
2 The cited registration issued on February 23, 2010 and was maintained through the filing
of a combined declaration under Sections 8 and 15 of the Trademark Act, 15 U.S.C. §§ 1058,
1065, which was accepted and acknowledged on April 19, 2016. The cited registration covers
goods and services in four International Classes, but the Examining Attorney has refused
registration only on the basis of certain services in Class 35.
Serial No. 86574054
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advertisement via mobile phone networks; advertising and advertisement services;
advertising on the Internet for others; advertising via electronic media and
specifically the Internet;”3 and an excerpt from the website of the owner of the cited
registration.4
II. Likelihood of Confusion Analysis
Section 2(d) of the Trademark Act prohibits the registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). Our determination of likelihood of confusion under § 2(d) is based upon an
analysis of all probative facts in the record that are relevant to the likelihood of
confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973).5 We consider each du Pont factor that is relevant and
for which there is record evidence. See, e.g., M2 Software, Inc. v. M2 Commc’ns, Inc.,
450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA
Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015). As Applicant acknowledges, 7
TTABVUE 8, two key factors in every Section 2(d) case are the similarity of the marks
and the similarity of the goods or services, because the “fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the essential

3 November 30, 2016 Response to Office Action at 2-3.
4 July 17, 2017 Denial of Request for Reconsideration at 2.
5 Applicant cites no authority for its argument that the Examining Attorney must show
likelihood of confusion “by clear and convincing evidence.” 7 TTABVUE 7. The applicable
standard is preponderance of the evidence.
Serial No. 86574054
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characteristics of the goods [and services] and differences in the marks.” Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We turn first to the issue of the similarity of the services.
A. Similarity of the Services
This du Pont factor concerns the “similarity or dissimilarity and nature of the
goods or services as described in an application or registration . . . .” Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1159
(Fed. Cir. 2014). The analysis of this factor is premised on the identifications of goods
or services in the application and in the cited registration. Id. at 1161-63; Octocom
Sys., Inc. v. Houston Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990). “[L]ikelihood of confusion can be found ‘if the respective [services] are
related in some manner and/or if the circumstances surrounding their marketing are
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)).
The services identified in Applicant’s application are “Advertisement for others on
the Internet; Advertisement via mobile phone networks; Advertising and
advertisement services; Advertising on the Internet for others; Advertising via
electronic media and specifically the internet.”6 The Examining Attorney focuses on

6 We are not required to consider each of these identified services. Likelihood of confusion
may be found, and the refusal to register may be affirmed, “if there is a likelihood of confusion
involving any item that comes within the identification of [services] in the involved
Serial No. 86574054
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the following Class 35 services identified in the cited registration: “Advertising
services, namely, promoting the goods and services of others by providing hypertext
links to the web sites of others; promoting the goods and services of others by
providing a web site which features advertisements for the goods and services of
others on a global computer network; business services, namely, providing consumer
product information via the internet and electronic communication networks.”7
Applicant concedes that the services are “closely related.” 7 TTABVUE 7. The
Examining Attorney argues that the services are not only “highly related,” but also
“presumed identical in part” because “[b]oth the applicant and the registrant are
providing advertising services to consumers via the Internet.” 9 TTABVUE 7. We
agree with the Examining Attorney that the services are identical in part.
The services identified in the application and in the cited registration are broadly
identified as to their nature and type, with no restrictions as to their channels of trade
and no limitations as to their classes of purchasers, so we presume that those services
encompass all of the services of the nature and type described therein. Jump Designs
LLC, 80 USPQ2d at 1374. The general “advertising and advertisement services”
identified in the application necessarily encompass the particular “advertising
services” that are specified in the registration.

application.” In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing Tuxedo
Monopoly, Inc. v. Gen. Mills Fun Grp., 209 USPQ 986, 988 (CCPA 1981)).
7 Applicant argues that the portion of the Class 35 services identified as the “compilation and
systemization of financial information into computer databases” have “absolutely no relation
to the services recited in Applicant’s Mark [sic] and cannot serve as the basis for a likelihood
of confusion refusal,” 7 TTABVUE 9, but the Examining Attorney does not base the refusal
on these services. 9 TTABVUE 7-8.
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Because the general “advertising and advertisement services” identified in the
application encompass the particularized “advertising services” identified in the
registration, “we must deem the services at issue to be identical.” Sw. Mgmt., Inc. v.
Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). “It is therefore unnecessary
to rule as to whether each of the other items set forth in the involved application are
so related to those in the cited registration that confusion would be likely.” Jump
Designs, 80 USPQ2d at 1374. This duPont factor supports a finding of a likelihood of
confusion.
Given the legal identity of the services in part, and the absence of any restrictions
on the services in their identifications, they are “‘presumed to travel in the same
channels of trade to the same class of purchasers.’” In re Viterra, Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard
Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)); see also Stone
Lion, 110 USPQ2d at 1161-62 (legal identity of services in part justified conclusion,
without resort to extrinsic evidence, that they “covered the same potential purchasers
and channels of trade.”). The third duPont factor thus also supports a finding of a
likelihood of confusion.
B. Similarity of the Marks
This du Pont factor focuses on “‘the similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and commercial impression.’” Palm
Bay Imps. Inc. v. Veuve Cliquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting duPont, 177 USPQ at 567).
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“Similarity in any one of these elements may be sufficient to find the marks
confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re
White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)). “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., 101
USPQ2d at 1721. The legal identity of the services in part reduces the degree of
similarity between the marks that is necessary for confusion to be likely. See, e.g.,
Viterra, 101 USPQ2d at 1912; In re Mighty Tea Leaf, 601 F.3d 1342, 94 USPQ2d 1257,
1260 (Fed. Cir. 2010); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
The Examining Attorney argues that the marks are highly similar because “the
applicant’s mark, STRANDS, is entirely incorporated into the registrant’s mark,
MONEYSTRANDS,” 9 TTABVUE 6, and that STRANDS “is likely to appear to
prospective purchasers as a shortened form of registrant’s mark.” Id. at 7. She
contends that STRANDS is the dominant portion of the registered mark because the
first element MONEY “suggests the outcome of utilizing the registrant’s advertising
services.” Id.
Applicant argues that its MONEYSTRANDS mark “does not resemble
Registrant’s mark” STRANDS. 7 TTABVUE 8. Applicant argues that MONEY, not
STRANDS, is the dominant portion of the cited mark because “the term MONEY is
completely arbitrary in connection with the Registrant’s advertising services,” id. at
Serial No. 86574054
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8, and because it “is located at the beginning of the mark and is the first term
consumers will see and are more likely to remember, as opposed to the STRANDS
term at the end of the mark.” Id. at 9. Applicant concludes that the cited mark is
“accordingly distinguishable in sight, sound and meaning from Applicant’s Mark, the
lone word STRANDS.” Id. at 10.
The cited mark MONEYSTRANDS consists of the entirety of Applicant’s applied-
for mark STRANDS, preceded by the word MONEY. There are minor differences
between the marks in appearance and sound arising from the presence of the word
MONEY in the cited mark, but “the presence of an additional term in the mark does
not necessarily eliminate the likelihood of confusion if some terms are identical.”
Mighty Tea Leaf, 94 USPQ2d at 1260 (affirming Board’s finding that ML in standard
characters was confusingly similar to composite mark ML MARK LEES (stylized) for
identical goods). “Likelihood of confusion often has been found where the entirety of
one mark is incorporated within another.” Hunter Indus., Inc. v. Toro Co., 110
USPQ2d 1651, 1660 (TTAB 2014) (and cases cited therein). Confusing similarity may
be avoided where one mark contains the entirety of a second mark if the added term
in the first mark causes the two marks to convey significantly different commercial
impressions, or if the word shared by the marks is not likely to be perceived by
purchasers as distinguishing source because it is merely descriptive or diluted. See
generally TRADEMARK MANUAL OF EXAMINING PROCEDURE Section 1207.01(b)(iii) (Oct.
2017) and cases cited therein. We will thus examine whether the shared word
STRANDS has weak source-identifying capacity, and whether the addition of the
Serial No. 86574054
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word MONEY to STRANDS in the compound word MONEYSTRANDS gives the
marks significantly different commercial impressions.
