ScanSource, Inc.

Trademark Trial and Appeal Board

Nov 14, 2014

No. 85843230 (T.T.A.B. Nov. 14, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
November 14, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re ScanSource, Inc.
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Serial No. 85843230
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J. Rhoades White, Jr. and Neil M. Batavia of Dority & Manning, Attorneys at Law,
P.A. for ScanSource, Inc.

Tejbir Singh, Trademark Examining Attorney, Law Office 106 (Mary I. Sparrow,
Managing Attorney).
_____

Before Shaw, Greenbaum and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
ScanSource, Inc. (“Applicant”) has filed an application1 to register on the Principal
Register the mark SUMOPARTNER in standard characters for the following
services:
Providing on-line forums for transmission of messages
among registered users, including vendors, resellers,
independent software companies, manufacturers, and
other companies, through a web portal to allow for

1 Application Serial No. 85843230, filed February 7, 2013 under Trademark Act § 1(a), 15
U.S.C. § 1051(a), claiming August 27, 2012 as the date of first use and the date of first use
in commerce.
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formation of business relationships and partnerships, in
International Class 38.
The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as used
in connection with Applicant’s services, so resembles the mark shown below as to be
likely to cause confusion, or to cause mistake, or to deceive.

The cited mark is registered in standard character form for a wide range of goods
and services in International Classes 9, 38, 41, 42, and 45.2 Most relevant, for
purposes of the Examining Attorney’s refusal, are the services in Class 38, which
are:
Telecommunication services, namely, providing access to
the Internet; providing electronic telecommunication
connections; telecommunication access services; computer
aided transmission of messages and images;
communications via and/or between computers and
computer terminals; information about
telecommunication; satellite transmission services;
electronic data transmission services, electronic data
transfer services and providing access to on-line
databases, particularly in the field of boat location and
fishing; localization-based telecommunication services,
namely, services for the location of boats and fish species
management, namely, services of sonar and radar in the
nature of information transmission by remote detection
means.

2 Registration No. 3896552 issued December 28, 2010, as an extension of protection of
International Registration No. 1018862.
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When the refusal was made final, Applicant filed a request for reconsideration,
which the Examining Attorney denied. This appeal ensued. Applicant and the
Examining Attorney have filed briefs.
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion as set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods and services at issue. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In the present case,
Applicant and the Examining Attorney also have presented evidence and
arguments relating to the sophistication of customers and the level of care exercised
by them; the strength of Registrant’s mark; and relevant channels of trade.
(a) The marks.
First we consider the similarity or dissimilarity of the marks at issue in their
entireties as to appearance, sound, connotation and commercial impression. See
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). While we consider each mark in its
entirety, 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 that our ultimate
conclusion rests upon a comparison of the marks in their entireties. In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
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Applicant’s mark incorporates the entirety of the cited registered mark SUMO as
its initial component. To the extent that both marks include the term SUMO, they
are similar in appearance, sound, and meaning. Nonetheless, we acknowledge the
differences in sound, meaning and appearance that arise from the additional
component -PARTNER in Applicant’s mark.
Applicant’s mark, unlike the registered mark, consists of a relatively long string
of letters. Although it is presented as a single “word,” customers would readily
perceive that it is, in fact, composed of two common words, “sumo” and “partner.”
The meanings of these component elements, which are common words known to the
general public, would be readily apprehended by customers. The SUMO- component
of Applicant’s mark is the more distinctive component because -PARTNER is highly
suggestive of Applicant’s services, which are “forums … to allow for formation of
business … partnerships.” The SUMO- component also makes a stronger
impression because it is the initial component of Applicant’s mark, and it is often
the first part of a mark which is most likely to be impressed upon the mind of a
purchaser and remembered. Palm Bay Imports Inc., 73 USPQ2d at 1692 (“Veuve” is
the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the
first word in the mark and the first word to appear on the label); Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992) (upon encountering the marks, consumers will first notice the identical
lead word).
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Applicant argues that its mark creates the impression of “a large… partner or
network of partners with whom the purchasers may conduct business”; while the
registered mark is intended to suggest the words “Superior Modeling,” as is
revealed on Registrant’s website.3 This argument is unavailing, in part because
Applicant has not made of record any part of Registrant’s website. However, even if
Registrant’s mark were promoted as having the meaning proposed by Applicant, the
additional, ordinary meaning of “sumo” would still be apparent to those who see the
mark.4 Accordingly, the primary commercial impression created by both marks is
the suggestion of a contestant in a sumo wrestling match.
Considering the overall commercial impressions that arise from the appearance,
sound and meaning of the two marks, we find that the similarities outweigh the
differences and, accordingly, we find that the du Pont factor of the similarity or
dissimilarity of the marks weighs in favor of a finding of likelihood of confusion.
(b) The strength or weakness of Registrant’s mark.
Applicant argues that the term SUMO “is so commonly used that the public is
accustomed to looking at other elements to distinguish one source from another.”
Applicant refers to nine third-party registrations of marks that include the term

