Pointivityv.ChannelVission, assignee of Aman Sehgal, formerly Sehgal Aman dba Channelvission, Inc.

Trademark Trial and Appeal Board

Apr 23, 2015

No. 92055731 (T.T.A.B. Apr. 23, 2015)

Mailed: April 23, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Pointivity
v.
ChannelVission, assignee of Aman Sehgal,
formerly Sehgal Aman dba Channelvission, Inc.1
_____

Cancellation No. 92055731
_____

Matthew H. Swyers of The Trademark Company, PLLC for Pointivity.

Thomas W. Cook for ChannelVission.
_____

Before Seeherman, Bucher, and Kuczma,
Administrative Trademark Judges.

1 The cancellation proceeding was brought against Sehgal Aman dba
Channelvission, Inc., who at the time was the record owner of the registration. On
October 2, 2013, Respondent filed an uncontested motion to correct what it described
as a “typographical error” in the name of the registrant as it appears on the
certificate of registration, to change it from “Sehgal Aman dba Channelvission, Inc.”
to “Aman Sehgal.” However, Office records show that an assignment to
ChannelVission was recorded on July 24, 2013, Reel No. 5077, Frame 0870.
Accordingly, since Aman Sehgal is no longer the owner of the registration, we deny
the motion as moot. We note that although the cover sheet for the assignment
identifies the assignee as ChannelVission, the underlying assignment document
refers to the assignee as Channelvission, Inc. It is Office policy to record the
assignment based on the information provided in the cover sheet, see TMEP
§ 503.06. Accordingly, if Respondent wishes to have title in the registration in the
name Channelvission, Inc., it should record a corrected cover sheet. See Rule 3.34,
37 C.F.R. § 3.34.
This Opinion is not a
Precedent of the TTAB
Cancellation No. 92055731
2
Opinion by Seeherman, Administrative Trademark Judge:

Pointivity (“Petitioner”) has petitioned to cancel a registration owned by
ChannelVission (“Respondent”) for the mark ChannelCloud in standard
characters for “consulting services in the field of cloud computing” in
International Class 42.2
Petitioner seeks cancellation of Respondent’s registration on the ground of
likelihood of confusion, alleging in the petition for cancellation, 7 TTABVUE,
that it is the owner of the mark ChannelCloud,3
used on or in connection with an application service provider
(ASP), namely, hosting computer software applications of others;
computer services, namely, remote and on-site management of
cloud computing systems and applications of others; computer
services, namely, remote and on-site management of the
information technology (it) [sic] cloud computing systems of
others; consulting services in the field of cloud computing;
hosting the software, websites and other computer applications
of others on a virtual private server; hosting the web sites of
others; technical consulting services in the fields of datacenter
architecture, public and private cloud computing solutions, and
evaluation and implementation of internet technology and
services” (¶ 1);

that Petitioner has used the mark in connection with these services since “on
or about June 1, 2008” (¶¶ 2, 3), prior to Respondent’s claimed date of first

2 Registration No. 3960895, issued May 17, 2011, claiming first use anywhere and
first use in commerce at least as early as April 19, 2010. The underlying application
was filed on April 20, 2010 – one day after Petitioner’s alleged date of first use.
3 In the petition to cancel Petitioner referred to its application as being for the mark
CHANNEL CLOUD, depicting it in all capital letters, and as two words. See ¶ 1, 1
TTABVUE 3. However, the specimen in Petitioner’s application Serial No. 85145105
depicts the applied-for mark as ChannelCloud, without a space (see 21 TTABVUE
19-22), as do the exhibits showing Petitioner’s use of the mark. Petitioner also
depicts the mark without a space in its briefs. Accordingly, we refer to the mark as
ChannelCloud throughout our opinion.
Cancellation No. 92055731
3
use of April 19, 2010; and that on October 5, 2010, Petitioner filed an
application to register ChannelCloud for the above-identified services, and
that such application has been refused on the basis that it is likely to cause
confusion with Respondent’s mark. Petitioner also alleges that the services
listed in Respondent’s registration and the services listed in Petitioner’s
application are “similar in kind and closely related” (¶ 13) and are sold in
similar trade channels; and that consumers will be confused into believing
that Respondent’s services offered under the mark ChannelCloud are
connected with Petitioner.
Respondent, in its amended answer, 11 TTABVUE, admits that “it first
used its mark ChannelCloud in connection with consulting services in the
field of cloud computing in International Class 42 on or about April 19, 2010”
(¶ 12) and that these services are “similar in kind” to the “consulting services
in the field of cloud computing” and the “technical consulting services in the
fields of datacenter architecture, public and private cloud computing
solutions, and evaluation and implementation of internet technology and
services” identified in Petitioner’s application. (¶ 13). Respondent denies the
remaining salient allegations of the petition, and asserts the affirmative
defenses of acquiescence, estoppel and laches.4

