Sergei Gorlov

Trademark Trial and Appeal Board

Mar 2, 2017

No. 86363818 (T.T.A.B. Mar. 2, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: March 2, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re Gorlov
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Serial No. 86363818

David V. Radack of Eckert Seamans Cherin & Mellott, LLC
for Sergei Gorlov.
Michael Tanner, Trademark Examining Attorney, Law Office 119,
Brett J. Golden, Managing Attorney.
_____

Before Cataldo, Greenbaum, and Gorowitz,
Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
Sergei Gorlov (“Applicant”) seeks registration on the Principal Register of the
mark QWIKSERVE (in standard characters) for
“Computer software in the field of convenience stores and
functioning to allow convenience store customers to order
items from an in-store touchscreen or a mobile device,” in
International Class 9; and
“Providing temporary use of on-line non-downloadable
computer software in the field of convenience stores and
functioning to allow convenience store customers to order
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items from an in-store touchscreen or a mobile device” in
International Class 42.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark so resembles the following registered marks as to be likely to cause
confusion, mistake or deception:2
Registration No. 4363114 for the mark QIKSERVE (in
standard characters)
for: “Computer application software for mobile phones,
namely, software for ordering menu items in a restaurant,
hotel, stadium, or theater” in International Class 9
Registered: July 9, 2013
Owner: QikServe Limited TA QikServe; and

Registration No. 4661981 for the mark QUIKSERVE (in
standard characters)
for: “Point of sale computer terminals; computers with
computer displays for use in restaurant kitchens” in
International Class 9;
“Training services, namely, training restaurant operators
in all facets of restaurant management regarding point of
sales systems, payment card industry (PCI) compliance,
sales, inventory, payroll, and employee scheduling” in
International Class 41; and
“Computer software development in the field of developing
computer programs used by restaurant operators and
franchisors for restaurant management regarding
corporate reporting, inventory management, back office
reporting, home office reporting, cloud-based file storage
and backup, sales, labor, inventory and payroll
management, employee scheduling, and customized

1 Application Serial No. 86363818 was filed on August 12, 2014, based upon Applicant’s
allegation of both first use and first of the mark in commerce, in connection with the goods
and services, under Section 1(a) of the Trademark Act.
2 The Examining Attorney also cited Registration No. 2444029 for the mark QUICKSERVE
for “providing high-speed, high-memory dedicated servers for use by websites with heavy
traffic and databases.” This citation was withdrawn in the second Office Action.
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vendor ordering system, payment card industry (PCI)
compliance and vulnerability scans, anti-virus protection
management; consulting services in the fields of selecting,
implementation and use of point-of-sale computer
hardware systems for others; and technical support
services, namely, troubleshooting in the nature of
diagnosing computer software application problems for
restaurant operators; design and development of point of
sale computer hardware systems and computers with
computer displays for use in restaurant kitchens” in
International Class 42
Registered December 30, 2014
Owner: KSQS, L.L.C. dba QuikServe Solutions.

When the refusal was made final, Applicant appealed. We affirm the refusal.
I. Likelihood of confusion.
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co., Inc., 315
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In considering the evidence of record on
these factors, we keep in mind that “[t]he fundamental inquiry mandated by Section
2(d) goes to the cumulative effect of differences in the essential characteristics of the
goods and differences in the marks.” See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). See also In re Dixie Rests. Inc.,
105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
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A. Registration No. 4661981 for the mark QUIKSERVE (in standard
characters)
1. Similarity or dissimilarity of the marks.
To determine the similarity of the marks, we must consider the appearance,
sound, connotation and commercial impression of the marks at issue. Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005). The proper test is not a side-by-side comparison
of the marks, but instead ‘whether the marks are sufficiently similar in terms of their
commercial impression’ such that persons who encounter the marks would be likely
to assume a connection between the parties.” Coach Servs., Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted).
Applicant’s mark, QWIKSERVE and the cited mark, QUIKSERVE differ by only
one letter – “w” in Applicant’s mark and “u” in the cited mark. They are both phonetic
equivalents of “quick serve.”
As such, the marks are identical in sound, connotation and commercial
impression; and very similar in appearance.
2. Strength of the marks.
Applicant contends that “the terms QUICK and SERVE (and phonetic
equivalents) are weak, laudatory and diluted whether used separately or in
combination, to designate software used in the hospitality industry,”3 and are
therefore entitled to a narrow scope of protection. This contention is based on “two

