Opt It, Inc.

Trademark Trial and Appeal Board

Oct 4, 2007

No. 78591138 (T.T.A.B. Oct. 4, 2007)

Mailed:
Oct. 4, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Opt It, Inc.
________

Serial No. 78591138
_______

Stephen Lesavich, PhD of Lesavich High-Tech Law Group, P.C.
for Opt It, Inc.

Carol Spils, Trademark Examining Attorney, Law Office 104
(Chris Doninger, Managing Attorney).
_______

Before Grendel, Holtzman and Rogers, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark depicted below

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 78591138
2
for goods identified in the application as “computer
software, namely, computer software for text messaging.”1
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register on the ground that
applicant’s mark, as applied to the goods identified in the
application, so resembles the mark OPT!, previously
registered (in standard character form) for goods
identified in the registration as “computer program for
managing personal and business contacts; organizing
personal information; keeping calendar and personal
reminders; keeping history of contacts; keeping record of
expenses; making phone calls; sending/receiving faxes and
E-mail; and printing letters, labels, envelopes, phone
books, address books, and contact details,”2 as to be likely
to cause confusion, to cause mistake, or to deceive.
Trademark Act Section 2(d), 15 U.S.C. §1052(d).

1 Serial No. 78591138, filed March 20, 2005. The application is
based on use in commerce under Trademark Act Section 1(a), 15
U.S.C. §1051(a). May 12, 2004 is alleged in the application to
be the date of first use of the mark anywhere and the date of
first use of the mark in commerce. The application includes
applicant’s color claim: “The colors red and white are claimed as
a feature of the mark.” The color location statement reads: “The
color red appears inside the two circles and the color white
appears in the outline of the circles and the wording OPT IT.”

