Stamps.com Inc.v.Imayl Inc.

Trademark Trial and Appeal Board

May 14, 2018

No. 91227829 (T.T.A.B. May. 14, 2018)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: May 14, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
Stamps.com Inc.
v.
Imayl Inc.
_______
Opposition No. 91227829
to Application Serial No. 86806094
(and counterclaim to cancel Reg. No. 1930424)
_______
Mary Ann Novak of Hilgers Graben PLLC for Stamps.com Inc.
John Alumit of Alumit IP for Imayl Inc.
_______
Before Wellington, Greenbaum, and Masiello, Administrative Trademark Judges.
Opinion by Wellington, Administrative Trademark Judge:
Applicant, Imayl, Inc., seeks registration of the standard character mark IMAYL
for goods and services identified as:
Computer software for use in mail management, namely,
creating and developing invoices, tracking inbound parcels,
tracking mail, sending mail alerts, scanning parcels,
tendering invoices, verifying postage, and monitoring and
managing productivity and processes, in International
Class 9; and
Design and development of computer software; Providing
Opposition No. 91227829
2
an online non-downloadable Internet-based system
application featuring technology enabling users to track
the delivery and acceptance of mail and parcels, and for
inventory management, over computer networks, intranets
and the internet, and also featuring alert notifications;
Providing on-line non-downloadable software for tracking
the delivery and acceptance of mail and parcels, and for
inventory management, over computer networks, intranets
and the internet, and also featuring alert notifications;
Providing temporary use of non-downloadable computer
software for tracking documents over computer networks,
intranets and the internet; Providing temporary use of
non-downloadable computer software for tracking freight
over computer networks, intranets and the internet;
Providing temporary use of non-downloadable computer
software for tracking packages over computer networks,
intranets and the internet; Software as a service (SAAS)
services featuring software for use in tracking the delivery
and acceptance of items and parcels, and for inventory
management, over computer networks, intranets and the
internet, and also featuring alert notifications, in
International Class 42.1
Opposer, Stamps.com, Inc., has opposed registration of Applicant’s mark on the
ground of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d). Opposer pleaded ownership of Registration No. 1930424 (“pleaded
registration”) for the mark I-MAIL for “computer program for the transmission of
data between multiple locations and the manuals for the program sold as a unit,” in
International Class 9.2 Opposer also pleaded common law rights in the same mark
“in connection with [the software described in the registration] and related software
and services in the field of postage, shipping and mailing,” and that these rights “pre-

1 Application Serial No. 86806094, filed on November 2, 2015 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), claiming a date of first use and a date of first use in
commerce of October 22, 2015, for both classes.
2 Issued on October 31, 1995, renewed.
Opposition No. 91227829
3
date the first use date claimed by Applicant in the Application.”3 Opposer alleged that
Applicant’s mark is “likely to cause confusion, mistake and deception among
purchasers and users as to the source or origin” of the parties’ goods.4
Applicant made certain admissions with regard to allegations involving its
application,5 but otherwise denied the salient likelihood of confusion allegations in
the notice of opposition. Applicant also pleaded a counterclaim to cancel Opposer’s
pleaded registration on the ground that the mark “has become generic of the
identified goods.”6 Specifically, Applicant alleges that “[t]he wording ‘I-’ and ‘MAIL’
are each generic for Opposer’s computer programs which are designed for the Internet
and specifically for the purposes of ‘MAIL.’”7
Opposer filed an answer to the counterclaim denying the central allegations to the
counterclaim that its mark, I-MAIL, has become generic.8
Opposer’s opposition claim and Applicant’s counterclaim have been briefed.
I. The Record and Evidentiary Objections
The record includes the pleadings and, by operation of Trademark Rule 2.122, the
files of the involved application and registration.
Opposer submitted the following evidence:

