Panarm, Inc.

Trademark Trial and Appeal Board

May 3, 2019

87268855 (T.T.A.B. May. 3, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: May 3, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Panarm, Inc.
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Serial No. 87268855
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Sevag Demirjian of Demirjian Law Offices
for Panarm, Inc..

Victor Cerda, Trademark Examining Attorney, Law Office 123,
Susan Hayash, Managing Attorney.
_____
Before Taylor, Wellington, and Goodman,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Panarm, Inc. (“Applicant”) seeks registration on the Principal Register of the mark
shown below for “broadcasting of television shows, news and entertainment
programs; cable television broadcasting; cable television transmission; television
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broadcasting; satellite television broadcasting; subscription television broadcasting”
in International Class 38:1
.
The term USA has been disclaimed.
The Examining Attorney refused registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the registered mark
ONE AMERICA NEWS NETWORK in standard characters (NEWS NETWORK
disclaimed) for “cable television and television broadcasting services, in the nature of
news broadcasting services” in International Class 38.2
After the Examining Attorney made the refusal final, Applicant filed a request for
reconsideration and appealed. The request for reconsideration was denied by the
Examining Attorney and the appeal has been briefed.
For the reasons set forth below, we affirm the refusal to register.
I. Evidentiary Objection
In its request for reconsideration, Applicant made reference to search results from
the Office’s Trademark Electronic Search System (TESS) regarding the terms “one”

1 Application Serial No. 87268855 was filed under Section 1(a) of the Trademark Act based
upon Applicant’s claim of first use in commerce on January 31, 2015.
2 Registration No. 4632969, issued November 4, 2014. The registration also covers services
in International Class 41 that were not cited as a bar to the registration of Applicant’s mark.
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and “1.”3 In denying the request for reconsideration, the Examining Attorney noted
Applicant’s “passing reference” to the search results, but noted that no evidence of
the results had been properly made of record.4 The Examining Attorney explained
how to properly make any third-party registrations of record.
With its appeal brief, Applicant attached printouts from the TESS database
purportedly listing search results and argued that they showed that consumers have
been “exposed to numerous marks containing ONE or 1.”5
Rule 2.142(d) of the Trademark Rules of Practice, 37 C.F.R. § 2.142(d), provides
in pertinent part that the “record in an application should be complete prior to the
filing of an appeal.” Because the TESS printouts were not made of record prior to
appeal, we sustain the Examining Attorney’s objection raised in the appeal brief and
have given no consideration to the printouts.6
We further note that the Examining Attorney also “objects to any consideration of
Applicant’s dilution argument in its ‘Strength of the Cited Marks’ section … because
this argument has not been properly supported with timely evidence.”7 In its reply
brief, Applicant asserts that “the arguments stands (sic) alone even without the
corroborating evidence” and that “common sense dictates that these two terms would
be extremely common usage for trademarks in the United States of America, and

3 Request for Reconsideration filed June 11, 2018, TSDR p. 1.
4 Office Action July 16, 2018, TSDR p. 1.
5 7 TTABVUE 7, 11-12 (attachments).
6 9 TTABVUE 4-5 (“Objection to Applicant’s Untimely Evidence”).
7 Id. at 4.
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Applicant’s arguments in its brief should be considered, even without the evidence.”8
We do not ignore any of the arguments raised by Applicant on appeal; however,
arguments as to weakness or dilution of certain terms due to extensive consumer
exposure have very little, if any, persuasive value when they are not supported by
evidence.
II. Likelihood of Confusion
The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, hereinafter referred to as “du Pont factors”); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the relatedness of the goods or services. See In re Chatam Int’l Inc.,
380 F.3d 1340, 71 USPQ2d 1944 (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 goods [or services] and differences in the marks.”).
A. Identity of the Services, Trade Channels, and
Classes of Purchasers
We begin our analysis by making a comparison of the services identified in
Applicant’s application vis-à-vis the services identified in the cited registration, the

8 10 TTABVUE 3.
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second du Pont factor, as well as the channels of trade and classes of purchasers for
these services. We must make our determinations under these factors based on the
services as they are recited in the registration and application. See Octocom Systems
Inc. v. Hous. 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 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 sales of the goods [or services] are directed.”); In re Elbaum, 211
USPQ 639 (TTAB 1981).
Here, the respective identifications of services are identical in part, inasmuch as
they both include television and cable news broadcasting services.9 Given the in-part
identical broadcasting services, we need not discuss the similarity of all of Applicant’s
services because it is sufficient for a finding of likelihood of confusion if relatedness
is established for any service encompassed by the identification of services within a
particular class in the application. In re Aquamar, Inc., 115 USPQ2d 1122, 1126, n.5