2 Reg. No. 2101964, issued September 30, 1997. Affidavits under
Sections 8 and 15 accepted and acknowledged. Renewed.
Ser. No. 78591138
3
The appeal is fully briefed. After careful
consideration of the evidence of record and the arguments
of counsel, we affirm the refusal to register.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
Under the first du Pont factor, we determine the
similarity or dissimilarity of the marks when viewed in
their entireties in terms of appearance, sound, connotation
and overall commercial impression. Palm Bay Imports, Inc.,
supra. The test, under the first du Pont factor, is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression that confusion as to the source of the goods
offered under the respective marks is likely to result.
Ser. No. 78591138
4
The focus is on the recollection of the average purchaser,
who normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore, although
the marks at issue must be considered in their entireties,
it is well-settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944
(Fed. Cir. 2004); In re National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985).
Applying these principles in the present case, we find
as follows. First, we find that the dominant feature in
both marks is the word OPT. It essentially comprises the
entirety of the cited registered mark; the exclamation
point emphasizes and reinforces the significance of the
word OPT. OPT likewise is the dominant feature in the
commercial impression created by applicant’s mark. It is
the first word in the mark. It appears in the mark as an
active verb, meaning to choose or select. By contrast, the
word IT in the mark is an undefined pronoun which refers
back to, and is subordinate to, the word OPT. The design
elements of applicant’s mark contribute to the mark’s
Ser. No. 78591138
5
commercial impression, but would be viewed primarily as
mere background or carrier devices and thus are of lesser
source-indicating significance than the wording in the
mark, especially the word OPT. We view the marks in their
entireties, but we conclude for the reasons stated above
that the word OPT would be perceived as the dominant
source-indicating feature of both marks. We therefore
accord to it more weight in our comparison of the marks.
See In re Chatam International Inc., supra; In re National
Data Corp., supra.
In terms of appearance, we find that the applicant’s
mark is similar to the cited registered mark to the extent
that both feature the word OPT as their dominant features.
The two marks are dissimilar in appearance to the extent
that applicant’s mark also includes the word IT, as well as
the design elements. We note that the wording in
applicant’s mark is stylized. However, the cited mark is
registered in standard character form, which entitles
registrant to display the mark in all reasonable manners,
including in lower case letters. See Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000).
The similarity in the appearance of the marks is lessened
by the presence of the circle and arrow design elements in
applicant’s mark. However, viewing the marks in their
Ser. No. 78591138
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entireties in terms of appearance, we find them to be
similar.
In terms of sound, the marks obviously are similar to
the extent that they both include the dominant word OPT, as
the first word in applicant’s mark and as the entirety of
the registered mark. OPT would be pronounced the same in
both marks. The marks are dissimilar to the extent that
applicant’s mark also includes the word IT. On balance, we
find that the similarity in sound which results from the
presence of OPT in both marks outweighs the dissimilarity
which results from the presence of the word IT in
applicant’s mark, and that the marks in their entireties
are similar in terms of sound.
In terms of connotation, we find that the marks are
similar. OPT IT carries a connotation of a command or
suggestion, encouraging the purchaser to “opt” for or
choose “it,” whatever “it” is. The registered mark
likewise connotes a command or suggestion that the
purchaser “opt” for or choose something.
In terms of overall commercial impression, we find
that the marks are similar. The dominance of the verb OPT
as the source-indicating element of both marks makes it
likely that purchasers would view the OPT IT mark as a mere
Ser. No. 78591138
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extension of or variation on the OPT! mark. Both marks
encourage purchasers to “opt” for an undefined something.
Considering the marks in their entireties in terms of
appearance, sound, connotation and commercial impression,
and giving appropriate weight to the word OPT as the
dominant source-indicating feature of both marks, we find
that the marks are very similar. The first du Pont factor
weighs in favor of a finding of likelihood of confusion.
The second du Pont factor requires us to determine the
similarity or dissimilarity of the goods as identified in
the application and in the cited registration. It is
settled that it is not necessary that the goods be
identical or even competitive in order to find that the
goods are related for purposes of our likelihood of
confusion analysis. That is, the issue is not whether
consumers would confuse the goods themselves, but rather
whether they would be confused as to the source of the
goods. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). It
is sufficient that the goods be related in some manner, or
that the circumstances surrounding their use be such, that
they would be likely to be encountered by the same persons
in situations that would give rise, because of the marks
used thereon, to a mistaken belief that they originate from
or are in some way associated with the same source. See In
Ser. No. 78591138
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re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991); and In re International Telephone &
Telegraph Corp., 197 USPQ 910 (TTAB 1978). Finally, it is
settled that our determination under the second du Pont
factor must be based on a comparison of the goods as they
are identified in the application and registration,
respectively, and not on the basis of any evidence offered
to show the nature of the goods as they are actually
marketed (such as the printouts of applicant’s and
registrant’s websites submitted by applicant herein). See,
e.g., In re Bercut-Vandervoort & Co., 229 USPQ 763, 764
(TTAB 1986).
To review, applicant’s goods are identified in the
application as “computer software, namely, computer
software for text messaging.” The goods identified in the
cited registration are “computer program for managing
personal and business contacts; organizing personal
information; keeping calendar and personal reminders;
keeping history of contacts; keeping record of expenses;
making phone calls; sending/receiving faxes and E-mail; and
printing letters, labels, envelopes, phone books, address
books, and contact details.”
Ser. No. 78591138
9
Initially, applicant argues that its text messaging
software is used only in connection with applicant’s
advertising services, which are the subject of applicant’s
prior registration of the mark for “advertising services,
namely, providing special offers, promotions and updates
for others via text messaging.”3 However, the
identification of goods in the current application does not
include any such limitation; applicant seeks to register
the mark for the text messaging software alone.
Applicant’s prior registration of the mark for advertising
services (and the Office’s issuance of that registration
based on an implicit finding of no likelihood of confusion)
is not relevant or dispositive here, even if the
advertising services involve text messaging.
Registrant’s software, as identified in the
registration, assists the user in organizing personal and
business information, and provides various tools for
electronic communication with others, including telephone,
fax and email. Applicant’s software, as identified in the
application, is used for text messaging, which is another
method or tool for electronic communication. Applicant
contends that text messaging and email do not employ

3 Registration No. 3068068, issued March 14, 2006.

Ser. No. 78591138
10
“equivalent technologies.” Even if that is so, it is not
dispositive here. As noted above, the respective goods
need not be identical to support a finding that they are
related for purposes of the second du Pont factor.
The Trademark Examining Attorney has submitted
evidence which shows that text messaging software and
software such as registrant’s involving other electronic
communication tools function together as complementary
goods. For example:
Smith said Ecuity had already been in the process
of acquiring other complementary software for the
secure delivery of text messaging, email,
document and data transmission – primarily the
acquisition of the core technology assets of
Karunga Technologies Corp. “By bringing together
the telephone infrastructure and business systems
from Fox Communications and the proprietary
software technologies for secure text messaging,
email and document/data transmission, Ecuity is
able to deliver a complete integrated
communication system...”
(PR Newswire, July 21, 2004);

Bitfone’s software infrastructure leverages the
worldwide success of text messaging and mobile
email to enhance the end-user’s experience and
create true customer value…
(Business Wire, September 6, 2001); and

eZiText™ is a leading software technology that
connects people to text messaging, email, e-
commerce and web browsing.
(PR Newswire, March 27, 2000).

