Sedo.com LLC

Trademark Trial and Appeal Board

Sep 27, 2011

No. 77712757 (T.T.A.B. Sep. 27, 2011)

Mailed: September 27, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sedo.com LLC
_______

Serial No. 77712757
_______

Brian J. Winterfeldt and Abigail Rubinstein of Steptoe &
Johnson for Sedo.com LLC.

Drew Leaser1, Law Office 112 (Angela Wilson, Managing
Attorney).
_______

Before Zervas, Taylor and Mermelstein, Administrative
Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Sedo.com LLC. has filed an application to register on the
Principal Register the mark SEDOMLS (in standard character
format) for services ultimately identified as “asset management
services, namely, auctioning, liquidating and remarketing of
domain names of others; dissemination of advertising for others
via the Internet” in International Class 35; “brokerage and
escrow services for the purchase and sale of domain names,

1 A different examining attorney was responsible for the
application prior to the filing of the brief.

THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB
Ser No. 77712757
2
websites and Internet based businesses; administration of
payment transactions, namely, electronic processing of check,
credit, credit card and debit card payment transactions, and
automatic payment deduction services for customers; clearing and
reconciling financial transactions via the Internet, providing a
financial clearing house for payment transactions via the
Internet, and financial analysis and consultation” in
International Class 36; and “computer programming; application
service provider, namely, hosting computer software applications
of others; electronic delivery of images and photographs via a
global computer network in International Class 42.2
The trademark examining attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), as to the services identified in
International Classes 35 and 36 on the ground that the
mark, when used in connection with those services, is
likely to be confused with the mark MLS, in typed format
and the subject of Registration No. 2496018, for
“consulting and appraisal services in the field of
registration, purchase and sale of businesses based on
global computer networks, domain names for global computer
networks, and/or toll free telephone numbers” in

2 Serial No. 77712757, filed April 13, 2009, and alleging a bona
fide intention to use the mark in commerce.
Ser No. 77712757
3
International Class 35; and “brokerage and escrow services
in the field of registration, purchase and sale of domain
names for global computer networks, businesses based on
global computer networks, and/or toll free telephone
numbers” in International Class 36.3 The examining attorney
also made final a requirement for a “properly amended”
identification of the Class 42 services, on the basis that
the current recitation covers services in different
international classes.4
Applicant appealed and requested reconsideration of
the refusals. The request for reconsideration was denied
on September 20, 2010, and this appeal was resumed on
September 21, 2010. Both applicant and the examining
attorney filed briefs and applicant filed a reply brief.
Before turning to the merits of the appeal, we address
several preliminary matters. First, the examining
attorney, in the final refusal, refused registration as to
all of the services identified in Classes 35 and 36. In
his brief, however, the examining attorney only addresses

3 Issued October 9, 2001; Section 8 Affidavit accepted, Section
15 Affidavit acknowledged.
The examining attorney initially cited the mark in
Registration No. 2507914, ZEDO, as an additional bar to
registration but that refusal was withdrawn.
4 The examining attorney particularly noted that “electronic
delivery of images and photographs via a global computer network”
is properly classified in International Class 38.

Ser No. 77712757
4
certain services in those classes, namely, “asset
management services, namely, auctioning, liquidating and
remarketing of domain names of others” in Class 35 and
“brokerage and escrow services for the purchase and sale of
domain names, websites and Internet based businesses” in
Class 36, indicating the following in footnote 1: This
Section 2(d) refusal does not apply to the remaining
services listed in International Classes 35 or 365 or to the
services listed in International Class 42. Accordingly,
the appeal on the Section 2(d) issue only involves the
Class 35 and 36 services listed above.
We note, next, that applicant, in its reply brief,
amended the Class 42 identification of goods to delete the
wording “electronic delivery of images and photographs via
a global computer network” in accordance with the examining
attorney’s notification that these services are not in
Class 42. The identification now reads: “computer
programming; application service provider, namely, hosting
computer software applications of others.” Accordingly,

5 To be clear, the services not subject to the Section 2(d)
refusal are as follows: “dissemination of advertising for others
via the Internet” in Class 35 and “administration of payment
transactions, namely, electronic processing of check, credit,
credit card and debit card payment transactions, and automatic
payment deduction services for customers; clearing and
reconciling financial transactions via the Internet, providing a
financial clearing house for payment transactions via the
Internet, and financial analysis and consultation” in Class 36.
Ser No. 77712757
5
the requirement for an acceptable identification of goods
is deemed satisfied, and the appeal on this issue is moot.
Last, applicant has submitted for the first time with
its reply brief materials purportedly showing that “it is
universally recognized that “MLS” is an abbreviation for
“multiple listing service.”6 Applicant asserts, with regard
to the submission,
there is no mandatory requirement to have a
complete record prior to filing the notice of
appeal as a matter of law. The Board has
discretion to determine whether considering all
the evidence available best disposes of this
action. Thus even if proof of MLS’s commonly
understood meaning in the marketplace was not
of record before the Notice of Appeal was
filed, the Board may still consider such
evidence in their evaluation[.]

