Open Access Technology International, Inc.

Trademark Trial and Appeal Board

Feb 24, 2017

No. 86315746 (T.T.A.B. Feb. 24, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: February 24, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re Open Access Technology International, Inc.
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Serial No. 86315746
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Richard A. Arrett of Vidas, Arrett & Steinkraus PA,
for Open Access Technology International, Inc.
Catherine L. Tarcu, Trademark Examining Attorney, Law Office 105,
Susan Hayash, Managing Attorney.
_____

Before Zervas, Shaw and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
Open Access Technology International, Inc. (“Applicant”) seeks registration on the
Principal Register of the mark WEBSMARTTRADER (in standard characters) for the
following goods and services:
Computer application software for computers, laptop computers, tablet
computers, mobile phones, and handheld computers, namely, software
for facilitating front-to-back office financial and physical trading,
scheduling, risk, and settlements in commodity markets related to
trading energy such as electricity; Computer programs and computer
software for electronically trading securities in the energy market, such
as electricity, in International Class 9;

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Directing orders for electricity energy security trades by means of
computer software which automatically directs trades to the best
location for executing such orders, in International Class 35;

Internet services, namely, providing multiple-user access to information
on the internet concerning the development and generation of computer
software for use in businesses as well as the functions and application
of such business software, related to electricity trading, in International
Class 38; and

Providing temporary use of on-line non-downloadable computer
application software, namely, software for facilitating front-to-back
office financial and physical trading, scheduling, risk, and settlements
in commodity markets, namely, energy trading markets such as trading
electricity, in International Class 42.1

The Trademark Examining Attorney issued a final Office Action refusing
registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), based on likelihood of confusion with the mark SMARTRADER (in
standard characters) registered on the Principal Register for “computer programs and
computer software for electronically trading securities,” in International Class 9.2
When the refusal was made final, Applicant appealed and requested
reconsideration. In its request for reconsideration, Applicant, inter alia, requested an
amendment of the identification of goods and services in International Classes 9 and
42. After the Examining Attorney denied the request for reconsideration, including

1 Application Serial No. 86315746, filed on June 20, 2014, based upon Applicant’s allegation
of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b).

2 Registration No. 3829587, registered on August 3, 2010. Section 8 and 15 affidavits accepted
and acknowledged on July 12, 2016.
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Applicant’s requested amendment, the appeal was resumed.3 We affirm, in part, and
reverse, in part, the refusal to register under Section 2(d). We additionally affirm the
Examining Attorney’s rejection of Applicant’s proposed amendments to the
identifications of goods and services in International Classes 9 and 42.
Proposed Amendments
Prior to filing its request for reconsideration, the identification of goods and
services for International Class 9 and International Class 42 read as follows:
International Class 9
Computer application software for computers, laptop computers, tablet
computers, mobile phones, and handheld computers, namely, software for
facilitating front-to-back office financial and physical trading, scheduling, risk,
and settlements in commodity markets related to trading energy such as
electricity; Computer programs and computer software for electronically trading
securities in the energy market, such as electricity.

International Class 42

Providing temporary use of on-line non-downloadable computer application
software, namely, software for facilitating front-to-back office financial and
physical trading, scheduling, risk, and settlements in commodity markets,
namely, energy trading markets such as trading electricity.

The Examining Attorney had not raised any objections to these identifications.
With its request for reconsideration of the Examining Attorney’s Section 2(d)
refusal, Applicant proposed the following the amendments to the identification of

3 This appeal was suspended on April 22, 2016 pending Registrant’s response to an Office
Action issued by the Post Registration Branch requiring Registrant to submit new specimens
of use because the specimens submitted in conjunction with Registrant’s Section 8 affidavit
did not display proper trademark use of Registrant’s mark. On July 12, 2016, the Post
Registration accepted Registrant’s Section 8 affidavit including the new specimens.
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goods and services in International Class 9 and International Class 42.4 (the
strikethroughs constitute a deletion from the identification and the bolded language
constitutes an addition to the identification):
International Class 9

Computer application software for computers, laptop computers, tablet
computers, mobile phones, and handheld computers, namely, software for
facilitating front-to-back office financial and physical trading, scheduling, risk,
and settlements in commodity markets related to trading energy such as
electricity electricity trading; Computer programs and computer software for
electronically trading securities in the energy market, such as electricity.

