Photo and Video Sync, Cloud Storage, and Picture Editing, Inc.

Trademark Trial and Appeal Board

Mar 9, 2018

No. 86789886 (T.T.A.B. Mar. 9, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 9, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Photo and Video Sync, Cloud Storage, and Picture Editing, Inc.
_____
Serial No. 86789886
_____
Heather A. Sapp of LegalForce RAPC Worldwide, P.C.
for Photo and Video Sync, Cloud Storage, and Picture Editing, Inc.

Scott Kumis, Trademark Examining Attorney, Law Office 125,
Mark Pilaro, Managing Attorney.
_____
Before Ritchie, Masiello, and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:
I. Background and Evidentiary Objections
Photo and Video Sync, Cloud Storage, and Picture Editing, Inc. (“Applicant”) seeks
registration on the Principal Register of the mark PHOTO KEEPER in standard
characters, with PHOTO disclaimed, for the following goods and services:
Downloadable computer software applications for mobile phones and
handheld tablet computer devices, namely, software for viewing,
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organizing, managing, sharing and sending images via the Internet;
Downloadable computer software for viewing, organizing, managing,
and sending images via the Internet in International Class 9; and

Electronic storage of electronic media, namely, images, text and audio
data; Electronic storage of images; Providing temporary use of online-
only, non-downloadable Software as a Service (SaaS) services featuring
software for viewing, organizing, managing, sharing and sending
images to others via the Internet; Providing a website featuring on-line
non-downloadable software tools for viewing, organizing, managing,
sharing and sending images via the Internet; Providing a web site
featuring technology that enables internet users to share images in
International Class 42.1

The Examining Attorney has finally refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the
following two registered marks:
• PICTURE KEEPER in standard characters, with a claim of acquired
distinctiveness, for “Computer software and hardware for locating and
storing electronic media, namely, digital images, text, audio and video”
in International Class 9.2

• for “Remote electronic storage of electronic
photographs, electronic video recordings and electronic sound
recordings all stored with geographic location information, date and
time identifiers” in International Class 42.3

After the final Office Action, Applicant requested reconsideration. The Examining
Attorney denied the request. Applicant then appealed the refusal to register.

1 Application Serial No. 86789886 was filed October 16, 2015, based on a declared intent to
use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
2 Registration No. 4316668 issued April 9, 2013.
3 Registration No. 4994220 issued July 5, 2016.
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Applicant’s Brief includes a list of third-party registrations in support of
Applicant’s argument that KEEPER constitutes a weak term. The Examining
Attorney objects to six of the listed registrations on the ground that Applicant never
submitted them during prosecution, and notes that under Trademark Rule 2.142(d),
37 C.F.R. § 2.142(d), it is too late to introduce them. That rule provides:
The record in the application should be complete prior to
the filing of an appeal. Evidence should not be filed with
the Board after the filing of a notice of appeal. If the
appellant or the examining attorney desires to introduce
additional evidence after an appeal is filed, the appellant
or the examining attorney should submit a request to the
Board to suspend the appeal and to remand the application
for further examination.
Although Applicant listed these six registrations, among others, in its February 8,
2017 Response to Office Action, it never submitted the requisite copies of the
registrations, despite the Examining Attorney’s explicit instructions that the mere
submission of a list of registrations does not make such registrations part of the
record,4 and despite later supplying copies of other registrations.5 To make third
party registrations part of the record, an applicant must submit copies of the
registrations, or the electronic equivalent from the USPTO’s automated systems,
prior to appeal. See In re Compania de Licores Internacionales S.A., 102 USPQ2d
1841, 1843 (TTAB 2012) (mere listing of third-party registrations insufficient); see
also TBMP § 1208.02 (June 2017) (“Mere listings of registrations ... are not sufficient

