No. 86884889 (T.T.A.B. Mar. 30, 2018)

Pixellu LLC

Trademark Trial and Appeal BoardMar 30, 2018

No. 86884889 (T.T.A.B. Mar. 30, 2018)

This Opinion is Not a Precedent of the TTAB Mailed: March 30, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Pixellu LLC _____ Serial No. 86884889 _____ Phillip Thomas Horton, for Pixellu LLC. Parker Howard, Trademark Examining Attorney, Law Office 117, Hellen Bryan Johnson, Managing Attorney. _____ Before Mermelstein, Wellington, and Pologeorgis, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: Pixellu LLC (“Applicant”) seeks registration on the Principal Register of the mark CLOUD PROOFING, in standard character format, for “computer software for proofing photo albums online that may be downloaded from a global computer network” in International Class 9. The term “Proofing” has been disclaimed.1 1 Application Serial No. 86884889 was filed on January 25, 2016, based on an allegation of first use of the mark anywhere and in commerce in March 2015, under Trademark Act Section 1(a),15 U.S.C. § 1051(a). Serial No. 86884889 - 2 - The Trademark Examining Attorney has refused registration of Applicant’s mark on the ground of a likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), in view of the mark , which is the subject of the following two registrations (owned by the same entity): Registration No. 4180613 for a long list of computer devices and software, including “computer hardware and software used to enable and manage cloud computing; … computer software for data management, data modification, data editing, data organization and for managing data security parameters, all within cloud computing applications and systems; … computer software platforms for operating cloud computer applications and networks; … software for enabling a service provider to build a secure, multi-tenant cloud computing environment for hosting virtualized desktops on behalf of distinct customer organizations,” in International Class 9;2 and Registration No. 4218889 for a long list of computer services that includes “hosting the websites … data … [and] computer software applications” for others and “consulting services in the field of cloud computing, namely, consulting in connection with cloud computing applications and networks,” in International Class 42.3 The Trademark Examining Attorney also refused registration of Applicant’s proposed mark on the ground that it is merely descriptive of the goods in the application, under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1). When the refusals were made final, Applicant filed an appeal which has been briefed.4 For the following reasons, we affirm the refusal based on a likelihood of 2 Issued on July 24, 2012. 3 Issued on October 2, 2012. 4 The application was abandoned based on Applicant’s failure to respond to the final Office action. See TSDR Notice of Abandonment, May 15, 2017. Applicant concurrently filed a petition to revive the application and an appeal of the refusals. The petition to revive was granted by the Office on July 19, 2017 and the appeal was instituted. Serial No. 86884889 - 3 - confusion, as well as the refusal based on the mark being merely descriptive of the identified goods. I. Likelihood of Confusion Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the relatedness of the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976); see also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). A. Similarity or Dissimilarity of the Marks We first look to 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). Here, we find Applicant’s mark CLOUD PROOFING is extremely similar to the registered mark in appearance and pronunciation. With respect to the stylization of the registered mark, we keep in mind that Applicant seeks registration of a standard character mark that might be depicted in any manner, Serial No. 86884889 - 4 - regardless of the font style, size, or color. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909-11 (Fed. Cir. 2012); Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011); and In re i.am.symbolic, 866 F.3d 1315, 123 USPQ2d 1744, 1748 (Fed. Cir. 2012). Thus, Applicant’s applied- for mark may be displayed in a manner highly similar to Registrant’s mark. The only differences between the two are the addition of the suffix “–ing” and a space in Applicant’s mark. The additional suffix is but a minor difference in the appearance of the marks and the space is inconsequential. See, e.g., Seaguard Corp. v. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (SEA GUARD and SEAGUARD “essentially identical”); In re Best Western Family Steak House, Inc., 222 USPQ 827 (TTAB 1984) (BEEFMASTER and BEEF MASTER “practically identical”). In terms of connotation and commercial impression, Applicant argues that the marks have different meanings when they are considered in relation to the Applicant’s and Registrant’s respective goods and services. Specifically, Applicant asserts that its mark “creates a connotation of having the ability to view, alter, and create images through on-line services,” whereas Registrant’s mark “creates a connotation of network security to prevent intruders and hackers.”5 Applicant goes on to conclude that “[t]here is no mistaking image software designed to help with images and security software designed to prevent hackers [and] consumers looking 5 8 TTABVUE 10-11. Serial No. 86884889 - 5 - to prevent hackers and security flaws would not consider the source would also make picture software.”6 The shared term “proof(ing)” possesses various defined meanings, including the following relevant dictionary entries:7 Proof: adjective 1. Fully or successfully resistant; impervious. Often used in combination: waterproof watches; a fireproof cellar door … 3. Used to proofread or correct typeset copy: a proof copy of the manuscript. Proof, proofing, proofs: verb 1. Printing a. To make a trial impression of (printed or engraved matter). b. To proofread (copy). Applicant is correct that, depending on the manner and context in which the terms “proof” and “proofing” are used, the connotation of the mark may be different. We further agree with Applicant that its CLOUD PROOFING mark, when viewed in connection with Applicant’s goods, will easily and readily be understood by consumers as indicating the purpose of Applicant’s software, i.e., proofing images, and the applicability or availability of the software, i.e., via a “cloud” network.8 6 Id. at 11. 7 We take judicial notice of these definitions obtained from online version of The American Heritage Dictionary of the English Language (5th ed. 2018), by Houghton Mifflin Harcourt Publishing Company. The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). 8 The Examining Attorney attached several definitions for the term “cloud” or “cloud computing.” TSDR Office Action April 7, 2016. The term “cloud,” itself, is defined as “the computers and connections that support cloud computing.” Id. at p. 69, from Merriam- Webster online dictionary. “Cloud computing” is defined as “Internet-based computing in which large groups of remote servers are networked so as to allow sharing of data-processing tasks, centralized data storage, and online access to computer services or resources.” Id. at p. 72, from Dictionary.com online dictionary. Serial No. 86884889 - 6 - However, as to Registrant’s mark, we do not agree with Applicant that this mark should only be viewed in connection with managing security or protecting data and networks. Indeed, several goods and services listed in the cited registrations are more broadly described and are not restricted to the cloud security or computer network protection fields, e.g., “computer hardware and software used to enable and manage cloud computing …,” “hosting the websites … data … [and] computer software applications,” and “consulting in connection with cloud computing applications and networks.” Consumers viewing Registrant’s mark in connection with these more broadly-defined software goods and computer network services may perceive Registrant’s mark in a manner akin to Applicant’s mark – that is, “proof” can be suggestive of Registrant’s software being able to help create “proofs” from data such as images, or suggestive of Registrant’s consultation and website hosting services that may involve image proofing via a cloud network. In sum, the involved marks are very similar in appearance and sound; it is also likely the marks will understood in a similar manner. Accordingly, the first du Pont factor weighs in favor of finding a likelihood of confusion. B. Relatedness of Goods and Services; Trade Channels; and Classes of Consumers We now consider the du Pont factor involving the relatedness of the involved goods and services, as well as the factors involving their established, likely-to-continue trade channels and classes of consumers. It is settled that in making our determinations, we must look to the goods as identified in the application vis-à-vis the goods and services recited in the cited registrations. See Stone Lion Capital Serial No. 86884889 - 7 - Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). In analyzing the relatedness of the goods or services, “it is not necessary that the products [or services] of the parties be similar or even competitive to support a finding of likelihood of confusion.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); see also On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000) (The goods or services need not be identical or even competitive to find a likelihood of confusion). “[L]ikelihood of confusion can be found ‘if the respective products are related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.’” Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven, 83 USPQ2d at 1724). The issue is whether there is a likelihood of confusion as to the source of the goods or services, not whether purchasers would confuse the goods or services. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830 (TTAB 1984). In arguing that there is a likelihood of confusion, the Examining Attorney has focused on a relationship between Applicant’s proofing software and Registrant’s Serial No. 86884889 - 8 - website hosting and cloud computing services. In support, he has submitted printouts from five different third-party websites which, he argues, demonstrate:9 (1) the same companies commonly provide applicant’s photo proofing software and registrant’s web hosting, software and cloud computing consulting, and/or cloud platforms and markets these goods and services under the same mark …; (2) these goods and services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, namely, photography consumers can obtain photo proofing software, photo website hosting, photo cloud storage and software and consulting regarding same from the same online sources …; and (3) these goods and services are similar or complementary in terms of purpose or function, namely, registrant’s web hosting, software and cloud computing consultation, and cloud platforms can all involve proofing or reviewing of photographs in order to be shared and displayed through websites and/or stored in the cloud. The website evidence includes the following information and excerpts: 1. From Adobe (www.adobe.com)10 • Cloud photography software products and services • Cloud computing consultation services 9 10 TTABVUE 7; Internet evidence attached to Office Action issued April 7, 2016 at TSDR pp. 10-66. 10 Id. at 10-21. Serial No. 86884889 - 9 - • Website hosting services “A complete hosted solution. Business Catalyst includes secure Adobe hosting for your site and email accounts. Because we’re fully hosted and managed, that also means you can forget about installing server patches or updates – your sites will update automatically…”11 2. From PhotoShelter (www.photoshelter.com)12 • Proofing (and “cloud storage”) “Dead Simple Online Proofing … Help clients select their favorite images and deliver what they want much faster. With PhotoShelter’s new client proofing tool, image sharing and selection becomes a snap …”13 14 • Website hosting “Portfolio Websites for Professionals. Superior image quality, speed, and simplicity are what truly make PhotoShelter websites your best choice. Not only will you love your site, but clients will find it easy to use …”15 11 Id. at 16. 12 Id. at 51-57. 13 Id. at 53. 14 Id. at 56. 15 Id. at 51. Serial No. 86884889 - 10 - 3. From Zenfolio (www.zenfolio.com)16 • Proofing “Simplified Client Proofing … Browse, proof and purchase on any device”17 • Cloud storage and website services “Beautiful Website Layouts … Show off your work with a beautifully designed website … Upload, Share, and Archive ... With unlimited [cloud] storage, backup originals on location before the trek home … The Perfect Website … Beautiful web presets hand-picked by photographers like you, for you … Each Zenfolio website is expertly crafted for ideal customization … Unlimited [cloud] storage.”18 .19 This evidence is probative and we agree with the Examining Attorney that it demonstrates that a single entity may offer photography proofing software tools available for use in cloud computing, like Applicant’s goods, as well as cloud computing services, like Registrant’s cloud storage and website hosting services. The evidence further shows that the goods and services are complementary and may be offered to the same consumer. That is, a professional photographer may be interested in the computer software for proofing images for clients in a cloud computing environment, and will further require storage services for these photos in the cloud 16 Id. at 58-66. 17 Id. at 62. 18 Id. at 58-59. 19 Id. at 61. Serial No. 86884889 - 11 - as well as have a website hosted on his or her behalf so that potential clients can view the images. We further find that Registrant’s “computer software for data management, data modification, data editing, data organization and for managing data security parameters, all within cloud computing applications and systems” may be construed as encompassing Applicant’s “computer software for proofing photo albums online that may be downloaded from a global computer network.”20 Specifically, the “data modification” and “data editing” features of Registrant’s software could include proofing photo albums because the data being modified or edited includes photographs (images).21 In that case, both Registrant’s software and Applicant’s software would essentially be performing the same functions and be marketed to the same class of consumers, e.g., photographers interesting in a software tool for proofing photographs, and found in the same, normal trade channels for this type of software. See In re Viterra Inc., 101 USPQ2d at 1908. Accordingly, the du Pont factors involving the relatedness of the goods and services, trade channels, and classes of purchasers weigh in favor of finding a likelihood of confusion. 20 We note this was not argued by the Examining Attorney. However, “[t]he Board need not find that the examining attorney’s rationale was correct in order to affirm the refusal to register, but rather may rely on a different rationale.” TBMP § 1217 (June 2017). 