3 Appeal Brief, 4 TTABVUE 3.
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registrations cited in the refusal … and on other references cited by the Trademark
Examining Attorney during the prosecution of this application.”45 Two registrations
for phonetically equivalent marks are not sufficient to establish that the mark is
diluted or weak and thus, we find Applicant’s argument unpersuasive. Cf. Jack
Wolfskin Ausrustung Fur Draussen GmbH v. New Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (third-party weakness evidence
characterized as “voluminous”). Furthermore, on this record we are not privy to the
circumstances giving rise to the registration of the two cited marks or the third cited
and subsequently withdrawn mark. Finally, as has often been said, we simply are not
bound by the decisions of examining attorneys. The Board must make its own findings
of fact, and that duty may not be delegated by adopting the conclusions reached by
an examining attorney. In re Cordura Rests., Inc., 119 USPQ2d 1832 (Fed. Cir. 2016);
In re Nett Designs, Inc., 57 USPQ2d 1564 (Fed. Cir. 2001); In re Sunmarks, Inc., 32
USPQ2d 1470 (TTAB 1994).
Moreover, Applicant has submitted no evidence or argument in support of its
contention that the marks are “laudatory.”
While no evidence has been submitted establishing the strength of the marks, we
find that the marks are suggestive, and therefore somewhat weak, in that they imply
that the goods and services facilitate quick service for the customers. However, “even
weak marks are entitled to protection against registration of similar marks,

4 Id.
5 “Other references” refers to Registration No. 2444029, discussed at n. 2, supra.
Serial No. 86363818

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especially identical ones, for related goods and services.” In re Colonial Stores, 216
USPQ 793, 795 (TTAB 1982); See also, In re Max Capital Group., 93 USPQ 1243,
1246 (TTAB 2010).
3. Similarity or dissimilarity of the goods and services.
Next, we look at the similarity of the goods and services, the channels of trade,
and the class of customers. When determining the relationship between the goods
and services,
[i]t is well settled that the issue of likelihood of confusion
between applied-for and registered marks must be
determined on the basis of the goods as they are identified
in the involved application and cited registration, rather
than on what any evidence may show as to the actual
nature of the goods [and services], their channels of trade
and/or classes of purchasers.
In re Total Quality Group Inc., 51 USPQ2d 1474, 1476 (TTAB 1999). See also Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161-62 (Fed. Cir. 2014).
Applicant’s goods and services are identified as:
“Computer software in the field of convenience stores and
functioning to allow convenience store customers to order
items from an in-store touchscreen or a mobile device”; and
“Providing temporary use of on-line non-downloadable
computer software in the field of convenience stores and
functioning to allow convenience store customers to order
items from an in-store touchscreen or a mobile device.”
The goods in Registration No. 4661981 are identified as:
“Point of sale computer terminals; computers with
computer displays for use in restaurant kitchens.”
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The Examining Attorney asserts that the point of sale computer terminals
identified in the registration are related to Applicant’s goods and services,
particularly because “the registrant’s point of sale computer terminals are not limited
to being used only in restaurants or the back of restaurant kitchens … because the
identification of ‘point of sale computer terminals’ has no limitation as to the type,
kind, channel of trade, or class of purchaser for the goods.” Examining Attorney Brief,
6 TTABVUE 15.
A terminal is defined as:
“Computers. any device for entering information into a
computer or receiving information from it, as a keyboard
with video display unit either adjoining the computer or at
some distance from it.”6
Applicant’s goods and services consist of software to facilitate ordering products
either by use of a mobile phone or a “touch screen.” A touch screen is
“a touch-sensitive display screen on a computer or other
electronic device: touching different portions of the screen
with a finger or stylus will cause the device to take actions
determined by a computer program.”7
As defined, a touch screen is a type of computer terminal.

6 We take judicial notice of the definition of “terminal” from Dictionary.com.
terminal. Dictionary.com. Dictionary.com Unabridged. Random House, Inc.
http://www.dictionary.com/browse/terminal.

The Board may take judicial notice of dictionary definitions, including online dictionaries
that exist in printed format, In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB
2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016).

7 We take judicial notice of the definition of “touchscreen” from Dictionary.com.
touchscreen. Dictionary.com. Dictionary.com Unabridged. Random House, Inc.
http://www.dictionary.com/browse/touchscreen.

