OnForce, Inc.

Trademark Trial and Appeal Board

Mar 15, 2010

No. 77048972 (T.T.A.B. Mar. 15, 2010)

Mailed: March 15, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re OnForce, Inc.
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Serial No. 77048972
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Timothy D. Pecsenye, Sean W. Dwyer and Jennifer L.
Stefanski of Blank Rome LLP for OnForce, Inc.

Sara Benjamin, Trademark Examining Attorney, Law Office 110
(Chris A. F. Pedersen, Managing Attorney).
_______

Before Kuhlke, Walsh and Bergsman, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

On November 21, 2006, OnForce, Inc. applied to
register the mark on the Principal Register based on a
bona fide intention to use the mark in commerce under
Section 1(b) of the Trademark Act, 15 U.S.C. §1052(b), for
services identified as “providing online electronic
bulletin boards for the posting and transmission of
messages among and between computer users concerning
products, services and business opportunities” in
International Class 38.
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 77048972
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The application includes the following color claim and
description:
The color(s) white, green, black, silver and
yellow is/are claimed as a feature of the mark.

The color white appears in the wording “on” and
in the stylized bright spot; the color green
appears as a stylized bubble; the color black
appears as the edges around the stylized bubble;
the color silver appears as the border around the
stylized bubble; the color yellow appears in the
stylized bright spot.

Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used with its identified services,
so resembles the registered mark for “telecommunication
services, namely, electronic transmission of voice messages
and data,” in International Class 38, as to be likely to
cause confusion, mistake or deception.1
The registration also includes the following goods and
services, “navigational system, comprising electronic
transmitters receivers, circuitry, microprocessors,
cellular telephone and computer software all for use in
navigation and all incorporated into a motor vehicle” in
International Class 9, and “providing roadside emergency
services, namely remote door unlock, theft detection and

1 Registration No. 2485521, issued September 4, 2001, Section 8
and 15 affidavit accepted and acknowledged.
Serial No. 77048972
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notification, stolen vehicle tracking, automatic
notification of airbag deployment, voice routing and
location assistance and convenience services through
components integrated into a motor vehicle, namely
transmitters, receivers, microprocessors, software,
cellular phone, and electrical architecture all interacting
with global positioning system satellite technology and a
customer service center” in International Class 37.
Applicant has appealed the final refusal and the
appeal is fully briefed. We affirm the refusal to
register.
When there is a question of likelihood of confusion,
we analyze the facts as they relate to the relevant factors
set out in In re E. I. Du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the goods
and services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
In determining the similarity between the marks we
analyze “the marks in their entireties as to appearance,
sound, connotation and commercial impression.” Palm Bay
Serial No. 77048972
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Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)
quoting du Pont, 177 USPQ at 567.
Applicant’s mark and registrant’s mark are
very similar in appearance, sound, connotation and
commercial impression. In comparing the marks, applicant
contends that consumers would perceive registrant’s mark as
a rebus for its corporate name Onstar LLC arguing:
Registrant’s mark is a classic example of a
rebus, a message where pictures representing
syllables and words are decoded...As consumers
are well aware of the company name of Registrant,
they can easily make the connection that the
stylized logo is a rebus of ONSTAR, not ON and
Design. In other words, consumers, when viewing
Registrant’s logo, will see and pronounce
Registrant’s name, ONSTAR, not merely the word
“ON.” As Registrant’s mark is a rebus, and
therefore a design logo of Registrant’s corporate
name ONSTAR, certainly consumers can
differentiate between the design logo ONSTAR and
a design logo depicting an “on” indicator light.