4 TSDR March 1, 2017 Office Action at 1 (citations omitted).
5 TSDR March 15, 2017 Request for Reconsideration at 2-30.
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to make the registrations of record”). Accordingly, because these six third-party
registrations are not in the record, we give them no consideration.
The Examining Attorney also objects to Applicant’s reliance on third-party
Registration Nos. 3830879 and 3115994 on the grounds that they now have been
cancelled. We take judicial notice of this updated information that both these
registrations are now cancelled. See Royal Hawaiian Perfumes, Ltd. v. Diamond Head
Products of Hawaii, Inc., 204 USPQ 144, 146-47 (TTAB 1979).
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 and 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 and differences in the marks.”). We discuss below these
and other relevant factors. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d
1378, 78 USPQ2d 1944 (Fed. Cir. 2006) (only du Pont factors that are “relevant and
of record” need be considered).
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We focus our analysis on the cited registration for PICTURE KEEPER
(hereinafter, the Registration) because the degree of relatedness of its goods to
Applicant’s is reasonably comparable to the degree of relatedness of the services in
the other cited registration, and if we find no likelihood of confusion with PICTURE
KEEPER, then it follows there would be no likelihood of confusion with the registered
mark , which bears less similarity to Applicant’s mark. See
In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
A. The Goods and Services
Initially, we note that Applicant’s brief contains no argument on the du Pont factor
of the similarity or dissimilarity and nature of the goods and services at issue.
Nonetheless, we must determine whether their degree of relatedness rises to such a
level that consumers would mistakenly believe the respective goods and services
emanate from the same source. In making this analysis, we look to the identifications
in the application and cited Registration. See Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys.,
Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990). Also, “it is sufficient for finding a likelihood of confusion if relatedness is
established for any item encompassed by the identification of goods [and services]
within a particular class in the application.” In re Aquamar, Inc., 115 USPQ2d 1122,
1126, n.5 (TTAB 2015); see also Tuxedo Monopoly, Inc. v. General Mills Fun Group,
648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
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Applicant’s services include electronic storage of images, as well as providing
Software as a Service (SaaS) for organizing, managing, and sharing images via the
Internet. Applicant’s goods include downloadable computer software for organizing,
managing, and sending images via the Internet. The Registration’s identification
includes computer software for locating and storing digital images. The Examining
Attorney maintains that Applicant’s software for organizing and managing images
encompasses software such as Registrant’s for storing digital images. See In re
Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s
broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s
narrowly identified ‘residential and commercial furniture.’”). While we do not agree
that organizing and managing images necessarily includes storing them, we find
Applicant’s software and software as a service that allow for organizing, managing,
and sharing images related to the Registration’s identified software for storing digital
images.
The record includes sufficient evidence that goods and services of this type
emanate from the same source under the same mark. For example:
• The Samsung website promotes under the same mark the ability to
“backup and sync your data,” which refers to storing and managing, and
points to the ability to “[s]eamlessly view photos across all devices”;6
• The Verizon Cloud webpage promotes under that mark the option to
“[b]ack up and sync your contacts, photos, videos and more. Transfer

6 TSDR August 29, 2016 Office Action at 12 (samsung.com).
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content, share photos or print your favorites stored securely in Verizon
Cloud.” Also, the webpage describes features of Verizon Cloud such as
“organizes your best photos” and “share select media”;7
• A webpage offering the Microsoft Lumia 735 notes that it “comes
preloaded with the Lumia Selfie app, so you can easily capture, edit and
share stunning self-portraits anytime”;8
• The webpage for Apple’s iCloud promotes the ability to “keep all your
photos … stored securely,” and includes a feature that “lets you easily
share … photos, and more with everyone in your family”;9
• The Amazon Drive website describes a photo storage feature “to auto-
save your photos to Amazon Drive” as well as “[a] sleek timeline layout
in the free mobile app [that] makes it easy to find the photos you’re
looking for”; 10
• The webpage for Google Photos promotes “Free unlimited storage for
photos and videos,” advertises that “[a]utomatically organized and
searchable, you can find photos fast and bring them to life,” and
“[p]rivately sharing all the photos you took … has never been easier”.11