Serial No. 86363818

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Applicant argues that the goods and services are not related because its goods are
software and the goods in the cited registration are hardware. This argument is not
well-taken. Computer hardware and software are related if there is a connection
between them, i.e. similar or related function or use. See Octocom Systems Inc. v.
Houston Computers Servs. Inc., 918 F2d 937, 16 USPQ2d 1783, 1786 (Fed. Cir. 1990).
In this case, since the function of Applicant’s software is to facilitate consumers’
actions which are performed on a touch screen computer terminal, computer
terminals are integral to the function of the software and therefore, Applicant’s
software is related to the registrant’s computer terminals. In addition, the broadly
identified “point of sale computer terminals” identified in the cited registration may
be used to allow convenience store customers to order items using a touch screen.
Thus, Registrant’s goods are further related to the goods and services recited in the
involved application.
4. Conclusion.
After considering all the evidence and argument on the relevant du Pont factors
regarding likelihood of confusion between Applicant’s mark QWIKSERVE (in
standard characters) for “computer software in the field of convenience stores and
functioning to allow convenience store customers to order items from an in-store
touchscreen or a mobile device”; and “providing temporary use of on-line non-
downloadable computer software in the field of convenience stores and functioning to
allow convenience store customers to order items from an in-store touchscreen or a
mobile device” and the cited mark, QUIKSERVE (in standard characters) for “point
of sale computer terminals,” we find that there is a likelihood of confusion.
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B. Registration No. 4363114 for the mark QIKSERVE (in standard
characters).
Having found a likelihood of confusion between Applicant’s mark and the mark in
Registration No. 4363114, it is not necessary for us to address the issue of likelihood
of confusion with Registration No. 4363114. However, for the purpose of
completeness, we will briefly address it.
1. Similarity or dissimilarity of the marks.
As in the prior citation, the marks at issue are very similar in that they are both
phonetic equivalents of the term QUICK SERVE, differing only in Applicant’s use of
QWIK as the spelling of QUICK as opposed to the use of QIK as the spelling of QUICK
in the cited registration. Applicant concedes that the marks are “pronounced
similarly.” Appeal Brief, 4 TTABVUE 3.
As with the previously discussed citation, these marks are also identical in sound,
connotation and commercial impression; and very similar in appearance.
2. Strength of the marks.
As discussed above, the marks are somewhat weak in that they are suggestive.
Applicant contends that the co-existence of the cited registrations is evidence of both
the weakness of the marks and their ability to co-exist. Applicant’s contention
presumes that the prior registration of a particular term should be of some persuasive
authority in handling later applications involving similar marks. However, we are
not privy to the record of the prior proceeding and are bound to make a decision based
on the record before us. Moreover, “the issuance of a registration by an Examining
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Attorney cannot control the result of another case.” In re Sunmarks Inc., 32 USPQ2d
at 1472.
3. Relationship of goods and services.
The goods in Registration No. 4364114 are identified as “computer application
software for mobile phones, namely, software for ordering menu items in a
restaurant, hotel, stadium, or theater.” Applicant’s goods and services consist of
“computer software in the field of convenience stores and functioning to allow
convenience store customers to order items from an in-store touchscreen or a mobile
device,” and “providing temporary use of on-line non-downloadable computer
software in the field of convenience stores and functioning to allow convenience store
customers to order items from an in-store touchscreen or a mobile device.”
To support its position that the relevant goods and services are not related,
Applicant argues that its “goods and services are directed towards different
customers than the customers to whom the Registrant’s mark are directed. In
particular, Applicant’s goods and services are directed towards convenience store
customers, which is not a listed customer on Registrant’s mark.” Appeal Brief, 4
TTABVUE 3. The argument acknowledges the findings of our primary reviewing
court, the Court of Appeals for the Federal Circuit, that in a determination of
likelihood of confusion, the class of customers includes both users and actual
purchasers. In re Shell Oil Co., 992 F2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993)
(quoting Octocom Systems Inc. v. Houston Computers Servs. Inc., 16 USPQ2d at 1787.
Applicant’s argument that the anticipated customer of convenience stores is not
the same as customers of restaurant, hotel, stadium, or theaters, is unsupported.
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Further, there is no evidence such customers would not believe that the software
application that allows them to order food from an in-store touchscreen or a mobile
device does not also offer application software for mobile phones to be used for
ordering food from other venues (restaurants, hotels, etc.).
The goods and services need not be identical or even competitive to find a
likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080,
1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000). The respective goods [and services]
need only be “related in some manner and/or if the circumstances surrounding their
marketing [be] such that they could give rise to the mistaken belief that [the goods
and services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) quoting 7-Eleven Inc.
v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007).
In this case, both Applicant’s goods and services and the goods in the cited
registration have the same function, to facilitate the ordering of food in various
venues. This similarity is sufficient to give rise to the mistaken belief that the goods
and services emanate from the same source. Accordingly, we find that the Applicant’s
goods and services are related to the goods in the cited registration.
4. Conclusion.
As with the citation discussed above, after considering all the evidence and
argument on the relevant du Pont factors regarding likelihood of confusion between
Applicant’s mark QWIKSERVE (in standard characters) for “computer software in
the field of convenience stores and functioning to allow convenience store customers
to order items from an in-store touchscreen or a mobile device”; and “providing
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temporary use of on-line non-downloadable computer software in the field of
convenience stores and functioning to allow convenience store customers to order
items from an in-store touchscreen or a mobile device” and the cited mark,
QIKSERVE (in standard characters) for “computer application software for mobile
phones, namely, software for ordering menu items in a restaurant, hotel, stadium, or
theater,” we find that there is a likelihood of confusion.
Decision: The refusal to register Applicant’s mark QWIKSERVE is affirmed.