Some of the evidence submitted by applicant likewise
Ser. No. 78591138
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demonstrates the relationship between text messaging and
other methods of electronic communication such as email,
voice mail and fax:
Today, technology is moving towards the future of
the wireless web. Mobile devices such as
palmtops, handhelds, and cellular phones are
becoming all the rage. People want these devices
to do everything from access their e-mail
accounts, to utilize the Internet, to access
personal and corporate information. One type of
service that is available is a technology called
SMS (Short Messaging Service). SMS is the
technology that allows text messages to be
received and sent over mobile devices ... SMS is
a very inexpensive method of communication. 160
characters take up as much room as a one-second
voice call. Messages are delivered immediately
(or when the phone is turned on). Like e-mail,
they can also be reviewed or stored in your phone
for as long as you wish. SMS messages can also
be sent out to huge groups of people with the
single press of a button. SMS also allows for
unified messaging. This is where SMS can take on
a number of different message formats (including
voice mail, e-mail and fax) and allows users to
access them from their mobile device.
(devx.com/wireless/articles/SMS/SMSIntro.asp).
Based on this evidence, we find that purchasers are
likely to assume or expect that text messaging software is
or can be integrated with software that allows for other
methods of electronic communication. Both types of
software are incorporated into or can be used with mobile
devices such as cellular phones and personal digital
assistants. We note that these mobile devices also have
the capability to perform many of the other personal and
Ser. No. 78591138
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business organizer functions covered by the software
identified in the cited registration.
Applicant contends that text messaging was not in
existence, or at least was not widely available, at the
time that registrant’s application was filed in 1995 or
when the registration issued in 1997. To the extent that
this argument is offered to prove that registrant’s
identification of goods cannot be deemed to include
software which provides a text messaging function, we deem
it unnecessary. We can see from the face of the
registration’s identification of goods that text messaging
is not included among registrant’s software’s functions.
To the extent that applicant is arguing that, because
there could have been no likelihood of confusion in 1995
due to the unavailability of text messaging at that time,
there can be no likelihood of confusion today, the argument
is unavailing. Our likelihood of confusion determination
is based on purchasers’ perceptions and assumptions today,
not what those perceptions or assumptions might have been
in 1995 or 1997. The evidence of record establishes that
purchasers today would understand that text messaging
capability is often combined or bundled with email and
other electronic communication capabilities, all of which
Ser. No. 78591138
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are incorporated into and can be accessed via today’s
mobile devices.
We conclude that applicant’s software is related to
registrant’s software, and that the second du Pont factor
weighs in favor of a finding of likelihood of confusion.
We also conclude, under the third and fourth du Pont
factors, that applicant’s goods as identified in the
application and registrant’s goods as identified in the
registration are or could be marketed in the same trade
channels and to the same classes of purchasers. These
purchasers would include end users who want their mobile
devices to provide multiple tools or methods for electronic
communication, including text messaging, phone and email.
These end users include ordinary consumers who would
exercise only a normal degree of care in purchasing the
goods. The third and fourth du Pont factors weigh in favor
of a finding of likelihood of confusion.
Applicant contends (under the seventh du Pont factor)
that there have been no instances of actual confusion
between applicant’s goods marketed under applicant’s mark
and registrant’s goods marketed under registrant’s mark.
However, the absence of actual confusion is entitled to
little weight in the likelihood of confusion analysis in an
ex parte proceeding like this. See In re Majestic
Ser. No. 78591138
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Distilling Co., supra; In re Dixie Restaurants Inc., supra.
This is especially so in the present case, where the record
does not support a finding under the eighth du Pont factor
that there has been any significant opportunity for actual
confusion to have occurred.
Considering and balancing all of the evidence of
record as it pertains to the du Pont factors, and for the
reasons discussed above, we conclude that a likelihood of
confusion exists. To the extent that any doubts might
exist as to the correctness of this conclusion, we resolve
such doubts against applicant. See In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re Hyper
Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir.
1988); and In re Martin’s Famous Pastry Shoppe, Inc.,
supra.
Decision: The refusal to register is affirmed.