A term is merely descriptive if it immediately conveys knowledge of a quality,
feature, function, or characteristic of the goods or services with which it is used. See,
e.g., In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219
(Fed. Cir. 2012). “Strand” variously means “the land bordering a body of water;”
“fibers or filaments twisted, plaited, or laid parallel to form a unit for further twisting
or plaiting into yarn, thread, rope, or cordage;” “one of the wires twisted together or
laid parallel to form a wire rope or cable;” “an element (such as a yarn or thread) of a
woven or plaited material;” “an elongated or twisted and plaited body resembling a
rope;” and “one of the elements interwoven in a complex whole.” MERRIAM-WEBSTER
DICTIONARY (merriam-webster.com/dictionary, accessed March 21, 2018).8 None of
these meanings describes a feature, attribute, characteristic, or quality of the legally
identical advertising services of “promoting the goods and services of others by
providing hypertext links to the web sites of others” or “promoting the goods and
services of others by providing a web site which features advertisements for the goods
and services of others on a global computer network.” Whether combined, in its plural
form, with the word MONEY in the cited mark, or standing alone, in its plural form,

8 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 form or regular fixed
editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Serial No. 86574054
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in Applicant’s mark, the word STRAND is distinctive, not descriptive, with respect to
the identified advertising services.
Similarly, nothing in the record suggests that the word STRAND has become
diluted as a source identifier in connection with those services because the record is
devoid of third-party uses or registrations of STRAND-formative marks for
advertising services. Such third-party uses could “‘show that customers . . . ‘have been
educated to distinguish between different . . . marks on the basis of minute
distinctions,’” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d
1671, 1674 (Fed. Cir. 2015) (quoting 2 J. McCarthy, MCCARTHY ON TRADEMARKS AND
UNFAIR COMPETITION § 11:88 (4th ed. 2015) (“MCCARTHY”)), while such third-party
registrations could show that STRAND “‘has a normally understood and well
recognized descriptive or suggestive meaning, leading to the conclusion that that
segment is relatively weak.” Id. (quoting MCCARTHY § 11:88). The absence of third-
party uses or registrations here, considered against the backdrop of the various
meanings of “strand” discussed above, indicates that the word does not have a well-
recognized descriptive or suggestive meaning when used in connection with
advertising services, and has not lost any of its inherent source-identifying
significance.
In sum, nothing in the record suggests that STRANDS is merely descriptive of the
advertising services identified in the application and registration, or has been diluted
as a source-identifier for those services. We turn next to whether the addition of
MONEY to STRANDS to form the cited mark MONEYSTRANDS causes that mark
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to convey a significantly different commercial impressions from the mark STRANDS
alone.
Applicant argues that the dominant, source-identifying element in the cited mark
MONEYSTRANDS is the word MONEY because MONEY is arbitrary as applied to
the services and because it is located at the beginning of the mark. 7 TTABVUE 10.
The word MONEY is not “completely arbitrary in connection with the Registrant’s
advertising services,” as Applicant contends, id. at 9, because those services involve
“promoting the goods and services of others” on the Internet and have the objective
of generating sales and, through sales, money, for the consumers of those services.
We agree with the Examining Attorney that the “term MONEY suggests the outcome
of utilizing the registrant’s advertising services,” 9 TTABVUE 7, and that “the
registrant’s advertising services are effective . . . .” Id. at 9.
In addition, while “it is often the first part of a mark which is likely to be impressed
upon the mind of a purchaser and remembered,” Presto Prods., Inc. v. Nice-Pak
Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988), we find that this principle does not
apply to the cited mark MONEYSTRANDS, which is a compound word that Applicant
describes as a “unitary mark.” 7 TTABVUE 10. Within the mark MONEYSTRANDS,
the word MONEY modifies and particularizes the word STRANDS. As a result, the
word MONEY does not imbue the mark MONEYSTRANDS with a meaning that is
significantly different from STRANDS alone. Consumers of advertising services
involving promoting the goods and services of others through the Internet who are
familiar with the registrant’s MONEYSTRANDS mark are likely to view the mark
Serial No. 86574054
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STRANDS for identical services as a shortened version of MONEYSTRANDS. See
Mighty Tea Leaf, 94 USPQ2d at 1260 and cases cited therein; Hunter Indus., 110
USPQ2d at 1660-61 (applicant’s mark PRECISION likely to be viewed as shortened
version of cited mark PRECISION DISTRIBUTION CONTROL when used in
connection with partially identical goods).
As noted above, there are minor differences in appearance and sound between
MONEYSTRANDS and STRANDS, but those differences are outweighed by the very
similar commercial impressions and connotations of the two marks. Davia, 110
USPQ2d at 1812. When applied to legally identical services, the two 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.” In
re U.S. Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1795 (TTAB 2017)
(quoting Coach Servs., 101 USPQ2d at 1721).
III. Conclusion
The services, channels of trade, and classes of customers are legally identical in
part, and the marks are similar in connotation and commercial impression. We find
that confusion is likely as to the source or sponsorship of Applicant’s advertising and
advertisement services.
Decision: The refusal to register is affirmed.