3 1 TTABVUE 5 (Notice of Opposition ¶ 8).
4 Id., at ¶ 11.
5 Specifically, Applicant makes admissions regarding its ownership of the involved
application and certain allegations made in the application and that Opposer is identified as
the owner of its pleaded registration. 4 TTABVUE 2-3. None of these admissions are outcome-
determinative and do not involve pertinent facts which are not otherwise established by other
evidence.
6 Id. at 3, (Answer and Counterclaim ¶ 13).
7 Id. at ¶ 19.
8 6 TTABVUE.
Opposition No. 91227829
4
• The testimonial declaration of Seth Weisberg,9 Chief Legal Officer of Opposer,
with exhibits that include, inter alia, printouts from Opposer’s website
(www.stamps.com), printouts from Applicant’s website (www.imayl.com), and
a copy of a document that was “produced” by Applicant;10

• Opposer’s first notice of reliance,11 attaching copies of Applicant’s responses to
Opposer’s interrogatory nos. 9-12 and 19, and Opposer’s admission request no.
2.

• Opposer’s second notice of reliance,12 attaching copies of third-party
registrations for marks with an “I-” prefix, as well as printouts involving these
registrations from the Office’s electronic database TESS.
Applicant submitted the following evidence:
• Applicant’s first notice of reliance,13 attaching printouts of Opposer’s and
Applicant’s websites, copies of online dictionary definitions and other online
authoritative resources, and a copy of Reg. No. 4196916 for the mark TOPS
IMAIL and its file history.

• Applicant’s second notice of reliance,14 attaching copies of Opposer’s responses
to Applicant’s interrogatories and Applicant’s admission requests.15

• The testimonial declaration of David Vannoy,16 Applicant’s Vice President of
sales, with exhibits that include, inter alia, printouts from Applicant’s website,
Applicant’s promotional materials, and printouts from Opposer’s website.

9 9 TTABVUE.
10 Opposer’s witness, Mr. Weisberg, identified this document as “Exhibit 10” and averred that
it was “produced” by Applicant and that Applicant “identified” it as “Industry Vertical
Targets.” 9 TTABVUE 8 (Weisberg Decl. ¶ 21). Opposer did not identify the corresponding
discovery request for which this document was produced; however, Applicant did not raise
an objection to the introduction of this exhibit. In view thereof, any possible objection that
may have been raised is waived. See TBMP § 704.11 (June 2017), including decisions in Note
9.
11 10 TTABVUE.
12 14 TTABVUE.
13 11 TTABVUE.
14 12 TTABVUE.
15 We note that denials to admission requests cannot be submitted under notice of reliance;
thus, we have only considered the admission requests which have been admitted. See TBMP
§ 704.10.
16 13 TTABVUE.
Opposition No. 91227829
5
With its brief, Opposer attached an appendix listing objections to evidence
submitted by Applicant, including portions of Mr. Vannoy’s testimony and related
exhibits.17 The bases for the objections include: hearsay to the extent Applicant
attempts to rely on the truth of any statements made in some of the submitted printed
materials; relevance; improper matter for judicial notice; and lack of foundation.
Opposer also takes issue with the probative value or weight of certain testimony and
evidence.
Applicant responded in its brief to Opposer’s evidentiary objections.18
In light of the type of objected-to evidence and the bases of the objections, we
choose not to address them in this decision. The Board is capable of weighing the
relevance and strength or weakness of the objected-to testimony and evidence,
including any inherent limitations. As necessary and appropriate, we will point out
any limitations in the evidence, e.g., lack of foundation for testimony, or otherwise
note that the evidence cannot be relied upon in the manner sought, e.g., based on
improper hearsay. In doing so, we also keep in mind the various objections raised by
Opposer. We accord whatever probative value the subject testimony and evidence
merit. See Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1479
(TTAB 2017). We have noted where we have not considered evidence proffered.

17 15 TTABVUE 31-35.
18 16 TTABVUE 8-11.
Opposition No. 91227829
6
II. Standing in Opposition and Counterclaim Cancellation
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015). The U.S.
Court of Appeals for the Federal Circuit has enunciated a liberal threshold for
determining standing, namely that a plaintiff must demonstrate that it possesses a
“real interest” in a proceeding beyond that of a mere intermeddler, and “a reasonable
basis for his belief of damage.” Empresa Cubana Del Tabaco, 111 USPQ2d at 1062
(citing Ritchie v. Simpson, 170 F.3d 1902, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999)).
A “real interest” is a “direct and personal stake” in the outcome of the proceeding.
Ritchie v. Simpson, 50 USPQ2d at 1026.
In this case, Opposer made of record by notice of reliance a copy of its pleaded
registration for the mark I-MAIL, as well as TESS electronic database printouts
showing the registration’s current status and title.19 In addition, Opposer has
established that it is a “provider of online mailing and shipping solutions” and that it
provides software and services that allow “individuals, home offices, small
businesses, corporations, governmental entities, and other entities to print US
postage using any PC and an ordinary inkjet or laser printer directly onto envelopes,
plain paper, or labels.”20 In view thereof, Opposer has established its standing.

