SkyWard IO, Inc.

Trademark Trial and Appeal Board

Jun 8, 2017

No. 86443194 (T.T.A.B. Jun. 8, 2017)

THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB

Mailed: June 8, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
________

In re SkyWard IO, Inc.
________

Serial No. 86443194
_______

Patchen M. Haggerty of Perkins Coie
for SkyWard IO, Inc.

Tejbir Singh, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.
_______

Before Quinn, Ritchie, and Coggins,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
SkyWard IO, Inc. (“Applicant”) filed an application to register on the Principal
Register the mark SKYWARD (in standard characters) for “software as a service
(SAAS) services, namely, hosting software for use by others for use in enterprise flight
management for drones and unmanned aerial vehicles (UAVs)” in International Class
42.1

1 Application Serial No. 86443194, filed November 3, 2014, alleging first use anywhere and
first use in commerce in April 2014.
Serial No. 86443194

2

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, when
used in connection with Applicant’s services, so resembles the previously registered
mark shown below as to be likely to cause confusion:

(WEB SOLUTIONS disclaimed) for “consulting services in the field of web design and
development; web design services; web development and programming services; web
hosting services; web application services, namely, hosting, managing, developing,
analyzing, and maintaining applications and websites of others; web application
services, namely, providing temporary use of a web-based software application for
web property management, web analytics, and web services integration” in
International Class 42.2

2 Registration No. 4497193, issued March 18, 2014. The registration includes the following
statements: “The mark consists of the stylized words ‘Skyward Web Solutions’; a bird-like
symbol with wings pointed upward toward the sky; a circle encompasses the bird-like symbol.
Color is not claimed as a feature of the mark.”
Serial No. 86443194

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Applicant appealed the refusal and requested reconsideration.3 When the
Examining Attorney denied the request for reconsideration, the appeal resumed.
Applicant and the Examining Attorney filed briefs.4
Applicant argues that the marks are different, the services are completely
dissimilar and travel in different trade channels, the purchasers are sophisticated,
and there are third-party registrations of similar marks for similar services,
rendering the cited mark weak. Further, Applicant points to three years of
contemporaneous use of the marks without actual confusion. Applicant introduced

3 During prosecution, Applicant twice attempted to amend its recitation of services, asserting
in its brief that the words “hosting” and “others” were “erroneously” included in the original
recitation. 7 TTABVUE 3. On both occasions, the Examining Attorney refused to enter the
proposed amendment to the recitation on the basis that it exceeded the scope of the original
recitation. Applicant points out “[t]hough Applicant has provided detailed explanations of the
Applicant’s offerings and evidence in the form of Applicant’s website describing the provided
services, the Examiner has not, to date, suggested limitations or clarifications to the
identification of services that would fit within the scope of the original identification and
enable Applicant to more narrowly describe or clarify the Applicant’s services to assuage the
Examiner’s concerns relating to the wording ‘hosting’ and ‘others’ in Applicant’s identification
of services.” 7 TTABVUE 3-4. As TMEP § 1402.01 (Apr. 2017) warns: “The accuracy of
identification language in the original application is important because the identification
cannot later be expanded,” citing In re M.V Et Associes, 21 USPQ2d 1628 (Comm’r Pats.
1991). See In re Jimmy Moore LLC, 119 USPQ2d 1764 (TTAB 2016). In the first instance,
“[i]t is the applicant’s duty and prerogative to identify the goods and services.” TMEP §
1402.01(e). If Applicant believed that its services remained incorrectly identified, it had the
option to abandon its application and refile an application that more accurately identifies
Applicant’s services. Inasmuch as Applicant withdrew the proposed amendments, and the
Examining Attorney consequently withdrew the requirement for an acceptable identification
of services, the issue of the scope of Applicant’s attempted amendments is not before us.

