RedSky Technologies, Inc.

Trademark Trial and Appeal Board

Dec 19, 2019

87411583 (T.T.A.B. Dec. 19, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: December 19, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re RedSky Technologies, Inc.
_____

Serial No. 87411583
_____

Stephen Lesavich of Lesavich High Tech Law Group SC, for RedSky Technologies,
Inc.

Gidette Cuello, Trademark Examining Attorney, Law Office 125
Heather Biddulph, Managing Attorney.
_____

Before Thurmon, Deputy Chief Administrative Trademark Judge, Mermelstein and
Bergsman, Administrative Trademark Judges.

Opinion by Thurmon, Deputy Chief Administrative Trademark Judge:
Applicant seeks registration of the mark ECHO 911 (standard characters) for
“Computer software used to manage, store, and deliver enhanced emergency
telecommunications information in the nature of E911 and 911 infrastructure and
emergency location information for individuals in the event of an emergency” in
International Class 9.1 The Examining Attorney refused registration under Section
2(d) (likelihood of confusion) based on a registration of the mark ECHO112 (standard

1 Application Serial Number 87411583, filed on April 14, 2017, based on alleged first use
anywhere and in commerce at least as early as April 1, 2017.
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characters) for “Computer software, namely, smartphone application that is a
lifesaving application that sends the user’s location to local emergency services,
worldwide,” in International Class 9.2 The appeal has been fully briefed. We affirm
the refusal to register.
I. The Record and the Prosecution History
Applicant filed a use-based application to register the ECHO 911 mark on April
14, 2017. In an Office Action dated June 29, 2017, the Examining Attorney took the
following actions:
• registration was refused under Section 2(d);
• the submitted specimen was refused because it appeared to be a digital
mock-up;
• additional information was requested about the specimen; and,
• a disclaimer of “911” was required.3
The original Section 2(d) refusal was based on two registrations: the registration
cited above and a registration of the mark ECHO for “Electronic alarm hardware and
software for emergency signaling” in International Class 9. The Examining Attorney
withdrew the refusal based on the second registration in a later Office Action.
Applicant responded with an aggressive and “blunt” response, to use the words of
Applicant’s counsel.4 In short, Applicant disagreed with the Examining Attorney’s

2 Registration 4483053, issued February 18, 2014, from an application filed December 17,
2012. The mark is shown in the registration as echo112, but because it is a standard
character registration, we depict it in all uppercase letters.
3 Office Action dated June 29, 2017.
4 Response to Office Action dated November 16, 2017 at 9 (“Applicant may be blunt with
comments but intends to be respectful”). We find the arguments submitted by Applicant’s
counsel overly aggressive and personal in nature. It is inappropriate to personally attack an
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conclusion that confusion was likely. Applicant submitted a substitute specimen and
responded to the request for information.5 Applicant entered the required disclaimer,
but also stated, “Applicant traverses this assertion,” immediately before making the
disclaimer.6
In a final Office Action, the Examining Attorney accepted the substitute specimen
and the responses to the information request, but made final the Section 2(d) refusal
and the disclaimer requirement.7 Applicant again submitted the disclaimer in a
Request for Reconsideration, and the Examining Attorney entered it.8 The sole issue,
therefore, before the Board in this appeal is whether there is a likelihood of confusion
between Applicant’s mark ECHO 911 and the registered mark ECHO112.

