MIQ Digital Limited

Trademark Trial and Appeal Board

Dec 16, 2020

88257267 (T.T.A.B. Dec. 16, 2020)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: December 16, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re MIQ Digital Limited
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Serial No. 88257267
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Sergei Orel, of Sergei Orel, LLC for In re MIQ Digital Limited.
Siddharth Jagannathan, Trademark Examining Attorney, Law Office 114,
Laurie Kaufman, Managing Attorney.
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Before Mermelstein, Wolfson and Lykos,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
MIQ Digital Limited (“Applicant”) seeks registration on the Principal Register of
the mark depicted below 1

for the following services in International Class 35:

1 Application Serial No. 86834686 was filed on November 30, 2015 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1052(a), based on Applicant’s allegation of first use of the mark
anywhere and in commerce on November 1, 2015.

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Advertising, marketing and promotional services; advertising
campaign services; advertising services provided via a database;
digital advertising services; collection of information relating to
advertising; response advertising; preparation and realisation of
media and advertising plans and concepts; evaluating the impact
of advertising on audiences; providing assistance to management
in commercial enterprises in respect of advertising and
marketing; marketing campaigns; marketing analysis,
forecasting, research and advice; provision of marketing reports
and studies; planning, development and implementation of
marketing strategies and concepts for others; arranging and
conducting of marketing promotional events for others;
developing promotional campaigns for businesses; design of
marketing surveys; sales promotion services; management
assistance for promoting businesses; product marketing services;
product launch services; business analysis, research and
information services; business assistance, management and
administrative services; acquisition of business information
relating to company activities; business consultation and
management relating to marketing activities; computerised
business information processing services; computerised business
information retrieval; collection and systemisation of
information into computer databases; data collection services;
data processing services for business purposes; data retrieval
services; management and compilation of computerised
databases; brand evaluation services; brand value management
advice and consultancy; creation of brand strategy; information,
advisory and consultancy services relating to all the aforesaid.
The description of the mark reads: “The mark consists of the word MiQ in red, orange
and yellow colors, and the wording THINK BEYOND. in black color.” The colors red,
orange, yellow, and black are claimed as a feature of the mark.
The Trademark Examining Attorney refused registration of Applicant’s mark
under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on two prior
registrations, owned by the same entity, of the marks:
MiQ in standard characters on the Principal Register and
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(MiQ and design) on the Principal Register, both for
“Promoting, marketing and advertising the brands and
goods of others related to all industries, through all public
and private communication means, namely, promoting the
brands and goods of others made in the United States; The
bringing together, for the benefit of others, of a variety of
goods, enabling customers to conveniently view and
purchase those goods in the field of artisan products made
in Queens Borough, New York City,” in International Class
35.
The recitation of services of the composite MiQ and design mark also includes:
“The bringing together of consumers and providers of a
variety of goods and services in the field of artisan products
made in Queens, New York, for commercial purposes via
the Internet,” in International Class 35.2
The Examining Attorney cited a third registration, owned by an unrelated entity,
for the standard character mark THINK BEYOND for, inter alia,
“business consultancy services relating to the analysis,
evaluation, creation, brand establishment and protection of
trademarks; promoting the interests of inventors and other
intellectual property owners in the fields of legislation and
regulation; business consultation” in International Class
35.3
When the refusals were made final, Applicant filed a Request for Reconsideration
and appealed to this Board. Following denial of Applicant’s Request, the appeal

2 Reg. No. 5221926 for the mark MiQ in standard characters, and Reg. No. 5221928 for the
mark , both owned by Queens Economic Development Corporation; registered June 13,
2017.
3 Reg. No. 5360942, issued December 19, 2017.
A fourth registration, Reg. No. 4453781, was initially cited against Applicant’s mark but
has now been cancelled and forms no part of this decision.
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resumed and is now briefed.4 We affirm.
I. Preliminary Matter
The Examining Attorney objects to a list of third-party registrations included as
part of Applicant’s Request for Reconsideration and in its brief “because the Applicant
has not made those registrations part of the record, and the Examining Attorney
formally objects to any attempt by Applicant to do so at this stage.” 8 TTABVUE 4.
Applicant included a TESS listing of nine live registrations as part of its request
for reconsideration to demonstrate that “the MiQ mark element can be argued to be
weak and diluted.” 6 TTABVUE 12. The Examining Attorney did not address the list
in his denial of the request for reconsideration, but objected to the list in his brief. In
In re 1st USA Realty Professionals Inc., 84 USPQ2d 1581 (TTAB 2007), the Board
faced the same situation. The Board stated:
Applicant also submitted, with its request for
reconsideration, a listing of approximately 65 marks taken
from the USPTO TESS database for marks containing the
words “FIRST” or “1ST” or “USA.” This listing is ...
insufficient to make the applications and registrations of
record. In re Ruffin Gaming LLC, 66 USPQ2d 1924, 1925
n.3 (TTAB 2002). Nor can we deem the Examining
Attorney to have waived any objection to this document by
failing to advise applicant of the insufficiency, since at the
point that applicant filed the list it no longer had an
opportunity to add to the record of the application.
Accordingly, this list has not been considered.