4 Applicant’s brief is accompanied by certain evidence (e.g., a Wikipedia entry for “web
widgets”). The Examining Attorney correctly objected to the evidence as being untimely
submitted. We agree, and decline to consider any late-filed evidence that was not timely
submitted during prosecution. Trademark Rule 2.142(d). Further, and in any event, an
applicant may not limit the recitation of services in a cited registration through the use of
extrinsic evidence (which also applies to similar evidence timely made of record in this case).
See In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008).
Serial No. 86443194

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portions of its own website and Registrant’s website; Applicant’s other existing
registration for the identical mark; third-party registrations; and a Wikipedia entry.
The Examining Attorney maintains that the marks, services and trade channels
therefor are similar, and is not persuaded by Applicant’s sophisticated purchaser
argument or its ownership of a prior registration. The Examining Attorney submitted
excerpts from Wikipedia and Technopedia entries, and from a third-party website.
Our determination under Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the likelihood of confusion. In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the similarities between the services. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). Varying weights may
be assigned to each du Pont factor depending on the evidence presented. Citigroup
Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir.
2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687-88 (Fed. Cir. 1993). The
relevant du Pont factors in the proceeding now before us are discussed below.
With respect to the du Pont factor dealing with the similarity of the marks, we
must compare Applicant’s mark SKYWARD in standard characters to the registered
mark SKYWARD WEB SOLUTIONS and winged bird design in their entireties as to
appearance, sound, connotation and commercial impression. Palm Bay Imps., Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689,
1691 (Fed. Cir. 2005), quoting du Pont, 177 USPQ at 567. “The proper test is not a
Serial No. 86443194

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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).
Although marks must be considered in their entireties, it is settled that one
feature of a mark may be more significant than another, and it is not improper to give
more weight to this dominant feature in determining the commercial impression
created by the mark. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985) (“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 consideration of the marks in their entireties. Indeed, this type of
analysis appears to be unavoidable.”).
When wording and a design comprise the mark, as in the case of the cited mark,
then the wording is normally accorded greater weight because the wording is likely
to make an impression upon purchasers, would be remembered by them, and would
be used by them to request the services. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1908 (Fed. Cir. 2012); Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107
USPQ2d 1424, 1430-31 (TTAB 2013). We are quick to point out, however, that there
is no hard and fast general rule, and that comparisons involving a composite mark
must be made on a case-by-case basis. In the present case, given the prominent
display of SKYWARD in large font, this centrally-positioned word dominates the
Serial No. 86443194

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winged bird design feature of the mark. With respect to the entire literal portion of
Registrant’s mark, purchasers in general are inclined to focus on the first word or
portion in a trademark; in Registrant’s mark, SKYWARD is the first portion. Presto
Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often
the first part of a mark which is likely to be impressed upon the mind of a purchaser
and remembered”). See Palm Bay Imps., Inc., 73 USPQ2d at 1692. Not only is the
word SKYWARD the first word of the literal portion of the mark, but the words that
follow, WEB SOLUTIONS, are descriptive or generic and properly disclaimed. See,
e.g., In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)
(“DELTA,” not the disclaimed generic term “CAFE,” is the dominant portion of the
mark THE DELTA CAFE). Further, the words WEB SOLUTIONS appear below
SKYWARD and in much smaller font size.
In sum, the dominant portion of Registrant’s mark, SKYWARD, is identical to the
entirety of Applicant’s mark. Although we have pointed to the dominant portion of
the cited mark, we acknowledge the fundamental rule in this situation that the marks
must be considered in their entireties. See Jack Wolfskin Ausrustung Fur Draussen
GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d
1129, 1134 (Fed. Cir. 2015). Nevertheless, it is likely that consumers, when
encountering Registrant’s mark, will focus on the dominant literal portion, namely
the word SKYWARD, which is identical to Applicant’s mark.
Given the commonality of the word SKYWARD in the marks, even when we factor
in the design portion and the additional disclaimed wording WEB SOLUTIONS in
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Registrant’s mark, we find that the marks are similar in sound and appearance.
Further, the marks convey similar meanings, namely that the services figuratively
reach for the sky.5
When the marks are compared in their entireties, including the additional words
and the design features of Registrant’s mark, we find the marks engender similar
overall commercial impressions so that consumers, upon encountering the marks, are
likely to be confused. This first du Pont factor weighs in favor of a finding of a
likelihood of confusion.6
As to the second du Pont factor regarding the similarity of the services, it is well
settled that the services of Applicant and Registrant need not be identical or
competitive, or even be offered through the same channels of trade, to support a
holding of likelihood of confusion. The respective services need only be “related in
some manner and/or if the circumstances surrounding their marketing are such that
they could give rise to the mistaken belief that [the goods and/or services] emanate
from the same source.” Coach Servs., Inc., 101 USPQ2d at 1722. The issue here, of