Br. p. 11.
Applicant distinguishes its mark arguing that the
color element in its mark “reflect[s] the fact that it is a
light [and] the color green is highly symbolic to consumers
as meaning ‘on’ or ‘go’...” Id. Applicant concludes that
these differences impact each marks appearance, sound,
connotation and commercial impression.
Serial No. 77048972
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Applicant’s argument is not persuasive. While it is
possible that some consumers would recognize registrant’s
mark as a rebus and pronounce and perceive it as ONSTAR, we
must consider those consumers who would simply see the mark
as presented in the drawing of the registration and not
extrapolate to the word ONSTAR. Further, the registration
is not limited to any color presentation and could also
evoke the meaning of an on button in connection with its
data transmission services, similar to applicant’s mark, in
particular in view of its similar appearance with a dark
circular background.
The cases relied on by applicant are not helpful
because they involve the addition of other literal matter.
Here, applicant’s position requires inferences about the
potential purchaser’s perception of a design element that
are not supported by the four corners of the registration
or the record. Similarly, in its effort to limit the scope
of protection for registrant’s mark, applicant relies on
several third-party registrations that include the word ON
with other literal matter. See, e.g., Reg. No. 3280013 for
the mark ON DEMAND SERVICE for telecommunications services.
Many of these third-party registrations are very different
in view of the additional wording and create commercial
impressions and connotations different from the meaning of
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turning something on. See, e.g., Reg. No. 3095779 for the
mark ON-TRAVEL for telecommunication services. At a
minimum, these registrations do not limit registrant’s
scope of protection to exclude a mark that has a similar
background design and contains no other distinguishing
literal elements.
In view of the above, the factor of the similarity of
the marks weighs in favor of a likelihood of confusion.
Turning now to a comparison of the services, it is the
examining attorney’s position that “[b]ecause the nature of
the services is such that both services are
telecommunications services that feature the transmission
of data among users and the services are typically provided
by a single source, the services of the applicant are in
the registrant’s normal fields of expansion.” Br. p. 11.
In contrast, applicant argues that the services are
distinct and the trade channels do not overlap. The
problem with applicant’s approach, however, is that it
attempts to restrict the identification in the registration
by relying on applicant’s description of registrant’s
actual use and registrant’s more limited recitations in the
other classes of goods and services in the registration.
We clearly cannot base our analysis on either of these two
approaches. We may only make our determination based on
Serial No. 77048972
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the services as written, unless there is some ambiguity
that can only be clarified by extrinsic evidence. Compare
Octocom Systems, Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The
authority is legion that the question of registrability of
an applicant’s mark must be decided on the basis of the
identification of goods [or services] set forth in the
application regardless of what the record may reveal as to
the particular nature of an applicant’s goods [or
services], the particular channels of trade or the class of
purchasers to which the sales of goods [or services] are
directed”) with In re TrackMobile Inc., 15 USPQ2d 1152,
1154 (TTAB 1990) (when the description of goods is unclear,
the use of extrinsic evidence is appropriate to show “that
the description of goods has a specific meaning to members
of the trade”). Here, there is no ambiguity in
registrant’s identification. Moreover, we must analyze
each class separately and we may not limit one class based
on limitations set forth in another class within the same
application. G&W Laboratories Inc. v. GW Pharma Ltd., 89
USPQ2d 1571, 1574 (TTAB 2009).
The services, as written, are similar in that
registrant’s “telecommunication services, namely,
electronic transmission of voice messages and data” without
Serial No. 77048972
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limitation as to field of use or manner of use encompasses
applicant’s services “providing online electronic bulletin
boards for the posting and transmission of messages among
and between computer users concerning products, services
and business opportunities” to the extent both involve
services that feature the transmission of information from
one party to another.2
However, even if we interpret the recited services in
the registration as literally just the electronic
transmission of voice and data, i.e. merely a transmitting
service, getting voice and data from point A to point B,
and applicant’s services, on the other hand, as more
content-oriented, where the focus of this service is a
destination point for the exchange of information through
the provision of a platform at which parties may send or
transmit their content and read other’s content, the record
supports a finding that these types of services are

2 We note applicant’s services “providing a virtual marketplace
connecting business and consumers with providers of goods and
services via global computer networks, wireless networks, email
or telephone; promoting the goods and services of others via
global computer networks, wireless networks, and email; providing
a website whereby buyers and sellers transact business, monitor
progress of goods and services and provide evaluative feedback;
providing real-time business information about companies,
industries and markets” in International Class 37 recited in its
child application, which has since registered, were sufficiently
distinct to avoid a likelihood of confusion refusal presumably
because they do not include the “transmission of data” service.

Serial No. 77048972
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related. In support of her position that the respective
services are related, the examining attorney has submitted
several use-based third-party registrations where
transmission services and electronic bulletin board
services are registered under the same mark. See, e.g.,
Reg. No. 3306917 for the mark SUPERBUDDY for, inter alia,
“telecommunications services, namely, electronic
transmission of data, images, documents, and sound via
computer networks; providing online electronic bulletin
boards and chat rooms for transmission of messages, photos,
and notes among a group of computer users concerning music,
movies, sports, education...”; Reg. No. 3390222 for the
mark TREEMO for, inter alia, “providing on-line chat rooms
and electronic bulletin boards for transmission of messages
among computer users concerning sports, music, current
events, pop culture, ...; telecommunications services,
namely, wireless transmission of data and voice between
computers, the global computer information network,
handheld devices, telephones and mobile devices”; and Reg.
No. 3231565 for the mark WETPAINT for “electronic
transmission of data, messages, images, and documents;
providing on-line forums, electronic bulletin boards and
message boards for transmission of messages among computer
users concerning a wide variety of information and topics
Serial No. 77048972
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of interest to the general public.” We find these
registrations persuasive evidence as to the factor of the
relatedness of the services. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993) (third-party
registrations may serve to suggest that the listed goods or
services are of a kind that may emanate from a single
source).
Having determined that registrant’s identified
services encompass or are closely related to applicant’s
services we must presume that the purchasers and channels
of trade for such services would overlap. See Genesco Inc.
v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-
part identical and in-part related nature of the parties’
foods, and the lack of any restrictions in the
identifications thereof as to trade channels and
purchasers, these clothing items could be offered and sold
to the same classes of purchasers through the same channels
of trade”).
In view of the above, the du Pont factors of the
relatedness of the services, the channels of trade, and
class of customers favor a finding of likelihood of
confusion as to the cited registration.
In conclusion, we find that because the marks are
similar, the services are related, and the channels of
Serial No. 77048972
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trade and purchasers overlap, confusion is likely between
applicant’s mark for its identified services and the mark
in the cited registration. To the extent there are any
doubts, we resolve them, as we must, in registrant’s favor.
In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d
1025 (Fed. Cir. 1988).
Decision: The refusal to register under Section
2(d) of the Trademark Act is affirmed.