Examining Attorney who is doing her job. Indeed, in reading the prosecution history of this
case, we find the Examining Attorney properly cited the law and explained her actions. She
provided clear responses to the misguided arguments of Applicant’s counsel. Applicant, on
the other hand, repeatedly mischaracterized the analysis of the Examining Attorney and
made numerous misguided or misleading arguments.
We note, in particular, that Applicant’s counsel asserted in the Request for
Reconsideration: “If a death or injury occurs if a person dial 112 [sic] in an emergency
situation and no emergency help arrives, the Examining Attorney, her management and the
U.S. Trademark Office could potentially be liable for a claim under the Federal Tort Claims
Act for negligence or other wrongful or ‘tortious’ conduct.” Request for Reconsideration at 77-
78 (internal citation omitted). This statement is inflammatory, irrelevant, and entirely
inappropriate. The issue before the Office is whether Applicant’s mark is registrable, not
whether consumers should use the 112 numbers to reach emergency services. Such over-the-
top arguments do not help Applicant’s case. Counsel is reminded that proceedings before the
Office are to be conducted with decorum and courtesy. Trademark Rule 2.192.
5 Response to Office Action dated November 16, 2017 at 70-75, 77-81.
6 Id. at 75-76.
7 Office Action dated January 18, 2018.
8 Request for Reconsideration at 80-81. Applicant again stated that it “traverses this
assertion,” referring to the disclaimer requirement. We deem Applicant to have freely
consented to the entry of the disclaimer, despite the confusing manner in which it was
submitted.
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The Examining Attorney submitted evidence that some third parties offer the
goods identified in the application and the cited registration.9 The Examining
Attorney also submitted evidence showing that the numerals “112” are an emergency
phone number in many parts of the world, and that dialing these numbers in the
United States should result in the call being sent to the relevant 911 call center.10
Applicant submitted evidence regarding actual use of its ECHO 911 mark and the
registered ECHO112 mark, plus TESS records for numerous registrations that
include the word “echo.”11 Applicant also submitted results from searches of the Apple
app store and the Google play store, and Internet reports regarding alleged risks in
using the 112 number sequence to reach emergency services in the United States.12
II. Applicable Law
We base our determination of likelihood of confusion under Trademark Act Section
2(d), 15 U.S.C. § 1052(d), on an analysis of all of the probative facts in evidence that
are relevant to the factors enunciated in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”), cited in B&B Hardware, Inc.
v. Hargis Indus., Inc., 575 U.S. 138, 113 USPQ2d 2045, 2049 (2015); see also In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We
consider each du Pont factor for which there is evidence or argument. See, e.g., In re

9 Office Action dated June 29, 2017 at 3, 20-30; Office Action dated January 18, 2018 at 6, 8-
42.
10 Office Action dated June 29, 2017 at 13-19.
11 Request for Reconsideration at Exhs. A-D (exhibit A was the last in the filing, despite its
title).
12 Id. at Exhs. E-N.
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Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019).
However, “each case must be decided on its own facts and the differences are often
subtle ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387
(CCPA 1973).
Varying weights may be assigned to each du Pont factor depending on the evidence
presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1688 (Fed. Cir. 1993) (“[T]he various evidentiary factors may play more or less
weighty roles in any particular determination”). Two key considerations in most cases
are the similarities between the marks and the similarities between the goods or
services. See In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed.
Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d
1375 (Fed. Cir. 2002) (“The likelihood of confusion analysis considers all du Pont
factors for which there is record evidence but ‘may focus ... on dispositive factors, such
as similarity of the marks and relatedness of the goods.’“)).
III. Analysis
A. Similarity of the Marks
We compare the marks in their entireties as to appearance, sound, connotation
and commercial impression. du Pont, 177 USPQ at 567. “Similarity in any one of
these elements may be sufficient to find the marks confusingly similar.” In re Davia,
110 USPQ2d 1810, 1812 (TTAB 2014); accord Krim-Ko Corp. v. Coca-Cola Bottling
Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity
in either form, spelling or sound alone is likely to cause confusion.”) (citation omitted).
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The test is not whether the marks can be distinguished when subjected to a side-
by-side comparison, but rather whether the marks are sufficiently similar in terms of
their overall commercial impression so that confusion as to the source of the goods
offered under the respective marks is likely to result. Cai, 127 USPQ2d at 1801;
Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103
USPQ2d 1435, 1440 (Fed. Cir. 2012). The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks.13 See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB
1975).
The marks at issue here are similar in appearance, sound, connotation and
commercial impression. Consumers are likely to notice and remember the word “echo”
in these marks, in part because it is the first element of the marks and also because
it is the sole textual element of the marks. See, e.g., Palm Bay Imps., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689,
1692 (Fed. Cir. 2005); In re Integrated Embedded, 102 USPQ2d 1504, 1513 (TTAB
2016); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB
1988)).
We find the word “echo” is a distinctive element of each mark. Echo does not
appear to describe anything about the goods. There is no evidence of an established
meaning of this word within the relevant market. On the other hand, the second