7 Id. at 15-17 (verizonwireless.com).
8 Id. at 21-22 (verizonwireless.com).
9 Id. at 39 (apple.com).
10 Id. at 42-45 (amazon.com).
11 Id. at 48-50 (google.com).
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The record also contains other similar evidence.12 This marketplace evidence shows
that consumers commonly encounter under one mark software that facilitates storing
and organizing images, or storing and sharing images. Thus, we find the relevant
goods and services in the application highly related to the goods in the Registration.
The du Pont factor of the similarity of the goods and services clearly favors a
finding of likelihood of confusion as to each class in the application. See Tuxedo
Monopoly, 209 USPQ at 988 (likelihood of confusion must be found if there is likely
to be confusion with respect to any item that comes within the identification of goods
in the application).
B. Trade Channels and Classes of Consumers
Turning to the trade channels and classes of consumers, we must assume that the
identified goods and services move through all normal and usual channels of trade
and methods of distribution for such goods and services. In re i.am.symbolic llc, 866
USPQ2d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017); Squirtco v. Tomy Corp., 697
F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983). The Examining Attorney’s evidence,
including the evidence set out above, shows that software and SaaS for the functions
performed by the goods and services of both Applicant and Registrant are offered
together through the same websites. Thus, the record reflects that Applicant’s goods
and services travel in the same channels of trade to the same classes of consumers as
the registrant’s goods.

12 See February 9, 2016 Office Action at 21-48.
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C. The Number and Nature of Similar Marks for Similar Services
Applicant asserts under the sixth du Pont factor that the mark in the cited
registration deserves only a narrow scope of protection in view of third-party
registered marks that include the term KEEPER, covering various goods and
services. Evidence of third-party use and registration of a term in the relevant
industry is considered in the likelihood of confusion analysis. Juice Generation, Inc.
v. GS Enterprises LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015); Jack
Wolfskin Ausrustung Fur Draussen GmbH v. New Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015). In the case before us, however,
Applicant points to no evidence of actual third-party use, and instead relies on third-
party registrations of marks that include KEEPER. Applicant’s record thus does not
demonstrate commercial weakness from third-party use, and fails to show that
consumers actually are conditioned to distinguish among marks that include
KEEPER.
However, even where the record lacks proof of actual third-party use, third-party
registration evidence may show conceptual weakness, in that a term carries a highly
suggestive or descriptive connotation in the relevant industry. However, most of the
third-party registrations on which Applicant relies cover goods or services that differ
from those at issue, and Applicant submitted no evidence of their relatedness. Many
of the third-party registrations identify various types of software that do not involve
the subject matter identified in the Registration. For example, they include, in
relevant part, “software for livestock records and livestock operations management,”
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software “for mutual fund subaccounting and sub-transfer agency functions,”
“software for online construction management,” and “software for the use in tracking,
managing and reporting on workflow processes.” Not all types of software are related.
As explained in TMEP § 1402.03(d), “[a]ny identification of goods for computer
programs must be sufficiently specific to permit determinations with respect to
likelihood of confusion. The purpose of requiring specificity in identifying computer
programs is to avoid the issuance of unnecessary refusals of registration under 15
U.S.C. §1052(d) where the actual goods of the parties are not related and there is no
conflict in the marketplace.” Other registrations involve similarly unrelated goods,
such as “[p]rotective covers, cases and sleeves for tablet computers.”13 Thus, unlike
Juice Generation and Jack Wolfskin, where the third-party evidence involved the very
same goods and services at issue, here Applicant’s third-party registration evidence
relates to different goods and services. It therefore lacks probative value as to alleged
weakness of the term KEEPER in relation to Registrant’s goods. See i.am.symbolic,
123 USPQ2d at 1751 (disregarding third-party registrations for goods in other classes
where the proffering party “has neither introduced evidence, nor provided adequate
explanation to support a determination that the existence of I AM marks for goods in
other classes … support[s] a finding that registrants’ marks are weak with respect to
the goods identified in their registrations”). The following two third-party
registrations have services similar to the function of the Registrant’s software:

13 TSDR March 15, 2017 Request for Reconsideration at 27.
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• PODKEEPER for “Computer services, namely, creating online virtual communities via
communication networks to registered users … for uploading, downloading, streaming,
linking, sharing or otherwise providing electronic media or information, for transmitting
and sharing personal and business profiles, audio, video, photographic images….”14
• LIST KEEPER for “Providing an interactive website featuring technology that allows
users to store, organize, and share personal list information”15
However, we find that the use of KEEPER in the latter registration creates a different
impression than in the cited mark because of the common expression “keep a list.”
Overall, given the nature and quantity of the third-party registration evidence, we
find it insufficient to diminish the scope of protection to be afforded the KEEPER
portion of the mark in the Registration. Cf. Juice Generation, 115 USPQ2d at 1675
(weakness shown by at least 26 third-party uses and registrations containing the
same phrase for the same services); Jack Wolfskin, 116 USPQ2d at 1136 (third-party
weakness evidence characterized as “voluminous”).
D. Similarity of the Marks
Next, we turn to the du Pont factor comparing the applied-for and cited marks,
which we consider “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 test assesses not whether the marks can be

14 TSDR March 15, 2017 Request for Reconsideration at 16-17.
15 Id. at 18-20.
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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 goods
offered under the respective marks is likely to result. Coach Servs., 101 USPQ2d at
1721; see also Edom Labs., Inc. v. Glenn Lichter, 102 USPQ2d 1546, 1551 (TTAB
2012). “[I]n articulating reasons for reaching a conclusion on the issue of confusion,
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 consideration of the marks in their entireties.” In re Nat’l Data Corp., 753
F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985); see also Stone Lion Capital
110 USPQ2d at 1161.
We find that PHOTO KEEPER and PICTURE KEEPER look and sound similar,
and create the same meaning and commercial impression. The marks share the same
dominant term, KEEPER, and the other words in each mark have important
similarities. We find that KEEPER dominates Applicant’s mark because it is the
more distinctive term. The descriptive nature of PHOTO in Applicant’s mark
diminishes its significance in the comparison because consumers would be unlikely
to focus on it to distinguish source. See In re Dixie Rests., Inc., 105 F.3d 1405, 41
USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (affirming TTAB’s finding that the dominant
portion of the mark THE DELTA CAFE was DELTA, not the disclaimed generic term
CAFE); Nat’l Data Corp., 224 USPQ at 752. While, as Applicant notes, the
technicality of its disclaimer of PHOTO may not be important in the likelihood of
confusion analysis, the reason for the disclaimer matters. A “photo,” or “photograph,”
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is “[a] picture made using a camera…,”16 and Applicant’s goods and services focus on
images. Therefore, consumers will place more emphasis on the KEEPER portion of
the mark to indicate source.
Regardless, the other words in each mark are two-syllable synonymous words that
begin with the same letter. In the cited mark, the word PICTURE can be defined as
“[a] photograph,”17 such that PHOTO and PICTURE can have the same meaning.
While Applicant points out that PICTURE can have other meanings, such as
referring to a painting, both the Registration’s identification and Applicant’s evidence
regarding its commercial context show that PICTURE refers to photos.18 Although
we of course recognize that PHOTO and PICTURE create some visual and phonetic
difference between the marks, combining either word with KEEPER creates a term
with the same connotation and commercial impression, contributing to the similarity
of the marks as a whole.
We find that this factor weighs in favor of likely confusion.
III. Conclusion
The overall similarity of the marks for related goods and services that move in the
same channels of trade to the same classes of customers renders confusion likely.
Decision: The refusal to register Applicant’s mark is affirmed for the goods in
International Class 9 and the services in International Class 42.

16 TSDR August 29, 2016 Office Action at 7-8 (oxforddictionaries.com).
17 Id. at 10.
18 See id. at 17.