Smith

Trademark Trial and Appeal Board

Mar 2, 2007

No. 78316052 (T.T.A.B. Mar. 2, 2007)

Hearing: Mailed:
December 6, 2006 March 2, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Smith
________

Serial No. 78316052
_______

Jay Flemma of Law Offices of Jay Flemma, Esq. for David M.
Smith.

Dannean J. Hetzel, Trademark Examining Attorney, Law Office
106 (Mary Sparrow, Managing Attorney).
_______

Before Quinn, Zervas and Cataldo, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

David M. Smith has appealed from the final refusal of
the trademark examining attorney to register the mark

THIS DECISION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 78316052
2
for the following services, as amended; “foreign language
translation and interpretation services focusing on
business advertisements, corporate contracts, corporate
brochures, and corporate marketing materials” in
International Class 41.1
The examining attorney has refused registration
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C.
1052(d), on the ground that applicant’s mark so resembles
the previously registered mark

for, inter alia, “translation of and interpreting foreign
languages,” in International Class 42,2 that, as used in
connection with applicant’s identified services,

1 Application Serial No. 78316052, filed October 20, 2003,
claiming first use anywhere and first use in commerce on March
22, 2002. Applicant claims the colors blue and black as a
feature of the mark and has entered the following color location
statement: “The upside down right angle is dark blue, the right
side up right angle is light blue. The word mark LINGUALINX
appears to the right of the helix logo in black. The logo
appears on a white background.” Also, applicant has entered the
following description of the mark: “The mark consists of a
diagonal helix of two interlocking right angles, one upside down
and the other right side up.”
2 Registration No. 1699525, issued July 7, 1992; renewed.
Registrant has entered a disclaimer of the word “Language.”
Serial No. 78316052
3
applicant's mark is likely to cause confusion or mistake or
to deceive.3
Applicant has appealed the final refusal of his
application. Both applicant and the examining attorney
have filed briefs and an oral hearing was held on
December 6, 2006. As discussed below, the refusal to
register is affirmed.
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,
however, two key, although not exclusive, 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

3 The registration also recites services in International Class
41, i.e., “foreign language instruction; production for others of
foreign language and English videotapes for use in foreign
markets.” However, the examining attorney has not relied on the
International Class 41 services in refusing registration of
applicant's mark and does not refer to them in her brief. Thus,
applicant's arguments, to the extent that they are directed to
registrant’s International Class 41 services, are given no
further consideration.
Serial No. 78316052
4
(CCPA 1976). See also, In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
We first consider the similarities of the services.
Because registrant’s identification of services does not
include limitations as to the nature of the materials or
information to be translated or interpreted and hence
presumptively includes the translation of business
advertisements, corporate contracts, corporate brochures
and corporate marketing materials, applicant's “foreign
language translation and interpretation services focusing
on business advertisements, corporate contracts, corporate
brochures and corporate marketing materials” are
encompassed within registrant’s services, i.e.,
“translation of and interpreting foreign languages.”4 The
second du Pont factor hence is resolved against applicant.
We next consider the trade channels of applicant's and
registrant’s services. Applicant argues that there are no

4 Applicant has argued at p. 6 of his brief that “The Registrants
are only entitled to protection for their computers [sic] program
in the case of Lingualinks and foreign language instruction in
the case of Language Link [sic].” This is not the case because
in addressing the question of likelihood of confusion, the Board
considers those goods and/or services that are recited in an
application and registration, and not the actual goods or
services sold to purchasers. See Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973)
(“Trademark cases involving the issue of likelihood of confusion
must be decided on the basis of the respective descriptions of
goods [or services].”).

Serial No. 78316052
5
overlapping markets and that applicant's services are
obtained by “direct sales.” Brief at p. 6. However,
because there are no trade channel limitations in
registrant’s identification of services, we presume that
the identified services move in all channels of trade that
would be normal for such services.5 In re Elbaum, 211 USPQ
639, 640 (TTAB 1981). Such trade channels include
applicant's trade channels. Hence, the third du Pont
factor also is resolved against applicant.
Now, we consider the similarities of the marks viewed
in their entireties. Specifically, we consider whether the
marks are similar in sound, appearance, meaning, and
commercial impression. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). We do not consider whether
the marks can be distinguished when subjected to a side-by-
side comparison, but rather whether the marks are
sufficiently similar that confusion as to the source of the
goods or services offered under the respective marks is

5 At p. 6 of his brief, applicant refers to “accolades, press
releases and advertisements” attached as Exhibit B. The copy of
the brief received by the Board did not include any exhibits.
Even if the exhibits had been attached to applicant's brief, we
would not have considered the exhibits because the submission of
evidence for the first time with a brief is untimely. See
Trademark Rule 2.142(d); 37 C.F.R. § 2.142(d); TBMP §1207 (2d ed.
rev. 2004).

Serial No. 78316052
6
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).
Both applicant's and registrant’s marks contain a word
component and a design component. The examining attorney
cites the proposition that the word component of a mark is
normally accorded greater weight in determining the
likelihood of confusion because the word portion is more
likely to be impressed upon a purchaser’s memory and used
in calling for the goods or services. In re Dakin’s
Miniatures Inc. 59 USPQ2d 1593 (TTAB 1999). This
proposition is particularly true in this case, where the
design components are geometric in nature and not likely to
be considered in calling for the services. Thus, we find
that the word components of the marks are the dominant
components of each mark.6
When we consider the word components of the marks, we
find them to be similar in sound, connotation and
commercial impression. Both marks have a first word
portion consisting of terms comprising or relating to