13 Based on the evidence of record, we find the consumers of these goods are smartphone
users.
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element of Applicant’s mark, the 911 number sequence, is not distinctive. Applicant
submitted a dictionary definition showing 911 and E911 are generic within the
relevant field.14 It is well-established that non-distinctive elements of a mark are
given less weight when assessing the similarity of two marks. Anheuser-Busch, LLC
v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re
Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
There is also evidence in the record concerning the meaning of the 112 sequence
found in the registered mark. The Examining Attorney first submitted evidence
showing that this sequence is used in many parts of the world to reach emergency
services, and that dialing 112 in the United States usually results in the call going to
a 911 call center.15 Applicant submitted Internet articles discussing possible risks
associated with use of the 112 sequence in the United States.16 Though it is not clear
why Applicant submitted this evidence, it does show that use of the 112 sequence is
common enough within the United States to cause concern among some security
experts. We find, therefore, that this evidence shows the 112 sequence is known as
an emergency services phone number to a substantial number of consumers in the
United States. That means the 112 number sequence, when used as part of a mark
for a smartphone app providing emergency services, is not a distinctive element of
the registered mark.

14 Response to Office Action date November 16, 2017 at 49.
15 Office Action dated June 29, 2017 at 3, 13-19, 20-30; Office Action dated January 18, 2018
at 6, 8-42.
16 Request for Reconsideration at Exhs. K-N.
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The analysis here is similar to that approved by the Federal Circuit in the Chatam
case cited above. The marks at issue in that case were JOSE GASPAR GOLD and
GASPAR’S ALE, both for beer. Chatam Int’l, 380 F.3d at 1342-43. The Court noted
that the word “ale” was generic for a type of beer and had been disclaimed in the
registration. “Because ALE has nominal commercial significance, the Board properly
accorded the term less weight in assessing the similarity of the marks under DuPont.”
Id. at 1343. The same analysis is proper here, where Applicant has disclaimed the
generic 911 portion of its mark. The evidence shows that the 112 portion of the
registered mark is at least descriptive to a substantial number of consumers, so we
give less weight to that portion of the registered mark, too. 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 a consideration of the
marks in their entireties. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908
(Fed. Cir. 2012); see also In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985).
We do not ignore the numeric portions of the marks, but for the reasons just given,
we find the word “echo” is likely to create and leave a more lasting impression on
consumers. The marks ECHO 911 and ECHO112, therefore, when considered in their
entireties, are similar in appearance and sound. In addition to the common term
“echo,” the numeric sequences are also similar. Both marks have the “one-one”
sequence, and six of the seven characters in these marks are identical. The “9” and
“2” are different and are at a different location. But these are the types of details
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consumers may not recall about a mark. See, e.g., Mag Instrument Inc. v. Brinkmann
Corp., 96 USPQ2d 1701, 1714-15 (TTAB 2010) (difference of a single letter does not
suffice to distinguish MAG STAR from MAXSTAR); RE/MAX of Am., Inc. v. Realty
Mart, Inc., 207 USPQ 960, 964 (TTAB 1980) (REMACS and RE/MAX
indistinguishable in sound). The similarities clearly outweigh the differences here.
The marks are also similar in meaning, given that the sequences 911 and 112 have
similar meanings. As we noted above, both the Examining Attorney and the
Applicant submitted evidence showing the related nature of these two number
sequences within the relevant market.17 The commercial impressions made by the
marks within the relevant market are also similar, and perhaps somewhat more so
due to the similar role played by the 911 and 112 number sequences, when used as
phone numbers.
Applicant makes much of the fact that the Examining Attorney in the first Office
Action stated, “It does not matter that applicant’s mark features the number ’911’”,
and “It does not matter that registrant’s mark ECHO112.”18 We agree this language
went too far. It does matter than Applicant’s mark includes the numbers 911 and that
the registered mark includes the numbers 112. Nonetheless, “if the dominant portion
of both marks is the same, then confusion may be likely notwithstanding peripheral