19 9 TTABVUE 11 (copy of registration) and 29-30 (TESS printouts).
20 Id. at 3 (Weisberg Decl. ¶¶ 3-4).
Opposition No. 91227829
7
Applicant’s standing to assert a counterclaim to cancel Opposer’s pleaded
registration is inherent in its position as defendant in the opposition proceeding.
Finanz St. Honore, B.V. v. Johnson & Johnson, 85 USPQ2d 1478, 1479 (TTAB 2007);
Carefirst of Md., Inc. v. FirstHealth of the Carolinas, Inc., 77 USPQ2d 1492, 1502-03
(TTAB 2005).
III.Counterclaim Cancellation – Genericness
We first address Applicant’s counterclaim to cancel Opposer’s pleaded, registered
mark, I-MAIL, on the ground of genericness. The viability of the registration
obviously has ramifications with respect to Opposer’s rights in the mark I-MAIL and
our likelihood of confusion analysis.
The Supreme Court has held that “[g]eneric terms are not registrable, and a
registered mark may be canceled at any time on the grounds that it has become
generic.” Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 224 USPQ 327,
329 (U.S. 1985) (citing 15 U.S.C. §§ 1052, 1064). This is so because “[g]eneric terms,
by definition incapable of indicating source, are the antithesis of trademarks, and can
never attain trademark status.” In re Merrill Lynch, Pierce, Fenner, & Smith, Inc.,
828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987); see also Princeton Vanguard,
LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827, 1830 (Fed. Cir. 2015).
A generic term “is the common descriptive name of a class of goods or services.”
Princeton Vanguard, 114 USPQ2d at 1830 (quoting H. Marvin Ginn Corp. v. Int’l
Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986)). “Because
generic terms ‘are by definition incapable of indicating a particular source of the
Opposition No. 91227829
8
goods or services,’ they cannot be registered as trademarks.” Id. (quoting In re Dial-
A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed. Cir. 2001));
see also In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1634 (Fed. Cir.
2016). “The critical issue in genericness cases is whether members of the relevant
public primarily use or understand the term sought to be protected to refer to the
genus of goods or services in question.” Princeton Vanguard, 114 USPQ2d at 1830
(quoting Marvin Ginn, 228 USPQ at 530). Making this determination “involves a two-
step inquiry: First, what is the genus of goods or services at issue? Second, is the term
sought to be registered ... understood by the relevant public primarily to refer to that
genus of goods or services?” Marvin Ginn, 228 USPQ at 530. See also Princeton
Vanguard, 114 USPQ2d at 1830 (“there is only one legal standard for genericness:
the two-part test set forth in Marvin Ginn”). “An inquiry into the public’s
understanding of a mark requires consideration of the mark as a whole.” Id. at 1831
(quoting In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1421 (Fed. Cir.
2005)). “Even if each of the constituent words in a combination mark is generic, the
combination is not generic unless the entire formulation does not add any meaning
to the otherwise generic mark.” In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92
USPQ2d 1682, 1684 (Fed. Cir. 2009) (quoting In re Steelbuilding.com, 75 USPQ2d
1420); see also Princeton Vanguard, 114 USPQ2d at 1832.
As to the first inquiry, involving the relevant genus of goods, this is often
adequately defined by the registration’s identification of goods. Magic Wand Inc. v.
RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) (“[A] proper
Opposition No. 91227829
9
genericness inquiry focuses on the description of [goods or] services set forth in the
certificate of registration.”). In this case, however, the registration’s identification of
goods is quite broad -- “computer program for the transmission of data between
multiple locations and the manuals for the program sold as a unit.” In particular, the
description of the software lacks any limitation to a field of use or an ultimate
intended purpose of the software. Indeed, the identification encompasses a wide array
of computer software programs that transmit data between multiple locations – for
example, it would include children’s interactive computer game software or it could
also include computer software programs for controlling the temperature within
nuclear reactors and providing warnings of overheating.
In spite of the broad description, Opposer argues that the identification of goods
should be the appropriate genus of goods for purposes of determining the genericness
of its mark.21 Applicant, on the other hand, asserts that the proper genus of goods for
consideration should be more specific to the purpose or function of Opposer’s software
– suggesting “downloadable computer program for use in mailing, namely, for
calculating and purchasing postage over the internet and printing postage on labels,
envelopes and plain paper.”22 Essentially, Applicant argues that the record shows
that this is precisely the nature of Opposer’s software.
We construe the relevant genus of goods as suggested by Opposer, i.e., the broad
description of goods listed in the registration. However, we do not believe that this

