Milan Votava

Trademark Trial and Appeal Board

Jun 8, 2015

No. 85913856 (T.T.A.B. Jun. 8, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: June 8, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Milan Votava
_____

Serial No. 85913856
_____

Diane B. Melnick of Powley & Gibson, P.C.,
for Milan Votava.

Kathy Wang, Trademark Examining Attorney, Law Office 108,
Andrew Lawrence, Managing Attorney.
_____

Before Bucher, Zervas, and Masiello,
Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Milan Votava (“Applicant”), an individual, has applied for registration on the
Principal Register of the mark WristOS, in standard characters, for “software,
namely, a system software platform that manages the computer functions of smart
watch,” in International Class 9.1

1 Application Serial No. 85913856, filed April 24, 2013, under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), on the basis of Applicant’s asserted bona fide intention to use the
mark in commerce.
Serial No. 85913856
2
The Trademark Examining Attorney refused registration under § 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as used
in connection with Applicant’s goods, so resembles the registered mark
WRISTAPPS, in typed form, as to be likely to cause confusion, or to cause mistake,
or to deceive. The cited mark is registered for the following goods:
Computer software for use in performing timing
functions, calendar functions and memo functions in
electronic instruments worn on the wrist, namely,
watches, in International Class 9.2
When the refusal was made final, Applicant filed a notice of appeal and a request
for reconsideration. The Examining Attorney denied the request for reconsideration
and this appeal proceeded. The case is fully briefed.
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion as set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods and services at issue. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, Applicant
and the Examining Attorney have also submitted arguments regarding the scope of
protection to be afforded the registered mark, the conditions of sale, the
sophistication of customers, the care that customers exercise in selecting the goods,

2 Reg. No. 2214941 issued December 29, 1998; Section 8 affidavit accepted; renewed. Prior
to November 2, 2003, “standard character” drawings were known as “typed” drawings. A
typed mark is the legal equivalent of a standard character mark. TMEP § 807.03(i)
(January 2015).
Serial No. 85913856
3
and the trade channels for the goods. We have considered each of these issues and
all other matters of which there is evidence of record.
1. The goods.
We will first consider the similarity or dissimilarity of the goods as identified in
the application and the cited registration. Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-1162 (Fed. Cir. 2014);
Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). Registrant’s goods are computer software for controlling
certain functions of wrist watches. Applicant’s goods are a “system software
platform that manages” the computer functions of a smart watch. The wording of
the two identifications differs sufficiently to suggest that the goods are not identical,
and requires that we consider the meaning of “system software platform.” For this
purpose, we take judicial notice of the following definitions of “platform”:3
Computers The basic technology of a computer system’s
hardware and software that defines how a computer is
operated and determines what other kinds of software can
be used.
AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, Fifth Edition (2011).
any standard that forms a basic environment under which
compatible computer systems and application programs
can be developed and run, as a specific computer

3 All retrieved June 3, 2015 from . The Board may take
judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food
Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983),
including online dictionaries that exist in printed format or have regular fixed editions. In
re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).

Serial No. 85913856
4
processor or network connection (hardware platform) or
an operating system, database, etc. (software platform).
RANDOM HOUSE KERNERMAN WEBSTER’S COLLEGE DICTIONARY (2010).
The basic technology of a computer system’s hardware
and software, defining how a computer is operated and
determining what other kinds of software can be used.
Additional software or hardware must be compatible with
the platform.
THE AMERICAN HERITAGE DICTIONARY OF STUDENT SCIENCE, Second Edition (2014).

We also consider the entry for “application program” submitted by the Examining
Attorney:
A complete, self-contained program that performs a
specific function directly for the user. This is in contrast to
system software such as the operating system kernel,
server processes, libraries, which exists to support
application programs and utility programs.
FOLDOC Free On-Line Dictionary of Computing (emphasis added).4
These definitions indicate that “a software platform” performs a computing
function that is more fundamental than that of software for performing specific
functions such as “timing functions, calendar functions and memo functions,” as set
forth in Registrant’s identification. In other words, Registrant’s goods appear to be
“applications,” while Applicant’s goods are “system software” that “supports”
applications and with which applications must be compatible in order to run on a
particular computing system.
Although we do not agree with the Examining Attorney’s contention that
Applicant’s identification of goods “is broadly worded to encompass all computer