International Class 42

Providing temporary use of on-line non-downloadable computer application
software, namely, software for facilitating front-to-back office financial and
physical trading, scheduling, risk, and settlements in commodity markets,
namely, energy trading markets such as trading electricity trading.

In denying Applicant’s request for reconsideration,5 the Examining Attorney, inter
alia, found that the proposed amendments for both International Classes 9 and 42
were unacceptable because they expanded the scope of the current identifications.6
We agree with the Examining Attorney.

4 Applicant’s September 2, 2015, request for reconsideration, 4 TTABVUE.
5 In her Initial Office Action, the Examining Attorney, inter alia, found the identification of
goods and services in International Classes 9, 35, and 42, as originally identified, indefinite.
See August 18, 2014, Office Action. In requiring Applicant to provide more definite
identifications, the Examining Attorney provided an advisory that all future amendments
cannot expand the scope of any current identification. Id. This advisory remained ongoing,
including consideration of Applicant’s proposed amendments in its request for
reconsideration. Accordingly, the Examining Attorney’s rejection of the proposed
amendments proffered by Applicant in its request for reconsideration does not present a new
issue on appeal.
6 Examining Attorney’s September 21, 2015, denial of request for reconsideration.
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With regard to the proposed amendment to the identification of goods in
International Class 9, we note that the Examining Attorney has submitted evidence
which suggests that electricity may be traded in a commodity exchange market, as
well as through private bilateral agreements.7 Accordingly, by deleting the wording
“commodity markets related to trading energy such as electricity” in the identification
of goods in International Class 9 and by deleting the wording “commodity markets,
namely, energy trading markets such as trading” in the recitation of services in
International Class 42, Applicant has impermissibly expanded the scope of the
subject matter of its computer programs.
We also find that by deleting the wording “securities in the energy market” in the
latter portion of the identification of goods International Class 9, Applicant once
again improperly alters the subject matter of Applicant’s computer programs from
trading securities in the energy market to trading electricity as a commodity.
Applicant itself concedes that trading securities is very different from trading
electricity as a commodity. See Applicant’s Appeal Brief, p. 7, 7 TTABVUE 11.
In view of the foregoing, we affirm the Examining Attorney’s rejection of the
proposed amendments to the identification goods and services in International
Classes 9 and 42.8

7 Id.
8 In its Appeal Brief, Applicant requests that “the descriptions should be considered amended
or applicant should work with the Examiner to adopt a narrowing amendment which satisfies
the Examiner….” See Applicant’s Appeal Brief, p. 7, 7 TTABVUE 11. To the extent Applicant
is seeking a remand in the event the Board affirmed the Examining Attorney’s refusal to
approve the proposed amendments to the identifications in International Classes 9 and 42,
as is the case here, such request will be given no consideration since an application which
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We now turn to the Section 2(d) refusal.
Likelihood of Confusion
Our determination under Section 2(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); 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, two key
considerations are the similarities between the marks and the similarities between
the goods/services. 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 differences in the marks.”).
A. Comparison of the Marks
We first address the du Pont likelihood of confusion factor focusing on “the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay 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). “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