21 17 TTABVUE 12 (“the genus of goods is properly viewed as computer programs for the
transmission of data”).
22 16 TTABVUE 22.
Opposition No. 91227829
10
necessarily affects our genericness determination because, as mentioned, the
registration’s identification is sufficiently broad to encompass various subcategories
of software, including that suggested by Applicant. As the Federal Circuit explained
in Cordua Restaurants, generic words for subcategories of a genus are also ineligible
for trademark protection:
Cordua argues that even if “churrascos” is generic as to “churrasco
restaurants” (also known as “churrascarias”), it is not generic as to all
restaurant services. But a term is generic if the relevant public
understands the term to refer to part of the claimed genus of goods or
services, even if the public does not understand the term to refer to the
broad genus as a whole. Thus, the term “pizzeria” would be generic for
restaurant services, even though the public understands the term to refer
to a particular sub-group or type of restaurant rather than to all
restaurants.

In re Cordua Rests., 118 USPQ2d at 1638 (quoting Anne Gilson LaLonde, 1-2 GILSON
ON TRADEMARKS § 2.02[7][a] (2011): A “term need not refer to an entire broad species,
like ‘cheese’ or ‘cake,’ in order to be found generic.”). See RESTATEMENT (THIRD) OF
UNFAIR COMPETITION § 15 cmt. a (1995) (“A term that denominates a subcategory of
a more general class, such as ‘light’ used with beer or ‘diet’ with cola, is also generic.”).
As for the “relevant public,” Opposer has identified its “prospective consumer[s]”
as:23
[a]nyone who regularly ships packages or mails letters or flats. As such,
Opposer’s prospective customers are not limited to any particular industry;
instead, Opposer has more than 20 million potential customers across
virtually every industry. Opposer’s target customer segments include
individual mailers; small business and home office mailers; enterprise
mailers; ecommerce shippers; and high volume shippers.

23 12 TTABVUE 28-29 (Opposer’s response to Applicant’s interrogatory no. 7).
Opposition No. 91227829
11
We therefore consider these persons to be the relevant public in determining the
manner in which I-MAIL is understood in the context of the genus of goods, which
includes downloadable computer programs for use in mailing, namely, for calculating
and purchasing postage over the internet and printing postage on labels, envelopes
and plain paper.
Applicant asserts that “[b]ased on dictionary definitions and other reference
materials, ‘I-’ in I-MAIL means the internet” and “‘MAIL’ means ‘letters, packages,
etc., that are sent or delivered by means of the postal system.’”24 Specifically,
Applicant relies on the following provided meanings and information for the prefix
“I-” and the word “mail”:
• I-anything
An “I” placed before a word or phrase usually stands for “Internet.” Unlike e-
anything, where the “e” actually describes something that’s electronic (such as
e-journal) I-anything is almost always used for some kind of marketing or
media hype.
[from “Netlingo” website (www.netlingo.com)];25

• i-
Prefix
1. Alluding to the internet.
[from “Wiktionary, the free dictionary” website (www.en.wiktionary.org)];26

