PageMart, Inc.

Trademark Trial and Appeal Board

Jul 14, 2000

No. 74507720 (T.T.A.B. Jul. 14, 2000)

Paper No. 24
RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 14, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re PageMart, Inc.
________
Serial No. 74/507,720
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William A. Munck of Novakov Davis, P.C. for PageMart, Inc.
Rene M. LaForte, Trademark Examining Attorney, Law Office 106
(Mary Sparrow, Managing Attorney).
_______
Before Cissel, Hanak and McLeod, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On March 31, 1994, applicant applied to register the mark
"INFONOW" on the Principal Register for "data and voice
telecommunications services," in Class 38. The application was
subsequently amended to state applicant’s services as follows:
"telecommunications services, namely, providing prompt
subscriber-oriented wireless message paging services via
message pagers." Applicant claimed use of this mark in
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interstate commerce in connection with the specified services
since November 1, 1993.
This application is now before the Board on appeal from
the final refusal to register under Section 2(d) of the Lanham
Act on the ground that applicant’s mark, as used in connection
with the services specified in the application as amended, so
resembles the mark "INFO NOW," which is registered1 for
"promoting the goods and services of others by providing reader
response, business information, and advertising via telephone,
facsimile transmissions, and interactive computer systems;
computerized database management services; computerized
information storage and retrieval services," in Class 35; and
for "communications services; namely, the electronic
transmission of messages and data, and network broadcasting
services by means of remote online interactive computer
terminals and telephone modems, cable modems and modem bypass
equipment," in Class 38, that confusion is likely.
Both applicant and the Examining Attorney filed appeal
briefs, but applicant did not request an oral hearing
before the Board. Accordingly, we have resolved this appeal
based upon the written arguments and the record established by
the application file.