21 We take judicial notice that “Data” is described in the context of computers as “information processed or stored by a computer. This information may be in the form of text documents, images, audio clips, software programs, or other types of data.” Definition from the Tech Terms Computer Dictionary (techterms.com); Christensson, Per. “Data Definition.” TechTerms. (2006). Accessed Mar. 23, 2018. https://techterms.com/definition/data. Serial No. 86884889 - 12 - C. Lack of Any Instances of Actual Confusion Applicant argues that in the event the involved goods and services are found to be marketed in a similar manner and through the same trade channels, then it “would be contradictory to discount the absence of actual confusion as between the trademarks at issue where the Office contends there is an overlap in marketing and trade channels.”22 However, Applicant has only asserted use of its mark since 2015, leaving a relatively short period of concurrent use of the involved marks and thus very little opportunity for any actual confusion to have occurred. In any event, the absence of evidence of such confusion in an ex parte appeal is rarely found helpful for purposes of showing no likelihood of confusion. See In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003) (“The lack of evidence of actual confusion carries little weight … especially in an ex parte context”). This factor therefore remains neutral. D. Conclusion We have carefully reviewed the entire record and considered all relevant factors concerning likelihood of confusion. Here, we find the involved marks, CLOUD PROOFING and , are overall very similar and when used, respectively, in connection with Applicant’s photo proofing software and Registrant’s software for data modification and editing, or its website hosting and cloud storage 22 8 TTABVUE 15. Serial No. 86884889 - 13 - services, there is a likelihood that consumers will be confused as to the source of these goods and services. We turn now to the second ground for refusal. II. Merely Descriptive A mark is deemed to be merely descriptive within the meaning of Section 2(e)(1) if it immediately conveys knowledge of a quality, feature, function, characteristic or purpose of the goods or services for which it is used. In re Bayer A.G., 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987)). Whether a particular term is merely descriptive is determined in relation to the goods or services for which registration is sought and the context in which the term is used, not in the abstract or on the basis of guesswork. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). When two or more merely descriptive terms are combined, the determination of whether the combined mark also has a merely descriptive significance turns on whether the combination of terms evokes a non-descriptive commercial impression. Generally, if each component retains its merely descriptive significance in relation to the goods or services, the combination results in a composite that is itself merely descriptive. In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004) (quoting Estate of P.D. Beckwith, Inc. v. Comm’r., 252 U.S. 538, 543 (1920)); see also In re Tower Tech, Inc., 64 USPQ2d at 1318 (SMARTTOWER merely descriptive of commercial and industrial cooling towers); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely Serial No. 86884889 - 14 - descriptive of computer programs for use in developing and deploying application programs); In re Putman Publ’g. Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of news and information services in the food processing industry). We agree with the Examining Attorney that “both the individual components (CLOUD and PROOFING) and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods.”23 As amply demonstrated by the third-party website evidence of record, some of which is discussed supra, “proofing” photographs that are stored in a “cloud” or in a “cloud computing” environment is a feature marketed to photographers. Consumers who encounter the mark CLOUD PROOFING in connection “computer software for proofing photo albums online” will immediately recognize the merely descriptive significance of the mark in relation to the software. Applicant argues that its mark “creates an incongruity in the mind of a consumer by juxtaposing discordant elements or ideas by providing a cloud where consumers can keep and alter digital pictures instead of using digital software like Adobe.”24 We fail to see any incongruity; indeed, as mentioned, the evidence contradicts any suggested discordance because it shows that third-parties, like Zenfolio and Photoshelter, assist photographers with this precise method of proofing images that are stored in a cloud. 23 10 TTABVUE 9. 24 8 TTABVUE 24. Serial No. 86884889 - 15 - Although Applicant also argues that its mark “evoke[s] a new, non-descriptive commercial impression,” there is no evidence to support this assertion.25 Indeed, Applicant’s suggested alternative meaning, i.e., “a cloud where consumers can keep and alter digital pictures instead of using digital software,”26 actually describes a key feature or the purpose of Applicant’s goods, and underscores the merely descriptive nature of the mark. Ultimately, we find that the mark CLOUD PROOFING is merely descriptive when used in connection with “computer software for proofing photo albums online that may be downloaded from a global computer network.” Decision: The refusals to register Applicant’s CLOUD PROOFING mark under Section 2(d) and Section 2(e)(1) of the Trademark Act are affirmed. 25 Id. at 25. 26 Id.