(Reply br. unnumbered p. 7, n.1) Applicant’s assertion is
simply wrong. As set forth in 37 C.F.R. § 2.142(d), “[t]he
record in the application should be complete prior to the
filing of an appeal.” As such, the evidence submitted in

6 These materials include: An article featuring the term
“multiple listing service” from The Free Dictionary
(http://encyclopedia.the freedictionary.com/
Multiple+Listing+Service) and web pages from various websites,
some referencing the term(s) “multiple listing service” and/or
“MLS.” Even if we had considered this evidence, our decision
would have been the same inasmuch as the materials do not show
use of “MLS” in connection with Internet domain name related
services. In addition, it appears that the article “was copied
from an article on Wikipedia” and not based on paper and/or fixed
edition references. See In re IP Carrier Consulting Group, 84
USPQ2d 1028, 1033-34 (TTAB 2007) (“[T]he Board will consider
evidence taken from Wikipedia so long as the non-offering party
has an opportunity to rebut that evidence by submitting other
Ser No. 77712757
6
the first instance with applicant’s reply brief is untimely
and has not been considered in this decision.7 Moreover, to
the extent that applicant is asking that we take judicial
notice of the “fact” that MLS stands for “Multiple Listing
Service,” it is not clear, as discussed infra, that MLS is
so universally recognized, at least in connection with
domain names.
Turning then to the merits of the appeal, the
examining attorney contends that confusion is likely
because “the applied-for mark incorporates the registered
mark in its entirety, both Applicant and the registrant
offer closely related if not identical domain name
services, and Applicant’s and the registrant’s trade
channels overlap.” Br. unnumbered p. 11.
Applicant, on the other hand, contends that when the
marks are considered in their entireties, they are
dissimilar; that the addition of its house mark to the
suffix MLS creates an entirely different commercial

evidence that may call into question the accuracy of the
particular Wikipedia information.”
7 We note that applicant’s submission included copies of four
registrations for marks that include “MLS” taken from the TARR
database of the USPTO. These registration copies were made of
record during the prosecution of the application and,
accordingly, have been considered in our decision.

Ser No. 77712757
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impression than the use of the letters MLS alone; that
“MLS” is weak and descriptive when used in connection with
services related to providing listings of databases; that
the relatedness of the services is outweighed by the
differences between the marks; and, thus, there is no
likelihood of confusion between applicant’s mark and the
cited mark.
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., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks
and the similarities between the goods and/or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
Relatedness of Services/Channels of Trade/ Conditions of
Sale

Considering first the relatedness of the services, it
is well-settled that the question of likelihood of
confusion must be determined based on an analysis of the
services recited in applicant’s application vis-à-vis the
Ser No. 77712757
8
services recited in the cited registration. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1783 (Fed. Cir. 1992); and The Chicago Corp. v. North
American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
Furthermore, where the services in an application or cited
registration are broadly described, such that there are no
restrictions as to trade channels and purchasers, it is
presumed that the identification of services encompasses
not only all services of the nature and type described
therein, but that the identified services are provided in
all channels of trade which would be normal therefor, and
that they would be purchased by all potential customers
thereof. See, e.g., In re Elbaum, 211 USPQ 639 (TTAB
1981).
We find, on the face of the respective recitations,
that applicant’s “asset management services, namely,
auctioning, liquidating and remarketing of domain names of
others” are closely related and/or complementary to the
registrant’s “consulting and appraisal services in the
field of registration, purchase and sale of businesses
based on global computer networks, domain names for global
computer networks, and/or toll telephone numbers,” as both
are integral to the purchase and sale of domain names.
Indeed, a consumer looking to buy or sell a domain name via
Ser No. 77712757
9
applicant’s auction, liquidation or remarketing services
could engage registrant as either a consultant to the
transaction or as an appraiser of the domain names. We
further find applicant’s “brokerage and escrow services for
the purchase and sale of domain names, websites and
Internet based businesses” legally identical to the
registrant’s “brokerage and escrow services in the field of
registration, purchase and sale of domain names for global
computer networks, businesses based on global computer
networks.”
In addition, to bolster his position with regard to
the relatedness of the services, the examining attorney has
made of record copies of several use-based, third-party
registrations showing that a single entity has registered
the same mark for services of the type identified in both
applicant’s application and the cited registration. Third-
party registrations that individually cover different items
and that are based on use in commerce serve to suggest that
the listed goods and services are of a type that may
emanate from a single source. See Mucky Duck Mustard Co.,
6 USPQ2d 1467, 1470 n.6 (TTAB 1988) (Although third-party
registrations are “not evidence that the marks shown
therein are in use on a commercial scale or that the public
is familiar with them, [they] may nonetheless have some
Ser No. 77712757
10
probative value to the extent that they may serve to
suggest that such goods or services are of a type which may
emanate from a single source”). See also In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993).
Some of these registrations include, by way of
example:
Registration No. 2569570 for, inter alia,
“Procurement services in the field of network
domain names” and “Brokerage services in the
filed of computer network domain names”;