has been considered and decided on appeal will not be reopened except for entry of disclaimer
or upon order of the Director. See Trademark Rule 2.142(g); TBMP § 1218 (2017).
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would be likely to assume a connection between the parties.” Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(quotation omitted).
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, our analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). On the other hand, 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 the ultimate conclusion rests on a consideration of the
marks in their entireties. In re Nat’l Data, 224 USPQ at 751.
Applicant’s mark is WEBSMARTTRADER and the cited mark is SMARTRADER.
We note that the cited mark contains a telescoped letter “T.” A “telescoped mark,”
which consists of two or more words combined to create a single word that shares
letters, such as Registrant’s mark SMARTRADER, is presumed to be read by
consumers as the combination of the telescoped terms “smart” and “trader” and it is
unlikely that a consumer would place any additional time or emphasis on the
telescoped portion of the mark, or pronounce the mark differently than if the mark
contained two letter “T”s instead of one. See In re Greenliant Sys. Ltd., 97 USPQ2d
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1078, 1083 (TTAB 2010) (holding NANDRIVE, a telescoped mark of the generic term
“nand drive”).
Applicant submits the marks are different in sound and appearance and have
different overall commercial impressions due to the addition of the term WEB in its
mark.9 Generally, the addition of subordinate or descriptive matter to another’s mark
does not obviate a finding of similarity. In re Chatam Int’l Inc., 380 F.3d 1340, 71
USPQ2d 1944, 1946 (Fed. Cir. 2004) (“Viewed in their entireties with non-dominant
features appropriately discounted, the marks [GASPAR’S ALE for beer and ale and
JOSE GASPAR GOLD for tequila] become nearly identical ....”); Bellbrook Dairies,
Inc. v. Hawthorn-Mellody Farms Dairy, Inc., 253 F.2d 431, 117 USPQ 213, 214 (CCPA
1958) (“SLIM” and “VITA-SLIM” confusingly similar where SLIM is the dominant
part of the mark, VITA disclaimed).
The term WEB is defined as “The World Wide Web or internet.”10 Applicant
provides its identified services via the internet and, therefore, the term is descriptive
of these services. Although we have considered the marks in their entireties, the term
SMARTTRADER or Registrant’s telescoped version SMARTRADER is entitled to

9 Applicant also argues that since the terms WEB and T have been disclaimed, “the disclaimer
does not allow ‘WEB & T’ to be disregarded in evaluating the differences in appearance,
sound, and connotation of the marks.” See Applicant’s Appeal Brief, p. 6, 7 TTABVUE 10.
There is nothing in the record before us containing a disclaimer of the terms “WEB” and “T”
or a requirement by the Examining Attorney to disclaim such terms. Accordingly, Applicant’s
argument is without merit.
10 See Oxford Dictionary (www.oxfordictionaries.com). The Board may take judicial notice of
dictionary definitions, including online dictionaries and encyclopedias that exist in printed
format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d 823 F.3d 594,
118 USPQ2d 1632 (Fed. Cir. 2016); B.V.D. Licensing Corp. v. Body Action Design Inc., 846
F.2d 727, 6 USPQ2d 1719, 1721 (Fed. Cir. 1988); Threshold.TV Inc. v. Metronome Enters.
Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010).
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greater weight in our assessment of likelihood of confusion because the addition of
the descriptive term WEB in Applicant’s mark has less source-identifying value. See
In re Nat’l Data, 224 USPQ at 751. In other words, the addition of the descriptive
term WEB simply is insufficient to distinguish the marks WEBSMARTTRADER and
SMARTRADER. Moreover, since Applicant’s mark is in standard characters, it is
possible that Applicant may display the SMARTTRADER portion of its mark in a
more prominent manner than the term WEB, emphasizing that the term
SMARTTRADER as the dominant feature of its mark. See Citigroup Inc. v. Capital
City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011).
Because the dominant element of Applicant’s mark is phonetically identical to the
cited mark, and because of the descriptive nature of the term WEB, we find that
consumers are likely to view WEBSMARTTRADER as a variation of the cited mark
SMARTRADER. Accordingly, in terms of appearance, sound and connotation, the
marks look and sound similar and have a similar meaning as both share the common
legally dominant equivalent wording of “SMART TRADER.”
The first du Pont factor thus supports a finding that confusion is likely.
B. Comparison of the Goods and Services, Trade Channels and
Consumers