5 We also recognize that Applicant’s mark, given its services, also suggests services rendered
in the sky, such as for flight management of aircraft.

6 Applicant contends that Registrant’s mark is not famous and that its scope of protection is
not “overly broad,” and thus the du Pont factor involving fame favors Applicant or at least
does not weigh against Applicant. 7 TTABVUE 27. Because of the nature of the evidence
required to establish the fame of a registered mark, the Board normally does not expect the
Examining Attorney to submit evidence as to the fame of the cited mark in an ex parte
proceeding. See In re Thomas, 79 USPQ2d 1021, 1027 n.11 (TTAB 2006). And, in an ex parte
analysis of the du Pont factors for determining likelihood of confusion, the “fame of the mark”
factor is normally treated as neutral when no evidence as to fame has been provided. See In
re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009) (noting that the absence of
evidence as to the fame of the registered mark “is not particularly significant in the context
of an ex parte proceeding”).
Serial No. 86443194

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course, is not whether purchasers would confuse the services, but rather whether
there is a likelihood of confusion as to the source of these services. L’Oreal S.A. v.
Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830 (TTAB
1984).
In comparing the services, we must look to the services as identified in the
application and the cited registration. See Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014), quoting
Octocom Sys., Inc. v. Houston Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011).
Applicant’s recitation of services reads “software as a service (SAAS) services,
namely, hosting software for use by others for use in enterprise flight management
for drones and unmanned aerial vehicles (UAVs)”; Registrant’s services are identified
as “consulting services in the field of web design and development; web design
services; web development and programming services; web hosting services; web
application services, namely, hosting, managing, developing, analyzing, and
maintaining applications and websites of others; web application services, namely,
providing temporary use of a web-based software application for web property
management, web analytics, and web services integration.”
In comparing the respective services, the Examining Attorney focuses on
Registrant’s “web hosting services,” pointing out that these services, as is the case
with the remaining services, are not limited to a particular field or subject matter. In
the absence of any limitations, this broadly-worded recitation is construed to
Serial No. 86443194

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encompass all types of web hosting services, including web hosting services for use
by others for use in enterprise flight management for drones and unmanned aerial
vehicles (that is, the use identified in the application). See In re Hughes Furniture
Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015).
The Examining Attorney submitted Wikipedia entries for “web hosting services”
and “software as a service.” A “web hosting service” is described as follows:
A type of Internet hosting service that allows individuals
and organizations to make their website accessible via the
World Wide Web. Web hosts are companies that provide
space on a server owned or leased for use by clients, as well
as providing Internet connectivity, typically in a data
center. Web hosts can also provide data center space and
connectivity to the Internet for other servers located in
their data center, called colocation . . . The scope of web
hosting services varies greatly . . . Some hosts specialize in
certain software or services (e.g., e-commerce, blogs, etc.).