4 , submitted with the Office Action of October 16, 2014 at 9-10.
Serial No. 85913856
5
functions of smartwatches, including the functions identified in [the cited]
Registration,”5 we do agree that the goods are closely related. As the Examining
Attorney argues, “the parties’ software products have overlapping functions and
purpose” inasmuch as “both are used to control and manage the functions of a
smartwatch.”6 The above definitions show that an “operating system” is a type of
“system software platform,” and the evidence shows that application software for
smart watches is used in extremely close association with operating systems for
smart watches. For example, the Wikipedia entry for “Operating system” states,
“Application programs usually require an operating system to function.”7 Moreover,
an application program must be compatible with the operating system on which it is
expected to run:
[S]martwatches are designed to work with your phone,
not replace it. A smartwatch connects to your smartphone
via Bluetooth, allowing you to view alerts and updates
right on your wrist.
…
Compatibility
Not all smartwatches work with all phone operating
systems. Some are for Android only, while others support
Android, iPhones and Windows phones.8

***

The Galaxy Gear [smart watch] only works with a special
app on the phone. … Samsung has a special store on the

5 Examining Attorney’s brief, 13 TTABVUE 13.
6 Id., 13 TTABVUE 12.
7 Office Action of October 16, 2014 at 11.
8 “2014 Best: Smart Watch: Reviews and Comparisons,” , Applicant’s request for reconsideration of September 22, 2014 at 101-
102.
Serial No. 85913856
6
Note 3 where you can download apps to the Galaxy Gear,
but the selection is limited.9

***

Will my phone be compatible with my smart watch?
Make sure any smart watch you’re considering is
compatible with the phone or other mobile device that you
plan to pair with it. Some watches work with Android OS
and iOS devices, some only with the Android OS, and
some only with some versions of Android. Most of
Samsung’s smart watches work only with phones from
that company.10
The record shows, moreover, that applications that are compatible with a particular
operating system are often offered through application “stores” associated with the
maker of the operating system. The Wikipedia entry for “Mobile app” states:
Apps are usually available through application
distribution platforms, which began appearing in 2008
and are typically operated by the owner of the mobile
operating system, such as the Apple App Store, Google
Play, Windows Phone Store, and BlackBerry App World.
Some apps are free, while others must be bought. Usually
they are downloaded from the platform to a target device,
such as an iPhone, BlackBerry, Android phone or
Windows Phone … .11
***
Amazon Appstore is an alternative application store for
the Android operating system. … The Amazon Appstore’s
Android Apps can also run on BlackBerry 10 devices. …
Apple’s App Store for iOS was the first app distribution
service … .

9 “REVIEW: Samsung’s Galaxy Gear Smart Watch,” , id. at 41.
10 “5 questions to ask yourself before you buy a smart watch,” , id. at
86.
11 Id. at 22.
Serial No. 85913856
7
BlackBerry World is the application store for BlackBerry
10 and BlackBerry OS devices. …
Google Play (formerly known as the Android Market) is
an international online software store developed by
Google for Android devices. … In April 2013, there were
approximately 850,000 apps available for Android ….
An app store for Nokia phones was launched
internationally in May 2009. … Nokia reported that it
would start using Windows Phone as its primary
operating system. …
Windows Phone Store was introduced by Microsoft for its
Windows 8 and Windows RT platforms. … [I]t is
primarily used to distribute “Windows Store apps” –
which are primarily built for use on tablets and other
touch-based devices …
An app store for Samsung mobile phones was founded in
September 2009. … Currently the store is available in 125
countries and it offers apps for Windows Mobile, Android
and Bada platforms.12
Thus, the record shows that customers of software applications for smart
watches must take into consideration the applications’ compatibility with the
watch’s operating system; and such applications are offered through outlets
controlled by the companies that make the operating systems. We find that
Applicant’s goods and Registrant’s goods are closely related in such a way that, if
they were offered under similar trademarks, customers would readily believe that
they emanate from the same source. The du Pont factor relating to the similarity or
dissimilarity of the goods favors a finding of likelihood of confusion.