We next compare Applicant’s goods and services and Registrant’s goods. In
making our determination under this second du Pont factor, we look to the goods and
services as identified in the involved application and cited registration. See Octocom
Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (“The authority is legion that the question of registrability of an
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applicant’s mark must be decided on the basis of the identification of goods set forth
in the application regardless of what the record may reveal as to the particular nature
of an applicant’s goods, the particular channels of trade or the class of purchasers to
which the sales of goods are directed.”). See also Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases
involving the issue of likelihood of confusion must be decided on the basis of the
respective descriptions of goods.”).
In determining whether Applicant’s goods and services are related to Registrant’s
goods, it is not necessary that the goods and services of the parties be similar or
competitive in character to support a holding of likelihood of confusion; it is sufficient
for such purposes to establish that the goods and services are related in some manner
and/or that conditions and activities surrounding marketing of these goods and
services are such that they would or could be encountered by same persons under
circumstances that could, because of similarities of marks used with them, give rise
to the mistaken belief that they originate from or are in some way associated with
the same producer. Coach Servs., Inc., 101 USPQ2d at 1722; Edwards Lifesciences
Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB 2010); Schering Corp. v. Alza
Corp., 207 USPQ 504, 507 (TTAB 1980); Oxford Pendaflex Corp. v. Anixter Bros. Inc.,
201 USPQ 851, 854 (TTAB 1978).
International Class 9 Goods
In this case, Registrant’s goods are identified as “computer programs and
computer software for electronically trading securities.” Applicant’s International
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Class 9 goods include “computer programs and computer software for electronically
trading securities in the energy market, such as electricity.”
Inasmuch as the goods offered by Registrant under the cited mark are broadly
identified to include computer programs and software for electronically trading any
type of security, including securities concerning electricity, we find that Applicant’s
more narrowly defined computer programs are encompassed by Registrant’s more
broadly identified computer programs and software. As a result, Applicant’s
“computer programs” are legally identical in part to Registrant’s goods. Under this
du Pont factor, the Trademark Examining Attorney need not prove, and we need not
find, similarity as to each and every product listed in the description of goods in
International Class 9. It is sufficient for a refusal based on likelihood of confusion
that relatedness is established for any item encompassed by the identification of
goods in a particular class in the application. Tuxedo Monopoly, Inc. v. General Mills
Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc,
116 USPQ2d 1406, 1409 (TTAB 2015); Inter IKEA Sys. B.V. v. Akea, LLC, 110
USPQ2d 1734, 1745 (TTAB 2014). Inasmuch as Applicant’s International Class 9
computer programs are legally identical in part to Registrant’s goods, the second du
Pont factor favors a finding of likelihood of confusion with regard to Applicant’s
International Class 9 goods.
Additionally, because Applicant’s International Class 9 goods and Registrant’s
goods are legally identical in part, we must presume that Applicant’s International
Class 9 computer programs and Registrant’s computer programs move in the same
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channels of trade and are offered to the same classes of consumers. See In re Viterra
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods
are presumed to travel in same channels of trade to same class of purchasers); In re
Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there
are legally identical goods, the channels of trade and classes of purchasers are
considered to be the same); United Global Media Grp., Inc. v. Tseng, 112 USPQ2d
1039, 1049 (TTAB 2014); American Lebanese Syrian Associated Charities Inc. v. Child
Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). Accordingly, with
respect to Applicant’s identified International Class 9 goods, the third du Pont factor,
regarding the similarity or dissimilarity of established, likely-to-continue trade
channels, strongly favors a finding of likelihood of confusion.
International Class 35, 38 and 42 Services
Under its proposed mark, Applicant also intends to offer the following services: (1)
“directing orders for electricity energy security trades by means of computer software
which automatically directs trades to the best location for executing such orders,” in
International Class 35; (2) “internet services, namely, providing multiple-user access
to information on the internet concerning the development and generation of
computer software for use in businesses as well as the functions and application of
such business software, related to electricity trading,” in International Class 38, and
(3) “providing temporary use of on-line non-downloadable computer application
software, namely, software for facilitating front-to-back office financial and physical
trading, scheduling, risk, and settlements in commodity markets, namely, energy
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trading markets such as trading electricity,” in International Class 42. To establish
the relationship between Applicant’s International Class 35, 38 and 42 services and
Registrant’s International Class 9 goods, the Examining Attorney has attached five
use-based third-party registrations that include both the goods identified in the cited
registration and the International Class 35, 38 and 42 services identified in
Applicant’s application. The registrations are identified below:11
SMARTSEEK (Reg. No. 3955739) is registered for “Computer programs
and computer software for electronically trading securities; computer
software for use in executing trades and implementing an algorithmic
trading strategy” in International Class 9 and “Directing orders for
securities trades by means of computer software which automatically
directs trades to the best location for executing such orders” in
International Class 35;