4 Respondent did not pursue these defenses in its brief, and we therefore deem them
to be waived. Respondent also asserted that Petitioner has failed to establish and
maintain a viable trademark right in the alleged mark. This is not an affirmative
defense, as it is Petitioner’s burden to demonstrate its trademark rights in order to
prevail in this proceeding.
Cancellation No. 92055731
4
Petitioner and Respondent filed briefs on the case, and Petitioner filed a
reply brief.
OBJECTIONS
There is one pending objection. Specifically, Petitioner objects to certain
testimony by Aman Sehgal, Respondent’s CEO and President, regarding
emails Respondent allegedly sent promoting its services in 2007, because the
emails were not produced during discovery.5 In testifying regarding
Exhibit 2, a 2008 email, Mr. Sehgal stated that he sent similar emails in
2007, and it is this testimony, regarding Respondent’s use of the mark dating
back to 2007, to which Petitioner objects.
We need not engage in an extensive discussion regarding this objection. It
is clear from Respondent’s brief that it does not claim use of its mark as of
2007. See 27 TTABVUE 8 (“Upon its formation in 2008, ChannelVission
began its marketing efforts by direct email to potential customers”).
Therefore, Respondent does not rely on the testimony to which Petitioner
objects. In any event, as discussed infra, the objected-to testimony has no
effect on our decision.
THE RECORD
The record includes the pleadings, and pursuant to Trademark Rule
2.122(b), the file of Respondent’s involved registration.

5 Petitioner’s Trial Brief, 24 TTABVUE 8.
Cancellation No. 92055731
5
In addition, Petitioner introduced the testimony deposition of Kent
Erickson, Petitioner’s CEO, with attached exhibits, and Respondent
introduced the testimony, with exhibits, of Aman Sehgal, Respondent’s CEO
and President, and of David Natwick, its Vice President of Global Business
Development. Respondent also submitted, under a Notice of Reliance,
Petitioner’s pleaded application (taken from the TSDR database) and the
specimen filed with the application, third-party registrations for marks
containing the word “Channel,” Internet materials consisting of articles and
dictionary definitions, and Petitioner’s discovery responses.6
STANDING
Standing is a threshold issue that must be proved in every inter partes
case. Lipton Industries, Inc. v. Ralston Purina Co., 670 F. 2d 1024, 213 USPQ
185 (CCPA 1982). A party has standing to seek cancellation of a trademark
registration if the party believes it is likely to be damaged by the registration;
its belief in likely damage can be shown by establishing a direct commercial
interest. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,

6 21 TTABVUE. Respondent submitted with its notice of reliance documents
Petitioner produced in response to Respondent’s document production requests.
Documents produced in response to such requests may not be made of record by
notice of reliance. See Trademark Rule 2.120(j)(3)(ii). However, in its brief Petitioner
treated the entire notice of reliance as being of record, see 24 TTABVUE 6, and we
therefore consider the documents produced by Petitioner in response to the requests
and submitted with Respondent’s notice of reliance to be stipulated into the record.
Respondent also submitted Petitioner’s responses to Respondent’s requests for
admission. Since Petitioner denied all of these requests, the submission has no
probative value. In addition, Respondent submitted documents that were part of its
own registration file. As noted, this registration file is automatically of record by
operation of the rules, and therefore the submission under notice of reliance was
unnecessary; submission of duplicate material is discouraged by the Board.
Cancellation No. 92055731
6
1844 (Fed. Cir. 2000); Lipton, 213 USPQ at 189. Petitioner has submitted
testimony regarding its use of ChannelCloud, and that its application for
ChannelCloud has been refused on the basis of the subject registration.
Further, Respondent concedes that Petitioner has standing to maintain this
action.7 Thus, Petitioner has established its standing.
LIKELIHOOD OF CONFUSION
Petitioner asserts likelihood of confusion as the ground to cancel
Respondent’s issued registration.8 There are two elements to this ground,
priority and likelihood of confusion.
Priority
A respondent may rely on its issued registration as proof of constructive
use of the mark as of the filing date of its underlying application, which in
this case is April 20, 2010. Hydro-Dynamics Inc. v. George Putnam &
Company, Inc. 811 F.2d 1470, 1 USPQ2d 1772 (Fed. Cir. 1987); Brewski Beer
Co. v. Brewski Brothers Inc., 47 USPQ2d 1281 (TTAB 1998). A respondent
may also prove, through testimony and other evidence, earlier use. That is
what Respondent is attempting to do in this case.

