SmartCart, LLCv.Smart Cart Service Systems, LLC

Trademark Trial and Appeal Board

Nov 23, 2015

No. 91211897 (T.T.A.B. Nov. 23, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: November 23, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

SmartCart, LLC
v.
Smart Cart Service Systems, LLC
_____

Opposition No. 91211897
against Serial No. 85644920
_____

Peter J. Estrella for SmartCart, LLC.

Laura J. Hayes and Maral Kilejian of Mullin Russ Kilejian, PC,
for Smart Cart Service Systems, LLC.
_____

Before Bucher, Cataldo and Taylor,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
Smart Cart Service Systems, LLC (hereinafter “Applicant”) seeks registration on
the Principal Register of the mark SMARTCART (in standard character format) for
“application software for mobile phones and devices,
namely, software for ordering food, beverages, and
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products and for enabling the tracking of golf data in real
time” in International Class 9.1
SmartCart, LLC (hereinafter “Opposer”) filed an opposition to the 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 is likely to cause confusion with Opposer’s mark,
SMARTCART, and under Section 43(c) of the Act, 15 U.S.C. § 1125(c), on the
ground of likelihood of dilution of Opposer’s mark, and finally, on the ground of
fraud.2
Opposer alleges in its notice of opposition that since as early as 1996, it has
continuously used the mark SMARTCART in interstate commerce in connection
with providing hosted ecommerce, online store building and product ordering
capability services for clients, and has obtained the following registration:

SmartCart for “computer services, namely, creating, maintaining,
designing and hosting ecommerce websites for others on a
computer server for a global computer network” in
International Class 42.3

Applicant, in its answer, denied the salient allegations in the notice of
opposition. The parties have fully briefed the case.

1 Application Serial No. 85644920 was filed on June 6, 2012, based upon Applicant’s claim
of first use anywhere and use in commerce since at least as early as August 23, 2011.
2 Opposer has not effectively pleaded its claim of fraud nor has it proven such during trial.
Hence, this allegation is deemed waived and has been given no further consideration.
3 Reg. No. 3954753 issued on May 3, 2011.
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I. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Applicant’s application file. In addition, the parties introduced
the following evidence:
A. Opposer’s evidence
Opposer offered for the record the pleaded registration for its SmartCart mark;4
various printed publications and websites pertaining to Opposer5 and to Applicant;6
Who Is Internet registration information of Opposer’s smartcart.com;7 sampling of
geographical locations of Opposer’s customers;8 Applicant’s answers to Opposer’s
discovery requests;9 dictionary definitions;10 a listing of Opposer’s golf-, food- and
beverage-related customers that have used its SmartCart mark;11 search results of
the term “smartcart” from several online search engines;12 and a misdirected email
it received from one of Applicant’s customers.13

4 Exhibits 1 & 119, 10 TTABVue at 10, 151-54 of 184; 18 TTABVue at 10 of 45.
5 Exhibits 3–29, 10 TTABVue at 12-39 of 184; 18 TTABVue at 12-39 of 45.
6 Exhibits 35-98, 10 TTABVue at 45-109 of 184.
7 Exhibits 115-17, 10 TTABVue at 127-29 of 184.
8 Exhibit 118, 10 TTABVue at 130-50 of 184.
9 10 TTABVue at 158-183 of 184.
10 Exhibits A – C, 10 TTABVue at 7-9 of 184.
11 Exhibits 104-11, 10 TTABVue at 34-42 of 45.
12 18 TTABVue at 43-44 of 45.
13 18 TTABVue at 45 of 45.
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B. Applicant’s evidence
Additionally, Applicant offered for the record additional excerpts from
Applicant’s and Opposer’s websites;14 dictionary definitions;15 an iTunes preview of
Applicant’s app;16 a third-party website about Applicant’s product;17 and
information about golfing, golfers and mobile apps directed specifically to golfers.18
II. Standing
Opposer has properly made its pleaded registration of record.19 In addition,
Opposer has asserted a plausible likelihood of confusion claim in its notice of
opposition.20 Accordingly, Opposer has established its standing to oppose
registration of Applicant’s mark. See Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton Industries, Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). If a plaintiff can show standing on
one ground, it has the right to assert any other grounds in an opposition or
cancellation proceeding. See Corporacion Habanos SA v. Rodriquez, 99 USPQ2d
1873, 1877 (TTAB 2011). See also TBMP 309.03(b) (2015).