12 Id. at 25-26.
Serial No. 85913856
8
2. Trade channels.
The Examining Attorney argues that “[a]bsent restrictions in an application
and/or registration, the identified goods and/or services are ‘presumed to travel in
the same channels of trade to the same class of purchasers,’” citing In re Viterra
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 908 (Fed. Cir. 2012).13 In this case, where
we have found that the goods are not identical, we cannot make this logical
presumption.
As discussed above, the trade channels for goods like those of Registrant are
often controlled by the producers of operating systems (which are goods within the
scope of Applicant’s identification). However, there is little, if any, evidence to
demonstrate the channels through which Applicant’s goods are offered. Applicant’s
brief does state that “Applicant’s goods will be offered and delivered in an electronic
environment” and that customers will obtain its goods by “downloading.”14 However,
it would require guesswork on our part to find that customers download their
operating systems from the same online “store” from which they download their
application software. As there is no clear evidence on this point, we treat the du
Pont factor of trade channels as neutral.
3. Conditions of sale and customers to whom sales are made.
Applicant argues that customers of both Applicant and Registrant are
sophisticated “early adopters”; and that they are careful in selecting the goods
because the goods are costly and customers must ensure that the software will be

13 Examining Attorney’s brief, 13 TTABVUE 13.
14 Applicant’s brief at 15, 11 TTABVUE 16.
Serial No. 85913856
9
“useful to them and compatible with the electronic hardware with which it is to be
used.”15 However, Applicant’s discussion of cost focuses on smart watches, “some of
which retail for well over $300,” rather than on the cost of the software at issue. As
discussed above, some application software is offered free of charge to customers;
and there is no evidence of the cost of an operating system or other “system
software.” It does seem likely, at present, that customers for the goods will be the
types of “early adopters” who purchase smart watches, and that early adopters will
bring a degree of care and enthusiasm to their purchases that may be absent from
the selection of more mundane goods. However, it has not been shown that such
customers would bring a similar degree of care to the selection of software, which
may be inexpensive or even free (at least in the case of Registrant’s goods).
Moreover, even though, as we discussed above, application software may be
segregated within stores that are associated with compatible operating systems, it
is apparent that a particular “application store” may offer applications from many
sources and applications that are compatible with several different types of system
software. That is, a single application store might bring together many application
trademarks and several operating system trademarks. Under such circumstances,
the early adopters’ sophistication would not prevent them from experiencing source
confusion if the application marks and operating system marks were highly similar.
Accordingly, we find that the conditions of sale and the sophistication and care of
customers weigh only slightly against a finding of likelihood of confusion.

15 Id.
Serial No. 85913856
10
4. The marks.
We next consider the similarity or dissimilarity of the marks at issue in their
entireties as to appearance, sound, connotation and commercial impression. See
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). While we consider each mark in its
entirety, 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 our ultimate
conclusion rests upon a comparison of the marks in their entireties. In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
The Examining Attorney has shown that OS is a recognized abbreviation of the
term “operating system.”16 She has also shown that “app” is an informal term
meaning “A computer application”17 and “an application program; application
software.”18 The Examining Attorney argues that, in each of the marks at issue,
“‘WRIST’ is the dominant portion” because “the others in the respective marks are
either descriptive or generic terms when used in connection with the relevant
goods.”19 Applicant responds that “the term WRIST is highly suggestive and indeed,

16 See entries for “operating system” and “operating system (OS)” from RANDOM HOUSE
DICTIONARY (2013), THE AMERICAN HERITAGE NEW DICTIONARY OF CULTURAL LITERACY,
Third Edition (2005), and THE FREE ON-LINE DICTIONARY OF COMPUTING (2010), at
, submitted with Office Action of August 16, 2013 at 15-18.
17 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, Fourth Edition
(2000), at , id. at 19.
18 RANDOM HOUSE KERNERMAN WEBSTER’S COLLEGE DICTIONARY (2010) at
, id. at 20.
19 Examining Attorney’s brief, 13 TTABVUE 6.
Serial No. 85913856
11
is used by registrant to describe certain goods in its registration. This term cannot
be dominant if it has minimal trademark significance.”20
We agree with the Examining Attorney that WRIST “is the more distinctive and
memorable portion of the marks at issue,” inasmuch as it is the only non-generic
element in each mark. The fact that the software at issue relates to wristwatches
renders this component of the marks suggestive, and possibly descriptive of the
goods, and as such the WRIST component is inherently weak. However, the
elements OS and APPS are the actual generic names of the goods and, in
themselves, are devoid of source-indicating power.
Nonetheless, in considering the marks we do not ignore even generic matter.
Applicant points out that each mark is, as a whole, a coinage, “an unusual
combination of WRIST and another term or letters,” without “specific meaning in
the English language”; that the two marks consist (at least in part) of different
letters; and that they are therefore different in appearance, sound, meaning and
commercial impression.21 Applicant argues that a consumer seeing the mark
WRISTAPPS would “immediately recognize the respective word elements in the
mark based on his/her understanding of the English language.” By contrast,
Applicant contends that when viewing the mark WRISTOS, “a consumer is far less
likely to recognize the term OS and parse it from the term WRIST.”22