7 Respondent’s brief, 27 TTABVUE 11.
8 Petitioner has asserted in its brief that Respondent is not using the mark for the
consulting services identified in Respondent’s registration, but the ground of non-use
and/or abandonment was never pleaded or tried by consent. On the contrary,
Petitioner has acknowledged that it cannot attack Respondent’s registration on the
ground of non-use, and that its arguments regarding non-use go solely to the priority
date claimed by Respondent. Petitioner’s brief, 24 TTABVUE 15. Accordingly,
likelihood of confusion is the sole ground in this cancellation proceeding.
Cancellation No. 92055731
7
First, we note that in its amended answer, 11 TTABVUE, Respondent
admitted that “it first used its mark ChannelCloud in connection with
consulting services in the field of cloud computing in International Class 42
on or about April 19, 2010” (¶ 12). An admission in an answer has the effect
of withdrawing a fact from issue and dispensing wholly with the need for
proof of the fact. See American Title Ins. Co. v. Lacelaw Corp., 861 F.2d 224
(9th Cir. 1988). However, failure to contend that an opposing party’s
admission barred entry of conflicting evidence can be a waiver of the
argument that the issue was conclusively settled. Id.
In this case, we have the odd situation that Petitioner did not specifically
invoke Respondent’s admission in connection with Petitioner’s arguments
regarding priority. Nevertheless, when Respondent attempted to elicit
testimony regarding its use of the mark in 2007, Petitioner objected to this
questioning (22 TTABVUE 38). Although Petitioner based its objection on the
lack of responses to discovery requests, clearly Petitioner did not treat the
testimony or evidence as showing earlier use of Respondent’s mark, or
otherwise indicate that it was aware that Respondent was seeking to
withdraw its admission, or that it was agreeable to Respondent doing so. In
these circumstances, we find that the admission should be treated as
effective, and therefore that Petitioner was entitled to rely on the admission
and prove only that it had used its mark for its services prior to April 19,
2010 in order to establish its priority.
Cancellation No. 92055731
8
Even if we were to treat Respondent’s admission as having been
withdrawn, such that Petitioner waived its right to rely on the admission,
Respondent has still failed to prove use of its mark for its identified services
prior to April 19, 2010. Because in its underlying application Respondent
asserted first use dates of April 19, 2010 (one day prior to filing the
application), for Respondent to establish that it made use earlier than the
dates alleged in its application (now-registration), Respondent must do so by
clear and convincing evidence. Hydro-Dynamics, 1 USPQ2d at 1773 (a date of
first use earlier than that alleged in the application is a change of position
from one “considered to have been made against interest at the time of filing
the application,” and therefore must be established by “clear and convincing
evidence.”); Threshold.TV Inc. v. Metronome Enterprises Inc., 96 USPQ2d
1031, 1036 (TTAB 2010) (a party “is entitled to prove an earlier date of use
than the date alleged in its application, but its proof must be clear and
convincing and must not be characterized by contradiction, inconsistencies or
indefiniteness.”); American Hygienic Laboratories Inc. v. Tiffany & Co., 12
USPQ2d 1979, 1984 (TTAB 1989) (testimony of manager regarding use of
TIFFANY on compacts nine years earlier was not clear and convincing absent
corroborating documents showing use of the mark).
Contrary to the April 19, 2010 date of first use asserted in its underlying
application, Respondent now claims July 7, 2008 as the date of first use of its
ChannelCloud mark. Respondent’s brief, 27 TTABVUE 8. Respondent relies
Cancellation No. 92055731
9
primarily on the testimony of Aman Sehgal in connection with Exhibit 2 of
his deposition to show use of its mark as of July 7, 2008.9 However, in his
testimony deposition Mr. Sehgal never testified that July 7, 2008 was the
date Respondent first used ChannelCloud as a trademark; instead, his
testimony was that Respondent was marketing its services on that date, and
points to Exhibit 2, an email dated July 7, 2008, as indicative of Respondent’s
marketing efforts as of the July 7th date.10 The email references the company
name, “ChannelVission Inc.,” but the only mention of “ChannelCloud” is in
the sentence, “ChannelVission Inc. strategizes and executes on the market
introduction structures of small and medium companies – ChannelCloud
service.” This mention and the accompanying testimony is not sufficient to
demonstrate by clear and convincing evidence that Respondent was making
trademark use of ChannelCloud on July 7, 2008, for the “consulting services
in the field of cloud computing” identified in its registration.
The testimony of David Natwick, 22 TTABVUE, is similarly unpersuasive.
He testified that Mr. Sehgal had discussions with him when Mr. Natwick was
with a different company. However, the testimony regarding when the
discussions occurred is vague and inconsistent with the testimony of Mr.
Sehgal. More importantly, discussions about Mr. Sehgal’s “intent of
ChannelVission, and discussing his product ChannelCloud,” 22 TTABVUE