***

Dedicated hosting service: the user gets his or her own Web
server and gains full control over it (user has root access
for Linux/administrator access for Windows); however, the
user typically does not own the server. One type of
dedicated hosting is self-managed or unmanaged. Thus is
usually the least expensive for dedicated plans. The user
has full administrative access to the server, which means
the client is responsible for the security and maintenance
of his own dedicated server.

***

Colocation web hosting service: similar to the dedicated
web hosting service, but the user owns the colo server; the
hosting company provides physical space that the server
takes up and takes care of the server . . . In most cases, the
colocation provider may provide little to no support directly
for their client’s machine, providing only the electrical,
Internet access, and storage facilities for the server. In
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most cases for colo, the client would have his own
administrator visit the data center on site to do any
hardware upgrades or changes.

Cloud hosting: is a new type of hosting platform that allows
customers powerful, scalable and reliable hosting based on
clustered load-balanced servers and utility billing . . . Cloud
hosting also allows providers to charge users only for
resources consumed by the user, rather than a flat fee for
the amount the user expects they will use, or a fixed cost
upfront hardware investment.

***

(March 25, 2016 Office Action).

Under the Wikipedia entry “Software as a service (SaaS),” the following appears:
[SaaS] is a software licensing and delivery model in which
software is licensed on a subscription basis and is centrally
hosted. It is sometimes referred to as “on-demand
software.” SaaS is typically accessed by users using a thin
client via a web browser. SaaS has become a common
delivery model for many business applications . . . [and] has
been incorporated into the strategy of all leading enterprise
software companies. One of the biggest selling points for
these companies is the potential to reduce IT costs by
outsourcing hardware and software maintenance and
support to the SaaS provider.

***

The term “software as a service” (SaaS) is considered to be
part of the nomenclature of cloud computing . . . .

Centralized hosting of business applications dates back to
the 1960s . . . The expansion of the Internet during the
1990s brought about a new class of centralized computing,
called Application Service Providers (ASP). ASPs provided
businesses with the service of hosting and managing
specialized business applications, with the goal of reducing
costs through central administration and through the
solution provider’s specialization in a particular business
application.
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Software as a service essentially extends the idea of the
ASP model. The term Software as a Service (SaaS),
however, is commonly used in more specific settings:

Whereas most initial ASPs focused on
managing and hosting third-party
independent software vendors’ software, as of
2012 SaaS vendors typically develop and
manage their own software.

Whereas many initial ASPs offered more
traditional client-server applications, which
require installation of software on users’
personal computers, SaaS solutions of today
rely predominantly on the Web and only
require a web browser to use.

Whereas the software architecture used by
most initial ASPs mandated maintaining a
separate instance of the application for each
business, as of 2012 SaaS solutions normally
utilize a multitenant architecture, in which
the application serves multiple businesses
and users, and partitions its data accordingly.

***

Unlike traditional software, which is conventionally sold as
a perpetual license with an up-front cost (and an optional
ongoing support fee), SaaS providers generally price
applications using a subscription fee, most commonly a
monthly fee or an annual fee. Consequently, the initial
setup cost for SaaS is typically lower than the equivalent
enterprise software. SaaS vendors typically price their
applications based on some usage parameters, such as the
number of users using the application. However, because
in a SaaS environment customers’ data reside with the
SaaS vendor, opportunities exist to charge per transaction,
event, or other unit of value, such as the number of
processors required.

***

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The vast majority of SaaS solutions are based on a
multitenant architecture. With this model, a single version
of the application, with a single configuration (hardware,
network, operating system), is used for all customers
(“tenants”).

[A] free web hosting platform based on the open source
Drupal content management system, is a “new open source
model for SaaS” . . . .
Id.

“Hosted Software” is defined in Techopedia as follows:
Hosted software refers to software that is installed, hosted
and accessed entirely from a remote server or location.
Hosted software is hosted and managed by the software
manufacturer or a third-party vendor. Users can access it
globally through the Internet. Hosted software is also
known as software as a service (SaaS), a cloud computing
service model.