14 Exhibits C-I, 13 TTABVue at 14-38 of 81.
15 Exhibits J&K, 13 TTABVue at 39-46, 51 of 81.
16 Exhibit L, 13 TTABVue at 47-48 of 81.
17 Exhibit M, 13 TTABVue at 49-50 of 81.
18 Exhibits N-R, 13 TTABVue at 52-81 of 81.
19 Exhibits 1 & 119, 10 TTABVue at 10, 151-54 of 184; 18 TTABVue at 10 of 45.
20 1 TTABVue at 3-5 of 6.
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III. Priority
Moreover, because Opposer’s pleaded registration is of record, Section 2(d)
priority is not an issue in this case as to the mark and services covered thereby. See
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974).
IV. Likelihood of Confusion
Our likelihood of confusion determination under Section 2(d) is based upon an
analysis of all of the facts in evidence that are relevant to the factors bearing on
likelihood of confusion, even those not specifically discussed in this decision. See In
re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,
396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Company,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
A. The Marks
Regarding the first factor, the similarity of the marks, we note there is no
dispute but that the mark SmartCart in standard characters, in Opposer’s pleaded
registration, is identical in sound and appearance to the mark SMARTCART, also
in standard characters, in involved application Serial No. 85644920. See
Cunningham v. Laser Golf Corp., 55 USPQ2d at 1847 (“Registrations with typed
drawings are not limited to any particular rendition of the mark and, in particular,
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are not limited to the mark as it is used in commerce”). As to connotation, in the
context of Opposer’s usage, the word “cart” may well suggest a virtual shopping
cart, while in Applicant’s mark it could be seen as suggesting a golf cart. However,
there is no evidence regarding consumer perception of the marks and, despite this
possible nuanced difference in connotation, we find that the marks create very
similar overall commercial impressions, and this du Pont factor supports a finding
of a likelihood of confusion.
B. Goods and Services, classes of customers and trade channels
Turning to the identified goods and recited services, we must determine whether
consumers are likely to mistakenly believe that they emanate from a common
source. It is not necessary that the goods and services at issue be identical or
competitive, or even that they move in the same channels of trade, to support a
holding of likelihood of confusion. It is sufficient instead that the respective goods
and services are related in some manner, and/or that the conditions and activities
surrounding the marketing thereof are such that they would or could be
encountered by the same persons under circumstances that could give rise to the
mistaken belief that they originate from the same producer. See In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
When the marks at issue are substantially identical, as is the case herein, the
respective goods and services “need not be as close to support a finding of likelihood
of confusion as might apply where differences exist between the marks.” In re Opus
One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); and Amcor, Inc. v. Amcor Industries,
Opposition No. 91211897
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Inc., 210 USPQ 70, 78 (TTAB 1981). See also, Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992), cert.
denied, 506 U.S. 1034 (1994).
In this case, Opposer’s services are recited as “computer services, namely,
creating, maintaining, designing and hosting ecommerce websites for others on a
computer server for a global computer network.” The goods identified in the
application are “application software for mobile phones and devices, namely,
software for ordering food, beverages, and products and for enabling the tracking of
golf data in real time.”
We see from Opposer’s website that its services offered under the SmartCart
mark involve “Software as a Service” (SaaS). Opposer highlights “secure ecommerce
hosting,” “online store builder,” “webpage builder,” “website manager,” “secure
online ordering system,” “one-page checkout,” “shopping cart button maker,” The
combined features of these services allow Opposer, in collaboration with its clients,
to create and maintain an ecommerce website, which in turn permits these clients
to market and sell their products or services over the Internet. By its own terms,
this ecommerce software is directed to businesses that include merchants, web
developers and corporations. It promises that “ … it provides a scalable and
customizable ebusiness solution to satisfy the needs of small, medium and large-
scale business systems.
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21

Both Applicant and Opposer have submitted definitions of “ecommerce”:
e-commerce noun often attributive
: activities that relate to the buying and selling of goods and services over the
Internet 22

e-commerce noun (Concise Encyclopedia)
: business-to-consumer and business-to-business commerce conducted by way
of the INTERNET or other electronic networks. … 23

21 Opposer’s Exhibit 5, 10 TTABVue at 14 of 184, http://www.smartcart.com/.
22 MERRIAM-WEBSTER (2015), http://www.merriam-webster.com/dictionary/e-commerce, 10
TTABVue at 7-8 of 184; Applicant’s Exhibit J, 13 TTABVue at 39-42 of 81.
23 Applicant’s Exhibit J, 13 TTABVue at 39-42 of 81.
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24
Perhaps not surprisingly, given Opposer’s recited services, the record shows that
Opposer capitalizes on social media like Facebook and Twitter to promote its
ecommerce services:

24 Opposer’s Exhibits 10-13, 10 TTABVue at 19-22 of 184, http://www.smartcart.com/
ecommerce-web-hosting-options.html.
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25
26