Registration No. 2636863 for, inter alia, “Retail
services in the field of network domain names”
and “Brokerage services in the field of computer
network domain names”;

Registration No. 3671294 for, inter alia,
“auctioneering services for domain names on the
Internet and other computer networks” and
“brokerage and escrow services relating to the
purchase and sale of domain names, websites and
Internet based businesses”; and

Registration No. 3568651 for, inter alia,
“brokerage in the field of Internet domain names”
and “services relating to the analysis,
evaluation, creation and brand establishment of
domain names.

Based on the nature of the services and the evidence
of record, we conclude that applicant’s and the
registrant’s respective services are identical or otherwise
closely related domain name services that are commonly
offered under the same mark by a single entity. Indeed,
applicant is conspicuously silent on the issue.
Ser No. 77712757
11
Further, in the absence of any limitations in the
identifications as to channels of trade and classes of
purchasers in the application and the cited registration,
we must presume, at least with regard to the legally
identical brokerage and escrow services for the purchase
and sale of domain names, websites and Internet based
businesses, that they will be offered in the same channels
of trade and to the same classes of purchases. As for
the remaining services, we must presume that they will
be purchased in the usual channels of trade for those
services and by the usual classes of purchasers for those
services, including those looking to buy or sell a domain
name. Thus, at a minimum, the classes of purchasers
overlap. In re Elbaum, supra.
Although applicant does not dispute the relatedness of
the respective services, channels of trade and classes of
purchasers, it nonetheless contends that the respective
services are highly sophisticated domain name brokerage and
escrow services, as well as asset valuation services, that
are purchased by discriminating and sophisticated consumers
after careful thought and deliberation.
However, the evidence of record fails to support this
assertion. While applicant has submitted at Exhibit 1 of
the Request for Reconsideration titles of press releases
Ser No. 77712757
12
and articles that reference the sale of some domain names
for high prices, the included article from Bloomberg
Businessweek points out:
[T]he average price for a domain name is under
$2,000. If you coin a domain name and nobody
else has ever thought of it, you can register
it for about $10 annually.
…
People buy domain names and keep them because
there’s not much cost associated with them….

Karen E. Klein, The Domain Name Business: Sedo’s Jeremiah
Johnston explains how entrepreneurs can acquire, improve,
and sell domain names, Bloomberg Businessweek (July 17,
2009). Also of record are web pages from various websites,
(e.g., www.uploadalbum.com, www.ehow.com/how_2114_register-
domain-name.html, www.smallbusiness.yahoo.com/domains/,
www.hostsearch.com/lab_domain_registrations.asp) which
discuss domain name acquisition and registration. The web
pages include listings of various domain name providers,
such as NameCheap.com, GoDaddy.com and Registerfly.com, who
offer domains for an average annual cost of around $10.
Moreover, even if we assume that purchasers of
applicant’s and registrant’s domain name related services
exercise some degree of care in their purchasing decisions,
even careful purchasers can be confused as to source,
where, as here, very similar marks are used in connection
Ser No. 77712757
13
with identical and closely related services. See In re
Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50
(Fed. Cir. 1986) citing Carlisle Chemical Works, Inc. v.
Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112
(CCPA 1970) ("Human memories even of discriminating
purchasers … are not infallible.").
In view of the above, the du Pont factors of the
relatedness of the services, channels of trade and classes
of purchasers favor a finding of likelihood of confusion,
while the du Pont factor of conditions of sale is neutral.
The Marks
We next compare the marks and note that when marks would
appear on, in part, identical services, as they do here, the
degree of similarity necessary to support a conclusion of likely
confusion declines. Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992). In determining the similarity or dissimilarity of the
marks, we must consider the marks in their entireties in terms
of sound, appearance, meaning and commercial impression. See
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005). 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 that
Ser No. 77712757
14
confusion as to the source of the services offered under the
respective marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains a
general, rather than a specific impression of trademarks. See
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Comparing the marks in this case, applicant’s SEDOMLS mark
consists of registrant’s mark, MLS, plus applicant’s assertedly
“famous house mark”8 SEDO. Applicant’s mark encompasses the