20 Applicant’s brief at 10, 11 TTABVUE 11. We note, however, that Applicant, in its reply
brief, appears to concede that the registered mark is “a combination of terms, the most
distinctive of which is the highly suggestive term ‘wrist.’” Reply brief at 5, 14 TTABVUE 6.
21 Applicant’s brief at 9, 11 TTABVUE 10.
22 Id.
Serial No. 85913856
12
We are not persuaded that customers would have difficulty perceiving the -OS
component of Applicant’s mark as an element separable from the component
WRIST-. In the original application, Applicant presented the mark in upper- and
lower-case letters, i.e., WristOS, thereby confirming that this is a format of
presentation that would be available to Applicant. When the mark is displayed in
this format, customers would readily perceive the -OS component as a discrete
element susceptible of interpretation apart from the element WRIST. As the
Examining Attorney argues, “Consumers who encounter the applied-for mark are
likely to also have the knowledge that the goods are software.23 In light of that
knowledge, consumers would likely understand that the letters ‘OS’ stands for
‘operating system,’ and parse the letters from the mark WRISTOS.”
We acknowledge that the marks are not identical in meaning. However, even
though -OS and -APPS do not have precisely the same meaning, the marks as a
whole are similar in meaning. As the Examining Attorneys says, the marks “are
comprised of the term ‘WRIST’ combined with generic terms used to identify a
genus of software. Thus, the marks convey similar meanings, that the goods are
software that are used for something that is worn on the wrist.”24 In this vein, we
note also that the two marks are similar in their structure, in that each is a single
term consisting of WRIST combined with the generic name of a type of software.

23 Indeed, Section 2(d) requires us to consider the effect of the mark “when used on or in
connection with the goods of the applicant.” 15 U.S.C. § 1052(d).
24 Examining Attorney’s brief, 13 TTABVUE 8.
Serial No. 85913856
13
Although the marks at issue have differences, as noted above, they are similar,
at least in part, in appearance, sound, and meaning. We find that the similarities
outweigh the differences such that, overall, the marks create similar commercial
impressions. Accordingly, we find that the du Pont factor of the similarity or
dissimilarity of the marks favors a finding of likelihood of confusion.
5. Scope of protection of Registrant’s mark.
Applicant argues that Registrant’s mark is entitled to only a narrow scope of
protection because WRIST is a suggestive and, therefore, weak term. “[W]here the
common element of two marks is highly suggestive, confusion is considered
unlikely, especially where the marks have other elements of distinction.”25
Applicant argues that the USPTO has treated WRIST as a term entitled to only a
limited scope of protection, and has registered or approved for publication numerous
marks that include the term WRIST. Applicant has made of record information
regarding 15 such registrations and 3 pending applications,26 and argues that these
records “provide compelling evidence that various WRIST-formative marks can co-
exist – with modest distinguishing elements … ,” and that “consumers are
accustomed to seeing various WRIST-formative marks from various companies in
the area of watches, smart-watches, and related goods, and could not reasonably
associate all of those marks with a single source.”27 Applicant overstates the
probative value of such evidence. Third-party registrations do not demonstrate that