3 Applicant’s brief at 10, 7 TTABVUE 11.
4 “Sumo” is “a form of wrestling in Japan, … contestants usually being men of great height
and weight.” Dictionary.com Unabridged, Random House, Inc. (accessed August 11, 2014).
As requested by the Examining Attorney, we take judicial notice of this definition, which
was attached to the Examining Attorney’s brief, 9 TTABVUE 16. 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 have regular fixed editions. In
re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
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SUMO, arguing that the cited mark “is entitled to only a narrow scope of protection
that should not be extended beyond the identical mark for identical services.”5
Applicant has not, however, made the nine third-party registrations of record.
“Mere listings of registrations … are not sufficient to make the registrations of
record.” TBMP 1208.02, citing In re Hoefflin, 97 USPQ2d 1174, 1177 (TTAB 2010);
In re Dos Padres Inc., 49 USPQ2d 1860, 1861 n.2 (TTAB 1998). Even if the
registrations were of record, third-party registrations cannot, alone, demonstrate
that a term “is so widely used in the parties’ industry” because they are not
evidence of actual use at all. Such registrations “provide no basis for saying that the
marks so registered have had, or may have, any effect at all on the public mind so
as to have a bearing on likelihood of confusion.” Smith Bros. Mfg. Co. v. Stone Mfg.
Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973); Productos Lacteos Tocumbo
S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011).
The relevant factor, for purposes of our analysis, is “[t]he number and nature of
similar marks in use on similar goods [and services].” In re E.I. du Pont de Nemours,
177 USPQ at 567 (emphasis added). Third-party registrations, without evidence of
actual use of the marks, provide no basis upon which to consider this factor.
Accordingly, there is no reason for us to consider the cited mark to be weak. To the
contrary, the term SUMO is arbitrary and, accordingly, inherently strong as applied
to the services of both Applicant and Registrant.

5 Applicant’s brief at 13, 7 TTABVUE 14.
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(c) The services.
We next consider the similarity or dissimilarity of the services of Applicant and
Registrant. We first address Applicant’s argument that all of Registrant’s Class 38
services are limited in nature to “services for the location of boats and fish species
management.”6 Some of Registrant’s services are indeed identified as being “in the
field of boat location and fishing”; or as being in the nature of “localization-based
telecommunication services.” However, as the Examining Attorney points out, these
limiting clauses do not apply to all of the Class 38 services listed in the
registration.7 In In re Midwest Gaming & Entertainment LLC, 106 USPQ2d 1163
(TTAB 2013), the Board explained that “[u]nder standard examination practice, a
semicolon is used to separate distinct categories of goods or services,” finding in that
case that where a type of service was separated by a semicolon from a limiting
clause, the identified service was “not connected to nor dependent on the [limiting
clause] set out on the other side of the semicolon.” We acknowledge that some
identifications of goods and services may contravene this general rule, such that one
may have to combine wording on both sides of a semicolon in order to derive any
clear meaning from the identification. This is not such a case. The wording that
describes each of the Class 38 services is intelligible and apparently complete,
without any need to cross the “boundary” created by the semicolon. Accordingly,
even though many of the services identified in the Registration are identified as

6 Applicant’s brief at 15-16, 7 TTABVUE 16-17.
7 Examining Attorney’s brief, 9 TTABVUE 10.
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relating to “location of boats and fish species management,” we do not interpret all
of the Class 38 services as limited to these fields.
The Examining Attorney contends that some of Registrant’s services are identified
with sufficient breadth to encompass those of Applicant:
Registrant’s computer-aided message transmission and
communications via and/or between computers and
computer terminals are not limited to a particular field,
and the scope is so broad as to include any type of
message transmission or computer communication. Both
applicant and registrant are providing message
transmission type services. The registrant’s services
encompass applicant’s message transmission through on-
line forums.8
We agree that Registrant’s “computer aided transmission of messages and
images” is sufficiently broad to encompass Applicant’s “Providing on-line forums for
transmission of messages….,” even though Applicant’s service is, by its terms, more
specific and limited than that of Registrant. As part of our analysis, we must
presume that the services of Registrant encompass all services of the types
identified in the registration. See Canadian Imperial Bank of Commerce, N.A. v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987); Octocom
Sys. Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981), citing Kalart Co.,
Inc. v. Camera-Mart, Inc., 119 USPQ 139 (CCPA 1958). Accordingly, as the
Examining Attorney argues, Registrant’s message transmission services could
include operation of forums for transmission of messages.