• “i”
Internet-related prefixes such as e-, i-, cyber-, info-, techno- and net- are added
to a wide range of existing words to describe new, Internet- or computer-related
flavors of existing concepts, often electronic products and services that already
have a non-electronic counterpart. The adjective virtual is often used in a
similar manner.
…

24 16 TTABVUE 24.
25 11 TTABVUE 22.
26 Id. at 24-25.
Opposition No. 91227829
12
The i prefix was used as early as 1994 by iVillage, an internet community site
by and for women. More recent examples include the BBC's iPlayer, and
Google's former iGoogle service. It has even been used by companies not in the
IT sector for their websites, such as Coca-Cola's now-defunct icoke.com. Apple
Inc. is especially connected to the i prefix. They first employed it for the iMac
line of computers starting in 1998, and have since used it in many of their other
product names, including iPod, iPhone, iTunes, iCloud, iMessage, and others.
They have said it stands for “Internet.”
[from “Wikipedia, the free encyclopedia” website (www.en.wikipedia.org),
internal citation to authorities omitted];27

• What does I stand for?
I Internet
[from “Definition by AcronymFinder” website (www.acronymfinder.com)];28

• The i-mania and Apple – the origin of the ‘I’ prefix
[article from “HighNames” website (www.highnames.com) discussing Apple’s
adoption of “i” prefix, without any reference to the prefix being an abbreviation
for “Internet”];29 and

• Mail
Noun
1. letters, packages, etc., that are sent or delivered by means of the postal
system.
[from “Dictionary.com” website (www.dictionary.com), definition “based on the
Random House Dictionary, Random House, Inc. 2017”].30

Applicant, in arguing against the likelihood of confusion refusal, also points to a
third-party registration for the mark TOPS IMAIL (with a disclaimer of IMAIL) for
“providing temporary use of online non-downloadable software for enabling users to
organize and manage e-mails hosted on a web server for property management

27 Id. at 30-31.
28 Id. at 34.
29 Id. at 41-43.
30 Id. at 45-47.
Opposition No. 91227829
13
communications.”31 Applicant asserts, in this part of its brief, that I-MAIL “is merely
descriptive of software for mailing that is accessible over the internet.”32
Applicant’s genericness argument rests almost exclusively on the individual
defined meanings of the prefix “I-” and the word “mail.” There is no evidence of third-
party use of the prefix “I-” or the term “mail” being used to describe a type of
software.33 However, as the Board has held recently, this type of evidence is not
essential for purposes of establishing genericness and other evidence may take its
place. See In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1958 (TTAB 2018)
(MECHANICALLY FLOOR-MALTED found generic; “The fact that there is no
evidence of third-party use of the precise term ‘mechanically floor-malted’ is not, by
itself, necessarily fatal to a finding of genericness.”). As the Board explained in Mecca
Grade Growers, other evidence accompanying the definitions of the component terms
may be used to show that the constituent parts of the mark retain their generic
meaning and, when placed together, the overall mark would be understood as a
generic designation for goods or services. Id. at 1958 (in addition to dictionary
definitions, Board relied on “industry specific evidence demonstrating the use of the
[mark’s constituent] words … and demonstrating how these words may be used

31 Id. at 53-54; Reg. No. 4196916 issued August 28, 2012.
32 16 TTABVUE 16.
33 Applicant submitted a copy of a single third-party registration for the mark TOPS IMAIL
(Reg. No. 4196916) for “providing temporary use of online nondownloadable software for
enabling users to organize and manage e-mails hosted on a webserver for property
management communications” (IMAIL disclaimed). 11 TTABVUE 53-54. This lone
registration is not evidence that the mark has been actually used or that consumers have
even been exposed to this mark.
Opposition No. 91227829
14
together. These examples clearly show the meanings that relevant consumers
attribute to those words when they are used separately and when they are used
together.”) The oft-cited Federal Circuit decision In re Gould Paper Corp., 834 F.2d
1017, 5 USPQ2d 1110 (Fed. Cir. 1987) also involved a finding that a term
(SCREENWIPE) was generic based on the plain meaning of the component words
without evidence of third-party use of the term. In Gould, the Federal Circuit made
a point to state that “the most damaging evidence that [the] alleged mark is generic”
was the applicant’s own marketing brochure because it illustrated the mark “would
be perceived by the purchasing public as merely a common name for its goods rather
than a mark identifying the good’s source.” 5 USPQ2d at 1112.34
In this case, it has not been proven by a preponderance of the evidence that
Opposer’s mark I-MAIL would be understood by the relevant public primarily as a
reference to a genus, or subcategory, of software used for transmitting data between
multiple locations. In particular, it has not been shown that the “I-” prefix, by itself
or in conjunction with MAIL, is primarily understood as a reference to a type of
software. As outlined supra, some of the materials submitted by Applicant leave some
doubt as to the significance and the public’s understanding of this prefix. The
Netlingo website actually downplays the informational nature of the “I-” prefix –
noting it is “unlike” an E prefix which “actually describes something, whereas I-