17 Applicant submitted Internet evidence to show that some security experts advise against
use in the United States of the 112 sequence in place of the 911 sequence. Request for
Reconsideration at Exhs. K-N.
18 4 TTABVUE 11-12. This example is one of many instances in which Applicant singled out
specific wording or statements made by the Examining Attorney rather than reading the
Examining Attorney’s analysis as a whole. The result of this approach is a scattershot
argument by Applicant that often fails to address the real issues.
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differences.” In re Denisi, 225 USPQ 624, 624 (TTAB 1985). The difference between
these number sequences does not distinguish the marks for the reasons given above.
We have performed the proper evaluation of the marks and find them
substantially similar. This factor, therefore, weighs in favor of a likelihood of
confusion.
B. Similarity of Goods, Trade Channels, and Buying Conditions
“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 set forth in the application
regardless of what the record may reveal as to the particular nature of an applicant’s
goods, the particular channels of trade or the class of purchasers to which the sales
of goods are directed.” Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Stone Lion Capital Partners,
LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014);
Paula Payne Prods. v. Johnson Publ’g Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973). We group these three du Pont factors because of the shared focus on the
identification of the goods.19

19 Our analysis here covers the second, third and fourth du Pont factors: “The similarity or
dissimilarity and nature of the goods or services as described in an application or registration
or in connection with which a prior mark is in use;” “The similarity or dissimilarity of
established, likely-to-continue trade channels;” and, “The conditions under which and buyers
to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing.” du Pont 177
USPQ at 567.
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The goods are presented in the table below for ease of comparison.
Applicant’s Goods Registrant’s Goods
Computer software used to manage,
store, and deliver enhanced emergency
telecommunications information in the
nature of E911 and 911 infrastructure
and emergency location information for
individuals in the event of an
emergency
Computer software, namely,
smartphone application that is a
lifesaving application that sends the
user’s location to local emergency
services, worldwide

Both goods are software relating to communication in emergencies, and both
provide location information for an individual. These aspects of the goods are taken
directly from the identifications and are identical. Applicant’s identification does not
disclose how its ECHO 911 software is deployed. However, Applicant’s broadly worded
description of goods necessarily encompasses deployment through a smartphone
application. 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.’”). See also Sw.
Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015) (where services
are broadly identified in an application or registration, “we must presume that the
services encompass all services of the type identified.”); Venture Out Props. LLC v.
Wynn Resorts Holdings, LLC, 81 USPQ2d 1887, 1893 (TTAB 2007). Nevertheless, we
note that the specimen of record shows that Applicant’s mark is used with a
smartphone app.20 The software goods offered under both marks are deployed using

20 Response to Office Action dated November 16, 2017 at 77-81 (substitute specimen). The
only use of Applicant’s mark on the goods in the specimen is on the screen of the smartphone.
Other uses of the ECHO 911 mark in the specimen appear in a marketing or promotional
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smartphone apps. There is evidence showing that some third parties offer goods
similar to those identified in the application and registration.21 This evidence supports
the conclusion that the goods are similar or related.
Applicant relies heavily on “extrinsic evidence” supposedly “to show that a
registrant’s identification of goods or services has a specific meaning to members of
the trade.”22 Applicant, however, mischaracterized its own evidence and arguments.
Applicant recites highly detailed information about the actual products it sells and a
product it alleges is sold under the registered mark.23 Nowhere in this discussion does
Applicant link this evidence to the actual identifications of goods found in the
application and registration. This is not an attempt to explain what the identification
means.24 It is an attempt to ignore the identification and rely instead on extrinsic
evidence. That is something we cannot do. Octocom Sys. v. Houston Comput. Servs.,
16 USPQ2d at 1788 (“an identification of goods having no restriction on trade
channels obviously is not narrowed by testimony that the applicant’s use is, in fact,
restricted to a particular class of purchasers”). We do not read limitations or