9 22 TTABVUE 92-94. The testimony regarding this exhibit was the subject of the
objection discussed supra.
10 22 TTABVUE 41.
Cancellation No. 92055731
10
11, do not show that ChannelCloud was in use as a trademark for
consulting services in the field of cloud computing. As far as Mr. Natwick’s
testimony regarding the July 7, 2008 email, as we have already discussed,
the email is not sufficient to show use of the trademark for the identified
services.
Other documentary evidence and testimony indicate a later first use date.
For example, the following cross-examination testimony indicates that
Respondent’s first use did not occur until essentially the time it filed its
underlying application:11
Q. Ok. And this [Exhibit J] appears to be a printout of the website
– the home page as it existed in February 2nd 2011. Would you
agree with me?

A. Yeah, I – I – I would agree.

Q. Okay. And here at the bottom we see “ChannelCloud,” in a –
I’ll call it a cloud. Is that fair to say?

A. That’s right.

Q. Okay. And this is the first time that “ChannelCloud” appears
on the website?

A. On the website?

Q. Yes.

A. Yes, because until now we were not granted trademark, and
only then we wanted to use it after granting trademark.

Q. Okay.

11 22 TTABVUE 70. The testimony discusses Exhibit J, archived web pages from
Respondent’s website. 22 TTABVUE 181-183.

Cancellation No. 92055731
11
A. If I may, just to add to it, we wanted to follow the legal aspects
of having a trademark be in our pocket before we even launched
anything.

This testimony indicates that Respondent did not want to make use of the
mark ChannelCloud until it had filed its application, a point that was
further clarified during redirect:
Q. When – when we were on this exhibit [Exhibit J] you used the
words “after granting the trademark.” And it was I think in the
context of when you began to use the trademark
“ChannelCloud.” Can you – does granting the trademark mean
to you after the filing of an application to register the trademark
“ChannelCloud,” or does it mean something different than
that?

A. No, You are right.

Q. Are there – are there – so is it fair to say that you wanted to at
least clear the mark for its use and then file this application
before the – the mark was present to the public?