In addition to the successes touted immediately above from 2010, Opposer has
included a WEBSITE MAGAZINE article from July 2012 that places it in the “Top 50
E-Commerce Platforms”:

25 Opposer’s Ex. 16-21, especially 10 TTABVue at 27-28 of 184, https://www.facebook.com/
SmartCart/.
26 Opposer’s Ex. 26, 10 TTABVue at 35 of 184, https://twitter.com/smartcartdotcom
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27

27 Opposer’s Exhibits 28-29, 10 TTABVue at 38-39 of 184, http://www.website
magazine.com/scripts/sub/digital.aspx?issue=54, at 17-18.
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By contrast, Applicant makes the argument that its free SMARTCART software
app for smartphones has utility because it is designed to help golfers keep score, to
reserve tee-times and dinners, and to get cold beverages delivered directly to their
golf cart:
28

Hence, despite these substantially identical marks, Applicant argues that there
is a de minimis likelihood of confusion. The majority of Applicant’s brief is focused
on the alleged differences in the goods and services, the channels of trade, and the
classes of consumers, as they affect our likelihood of confusion determination
herein. Applicant would have us restrict our consideration of its channels of trade
and classes of customers to the golfers explicitly mentioned in Applicant’s
identification of goods. Contrasted with Opposer’s corporate clients (web developers

28 Applicant’s Exhibit B, 13 TTABVue at 9-11 of 81,
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and merchants), Applicant argues that its golfing app is downloaded free to a smart
device by individual golfers, for both iPhones and Android devices:
29 30
Consistent with this argument, evidence in the record from Applicant’s Twitter
feed points out tweets directed to the golfers that Applicant hopes to attract as
users to its mobile app:
31

29 Applicant’s Exhibit B, 13 TTABVue at 12 of 81, http://itunes.apple.com/us/app/
smartcart/id457557130?mt=8,
30 Opposer’s Exhibit 87, 10 TTABVue at 98 of 184, https://play.google.com/store/
search?q=smartcart&c=apps&hl=en
31 Opposer’s Exhibits 69-72, 10 TTABVue at 80-83 of 184.
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Nonetheless, Opposer points out that the paying customers making up most of
the potential market for Applicant’s SMARTCART software would consist of food
and beverage operations in the near vicinity of golf courses. The following image
from Applicant’s Facebook page demonstrates graphically these separate audiences:
32

32 Opposer’s Exhibit 65, 10 TTABVue at 74 of 184.
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Based on the evidence of record, we find that the “business-to-business” markets
highlighted on the left above – primarily food and beverage (or “F&B”) facilities,
and secondarily, organizations selling golf accessories – comprise the relevant
population for our likelihood of confusion determination. In fact, in addition to the
outreach directed to its “business-to-golfing-consumers” seen above, Applicant’s
Twitter feed also shows it repeatedly reaching out to club owners having food,
beverage and golf pro shop facilities:
33
Similarly, on the homepage of its website, Applicant touts the benefits to
members of this critical audience (golf courses and restaurants) in their signing up
with this program:

33 Opposer’s Exhibits 67-71, 10 TTABVue at 78-82 of 184.
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34
In support of its position herein, Opposer has shown that its customers include
at least one restaurant and an Internet purveyor of golfing accessories:
35

34 10 TTABVue at 45-47 of 184.
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36
In further support of its position, Opposer has compared its redacted customer
list with Applicant’s showing of club management companies that promote various
types of “club software” for members, as well as various country clubs and golf clubs
around the United States:

As to areas of geographical overlap, this points to both parties having customers
located in, inter alia, Little Rock, AK; Glendale, AZ; Columbus, OH; Philadelphia,
PA; Hilton Head, SC; Dallas, TX; and Salt Lake City, UT.
Accordingly, we find based upon the totality of this record that food and
beverage facilities and pro shops in the vicinity of golf courses would be a logical

35 Opposer’s Exhibit 106, 10 TTABVue at 117 of 184, http://www.cafelamed.com/ as accessed
by Opposer on November 6, 2013.
36 Opposer’s Exhibits 110-11, 10 TTABVue at 122-23 of 184, http://www.
teamgolfusa.com/cgi/search.cgi?terms=New%5FYork%5FGiants::&category=New%5FYork
%5FGiants
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subset of the natural customers for Opposer’s ecommerce services. Both Opposer
and Applicant approach such merchants with the promise of increased revenues,37
as well as providing merchants with Internet access to prospective customers
having mobile devices without significant development costs on the part of the
merchant.38 Organizations selling food and beverages or golf accessories,39 like any
other business with annual budgets, have set line items in the budget for
promotional and marketing expenditures. Both parties herein similarly promise
such merchants that by taking advantage of the parties’ respective offerings, these
merchants will be able to sell more products / services while spending less. Both
offerings could well provide, as a deliverable for such merchants, digital access to
customers using mobile devices to make dining reservations, point-of-sale
transactions for food and beverages or golf merchandise, golfing customers paying
online with a variety of credit cards or even using newer payment processing
mechanisms like PayPal, ApplePay, etc.
Certainly, we have held in previous cases that arguments as to relatedness of
goods and services based merely upon evidence of membership in the same general
industry is insufficient to support a likelihood of confusion determination. However,