flyer explaining the way Applicant’s system operates. Such presentations of the ECHO 911
mark do not constitute use of the mark on goods. 15 U.S.C. § 1127.
21 Office Action dated June 29, 2017 at 3, 20-30; Office Action dated January 18, 2018 at 6, 8-
42.
22 4 TTABVUE 15.
23 Id. at 16-17.
24 We do accept, however, that Applicant’s evidence confirms its goods may be deployed
through a smartphone app, a fact that increases the similarity of the goods. The identification
is unclear on this point, the specimen shows only use on a smartphone, and the extrinsic
evidence confirms that a smartphone app is used to provide Applicant’s goods under the
ECHO 911 mark. This use of extrinsic evidence is appropriate, because it does serve to
explain what the identification of goods means.
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restrictions into the identification of goods. In re i.am.symbolic, LLC, 123 USPQ2d at
1748; Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983)
(“There is no specific limitation and nothing in the inherent nature of Squirtco’s mark
or goods that restricts the usage of SQUIRT for balloons to promotion of soft drinks.
The Board, thus, improperly read limitations into the registration”); In re Thor Tech,
90 USPQ2d 1634, 1638 (TTAB 2009) (“We have no authority to read any restrictions
or limitations into the registrant’s description of goods.”).
Our analysis of the trade channels also focuses on the identification of goods found
in the application and registration. We can consider extrinsic evidence to help explain
the type of trade channels typically used with the specific goods identified in the
application and registration, but we cannot impose limits on the likely trade channels
that are inconsistent with the identifications. For example, Applicant submitted
evidence showing what appear to be hundreds of smartphone apps relating to
emergency services available through the Apple app store and the Google Play store.25
That evidence shows how smartphone apps are typically marketed, and because both
parties offer their software through smartphone apps, this evidence shows
overlapping, if not identical, trade channels for these types of goods.26

25 Request for Reconsideration at Exhs. K-N.
26 Applicant admits both parties’ goods are marketed through the Google Play store. 4
TTABVUE 18-19. This shows the trade channels overlap for such goods, but Applicant argues
that because the apps are presented as separate products, there is no likelihood of confusion.
Id. at 19. Applicant’s evidence seems to show multiple versions of some apps within the Apple
app store and the Google Play store. The fact that multiple versions of an app provided by a
single source appear on these sites suggests consumers do not regard each separate app as
coming from a distinct source, which is apparently the argument Applicant is making.
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Applicant argues that its goods are sold to universities and start at $40,000.27
Applicant describes a detailed process used to obtain and install its systems, which
apparently include the ECHO 911 app.28 These facts may be true, but they are not
reflected in the identification of goods in the application, which makes no mention of
universities or other institutional purchasers of high-priced systems. The
identification mentions only individuals. The evidence shows that smartphone apps
marketed to individuals are typically sold through the same trade channels. That fact
makes confusion more likely.
Finally, we consider whether the purchasing conditions impact the likelihood of
confusion. The goods identified in the application and in the registration relate to
emergencies. Consumers may exercise more care when selecting such goods. We note,
however, that these are smartphone apps. Applicant submitted evidence showing
hundreds of smartphone apps relating to safety or emergencies. Though we cannot
use that evidence to alter the identification of goods in the record, it does tend to show
that consumers are confronted with hundreds of choices within this market, many of
which appear to be free. This evidence suggests that consumers of these goods may
not exercise as much care as one might otherwise expect. On balance, we cannot say
that the relevant consumers of the type of goods identified in the application and
registration would exercise a greater than average level or care or sophistication.
However, the applicable standard of care for a likelihood-of-confusion analysis is that

27 Id. 20-21.
28 Id.
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of the least sophisticated consumer. Stone Lion Capital Partners, L.P. v. Lion Capital
LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163 (Fed. Cir. 2014) (likelihood of confusion
analysis must consider “the least sophisticated potential purchasers”); Alfacell Corp.
v. Anticancer, Inc., 71 USPQ2d 1301, 1306 (TTAB 2004).
Applicant aggressively argues that its customers are highly sophisticated and
spend a great deal of money on its goods.29 That may be true, but it is not supported
by the goods identified in the application. If Applicant wanted the Office to consider
such facts, it should have amended its application to limit the identification to such
customers or trade channels. Given the broad and general nature of the identification
of Applicant’s goods, we cannot consider the evidence of actual customer
sophistication presented by Applicant. See In re Bercut-Vandervoort & Co., 229 USPQ
763, 764 (TTAB 1986) (evidence that relevant goods are expensive wines sold to
discriminating purchasers must be disregarded given the absence of any such
restrictions in the application or registration).
To summarize our evaluation of these three du Pont factors, we find the goods, as
identified in the application and registration, overlap or are are very similar, a fact
that increases the likelihood of confusion. We further find that such goods are likely
to travel through the same or similar trade channels to the same purchasers, a fact
that also increases the likelihood of confusion. We find the evidence cuts both ways
concerning the sophistication and care of customers, and for that reason, we must