8 Examining Attorney’s brief, 7 TTABVUE 12.
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In order to further demonstrate that the services of Applicant and Registrant are
commercially related, the Examining Attorney has submitted a number of third-
party service mark registrations.9 Third-party registrations which individually
cover a number of different services and are based on use in commerce may have
some probative value to the extent that they serve to suggest that the listed services
are of a type which may emanate from the same source. In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1785-1786; In re Mucky Duck Mustard Co. Inc., 6 USPQ2d
1467, 1470 n.6 (TTAB 1988). Some of the registrations proffered by the Examining
Attorney are not based on use in commerce;10 accordingly, we have given them no
consideration. We give certain other registrations less than full weight because the
identified services are limited to specific fields of business and information, and in
that regard they differ from the services of Applicant and Registrant. However, we
have noted the following registrations, all of which cover (among other services)
general transmission of messages and operation of forums for transmitting
messages, without limitations of subject matter:
Reg. No. 4372441 Computer aided transmission of messages and images;
Providing on-line forums for transmission of messages among
computer users.
Reg. No. 4400109 Computer-aided transmission of messages and images;
Providing on-line forums for transmission of messages among
computer users.

Reg. No. 4332526 Computer-aided transmission of messages; Providing on-line
forums for transmission of messages among computer users.

9 Office Action of December 5, 2013 at 7-72.
10 Reg. Nos. 4251948; 3953311; 4390331; and 4417047.
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Reg. No. 4440676 Computer-aided transmission of messages; Providing on-line
forums for transmission of messages among computer users.

Reg. No. 4392712 Electronic transmission of messages and data; providing on-line
forums for transmission of messages among computer users.

Reg. No. 3500382 Electronic message transmission. Providing on-line chat rooms
and electronic bulletin boards for transmission of messages
among users in the field of general interest.

Applicant argues that its services are distinct from those of Registrant. Applicant
describes its service as an “online network designed to help vendors, resellers,
independent software companies (ISVs), and other companies form valuable
business partnerships…”; as “a tool by which community members can connect with
one another through the web portal to learn of possible ways to compliment one
another’s businesses”; and “an international online search tool that helps users
extend their reach and compete for larger deals through other community
members.”11 Applicant’s argument emphasizes the specific purposes to which its
service may be put. However, Registrant’s service of “computer aided transmission
of messages” is not limited to any specific purpose or subject matter and, as we have
discussed above, is sufficiently broad to encompass services similar to those of
Applicant. Overall, we find that the du Pont factor of the similarity or dissimilarity
of the services favors a finding of likelihood of confusion.

11 Applicant’s brief at 15, 7 TTABVUE 16.
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(d) Consumers and trade channels.
Applicant argues that Applicant and Registrant “each have different consumers
and each market their services through different trade channels.”12 However,
Applicant has offered no evidence to support any finding as to the channels of trade
through which either Applicant or Registrant markets and advertises its services. It
is apparent from Applicant’s identification of services that its services are directed
to business people, such as “vendors, resellers, independent software companies,
manufacturers, and other companies”; however, there is no reason to believe that
such persons and entities are not within the class of customers for Registrant’s
messaging services.
Also unsupported is Applicant’s contention that its customers are “discerning and
discriminating,” that they are “sophisticated business personnel who look to
Applicant’s product to connect with other sophisticated business personnel and
learn of possible ways to compliment one another’s businesses,” and that they “seek
a very specific result and great care is invariably taken.”13 Although Applicant’s
service is, as identified, directed to businesses and business people, in the absence
of evidence we cannot make a meaningful finding as to their sophistication or the
degree of care that they exercise.
The Examining Attorney argues that we should presume that the services of
Applicant and Registrant “travel in the same channels of trade to the same class of

12 Id. at 16, 7 TTABVUE 17.
13 Id. at 12, 7 TTABVUE 13.
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purchasers.”14 However, although such a presumption may be appropriate where
the goods or services at issue are identical, the logic supporting such a presumption
breaks down where, as here, the services are not, in fact, identical. In the absence of
evidence, we consider the du Pont factors relating to trade channels, customers, and
conditions of sale to be neutral.
(e) Conclusion.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. In view of the
close similarity of the marks at issue, the distinctiveness of the designation SUMO
as applied to the services at issue, and the degree of similarity between the services,
we find that Applicant’s mark, used in connection with Applicant’s services, so
closely resembles the registered mark as to be likely to cause confusion, mistake or
deception as to the source of Applicant’s services.
Decision: The refusal to register is affirmed.

14 Examining Attorney’s brief, 9 TTABVUE 11.