8 While applicant has included some evidence (e.g., excerpts
from unsolicited media accounts and documents showing
sponsorships of industry conferences), to support its position
that its house mark SEDO is famous, the evidence, though
demonstrating some notoriety in that mark, falls far short of
establishing fame. In any event, even if applicant had
demonstrated that its SEDO mark is famous, such fame would
exacerbate, rather than obviate, the likelihood of confusion
between applicant’s mark and the cited registered mark. See
e.g., In re Hill-Behan Lumber Company, 201 USPQ 245, 249-250
(TTAB 1978) (HILL-BEHAN’S LUMBER JACK for hardware and lumber
yard services confusingly similar to LUMBERJACK for finished
lumber products). See also, In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687, 1690 (Fed. Cir. 1993). In Shell, the court made
clear that “[t]he trademark law not only protects the consumer
from likelihood of confusion as to commercial sources and
relationships, but also protects the registrant and senior user
from adverse commercial impact due to use of a similar mark by a
newcomer,” and further described the possible impact as “reverse
confusion” explaining:
The term “reverse confusion” has been used to describe
the situation where a significantly larger or
prominent newcomer “saturates the market” with a
trademark that is confusingly similar to that of a
smaller, senior registrant for related goods or
services. The junior user does not seek to benefit
from the goodwill of the senior user; however, the
senior user may experience diminution or even loss of
its mark's identity and goodwill due to extensive use
of a confusingly similar mark by the junior user.
The avoidance of confusion between users of disparate
size is not a new concept; however, the weighing of
the relevant factors must take into account the
Ser No. 77712757
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registered mark in its entirety; the only difference between the
two being the addition of SEDO to applicant’s mark. It is
generally held that the addition of a house mark or other such
matter to one of two otherwise confusingly similar mark will not
serve to avoid a likelihood of confusion.9 See, generally, In re
Christian Dior, S.A., 225 USPQ 533 (TTAB 1985) (LE CACHET DE
DIOR for shirts confusingly similar to CACHET for dresses); In
re Riddle, 225 USPQ 630 (TTAB 1985) (RICHARD PETTY’S ACCU TUNE
for automotive service centers confusingly similar to ACCUTUNE

confusion that may flow from extensive promotion of a
similar or identical mark by a junior user. In
considering likelihood of confusion as to the source
of services that are not identical, or likelihood of
confusion as to whether there is a relation between
the source of the services, the extent of the
registrant's and the newcomer's activities relating to
the mark must be given weight appropriate to the
circumstances.
(Citations omitted.)