29 4 TTABVUE 19-21.
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consider the least sophisticated consumer. We do not place much weight on the
customer sophistication factor.
C. Strength of the Cited Marks
In identifying “strength” as a single factor, we are combining two of the du Pont
factors.30 “A strong and fanciful mark is entitled to broad protection.” Mishawaka
Rubber & Woolen Mfg. Co. v. Bata Narodni Podnik, 222 F.2d 279, 285 (CCPA 1955);
Nautilus Grp., Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330, 1339 (Fed. Cir. 2004)
(same). “A mark’s strength is measured both by its conceptual strength
(distinctiveness) and its marketplace strength (secondary meaning).” In re
Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010)); see
also Top Tobacco, L.P. v. North Atl. Operating Co., Inc., 101 USPQ2d 1163, 1171-72
(TTAB 2011); Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB
2006); 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition
§ 11:83 (5th ed. 2019). Our focus is on the strength of the senior user, or the registered
mark in this context.
To evaluate the conceptual strength of word marks, we place the mark in one of
the following classes: “(1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or
fanciful. The lines of demarcation, however, are not always bright.” Abercrombie &
Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976). Market strength also

30 In Du Pont, the court identified the fifth and sixth factors as follows: “the fame of the prior
mark” and “the number and nature of similar marks in use on similar goods.” In re E.I. Du
Pont de Nemours & Co., 177 USPQ at 567. These two factors go to the strength of Plaintiff’s
mark and, therefore, are treated together here.
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“varies along a spectrum from very strong to very weak.” Joseph Phelps Vineyards,
LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir.
2017).
There is no evidence of the market strength of the registered ECHO112 mark.
Applicant submitted evidence of applications and registrations that include the word
“echo,” but that is not evidence of current use of the marks.31 Contrary to Applicant’s
assertion, this evidence does not show “wide third-party use of the formative word,
ECHO …”32 “The significance of third-party trademarks depends wholly upon their
usage. Defendant introduced no evidence that these trademarks were actually used
by third parties, that they were well promoted or that they were recognized by
consumers.” Scarves by Vera, Inc. v. Todo Imps., Ltd., 544 F.2d 1167, 192 USPQ 289,
294 (2d Cir. 1976); see also Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La
Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011).
In addition, many of the marks shown in the records submitted by Applicant
involve materially different goods. International Class 9 is quite broad. For evidence
to be relevant to the distinctiveness of a particular term, that evidence must relate to
uses of the term with the same or similar goods. See Omaha Steaks Int’l v. Greater
Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686 (Fed. Cir. 2018) (error to rely
on third-party evidence of similar marks for dissimilar goods, as Board must focus
“on goods shown to be similar”); In re i.am.symbolic, LLC, 123 USPQ2d at 1751

31 Request for Reconsideration at Exh. A.
32 Request for Reconsideration at 36-37.
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(disregarding third-party registrations for other types of goods where the proffering
party had neither proven nor explained that they were related to the goods in the
cited registration); In re Thor Tech Inc., 90 USPQ2d 1634, 1639 (TTAB 2009) (the
third-party registrations are of limited probative value because the goods identified
in the registrations appear to be in fields which are far removed from the goods at
issue). Software alone is an extremely broad genus of goods, but International Class
9 also includes electronic devices. For example, one of the registered marks noted by
Applicant is ADS ECHO for certain electronic devices, not software.33 The word “echo”
was disclaimed in that registration. We offer this example to show the extreme
variance of meaning of words even within International Class 9.
We cannot determine whether the ECHO112 mark has market strength, but it
does have some conceptual strength. The mark is inherently distinctive, and
therefore, at least moderately strong. This fact tends to increase the likelihood of
confusion, but because the evidence on this issue is thin, we place little weight on this
factor in our analysis.
D. Conclusion – There is a Likelihood of Confusion
There is no evidence or substantial argument on any other du Pont factors. We
found the similarity of the marks, the similarity of the goods, and the similarity of
the likely trade channels all suggest that confusion is likely. The registered mark
ECHO112 has some conceptual strength, and while that fact makes confusion a bit
more likely, we put little weight on this fact. The sophistication and customer care

33 Registration Number 5413622.
Serial No. 87411583

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factor was even and does not impact our analysis. We find, therefore, that confusion
is likely and affirm the refusal to register.
Decision: The refusal to register based on Section 2(d) is affirmed.