37 See e.g., 10 TTABVue at 26-35, 48, 50, 56, 61, 67, 73, 74, 80-85, 88 of 184.
38 See e.g., Opposer’s “affordable prices,” “free trial,” “no obligation,” simply “import your
template and style,” “marketing for small businesses,” “Branding … on a shoestring,”
“reduce costs,” etc., 10 TTABVue at 23-35 of 184; Applicant’s website suggests that a club
owner could “[g]ive your golf course a custom app without the hassle or cost of
development.” Applicant’s Exhibit E, 13 TTABVue at 23 of 81, http://www.smartcartapp.
com/golfcourses.html.
39 Food and beverage plus “anything else the course wants to sell.” 10 TTABVue at 75 of
184.
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the evidence in the case at bar shows that as to the overlap in customers and trade
channels, we are faced with much more than two parties operating within the same
general industry, where both parties use the Internet to advertise or provide their
goods and services. Rather, these parties are both operating nation-wide, having
existing customers within the same geographical areas, and they are competing for
the same marketing dollars of corporate clients selling food and beverages in
settings such as bars or restaurants, and pro shops or other retailers selling golfing
accessories.
Accordingly the du Pont factors focusing on the relatedness of the goods and
services, the trade channels and the classes of consumers all favor a finding of
likelihood of confusion.
C. Strength of the cited mark
As to the strength of Opposer’s mark, Applicant has neither argued, nor placed
into the record evidence in support of the proposition, that the cited mark is either
conceptually or commercially weak. Hence, in light of Opposer’s failure to show a
significant degree of renown for its mark, we find this to be a neutral du Pont factor
in our determination.
D. Instance of actual confusion
Finally, as to the du Pont factor assessing the “nature and extent of any actual
confusion,” Opposer has placed into the record a single example of a misdirected
email:
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This appears to be a case of one Keith B. Smith directing an email note to an
email address ending with “@smartcart.com” rather than “@smartcartapp.com.”
This may well have reflected his educated guess as to Applicant’s email address,
could be due to sloppiness, or any number of other reasons. To our knowledge,
Opposer never had occasion to speak with Mr. Smith about the circumstances
surrounding this mistake. See Gen. Instrument Corp. v. Autotote Ltd., 220 USPQ
283, 288 (TTAB 1983) (“The misdirected mail … could have resulted from any
number of causes other than confusion relating to the marks of the parties.”). See
also Times Newspapers Ltd. v. Times Publ’g Co., 25 USPQ2d 1835, 1840 (M.D. Fla.
1993) (“Courts have occasionally characterized evidence of actual confusion as due
to ‘inattention and indifference.’ … This categorization seems particularly
appropriate here. Misdirection of mail to entities such as the parties in this case
seems inevitable.”) (internal citation omitted). The probative value of the Smith
email is diminished by the fact that Mr. Smith was not called as a witness to testify
and to be subjected to cross-examination as to the circumstances and conditions
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under which he encountered Applicant’s app and then contacted Opposer. See
Hershey Foods Corp. v. Cerreta, 195 USPQ 246, 254-55 (TTAB 1977). We note in
addition that Opposer has not introduced evidence regarding any other instances of
actual confusion. Hence, we find this to be a neutral du Pont factor in our final
determination.
E. Conclusion
Given that these marks are identical in appearance and sound, convey the same
overall commercial impressions, and will be used in marketing related goods and
services to the same class of consumers, we find herein a likelihood of confusion.
V. Likelihood of Dilution
Opposer has also brought an action based upon the likelihood of dilution. Given
that we have found in Opposer’s favor on likelihood of confusion, we would not
necessarily need to reach a decision on this ground of opposition. However, we
hasten to add that even a cursory review of Opposer’s evidence of record fails to
support the significant level of fame necessary to support such a claim. Hence, on
this record, we find against Opposer on the issue of likelihood of dilution.
Decision: The opposition is hereby sustained based upon Opposer’s claim of
likelihood of confusion under Section 2(d) of the Lanham Act, and registration to
Applicant is denied.