4 Citations to the appeal record are to TTABVUE, the Board’s electronic database. Citations
to the prosecution history for the application are to the TSDR (Trademark Status and
Document Retrieval) database. See, e.g., TRADEMARK BOARD MANUAL OF PROCEDURE
(TBMP) § 1203.01 (2020).
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Id. at 1583. For these same reasons, the Examining Attorney’s objection is sustained
and we give no further consideration to the list of registrations.
II. Likelihood of Confusion
Our determination under Trademark Act Section 2(d) involves an analysis of all
of the probative evidence of record bearing on a likelihood of confusion. In re E.I.
duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting
forth factors to be considered, referred to as “DuPont factors”); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). We consider the
DuPont factors for which there is evidence of record and argument. In re Guild Mortg.
Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Two key
considerations are the similarities between the marks and the relatedness of the
goods and services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945
(Fed. Cir. 2004); 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 [services] and
differences in the marks.”).
A. Similarity of the Marks
Applicant’s mark is The registered marks are:
 MiQ in standard characters,
 and
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 THINK BEYOND in standard characters.
We compare Applicant’s mark with the Registrants’ marks “in their entireties as
to appearance, sound, connotation and commercial impression.” Palm Bay Imps. Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). (quoting DuPont, 177 USPQ at 567). “Similarity in any
one of these elements may be sufficient to find the marks confusingly similar.” Inn at
St. John’s, 126 USPQ2d at 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810,
1812 (TTAB 2014)). We assess not whether the marks can be distinguished in a side-
by-side comparison, but rather whether their overall commercial impressions are so
similar that confusion as to the source of the goods offered under the respective marks
is likely to result. Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801
(Fed. Cir. 2018) (citing Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713 (Fed. Cir. 2012)).
1. Comparing MiQ and with Applicant’s Mark
Turning first to a comparison of Applicant’s mark with the two marks owned by
Queens Economic Development Corporation, we note that Applicant’s mark overlaps
in pronunciation, appearance and connotation with the cited marks due to the shared
element “MiQ” in each. This shared element is the dominant element of Applicant’s
mark, the only element in the cited standard character mark, and the dominant
element of the cited MiQ and design mark. Although we must rest our ultimate
conclusion on consideration of the marks in their entireties, “there is nothing
improper in stating that . . . more or less weight has been given to a particular feature
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of a mark… .” In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050
(Fed. Cir. 2018) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749,
751 (Fed. Cir. 1985)). See also Palm Bay Imps., 73 USPQ2d at 1692 (“Veuve” is the
most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first
word in the mark and the first word to appear on the label); Century 21 Real Estate
Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992)
(upon encountering the marks, consumers will first notice the identical lead word);
Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is
often the first part of a mark which is most likely to be impressed upon the mind of a
purchaser and remembered”).
The term “MiQ” is dominant in Applicant’s mark because it appears first, is larger
than the punctuated wording “Think Beyond.” and catches the eye because of its
brightly colored red-orange-yellow shading. As for the design feature in the cited
mark , it acts merely as a background carrier that does not distinguish the mark
from Applicant’s mark. See In re Ocean Tech., Inc., 2019 USPQ2d 450686, *5 (TTAB
2019) (citing Guess?, Inc. v. Nationwide Time Inc., 16 USPQ2d 1804, 1805 (TTAB
1990) (a common, geometric shape, particularly one serving as a carrier or
background design element, is not usually considered distinctive)); In re Dakin’s
Miniatures, 59 USPQ2d 1593, 1596 (TTAB 1999) (triangle design functioned merely
as an insignificant carrier for the literal portion of the mark).
In addition, the display of the cited standard character mark is not limited to any
particular font style, size, or color, and “we therefore must consider that it might be
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used in any stylized display or color scheme, including one that is similar or identical
to any lettering style used by [applicant].” Weider Publ’ns, LLC v. D & D Beauty Care
Co., LLC, 109 USPQ2d 1347, 1355 (TTAB 2014), appeal dismissed per stipulation,
No. 14-1461 (Fed. Cir. Oct. 10, 2014); see Trademark Rule 2.52(a), 37 C.F.R. § 2.52(a);
In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186 (TTAB 2018) (“[T]he rights