YOUSEE AS FAR AS INDEFINITE DIMENSION (Reg. No. 4286490) is
registered for, among other Class 9 goods, “Computer programs and
computer software for electronically trading securities” and “Providing
computer programming services to customers that enables the
customer's website to process natural language queries; Providing
computer programming services to customers that enables them to
provide video and audio content on their web sites; Providing on-line
non-downloadable software for document management; Providing
temporary use of a web-based software application for document
management; Providing temporary use of non-downloadable cognitive
stimulation computer programs that help maintain an active brain and
thus improve memory, speed of processing, and that provide a variety of
cognitive benefits that positively impact quality of life; Providing
temporary use of on-line non-downloadable software development tools
for document management; Providing temporary use of on-line non-
downloadable software for document management; Providing temporary
use of on-line nondownloadable software and applications for document
management; Rental of computer software and programs; Repair of
damaged computer programs; Services for reproducing computer
programs; Software as a service (SAAS) services featuring software for
document management; Software as a service (SAAS) services featuring

11 The Examining Attorney did not submit any other evidence regarding the relatedness of
Registrant’s goods and Applicant’s identified International Class 35, 38 and 42 services.
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software in the field of document management; Software as a service
(SAAS) services, namely, hosting software for use by others for use
document management; Technical support, namely, providing back-up
computer programs and facilities” in International Class 42;

MOBSY (Reg. No. 4325154) is registered for, among other Class 9 goods,
“Computer programs and computer software for electronically trading
securities; computer software for use in executing trades and
implementing an algorithmic trading strategy” and “Electronic data
interchange services in the field of healthcare transactions such as
claims, eligibility, claim status, electronic remittance advice, prior
authorizations, attachments and referrals that allow direct transaction
and payment communications between healthcare providers and payers;
Electronic transmission for others of securities and financial
information via computer linking services, namely, communicating and
routing trade information involving orders, entry and execution
services, to others via a global computer network; Providing electronic
transmission of credit card transaction data and electronic payment
data via a global computer network; Providing multiple use access to
global computer information networks for the transfer and
dissemination of a wide range of information” in International Class 38.

FREEWAY (Reg. No. 4248531) is registered for, among other things,
“Computer programs and computer software for electronically trading
securities” in International Class 9; and “Electronic transmission for
others of securities and financial information via computer linking
services, namely, communicating and routing trade information
involving orders, entry and execution services, to others via a global
computer network” in International Class 38; and

ASKEDON (Reg. No. 4502749) is registered for, among other Class 9
goods, “Computer programs and computer software for electronically
trading securities” and for, among other Class 42 services, “Providing
temporary use of non-downloadable computer software for preparing
invoices over computer networks, intranets and the internet; Providing
temporary use of non-downloadable computer software for preparing
shipping documents over computer networks, intranets and the
internet; Providing temporary use of non-downloadable computer
software for shipment processing over computer networks, intranets
and the internet; Providing temporary use of non-downloadable
computer software for tracking documents over computer networks,
intranets and the internet; Providing temporary use of non-
downloadable computer software for tracking freight over computer
networks, intranets and the internet; Providing temporary use of non-
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downloadable computer software for tracking packages over computer
networks, intranets and the internet; Providing temporary use of on-line
non-downloadable software and applications for goods and services
promotion; Providing temporary use of on-line non-downloadable
software development tools for goods and services promotion; Providing
temporary use of on-line non-downloadable software for goods and
services promotion.”