9 In its reply brief, Applicant states that it is “willing to revise its class description to remove
reference to ‘news.’” 10 TTABVUE 3. It is improper to request amendment in a reply brief
rather than by filing a separate request for remand that includes a showing of good cause.
See In re Thomas White Int’l Ltd., 106 USPQ2d 1158, 1160 n.2 (TTAB 2013) (noting, with
respect to applicant's proposed amendment in its appeal brief, that “at this late juncture
applicant would not be able to show good cause”); In re Major League Umpires, 60 USPQ2d
1059, 1060 (TTAB 2001); Trademark Trial and Appeal Board Manual of Procedure (TBMP)
§§ 1205.01, 1209.04 (June 2018). We hasten to add that even if the proposed amendment
were allowed, it would not remove the legal identity of services; specifically, Applicant’s “cable
television broadcasting” services is broad enough to include the news broadcasting services
in the registration.
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(TTAB 2015); Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209
USPQ 986, 988 (CCPA 1981); Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393,
1398 (TTAB 2007).
Moreover, because there are no limitations as to channels of trade or classes of
purchasers in either the application or the cited registration, we must presume that
these identical television news broadcasting services will be offered in the same
channels of trade and will be sought by the same classes of purchasers. See In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (TTAB 2012); Hewlett-Packard
Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987);
Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003); In re Smith and Mehaffey,
31 USPQ2d 1531 (TTAB 1994). Accordingly, the channels of trade and classes of
services, at a minimum, overlap.
In view of the above, the du Pont factors of the relatedness of the services, the
channels of trade and classes of purchasers favor a finding of likelihood of confusion.
B. Similarity/Dissimilarity of the Marks
We now compare the 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, 1691 (Fed. Cir.
2005) (quoting du Pont, 177 USPQ at 567). In comparing the marks, we are mindful
that where, as here, the services are in-part identical, the degree of similarity
necessary to find likelihood of confusion need not be as great as where there is a
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recognizable disparity between the services. Coach Servs., Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007);
Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325
(TTAB 2007). The test under the first du Pont factor assesses 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 services
offered under the respective marks is likely to result. Coach Servs. 101 USPQ2d at
1721 ; see also San Fernando Electric Mfg. Co. v. JFD Electronics Components
Corp., 565 F.2d 683 , 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v.
Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed.
Cir. 1992). The proper focus is on the recollection of the average customer, who retains
a general rather than specific impression of the marks. L’Oreal v. Marcon, 102
USPQ2d 1434, 1438 (TTAB 2012); Winnebago Industries, Inc. v. Oliver & Winston,
Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106, 108 (TTAB 1975). The average purchaser in this case is one seeking television
and cable news broadcasting services.
Applicant’s mark, , and the registered mark, ONE AMERICA NEWS
NETWORK, have overall similar commercial impressions given that the dominant
elements of each mark are the number one (expressed as a word or numeral) and a
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term that is synonymous with this country.10 Both marks convey expressions of a
unified country or national pride and, in the context of the services, may suggest a
focus on national news. The similarity between the marks is also enhanced when
Applicant’s mark is verbalized and the numeral “1” will be pronounced as “one.”
We have not ignored the design element of Applicant’s mark. However, the design
is not very distinctive and, as with most composite word and design marks, the 1 USA
element is more important because this is what consumers will use to call for the
services and more clearly and readily identifies the source of Applicant’s services than
the design. See e.g. In re Viterra Inc., 101 USPQ2d at 1911 (“the verbal portion of a
word and design mark likely will be the dominant portion”); In re Appetito Provisions
Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) (holding that “if one of the marks
comprises both a word and a design, then the word is normally accorded greater
weight because it would be used by purchasers to request the goods or services” and
“because applicant’s mark shares with registrant’s mark that element responsible for
creating its overall commercial impression, the marks are confusingly similar”).
Similarly, the disclaimed, secondary wording NEWS NETWORK in the registered
mark has very little, if any, source-identifying value because the wording merely
describes the fact that Registrant is a news television network. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding
descriptive terms, this court has noted that the descriptive component of a mark may

10 The Examining Attorney attached copies of definitions, taken from the Merriam-Webster
online dictionary (www.merriam-webster.com), showing that “America” and “USA” mean
“United States of America.” Office Action March 23, 2017, TSDR pp. 14-15.
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be given little weight in reaching a conclusion on likelihood of confusion.”) (internal
quotation omitted); see also In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1533-34 (Fed. Cir. 1997) (disclaimed matter that is descriptive of or generic for a
party’s goods is typically less significant or less dominant when comparing marks).
Ultimately, the overall similar commercial impressions conveyed by the marks
outweighs the differences between them. This factor weighs in favor of finding a
likelihood of confusion.
C. Alleged Weakness of the Registered Mark

As discussed, supra, Applicant’s argument that consumers have been “exposed to
numerous marks” containing ONE or 1 is unsupported by any evidence and thus is
not persuasive. As to Applicant’s arguments that “the words ONE and AMERICA are
very common terms and must be granted narrow [trademark] protection” or that
“common sense dictates” that these terms would be “extremely common usage” in this
country, there is no evidence of these terms are frequently used in trademarks, let
alone trademarks used in connection with the involved identical broadcasting
services. In other words, while we agree that it is common knowledge that the terms
“1,” “ONE,” “USA” and “America” are commonplace in language, this does not
necessarily mean that the same terms are necessarily weak in connection with
trademarks identifying cable and television news broadcasting services. Even
allowing for some inherent weakness in the terms USA and AMERICA, given their
geographic significance, the evidence does not show third-party use (or registration)
of these terms in marks used in connection with the involved services. Indeed, based
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on the record before us, we must assume that Applicant and registrant are the only
entities to include these terms in marks used in connection with the identified
services.
D. Conclusion
We have carefully considered all arguments and the evidence of record. Here, we
find confusion is likely in view of the overall similarity between Applicant’s
mark and Registrant’s ONE AMERICA NEWS NETWORK mark,
particularly because they convey similar commercial impressions, and that both
marks will be used in connection with the same television and cable news
broadcasting services, and travel in the same channels of trade to the same classes of
customers.
Decision: The refusal to register Applicant’s mark under Section 2(d) is affirmed.