9 Applicant asserted in its reply brief that this statement of
the law is incorrect. Citing to the treatise McCarthy’s on
Trademark and Unfair Competition, as well as to a number of cases
allegedly supporting the position, applicant asserts instead
that: “[t]he most that can be said as a generalization is that a
junior user’s addition of a house mark to a possibly infringing
mark of a senior user has the potential to reduce or eliminate
likelihood of confusion.” 4 McCarthy’s on Trademark and Unfair
Competition, at Section 23:43 (4th ed) (emphasis added by
applicant). We do not find this statement necessarily at odds
with the general proposition, but rather, that it supports the
exceptions to the general rule. Notably, the statement was made
in regard to a possibly infringing mark. As regards the cases,
as it often noted by the Board and the Courts, each case must be
decided on its own merits. See In re Nett Designs, Inc., 236
f.3d 1339, 51 USPQ2d 1564, 1566 (Fed. Cir. 2001). We similarly
also point out that the issue of likelihood of confusion before
the Board concerns registrability rather than infringement. For
this reason, the infringement cases cited by applicant are
readily distinguishable.
Ser No. 77712757
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for automotive testing equipment); and Key West Fragrance &
Cosmetic Factory, Inc. v. Mennen Co., 216 USPQ 168 (TTAB 1982)
(MENNEN SKIN SAVERS for hand and body lotion confusingly similar
to SKIN SAVERS for face and throat lotion).
However, there are exceptions to this general principle.
For example, the additional matter may be sufficient to
distinguish the mark in situations where the appropriated matter
is highly suggestive or merely descriptive of the identified
goods or services (e.g., Knight Textile Corp. v. Jones
Investment Co., 75 USPQ 1313 (TTAB 2005) (NORTON MCNAUGHTON
ESSENTIALS not confusingly similar to ESSENTIALS for identical
clothing where evidence established that ESSENTIALS is highly
suggestive for clothing); or where the marks in their entireties
convey significantly different meaning or commercial impressions
(e.g., Lever Brothers Company v. The Barcolene Company, 463 F.2d
1107, 174 USPQ 392 (CCPA 1972) (finding “ALL CLEAR!” a play on
an expression popularized in connection with air raid drills,
not confusingly similar to ALL, both for household cleaning
products).
It is applicant’s apparent position that these exceptions
are applicable here. Accordingly to applicant, “[g]iven the
weakness of the term ‘MLS’ when used in connection with listing
or database services, … consumers will look to other, more
dominant potions of its mark – namely, the component SEDO – to
Ser No. 77712757
17
distinguish the sources of Applicant’s services” and that “the
addition of SEDO to MLS does create a specific commercial
impression in the minds of consumers, namely a service provided
by Sedo, the world famous domain name auction and brokerage
service, which is something that MLS alone does not and cannot
create.” Reply br. unnumbered pp. 8 and 3-4, respectively.
The only evidence of record to support applicant’s position
that the cited MLS mark is weak is a list (consisting of the
serial and registration numbers, the mark, and whether the
application or registration is “Live” or “Dead”) of 155 live
applications and registrations for marks that include the term
“MLS” obtained from the TESS database of the USPTO, and
printouts of four of the listed registrations.10 The
registrations include: Registration No. 2874299 for the mark
MLS REALTY for, inter alia “real estate listing, advertising and
brokerage services” and other related real estate services;
Registration No. 3119441 for the mark BAREIS MLS (MLS
disclaimed) for “providing a database of real estate listings,
real estate statistics and other real estate information and
Registration No. 3038087 for the mark HEARTLAND MLS (MLS
disclaimed) for “Real estate listing and brokerage services” and
other real estate related services; and Supplemental Register

10 As indicated at footnote 1, the evidence submitted with
applicant’s reply brief has not been considered.
Ser No. 77712757
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Registration No. 3314994 for the mark TIMESHARE MLS for
“advertising and marketing.”
We find applicant’s evidence unpersuasive. As regards
the list, we observe that while this evidence is in an
improper format, it nonetheless was timely filed and,
moreover, because the initial examining attorney did not
object to this list or advise applicant that copies of the
registrations were necessary, we will consider it as being
of record. See TMBP § 1207.03 (3rd ed. 2011). However, a
mere listing of third-party marks, without any accompanying
indication of the goods and/or services associated
therewith, has virtually no probative value. See TBMP
§ 1208.02 (3rd ed. 2011), and the authorities cited therein.
Further, the pending applications identified in the lists
are also of no value. See Interpayment Services Ltd. v.
Docters & Thiede, 66 USPQ2d 1463 (TTAB 2003)(applications
show only that they have been filed).
As regards the third-party registrations, while they
are not evidence that the registered marks are actually in
use, they may be given some weight to show the meaning of a
mark, or a term in the mark, in the same way that
dictionaries are used. In re Box Solutions Corp., 79
USPQ2d 1953, 1955 (TTAB 2006) (“[T]hird-party registrations
can be used in the manner of a dictionary definition to
Ser No. 77712757
19
illustrate how a term is perceived in the trade or
industry”). First, the marks are not as similar to the
cited mark as is applicant’s mark and the services
identified in those registrations are for real estate
related services and not domain name related services, and
there is no evidence that MLS is used by others in relation
to domain name services. Second and more importantly, four
registrations are hardly sufficient to establish that there
is an inherent weakness in the term MLS. Even if these
four registrations could have established that MLS is
suggestive of real estate related services, and they cannot
as they do not evidence use, this would hardly establish by
itself that MLS is weak for domain name related services.
SBS Products Inc. v. Sterling Plastic & Rubber Products
Inc., 8 USPQ2d 1147, 1149 n.6 (TTAB 1988) (“Even if
evidence of such third-party uses were submitted, it would
be of no aid to respondent herein where the third-party
usage was for goods unrelated to either petitioner’s skin
care products or respondent’s stuffing box sealant.”).
Further, although applicant asserts that MLS in its
mark stands for “multiple listing service” and further,
that it is descriptive in relation to applicant’s goods,11