Third-party registrations which individually cover different goods and services
and are based on use in commerce may serve to suggest that the listed goods and
services are of types which may emanate from the same source. In re Albert Trostel
& Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co.
Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). However, the scant quantity of third-
party registrations submitted by the Examining Attorney do not persuade us that
Applicant’s International Class 35, 38 and 42 services are commercially related to
Registrant’s International Class 9 computer programs and software, such that
customers would believe that they emanate from the same source
As noted above, the Examining Attorney has submitted only five third-party
registrations in total to demonstrate the relatedness of Applicant’s International
Class 35, 38 and 42 services and Registrant’s International Class 9 goods, i.e., a single
third-party registration to demonstrate the relatedness between Registrant’s
International Class 9 goods and Applicant’s International Class 35 services, two
third-party registrations to show that Applicant’s International Class 38 services are
related to Registrant’s International Class 9 goods, and two third-party registrations
to demonstrate the relatedness between Applicant’s International Class 42 services
and Registrant’s International Class 9 goods. We find this evidence insufficient to
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establish that Applicant’s International Class 35, 38 and 42 services and Registrant’s
International Class 9 computer software programs are related for likelihood of
confusion purposes. Accordingly, from this record, the second du Pont factor,
regarding the similarity or dissimilarity and nature of the goods or services, does not
support a finding of likelihood of confusion with respect to Applicant’s International
Class 35, 38 and 42 services.
Furthermore, there is no evidence regarding the similarities between the channels
of trade in which Applicant’s International Class 35, 38 and 42 services and
Registrant’s goods travel or the class of purchasers for such goods and services. As
such, we treat this du Pont element as neutral as it pertains to these services.
C. Sophisticated Consumers
Applicant argues that the relevant consumers of the respective goods and services
are sophisticated. Even assuming that purchasers of Applicant’s goods and services
are sophisticated, as Applicant claims, when it comes to their buying decisions, it is
settled that even sophisticated purchasers are not immune from source confusion,
especially in cases such as this one involving similar marks and related goods and
services. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746, F.3d 1317,
110 USPQ2d 1157, 1163 (Fed. Cir. 2014) (although the services recited in the
application also encompass sophisticated investors, Board precedent requires the
decision to be based on the least sophisticated potential purchasers who will exercise
care when making financial decisions but who are not immune from source confusion
where similar marks are used in connection with related services).
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D. 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. With respect to
Applicant's identified goods in International Class 9, we find that, since the marks
are similar, the goods are identical in part to Registrant’s goods and there is a
presumption that the identical goods move in the same channels of trade and are sold
to the same class of consumers, Applicant's WEBSMARTTRADER mark so resembles
the cited registered mark as to be likely to cause confusion, mistake or deception as
to the source of Applicant's International Class 9 goods. With respect to Applicant's
services in International Classes 35, 38 and 42, the record contains insufficient
evidence to establish the goods and services are similar or related and hence does not
demonstrate a likelihood of confusion between Registrant’s mark for its goods and
Applicant’s mark for its services.
Decision: The refusal to register Applicant’s WEBSMARTTRADER mark under
Section 2(d) of the Trademark Act is affirmed, in part, as to the goods identified in
International Class 9, and reversed, in part, as to services identified in International
Classes 35, 38 and 42. The rejection of the amendment of the identification of goods
and services in International Classes 9 and 42 is also affirmed.
The application will be forwarded for publication solely for the services listed in
International Classes 35, 38 and 42 in due course.