A. You are absolutely correct. And – (pause).

Q. Do you have something else to say on that, or –

A. No. I – all I was going to say was you are absolutely correct,
because as we all have a target in mind, but we do not ever want
to bring that target out for public. And we worked towards the
goal. And after achieving milestones, that’s when you slowly let
the cat out of the bag, as we all call in business. We have been
using that strategy because we did not want any of our
competitors to be following on what ChannelVission is doing.12

We have also considered the other evidence of use submitted by
Respondent, but none of it shows clearly and convincingly that Respondent
began using its mark for consulting services in the field of cloud computing
either as of July 7, 2008 or at any date prior to the filing date of its

12 22 TTABVUE 80-81.
Cancellation No. 92055731
12
application. In particular, there is testimony that Exhibit 15, materials used
to market Respondent’s services, was prepared some time in 2010, but there
is no clear evidence as to when. Moreover, as discussed infra, Petitioner has
shown use of its mark in 2009.
After reviewing all of the evidentiary pieces and looking at the evidence as
a whole, see West Florida Seafood Inc. v. Jet Restaurants Inc., 31 F.3d 1122,
31 USPQ2d 1660, 1663 (Fed. Cir. 1994), we find that Respondent has failed
to show by clear and convincing evidence that it used its mark for its
identified services as of its now-alleged June 7, 2008 first use date. Instead,
we find that Respondent may rely only on the filing date of its underlying
application, April 20, 2010, for purposes of establishing Respondent’s
priority.13 Therefore, for Petitioner to prevail, Petitioner must show it used
the mark ChannelCloud in connection with its services prior to April 20,
2010.
Because Petitioner does not own a registration, it must rely on its common
law rights,14 and must show that it obtained rights in the mark
ChannelCloud prior to Respondent. In certain cases a plaintiff must show
that its mark has acquired distinctiveness in order to determine a date for

13 As noted previously, Respondent has admitted that it did not make use of its
mark for its identified services prior to April 19, 2010; the evidence of record does
not show use for those services prior to the filing date of the underlying application.
14 We recognize that Petitioner owns an application, and can therefore rely on the
filing date as its constructive use date (contingent on a registration issuing), but
since that date is subsequent to the filing date of Respondent’s underlying
application, we need not consider it.
Cancellation No. 92055731
13
priority purposes, see Towers v. Advent Software Inc., 913 F.2d 942, 16
USPQ2d 1039, 1041, (Fed. Cir. 1990), citing Otto Roth & Co. v. Universal
Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981). However, in this
case, Respondent has not challenged the distinctiveness of Petitioner’s mark
and, indeed, the marks are identical so presumably Respondent considers
ChannelCloud to be inherently distinctive. In this connection, we note that
Respondent’s challenged registration issued on the Principal Register without
disclaimer and without a showing of acquired distinctiveness. Accordingly,
because no challenge to the lack of inherent distinctiveness of Petitioner’s
ChannelCloud mark has been made, we find Petitioner’s mark
ChannelCloud is inherently distinctive. Therefore, Petitioner acquired
trademark rights in the mark as of the date it first began using it for its
services.
In its brief, Petitioner states that it “offers cloud computing solutions for
its customers in the form of consulting and other cloud-related services,” and
that it “launched this ChannelCloud service to assist others to make the
transition to cloud computing,” 24 TTABVUE 8, citing Kent Erickson’s
testimony in support. Mr. Erickson’s testimony is not that clear. Although
Mr. Erickson testified that Petitioner began using ChannelCloud in 2008,15
the services in connection with which the mark was used are not clearly

15 30 TTABVUE 26.
Cancellation No. 92055731
14
defined. Petitioner’s counsel asked him several times about the services; here
are some examples of his answers:
A: ChannelCloud’s clients are other computing resellers,
systems integrators. And what ChannelCloud does is offer them
a cloud-based computing platform that they are able to then
resell and offer to their clients. We offer educational – they
spend almost a week with us personally in San Diego. It’s the
intellectual property of proposals, sales materials, consulting
materials, business model, legal documents, the whole enabler
so that they can compete very quickly in the cloud computing
space.16
***
Q: Now, just to get to be clear, so at this time [2008], what if any
services were offered in connection with the ChannelCloud
mark:

A: Well, at the point we were then – you know, we had a channel
program that we were recruiting partners into. Partners were
using these – these automated Parallel tools and these systems
to provision and sell services. You know, Pointivity17 was also
using these for ourselves. So, you know, we were a partner to
ChannelCloud in the same way. Pointivity used the same tools
that ChannelCloud offered to partners. So it was a growing suite
of applications during that time that partners could offer.18