25 Applicant’s brief at 11, 11 TTABUVE 12.
26 Applicant’s response of February 18, 2014 at 13-27; request for reconsideration of
September 22, 2014 at 58-82.
27 Applicant’s brief at 12, 11 TTABVUE 13.
Serial No. 85913856
14
the public is accustomed to seeing the registered marks. Absent evidence of actual
use, third-party registrations do not show that the marks are in use on a
commercial scale (or at all) or that the public has become familiar with them. See
Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA
1973) (the purchasing public is not aware of registrations reposing in the U.S.
Patent and Trademark Office); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria
La Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011). See also In re Hub
Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983). Further, the USPTO’s
treatment of other marks would not justify registration of another purportedly
similar mark if it is confusingly similar to a registered mark. We must decide each
case on its own merits and “[e]ven if some prior registrations had some
characteristics similar to [applicant’s] application, the PTO’s allowance of such prior
registrations does not bind the Board.” In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001). In any event, the third-party marks adduced
by Applicant are substantially more different from Registrant’s mark than is
Applicant’s mark, and none of them shares the structure that is common to the two
marks now at issue, namely WRIST combined with the generic name of a type of
software.28

28 The third-party marks (application and registrations) are WRISTLINX, Wristalk,
WRISTRUGS, WRISTAG, WRISTLETZ (and design), wrstRap!, WRISTLAB, ECOWRIST,
WRIST-COMP 101 (in special form), WRISTSPACE, WRIST MEMO, WRISTABLEGPS,
SWATCH OCCUPY YOUR WRIST!, WRIST ARMOR, WHAT’S ON YOUR WRIST?,
WRISTZONE, TIME TIMER WRIST TIMER, and WRIST TREASURES.
Serial No. 85913856
15
Applicant has also submitted news items showing descriptive use of the word
“wrist” in discussions of smart watches.29 Such evidence does demonstrate the
conceptual (or inherent) weakness in the term WRIST, but it does not demonstrate
commercial weakness arising from the dilutive effect of similar marks in use on
similar goods. We note evidence of use of only one relevant mark, namely, “QOne
Blue SmartWatch WristPhone.”30 We note also, as the Examining Attorney argues,
that most of this evidence relates to use of “wrist” in connection with watches and
not in connection with the goods at issue, i.e., software. We agree with the
Examining Attorney’s assessment to the effect that “There are additional steps
involved for the public to understand that the term ‘WRIST’ suggests that the
software is for smartwatches, and smartwatches are worn on the wrist.”31 In other
words, while WRIST may be a weak term in connection with watches, it is less weak
as applied to software.
Overall, we agree with Applicant that the registered mark is conceptually weak,
inasmuch as WRIST clearly has some significance with respect to the goods and
APPS is a generic name for the goods. This factor weighs against a finding of
likelihood of confusion.
6. Balancing the factors.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. We have found

29 See, e.g., Applicant’s request for reconsideration of September 22, 2014, at 32-51.
30 Id. at 37-38.
31 Examining Attorney’s brief, 13 TTABVUE 9.
Serial No. 85913856
16
that the cited registered mark is conceptually weak, and that the carefulness and
sophistication of customers weigh slightly against a likelihood of confusion. On the
other hand, the marks are similar in their commercial impression and the goods are
very closely related. We have treated trade channels as a neutral factor.
Overall, we find that the extreme similarity of the marks outweighs the
weakness of Registrant’s mark as a relevant factor. Indeed, the two marks are
similar even in the manner in which they are weak: the term WRIST has exactly
the same meaning in both marks and the same degree of strength, and the other
elements of the marks – OS and APPS, respectively – are equally generic. Although
both marks are weak, when they are used on closely related goods that must be
used together in order to be effective, customers would readily perceive them to
designate a single source of goods. As one of our reviewing Courts has said,
“Confusion is confusion. The likelihood thereof is to be avoided, as much between
‘weak’ marks as between ‘strong’ marks, or as between a ‘weak’ and a ‘strong’
mark.” King Candy Company v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974). Moreover, we find the marks so highly similar and the
goods so closely related that even reasonably careful customers would be likely to
suffer confusion. We affirm the Examining Attorney’s refusal of registration on the
ground that Applicant’s mark, as used in connection with Applicant’s goods, so
closely resembles the registered mark as to be likely to cause confusion, mistake or
deception as to the source of Applicant’s goods.
Decision: The refusal to register is affirmed.