Hosted software differs from typical software in its
installation and accessibility. Unlike most software, which
is housed on the user’s machine, hosted software-related
data processing and computing is performed on the remote
host server. End users can access this data through a
compatible Web browser.

Generally, hosted software is provided as a service to end
users, who are billed monthly on pay-per-use or per-license
fee billing method. Because all programs are installed at a
provider’s location, they are managed, upgraded and
patched by the provider, ensuring that users always have
access to updated, bug-free versions of the software they
use.
Id.

Although web hosting services and software-as-a-service services are both hosted
models of distributing software, such services are different types of services; it would
appear that a web host typically deploys commercial software of others while a
software-as-a-service vendor typically develops and deploys its own specific software.
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The focus of a software-as-a-service recitation of services in an application to register
a mark, as shown in the present application, is on describing the functionality
provided by accessing a specific software program. On the other hand, the focus of a
web host’s recitation of services in an application or registration is on the web host’s
activities of hosting, monitoring, and managing software at a central location for use
by subscribers at remote locations. Thus, a mark for software-as-a-service is used in
connection with specific software while a mark used in connection with web hosting
services is used in connection with providing access to software in general or in a
specific field to others.
Nevertheless, we are bound to make our decision based on the evidence of record
and, in this case, based on a broadly worded recitation of services in the cited
registration. As noted above, Registrant’s “web hosting services” are not limited to a
particular field or subject matter; and in the absence of any limitation, that recitation
of services is construed to encompass all types of web hosting services, including those
in Applicant’s field (i.e., enterprise flight management for drones and unmanned
aerial vehicles). In re Hughes Furniture Indus., 114 USPQ2d at 1137. That is, as
identified, Registrant’s services are construed to encompass the hosting of drone
software for use by others. The evidence of record suggests that web hosting (as well
as “web application services, namely, hosting, managing, developing, analyzing, and
maintaining applications and websites of others” listed in the registration) and
software as a service, when considered in the context of featuring similar applications
such as flight management, are related, if not overlapping types of services.
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Turning to the classes of purchasers and trade channels, when broad recitations
of services, such as Registrant’s “web hosting services” and “web application services,
namely, hosting, managing, developing, analyzing, and maintaining applications and
websites of others,” have no restrictions as to nature, type, channels of trade, or
classes of purchasers, we must presume that the services travel through all usual
channels of trade and are offered to all normal potential purchasers, including those
in Applicant’s field of enterprise flight management for drones and unmanned aerial
vehicles. See, e.g., Coach Servs., Inc., 101 USPQ2d at 1722; In re Elbaum, 211 USPQ
639, 640 (TTAB 1981).
While we acknowledge Applicant’s arguments about the broad scope of protection
being given to the cited registration and the recited services, that scope of protection
is dictated by Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b). We point out
that applicants in these circumstances are not without possible remedies, including
seeking a consent from the owner of the cited registration, or seeking a restriction of
the registration in inter partes proceedings under Section 18 of the Trademark Act,
15 U.S.C. § 1068, which might serve to limit the scope of Registrant’s services. In the
present case, the factors relating to the similarity of services, trade channels and
customers all weigh in favor of a finding of likelihood of confusion.
Under the sixth du Pont factor, we consider “[t]he number and nature of similar
marks in use on similar goods.” du Pont, 177 USPQ at 567. This factor addresses the
strength of a mark with respect to both its inherent strength, based upon the nature
of the mark itself, and its commercial strength, based upon the marketplace
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recognition of the mark. Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110
USPQ2d 1458, 1476 (TTAB 2014). The U.S. Court of Appeals for the Federal Circuit
has held that evidence of the extensive registration and use of similar marks by
others can be “powerful” evidence of a mark’s weakness. Jack Wolfskin, 116 USPQ2d
at 1136; Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671,
1674 (Fed. Cir. 2015). In this connection, Applicant introduced just two third-party
registrations of SKYWARD marks, Reg. Nos. 2113459 and 3404032. (August 24, 2015
Response to Office Action).
An important difference between the cited cases and this one is that there was
evidence of the use of third-party marks in addition to registrations in the cited cases.
Jack Wolfskin, 116 USPQ2d at 1136 (“voluminous evidence of paw print design
elements that have been registered and used in connection with clothing”)7; Juice
Generation, 115 USPQ2d at 1674 (a “fair number of third-party uses of marks
containing ‘peace’ and ‘love’ followed by a third, product-identifying term”)8; ProMark
Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1244 (TTAB 2015) (“numerous
uses of marks comprising or incorporating ‘SMART’ in the consumer packaged goods
industry”). Applicant relies solely on two registrations, and did not make of record
any evidence of any use of the registered marks, or any other third-party marks. This
limits the probative value of Applicant’s evidence.