What is clear is that in 2009 Petitioner published a pricing sheet showing
the different types of services it offered at that time. Exhibit 5, 30 TTABVUE
160. Mr. Erickson testified that this sheet was distributed to its partners, and
that these services have been provided under the ChannelCloud mark
continuously since 2009.19 The services, as listed on Exhibit 5, are headed
“Hosted Email Services,” “Hosted SharePoint Services” and “Instant

16 30 TTABVUE 25.
17 Petitioner is Pointivity, but it is clear from Mr. Erickson’s testimony that he views
Pointivity and ChannelCloud as separate divisions.
18 30 TTABVUE 31.
19 30 TTABVUE 34-35.
Cancellation No. 92055731
15
Messaging Services.” Thus, the record shows that Petitioner was using the
mark ChannelCloud for such hosting services prior to Respondent’s use of
its mark for consulting services in the field of cloud computing, and Petitioner
has priority for these particular services.20
Likelihood of Confusion
Turning now to the issue of likelihood of confusion, our determination
under Section 2(d) is based on an analysis of all of the probative facts in
evidence relevant to the factors bearing on the likelihood of confusion issue.
In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973).
The parties agree that the marks in question are identical. Therefore, we
find that the first du Pont factor weighs heavily in Petitioner’s favor.
With respect to the services, Petitioner, in its brief, relies on the recitation
in its application, and asserts that Petitioner’s identified consulting services
in the field of cloud computing are identical to Respondent’s consulting
services in the field of cloud computing. However, as noted supra, Petitioner
may rely in this proceeding only on its common law rights, which arise

20 We add that the record does not show that Petitioner made prior use of its mark
for consulting services in the field of cloud computing. Although Mr. Erickson
testified that “quite a lot” of consulting was being done as early as 2008, 30
TTABVUE 31-32, it is clear from his testimony that he interpreted “consulting” as
providing business information to Petitioner’s partners, rather than “consulting
services in the field of cloud computing” as that identification in Respondent’s
registration is understood.
Cancellation No. 92055731
16
through use.21 Thus, Petitioner’s services are restricted to those for which it
has proven priority of use of its mark.
Petitioner has shown prior common law use of its mark ChannelCloud
for hosted email services, hosting software of others and instant messaging
services, as noted supra. However, Petitioner has not shown that these
services are related to Respondent’s services. Petitioner’s argument regarding
the du Pont factor of the similarity of the services is limited to the fact that
both are listed in the identification of services of their respective application
and registration. As discussed, this argument has no merit because Petitioner
cannot rely on its application. With respect to the services for which
Petitioner has actually shown use, Petitioner points to no evidence or
testimony to show that these services are related to Respondent’s. We
recognize that both Petitioner’s and Respondent’s services are in the field of
cloud computing, but given that cloud computing, like computers and the
Internet, is fast becoming ubiquitous, the fact that Petitioner’s and
Respondent’s services both involve cloud computing in some manner is not a
sufficient basis on which to find the services to be related. See Electronic Data
Systems Corp. v. EDSA Micro Corp., 23 USPQ2d 1460, 1463 (TTAB 1992);
Reynolds & Reynolds Co. v. I.E. Systems Inc., 5 USPQ2d 1749, 1751 (TTAB
1985). Thus, Petitioner has failed to show that its services for which there is

21 A plaintiff may also rely on the constructive use conferred by the filing date of its
application, contingent on the registration issuing, but that is not applicable to the
present case because Petitioner’s application was filed after the constructive use
date conferred by the filing of Respondent’s underlying application.
Cancellation No. 92055731
17
evidence of use of its mark are similar to Respondent’s consulting services.
The du Pont factor of the similarity or dissimilarity of the services favors
Respondent.
With respect to the du Pont factor regarding trade channels, in its brief
Petitioner argues that because Petitioner and Respondent both list
“consulting services in the field of cloud computing” in their respective
application and registration, Petitioner’s and Respondent’s services are
presumed to be marketed and travel in the same channels of trade. Again,
this argument fails because Petitioner has not shown that it made prior use
of the mark ChannelCloud in connection with consulting services.
However, there is evidence regarding Petitioner’s trade channels. Mr.
Erickson testified that its clients are “other computing resellers, systems
integrators” to whom Petitioner offers “a cloud-based computing platform
that they are able to then resell and offer to their clients.”22 Petitioner
markets its services through email, speaking engagements, webinars,
membership groups, other consultants, white papers, blog articles and
partnerships.23 Petitioner also stated that “Petitioner provides cloud-based
application hosting to IT companies to sell and provide to their clients.”
Response to Interrogatory #5, 21 TTABVUE 48.
Respondent’s services, as listed in the identification in its registration, are
“consulting services in the field of cloud computing.” There are no restrictions