associated with a standard character mark reside in the wording per se and not in
any particular font style, size, or color.”) (citing Citigroup Inc. v. Capital City Bank
Grp., Inc., 637 F.3d 1344, 1353, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011).
Applicant argues that “MiQ” means “made in Queens” when used in the cited
marks. Although Applicant does not explain what meaning MiQ may have as used by
Applicant, a review of its marketing materials submitted with the Request for
Reconsideration suggests that the meaning is intended to be “marketing intelligence.”
See, e.g., Request for Reconsideration, TSDR 25. However, there is nothing in the
marks themselves which would indicate to customers the alleged meaning of either
Applicant’s or Registrant’s marks. Thus, customers would not necessarily be aware
of the derivation of the letters “MiQ” in any of the marks. Such letters could be
regarded as standing for the phrase “Made in Queens” to consumers familiar with
Registrant’s marks, and to consumers familiar with Applicant’s mark, Registrant’s
cited marks could be perceived as utilizing a shortened form of Applicant’s mark. See,
e.g., Fiserv, Inc. v. Elec. Transaction Sys. Corp., 113 USPQ2d 1913, 1919 (TTAB 2015)
(while there was no indication that the mark PMONEY had any particular meaning
other than the letter “P” plus the term “Money,” the Board found it likely that with
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overlapping services, consumers will perceive PMONEY as an abbreviation for
POPMONEY); Barbara’s Bakery, Inc. v. Landesman, 82 USPQ2d 1283, 1288 (TTAB
2007) (BARBARA’S BAKERY is similar to BARB’S BUNS BAKERY in short because
Barb is a nickname or shortened version of Barbara).
When considered in their entireties, we find the marks to be similar. Further, any
possible difference in connotation imparted by the “MiQ” acronym in the respective
marks is outweighed by the substantial similarities in sight, sound and overall
commercial impression of the marks.
2. Comparing THINK BEYOND with Applicant’s Mark
“Marks have frequently been found to be similar where one mark incorporates the
entirety of another mark, as is the case here.” TiVo Brands LLC v. Tivoli, LLC, 129
USPQ2d 1097, 1115 (TTAB 2019); see Stone Lion Capital Partners v. Lion Capital
LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (affirming Board’s
finding that applicant's mark STONE LION CAPITAL incorporated the entirety of
the registered marks LION CAPITAL and LION, and that the noun LION was the
dominant part of both parties’ marks); Double Coin Holdings Ltd. v. Tru Dev., 2019
USPQ2d 377409 *6, *7 (TTAB 2019) (“Tru’s junior mark, ROAD WARRIOR contains
Double Coin’s entire mark WARRIOR”); In re Integrated Embedded, 120 USPQ2d
1504, 1513 (TTAB 2016) (“Applicant’s mark BARR GROUP wholly encompasses the
registered mark BARR”). This principle holds especially true here given that the
phrase “Think Beyond.” will be perceived as a discrete element apart from the “MiQ”
portion of Applicant’s mark.
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Applicant argues that “[i]t is evident in the attached website that the registrant
Xinova uses THINK BEYOND in combination with XINOVA – THINK BEYOND.
Thus, a consumer will understand right away that the THINK BEYOND slogan
belongs to XINOVA the registrant, and not to the Applicant.” 6 TTABVUE 12.
However, the website evidence does not demonstrate the absence of a likelihood of
confusion because the cited registration does not include the term XINOVA. For
purposes of our Section 2(d) analysis, we are constrained to make our determination
based on the cited mark, as registered, and not on its manner of use based on extrinsic
evidence. See e.g., Coach Servs., 101 USPQ2d at 1722; In re Shell Oil Co., 922 F.2d
1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993) (“Although Shell argues that its use
of RIGHT-A-WAY would be in association with other Shell trademarks, the proposed
registration is not so limited. Registrability is determined based on the description in
the application, and restrictions on how the mark is used will not be inferred.”); cf.
Am. Rice, Inc. v. H.I.T. Corp., 231 USPQ 793, 796 (TTAB 1986) (an applicant’s
promotional and marketing materials are only relevant to show whether the mark
projects “a confusingly similar commercial impression.”).
We find Applicant’s mark is similar in sound, appearance, connotation and overall
commercial impression to the cited mark THINK BEYOND.
3. Conclusion as to the Marks
The first DuPont factor, the similarity or dissimilarity of the marks, favors a
finding of likelihood of confusion as to each cited registration.
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B. Relatedness of the Services; Channels of Trade; Classes of
Consumers
The second and third DuPont factors consider the relatedness of the involved
services, their trade channels, and classes of consumers. DuPont, 177 USPQ at 567.
We consider the services as they are identified in Applicant’s application and the cited
registrations. Stone Lion, 110 USPQ2d at 1162. The compared services need not be