7 In Jack Wolfskin, there were at least fourteen relevant third-party uses or registrations of
record. See 116 USPQ2d at 1136 n.2.

8 In Juice Generation, there were at least twenty-six relevant third-party uses or registrations
of record. See 115 USPQ2d at 1673 n.1.
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Registrations without proof of use are evidence only “of the inherent or conceptual
strength of a mark or term because they are probative of how terms are used in
connection with the goods or services identified in the registrations.” In re Morinaga
Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016). They “can be used
in the manner of a dictionary definition to illustrate how a term is perceived in the
trade or industry,” In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006),
and are “‘relevant to prove that some segment of the composite marks which both
contesting parties use has a normally understood and well recognized descriptive or
suggestive meaning, leading to the conclusion that that segment is relatively weak.”’
Juice Generation, 115 USPQ2d at 1675 (quoting 2 J.T. McCarthy, McCarthy on
Trademarks and Unfair Competition § 11:90 (4th ed. 2015)). Although we have
considered this evidence to gauge the conceptual strength of the cited mark, the
registrations have minimal, if any, probative value, however, with respect to the
commercial strength of the cited mark. Palm Bay Imps., 73 USPQ2d at 1693-94.
The probative value of this evidence is further weakened by the fact that the
services recited in the two registrations are different from the types of services
involved in this appeal. See In re Thor Inc., 90 USPQ2d 1634, 1639 (TTAB 2009).
In view of the above, the evidence relating to this du Pont factor falls short of
showing that the cited mark is either conceptually weak or commercially weak. This
factor is neutral.
As to conditions of sale, Applicant claims that customers for Applicant’s and
Registrant’s services are sophisticated buyers who exercise discrimination when
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purchasing the types of services involved herein. Applicant claims that the drone and
UAV industry is highly regulated, but Applicant failed to introduce any evidence
regarding the degree of care exercised by customers in selecting software-as-a-service
services featuring flight management for drones. And, in any event, the recitations
in the application and cited registration are unrestricted as to price point or type of
customers (such as those shown on Applicant’s website). However, in analyzing this
factor, we will assume that Applicant’s and Registrant’s services are not the subject
of an impulse purchase, but rather may involve a somewhat more thoughtful
purchase because of the technical nature of the services. Nevertheless it is settled
that even careful purchasers are not immune from source confusion, especially in
cases such as the instant one involving similar marks and 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.”). See also In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690
(Fed. Cir. 1993); In re Decombe, 9 USPQ2d 1812 (TTAB 1988). We find that the
similarity between the marks and the relatedness of the services rendered thereunder
outweigh any purported sophisticated purchasing decision. See HRL Associates, Inc.
v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss Associates, Inc.
v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities
of goods and marks outweigh sophisticated purchasers, careful purchasing decision,
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and expensive goods). See also Stone Lion Capital Partners, LP v. Lion Capital LLP,
110 USPQ2d at 1162-63. This du Pont factor weighs slightly in Applicant’s favor.
This brings us to consider another factor, namely the thirteenth du Pont factor
relating to “any other established fact probative of the effect of use.” See In re
Strategic Partners Inc., 102 USPQ2d 1397, 1399 (TTAB 2012). In this regard, we
acknowledge, as indicated earlier, that Applicant owns Registration No. 5018501,
issued August 9, 2016, for the mark SKYWARD (in standard characters) for