6 Although the marks must be considered in their entireties,
there is nothing improper, under appropriate circumstances, in
giving more or less weight to a particular portion of a mark.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.
Cir. 1985).
Serial No. 78316052
7
language. In applicant’s case, the term is LANGUAGE and in
registrant’s case, the term is LINGUAL, if consumers
perceive registrant’s mark as a telescoped mark, or LINGUA
if consumers do not perceive registrant's mark as a
telescoped mark. LINGUAL is defined in The Random House
Dictionary of the English Language (unabridged)(2d ed.
1987) as inter alia “pertaining to languages.”7 LINGUA is
the first term in “lingua franca,” which is defined in the
same dictionary as “a language that is widely used as a
means of communication among speakers of other languages.”8
Also, both marks have a second word portion that is LINK or
a variation thereof – LINX, pronounced “links,” in
applicant's mark is a misspelling of the plural form of the
word LINK. When the word portions of the marks are
considered as a whole, the marks are similar in sound,

7 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
8 The examining attorney argues that LINGUA translates into the
word “language” in Spanish, Italian and Latin; and that
“consumers would stop and translate ‘lingua’ into ‘language’
because of the relatively large portion of the United States
population which is familiar with Spanish and because consumers
are in the market for foreign language translation services.”
Brief at unnumbered p. 3. We disagree. The remainder of the
word portion of the mark is LINX, which phonetically is identical
to the word “links,” an English word. The examining attorney has
not explained why one portion of a term would be translated by
consumers but not the other portion, and we are unaware of any
reason why consumers would do so.
Serial No. 78316052
8
connotation and commercial impression – both suggesting a
link to languages.
As for the design component of the marks, it is
apparent that the designs are different. However, the
designs do not dominate the marks or suggest a particular
meaning for the word portions of the marks.9 The examining
attorney has correctly noted that “Neither the applicant
nor registrant’s design creates a distinctive visual
component of the marks that would draw consumers’ attention
to the design and away from the word portions of the
marks.” Brief at unnumbered pp. 4-5.
Thus, when we consider the marks as a whole, we find
them to be similar in meaning, sound and commercial
impression. Any differences in appearance are outweighed
by the similarities in meaning, sound and commercial
impression. In view thereof, and because when marks appear
on virtually identical goods or services, the degree of
similarity necessary to support a conclusion of likely
confusion declines, see Century 21 Real Estate Corp. v.

9 In this regard, we note applicant's description of the mark,
which states: “The mark consists of a diagonal helix of two
interlocking right angles, one upside down and the other right
side up” and applicant's observation in his brief that “Neither
capitalized ‘L’ is inverted, they are both right side up.” Brief
at p. 4. At best, the interlocking “L”s are reflective of the
two “L”s in LINGUALINX and play on the meaning of LINX as a
misspelling of “links.”

Serial No. 78316052
9
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed.
Cir. 1992), we resolve the first du Pont factor against
applicant.
Applicant has made several additional arguments, each
of which we reject and each of which we address briefly
below.
First, applicant states that the “sophisticated
purchaser exercises a greater degree of care than the
consumer of mass-produced goods.” Brief at p. 6. To the
extent that applicant maintains that the consuming public
of applicant's and/or registrant’s services consists of
sophisticated purchasers, applicant has not provided any
explanation or evidence in support of his contention and
there simply is no evidence in the record from which we can
make a determination of whether such purchasers are
“sophisticated.” We add too that even if applicant's
purchasers are “sophisticated,” sophisticated purchasers
are not necessarily knowledgeable in the field of
trademarks or immune from source confusion. See In re
Decombe, 9 USPQ2d 1812 (TTAB 1988).
Second, applicant states the “marks have co-existed
side by side with no actual confusion for three years.”
Brief at p. 6. However, and as pointed out by the
examining attorney, it is not necessary to show actual
Serial No. 78316052
10
confusion in order to establish likelihood of confusion.
See Weiss Associates Inc. v. HRL Associates Inc. 902 F.2d
1546, 223 USPQ 1025 (Fed. Cir. 1990). Applicant's
assertion of the absence of actual confusion in this ex
parte proceeding is of little probative value in our
determination on the issue of likelihood of confusion. See
In re Kangaroos U.S.A., 223 USPQ 1025 (TTAB 1984).
Moreover, on the record before us there is no evidence as
to whether there has been any opportunity for confusion to
occur. Applicant's argument regarding actual confusion
therefore is unpersuasive, and the seventh du Pont factor
is neutral.
Third, applicant relies heavily on In re Broadway
Chicken Inc., 38 USPQ2d 1559 (TTAB 1996), in which the
Board found no likelihood of confusion between BROADWAY
CHICKEN and BROADWAY PIZZA for identical services. At p. 7
of his brief, applicant argues that “because ‘Broadway’ was
a common and popular geographical term, it was weak by
itself and therefore ‘the consuming public is more likely
to rely upon the non-common portions of the marks … to
distinguish among these services.’” Broadway Chicken is
inapposite because there is no evidence of third-party use
of any of the components of applicant's or registrant’s
marks in this case. Besides, likelihood of confusion is
Serial No. 78316052
11
determined on a case-specific basis, using the du Pont
factors which are relevant as our guide. See Han Beauty
Inc. v. Alberto-Culver Co., 236 F.2d 1333, 57 USPQ2d 1557
(Fed. Cir. 2001). Even considering Broadway Chicken - and
other cases cited by applicant - the factors having the
greatest weight in these other cases were much different
from the ones involved here.
When we consider the record and the relevant
likelihood of confusion factors, and all of applicant's
arguments relating thereto, we conclude that, when
potential purchasers of applicant's services and
registrant’s services encounter the applied-for and
registered marks for these services, they are likely to
believe that the sources of these services are in some way
related or associated. As a result, there is a likelihood
of confusion.
DECISION: The refusal to register the mark under
Section 2(d) of the Trademark Act is affirmed.