22 30 TTABVUE 25.
23 30 TTABVUE 132.
Cancellation No. 92055731
18
in the channels of trade for the services, and therefore we must deem the
services to travel in all appropriate channels of trade. In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905 (Fed. Cir. 2012). Because consulting services in
the field of cloud computing can be rendered to anyone that has a need for
cloud computing, and because Petitioner’s services are rendered to businesses
that also use cloud computing, to this extent there is an overlap in trade
channels. However, there is no evidence that the employees or department
within a business that requires consulting services in the field of cloud
computing would be the same employees or department that would seek or
obtain hosted email services, hosted share point services, and instant
messaging services. See Electronic Design & Sales, Inc. v. Electronic Data
Systems Corp., 954 F.2d 713, 21 USPQ2d 1388 (Fed. Cir. 1992). Thus, we
treat this du Pont factor as neutral, or favoring Petitioner only slightly.
To the extent that there is an overlap in channels of trade, that overlap
would only involve careful and sophisticated consumers. Because Petitioner’s
channels of trade are limited to the channels in which it has shown it has
used its mark, those are the only customers that would be common to both
parties. Petitioner’s customers are described as “partners” who act as
resellers for its various services. Mr. Erickson testified that in 2008 “most of
those partners were paying in excess of $20,000, which was probably the
most expensive partnership program out there in the computing industry.” 30
Cancellation No. 92055731
19
TTABVUE 31. Thus, the du Pont factor of the conditions of purchase favors
Respondent.
Finally, although neither party addressed this in their briefs, the strength
of Petitioner’s mark must be considered in assessing the likelihood of
confusion. The evidence shows that the individual elements of the mark
ChannelCloud are highly suggestive or descriptive. “Channel” appears to be
a term of art in this industry. Both Petitioner and Respondent use “channel”
in reference to their services. Petitioner stated in its response to Respondent’s
Interrogatory #1 that it chose its mark because its “business activities consist
of enabling their channel clients to sell cloud services to their customers.” 21
TTABVUE 47. Respondent’s witness Aman Sehgal gave the following
testimony about Respondent’s business:
We were – as “ChannelVission” the word itself means, it talks
about channel. Our main focus was how to improvise [sic] the
channels for a lot of multibillion-dollar corporations that I have
also worked for in the past. …
So the services that we had provided were to deal with bringing
those services – bringing those channels to be a lot more
effective for vendors or for these multibillion-dollar companies.24

As for “cloud,” there is no question that it is descriptive, if not generic, of
services involving cloud technology.
Petitioner’s mark, ChannelCloud, is highly suggestive of its services.
When asked how Petitioner came up with the trademark, Mr. Erickson
provided the following response:

24 22 TTABVUE 82.
Cancellation No. 92055731
20
You can name something … a name that really doesn’t have any
connection … or you can choose a name that in a sense speaks
exactly to what the service or the product is.

In this case, ChannelCloud was exactly the two words that we
were targeting. It was the computing channel and a cloud
offering, and like I say, it speaks exactly to it. And somebody in
the channel, in the computing channel would know instantly
what the – we would have to do no – education. They would see
immediately what the offering and what the – what we are in
the marketplace.25

As such, we find that Petitioner’s mark ChannelCloud mark is not strong,
and that this du Pont factor favors Respondent.
The parties have not presented argument or evidence on the remaining
du Pont factors and we therefore treat them as neutral. When we weigh the
relevant du Pont factors for which there has been argument or evidence, we
find that Petitioner has failed to meet its burden of proving likelihood of
confusion. The lack of proof as to the relatedness of the services, coupled with
the sophistication and care of the purchasers and the lack of strength of
Petitioner’s mark, outweigh the fact that the marks are identical.
Decision: The petition for cancellation is dismissed.

25 30 TTABVUE 26.