“downloadable software for use by others for use in enterprise flight management for
drones and unmanned aerial vehicles (UAVs)” in International Class 9. This evidence
does not compel a different result herein, however, because the present application
covers software-as-a-service, which is closer to the web hosting services in the cited
registration than is the software itself identified in Applicant’s registration. See In re
Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016) (“The
presumption of validity of 15 U.S.C. § 1057(b) does not carry over from registration
of the older mark to a new application for registration of another mark that happens
to be similar (or even nearly identical) . . . . The PTO is required to examine all
trademark applications for compliance with each and every eligibility requirement
. . . even if the PTO earlier mistakenly registered a similar or identical mark
suffering the same defect.”); In re Shinnecock Smoke Shop, 571 F.3d 1171, 91 USPQ2d
1218, 1221 (Fed. Cir. 2009) (“Applicant’s allegations regarding similar marks are
irrelevant because each application must be considered on its own merits.”); In re Nett
Designs Inc., 236 F.3d 139, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some
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prior registrations had some characteristics similar to Nett Designs’ application, the
PTO’s allowance of such prior registrations does not bind the Board or this court.”);
In re Florists’ Transworld Delivery Inc., 106 USPQ2d 1784, 1791-92 (TTAB 2013)
(“[I]t is well settled that neither the Board nor our primary reviewing court is bound
by prior determinations by the Office and each case must be decided on its own
merits.”). This factor is neutral. Indeed, each case must be decided on its own specific
and, sometimes, unique facts.
Applicant contends that three other du Pont factors weigh in its favor because
the record does not include any evidence relating to actual or potential confusion: the
absence of actual confusion (seventh factor); the length of time of contemporaneous
use since April 2014 without evidence of actual confusion (eighth factor); and that the
extent of potential confusion is de minimis (twelfth factor). Contrary to the gist of
Applicant’s arguments, it is not necessary to show actual confusion in order to
establish likelihood of confusion. See Weiss Associates Inc. v. HRL Associates Inc., 902
F.2d 1546, 14 USPQ2d 1840, 1842-43 (Fed. Cir. 1990). Applicant’s assertion,
particularly in this ex parte proceeding, is entitled to little weight. See In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003)
(“uncorroborated statements of no known instances of actual confusion are of little
evidentiary value”). See also In re Bisset-Berman Corp., 476 F.2d 640, 177 USPQ 528,
529 (CCPA 1973) (stating that testimony of applicant’s corporate president’s
unawareness of instances of actual confusion was not conclusive that actual confusion
did not exist or that there was no likelihood of confusion); In re Binion, 93 USPQ2d
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1531, 1536 (TTAB 2009); In re 1st USA Realty Professionals Inc., 84 USPQ2d 1581,
1588 (TTAB 2007); In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984).
In any event, the record is devoid of evidence relating to the extent of use of
Applicant’s and Registrant’s marks that would enable us to determine whether there
have been meaningful opportunities for instances of actual confusion to have occurred
in the marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1847 (Fed. Cir. 2000). Accordingly, these du Pont factors are considered neutral.
In sum, the du Pont factors regarding the similarity of the marks, the similarity
of the services, and the similarity of trade channels and customers support a finding
of likelihood of confusion, and outweigh the conditions of sale factor weighing slightly
in favor of Applicant. The remaining du Pont factors on which there is any evidence
are neutral in our analysis; the same applies to the factors on which there is no
evidence. On the basis of the record as a whole, we find that there is a likelihood of
confusion.
Decision: The refusal to register is affirmed.