11 We point out the applicant affirmatively stated that
“Applicant does not claim that the term ‘MLS’ is descriptive of
Ser No. 77712757
20
this statement, which is unsupported by the record, is
accordingly of little value to our understanding of the
meaning of MLS with respect to registrant’s cited mark.
Indeed, applicant acknowledges that “[t]here is nothing
that indicates consumers understand a specific commercial
impression of the cited mark in the record.” Reply br.
unnumbered page 3.
While the Board has, in likelihood of confusion cases,
given weight to evidence of widespread and significant use
by third parties of marks containing elements in common
with the involved marks to demonstrate that confusion is
not likely to occur,12 the record is devoid of any evidence
of such third-party use that would establish that “MLS” has
been diluted in the field of domain name related services.
See e.g., Broadway Chicken Inc., 38 USPQ2d 1559 (TTAB 1996)
(Broadway weak for restaurant services based on evidence
that hundreds of restaurants and eating establishments use
that word.).
Simply put, applicant has not established even that
MLS will be perceived by relevant consumers as meaning
“multiple listing service” in the field of domain name

domain name services, but rather ‘MLS’ is widely used in
connection with services that provide multiple listings.” Reply
br. unnumbered p. 9.
12 See e.g., Miles Laboratories Inc. v. Naturally Vitamin
Supplements Inc., 1 USPQ2d 1445, 1462 (TTAB 1987).
Ser No. 77712757
21
services. However, even if it were so perceived, applicant
has not established that MLS is highly suggestive and
otherwise weak for any type of service, much less domain
name services, such that applicant may incorporate
registrant’s entire distinctive mark and overcome confusion
by adding SEDO. As such, this is not a situation where the
addition of a house mark to one of two otherwise similar
marks would avoid likelihood of confusion between them.
Because the identical term MLS is registrant’s entire
distinctive mark and forms a significant portion of
applicant’s mark, we find the marks as a whole are similar
in appearance, sound, connotation and commercial
impression. Contrary to applicant’s contention, the
commercial impressions of the two marks are not
significantly different. Purchasers familiar with
registrant’s mark MLS as used in connection with the
identified domain name services are likely to assume that
the house mark SEDO simply identifies what had previously
been an anonymous source for those services. See In re
Fiesta Palms LLC, 85 USPQ2d 1360 (TTAB 2007).
The du Pont factor of similarity of the marks thus
favors a finding of likelihood of confusion.
Last, even if we had any doubts as to the likelihood
of confusion, we would resolve them, as we must, in
Ser No. 77712757
22
registrant’s favor. In re Hyper Shoppes (Ohio), Inc., 837
F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
As discussed above, having found the marks similar,
the services in part identical or otherwise closely
related, and that the services move in identical and/or
overlapping trade channels and are available to overlapping
purchasers, we conclude that applicant’s mark SEDOMLS for
“asset management services, namely, auctioning, liquidating
and remarketing of domain names of others” in Class 35 and
“brokerage and escrow services for the purchase and sale of
domain names, websites and Internet based businesses” in
Class 36 is likely to cause confusion with the cited
registered mark MLS when used in connection with the
recited services.

Decision: The refusal to register under Section 2(d)
is affirmed as to the services identified as “asset
management services, namely, auctioning, liquidating and
remarketing of domain names of others” in Class 35 and
“brokerage and escrow services for the purchase and sale of
domain names, websites and Internet based businesses” in
Class 36.
The application file will be forwarded for publication
as to the remaining services in International Classes 35
Ser No. 77712757
23
and 36 and the services identified in International Class
42 (as amended), namely:
“dissemination of advertising for others via the
Internet” in International Class 35;

“administration of payment transactions, namely,
electronic processing of check, credit, credit card
and debit card payment transactions, and automatic
payment deduction services for customers; clearing and
reconciling financial transactions via the Internet,
providing a financial clearing house for payment
transactions via the Internet, and financial analysis
and consultation” in International Class 36; and

“computer programming; application service provider,
namely, hosting computer software applications of
others” in International Class 42.