1 Reg. No. 2,022,705 was issued on Dec. 17, 1996 to Global Villages,
Inc., based on a claim of use in commerce since 1987.
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Based on careful consideration of these materials, the
statute, and relevant legal precedent on this issue, we find
that the Examining Attorney has met her burden of proof by
establishing that confusion is likely in this case.
Our primary reviewing court listed the factors to be
considered in resolving the issue of likelihood of confusion
under the Lanham Act in In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Two of the most
important considerations are the similarities between the marks
and the similarities between the goods or services. We must
first look at the marks themselves for similarities in
appearance, sound, connotation and commercial impression. If
the marks are similar, then we must compare the goods or
services to determine if they are commercially related or if
the activities surrounding their marketing are such that
confusion is likely if similar marks are used in connection
with both. International Telephone and Telegraph Corp., 197
USPQ 910 (TTAB 1978). If there has been any opportunity for
incidents of actual confusion to have occurred, whether or not
they have is a factor which should also be considered.
In the case at hand, confusion is likely because
applicant’s mark is almost identical to the registered mark and
the services specified in the application are related to the
services set forth in the cited registration.
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To begin with, as noted above, these marks are very nearly
identical to each other. They are similar in appearance,
pronunciation, connotation and commercial impression. The only
difference is that the registered mark is presented with a
space before the final syllable, whereas applicant’s mark has
no space there. This represents a distinction without a
difference. These two marks are not identical, but they are
very close to being the same. Under these circumstances, the
services of the respective parties need not be as closely
related to support a finding of likelihood of confusion as
might be the case if differences of any significance existed
between the marks. Amcor, Inc. v. Amcor Industries, Inc. 210
USPQ 70 (TTAB 1981).
Applicant argues that the cited registered mark is weak
because many other registered service marks in Class 38 include
terms which begin with the prefix “info,” or include the word
“now.” As the Examining Attorney points out, however,
applicant has not included any evidence in support of the
proposition that registrant’s mark is weak in the field of
telecommunication services. Applicant argues that three
particular service mark registrations support this argument,
but we have no evidence establishing the existence of these
registrations. Moreover, the goods and services for which
applicant asserts these marks are registered do not appear to
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be closely related to the services at issue in this appeal. In
any event, even if applicant had made of record evidence which
established that the cited registered mark is weak in the field
of telecommunications by virtue the widespread use of other
marks incorporating similar components in the same field of
commerce, even such a weak mark would be entitled to protection
against the registration of a mark which is nearly identical to
it for services which might be reasonably assumed to emanate
from the same entity.
Turning, then, to consideration of the services at issue
in this appeal, as noted above, the amended application
specifies applicant’s services as “telecommunications services,
namely, providing prompt subscriber-oriented wireless message
paging services via message pagers,” in Class 38. The services
listed in the registration include “communication services;
namely, the electronic transmission of messages and data, and
network broadcasting services by means of remote online
interactive computer terminals and telephone modems, cable
modems and modem bypass equipment,” in Class 38.
Applicant’s paging services are encompassed within the
broad terminology used to describe registrant’s communication
services. Simply put, paging services constitute the
electronic transmission of messages. At a minimum, wireless
message paging services are closely related to the service of
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transmitting messages and data electronically. These services
typically emanate from a single source, and they share the same
channels of trade and customers.
Applicant argues that the registration’s recitation for
the services in Class 38 is unclear because the phrase
“electronic transmission of messages and data” is not the
common name of any communications service and does not identify
registrant’s services with particularity. In view of this
fact, argues applicant, the Board should limit the
registration’s recitation of services in Class 38 by ignoring
the words “electronic transmission of messages and data,” so
that the recitation would read “communications services, namely
network broadcasting services…” After we have done this,
applicant would have us conclude that the registrant is not a
telecommunications company, but rather is a “content provider”
who is online to the general public, and therefore that the
registrant’s channels of trade and customers are different from
those of applicant.
Contrary to applicant’s arguments, however, it is clear
that the services set forth in the registration are similar to
those specified by applicant in the instant application. It is
well settled that the issue of likelihood of confusion must be
resolved on the basis of the respective recitations of services
in the application and the cited registration, without
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limitations or restrictions that are not reflected therein.
Toys “R” Us, Inc. v. Lamps R Us, 219 USPQ 340, 343 (TTAB 1983)
and cases cited therein. Registrant’s services are
“communication services; namely, the electronic transmission of
messages and data…” Applicant’s telecommunications services
consisting of wireless message paging services via message
pagers are encompassed within the recitation of services in the
registration.
The Examining Attorney has made of record a sampling of
twenty-four third-party registrations of marks registered for
both paging services and other electronic transmission
services. These registrations serve to suggest that the
services listed therein may emanate from a single source. In
re Albert Trostel & Sons Company, 29 USPQ2d 1783 (TTAB 1993).
They demonstrate that telecommunications service providers can
be expected to offer a variety of communications services
ranging from providing cellular telephone and pager services to
providing access to the Internet. Consumers who are familiar
with registrant’s “INFO NOW” communications services, which
include electronic transmission of messages and data, are
likely to believe, upon encountering applicant’s virtually
identical mark, “INFONOW,” for paging services, that these
closely related services are provided by the same business.
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Applicant’s statement that no actual confusion has taken
place is not persuasive of a different conclusion. Applicant
has not provided us with any information establishing that
there has been any appreciable opportunity for confusion to
have occurred. We have no idea of the quantity or geographical
extent of the sales or promotion of either applicant’s or
registrant’s services. In any event, evidence of actual
confusion is notoriously hard to come by, and such evidence has
never been a required element of proof in establishing
likelihood of confusion. The issue is not whether confusion
has occurred, but rather whether it is likely.
Any doubt regarding whether confusion is likely must be
resolved in favor of the prior registrant and against
applicant, who had a duty to select a mark which is not likely
to cause confusion with a mark which is already in use. In re
Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed.
Cir. 1988).
For the reasons set forth above, the refusal to register
under Section 2(d) of the Lanham Act is affirmed.
R. F. Cissel
E. W. Hanak
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L. K. McLeod
Administrative Trademark Judges
Trademark Trial and Appeal Board
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