identical or even competitive to find a likelihood of confusion. See On-line Careline
Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000);
Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000).
They need only be “related in some manner and/or if the circumstances surrounding
their marketing are such that they could give rise to the mistaken belief that [the
services] emanate from the same source.” Coach Servs., 101 USPQ2d at 1722 (quoting
7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).
1. Comparing the Services in the MiQ and Registrations with the
Services in Applicant’s Application
Both cited registrations and Applicant’s application include advertising services.
Applicant’s application recites, inter alia, “advertising, marketing and promotional
services; advertising campaign services; advertising services provided via a database;
[and] digital advertising services.” The services recited in the cited MiQ registrations
include “[p]romoting, marketing and advertising the brands and goods of others
related to all industries, through all public and private communication means,
namely, promoting the brands and goods of others made in the United States.” The
services are thus legally identical in part, as Registrant’s services are encompassed
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by Applicant’s broadly worded recitation.
When the respective recitations of services overlap or list legally identical
services, without restrictions as to channels of trade or classes of purchasers, as is
the case here, those legally identical services are further 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) (even though there was no evidence
regarding channels of trade and classes of consumers, the Board was entitled to rely
on this legal presumption in determining likelihood of confusion); Hewlett-Packard
Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)
(citing CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983) (“[A]bsent
restrictions in the application and registration, goods and services are presumed to
travel in the same channels of trade to the same class of purchasers.”).
We need not consider the similarity of the other identified services because
registration may be refused as to an entire class in the application if likelihood of
confusion exists as to any item in that class. See, e.g., Double Coin Holdings, 2019
USPQ2d 377409 at *6 (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981)). And although Applicant argues that while
the Registrant “promotes goods and services by small businesses that are ‘Made in
Queens,’” whereas Applicant’s services “are not made in Queens,” 6 TTABVUE 12,
“an application with no restriction on trade channels cannot be narrowed by
testimony that the applicant’s [or registrant’s] use is, in fact, restricted to a particular
class of purchasers.” Stone Lion, 110 USPQ2d at 1162 (internal citations omitted).
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The identity of Applicant’s and Registrant’s services and their overlapping
channels of trade weighs in favor of finding a likelihood of confusion.
2. Comparing the Services in the THINK BEYOND Registration with
the Services in Applicant’s Application
Applicant’s services include “brand evaluation services; brand value management
advice and consultancy; creation of brand strategy; information, advisory and
consultancy services relating to all the aforesaid.” The cited mark is registered for,
inter alia, “business consultancy services relating to the analysis, evaluation,
creation, brand establishment and protection of trademarks; promoting the interests
of inventors and other intellectual property owners in the fields of legislation and
regulation; business consultation.” These services are legally identical in part.
Applicant’s brand evaluation services are broad enough to cover Registrant’s business
consultancy services relating to brand establishment and protection of trademarks.5
These legally identical services are presumed to travel in the same channels of trade
to the same class of purchasers. The identity of Applicant’s and Registrant’s services
and their overlapping channels of trade weighs in favor of finding a likelihood of
confusion.
3. Conclusion as to the Services
The second and third DuPont factors favor a finding of likelihood of confusion.

5 One definition of “brand” is “a printed mark made for similar purposes : TRADEMARK.”
See merriam-webster.com/dictionary/brand, accessed December 14, 2020. The Board may
take judicial notice of definitions from dictionaries, including online dictionaries that exist in
printed format. E.g., In re S. Malhotra & Co. AG, 128 USPQ2d 1100, 1104 n.9 (TTAB 2018).
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C. Balancing the Factors
Overall, the marks are similar in appearance, sound, connotation and commercial
impression and will be used on legally identical services that will travel through the
same trade channels to the same classes of purchasers. Accordingly, there is a
likelihood of confusion among relevant purchasers.
Decision: The refusal to register Applicant’s mark under Trademark Act Section
2(d) is affirmed as to all three cited registrations.