34 As pointed out by the Board in In re Mecca Grade Growers, the Federal Circuit’s Princeton
Vanguard decision “was explicit in not overruling” Gould; rather, the former decision
contains a lengthy, elaborated discussion regarding the court’s rationale for coming to a
genericness conclusion in Gould. See In re Mecca Grade Growers, 125 USPQ2d 1957-1958
(citing Princeton Vanguard, 114 USPQ2d at 1831).
Opposition No. 91227829
15
anything is almost always used for some kind of marketing or media hype.” Likewise,
the Wiktionary website characterizes an “I-” prefix as merely “alluding to the
internet.” Ultimately, we do not have sufficient evidence demonstrating that the
relevant public would readily understand an “I-” formative term to describe a common
name or type of software.
The record in this proceeding differs significantly from the amount and type of
evidence present in the aforementioned Mecca Grade Growers or Gould cases. That
is, we do not have what the Board relied upon in Mecca Grade Growers, namely,
“industry specific evidence demonstrating the use of the [mark’s constituent] words
… and demonstrating how these words may be used together.” 125 USPQ2d at 1958.
And, unlike Gould, the evidence involving Opposer’s own use of its mark does not
demonstrate that consumers would primarily understand the “I-” prefix as a generic
component of Opposer’s I-MAIL mark.
Accordingly, Applicant has failed to meet its burden in proving that Opposer’s I-
MAIL mark is generic. The counterclaim therefore is dismissed.
IV. Priority
Because we have dismissed Applicant's counterclaim, Opposer is entitled to rely
on its pleaded registration. Priority is thus not at issue with respect to the mark and
goods identified in the pleaded registration vis-à-vis the goods and services listed in
the involved application. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108, 110 (CCPA 1974).35

35 As discussed supra (with respect to genericness and the appropriate genus and likelihood
Opposition No. 91227829
16
V. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence relevant to the factors set forth in In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (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 services and the similarities between the marks. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods [or services] and differences in the
marks.”).
A. Similarity of the Marks
The first du Pont factor is the similarity of the parties’ marks. In a likelihood of
confusion analysis, we compare the marks in their entireties for similarities and
dissimilarities in appearance, sound, connotation and commercial impression. Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1160 (Fed. Cir. 2014). “The proper test is not a side-by-side comparison of the marks,

of confusion analysis involving the relatedness of the goods and services), the identification
of goods in Opposer’s pleaded registration is broad and includes the more narrowly-described
software for which Opposer has asserted common law rights in the mark I-MAIL (namely,
software used “in the field of postage, shipping and mailing”). Furthermore, although
Opposer asserted common law rights in the same mark for services, we will limit our
likelihood of confusion analysis to Opposer’s software as it is described in the registration. As
a result, in this case, we do not reach the question as to whether Opposer has proven that it
has prior, proprietary common law rights in I-MAIL for any goods or services not covered by
the registration. Cf. Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40,
43 (CCPA 1981).
Opposition No. 91227829
17
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) (quotation omitted).
In this case, we find the marks to be extremely similar in appearance, sound,
connotation, and overall commercial impression. Indeed, Applicant’s mark, IMAYL,
is essentially a mere, novel spelling of the registered mark, I-MAIL. Although there
is no “correct” pronunciation of a mark, In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1912 (Fed. Cir. 2012), we find that consumers are most likely to verbalize
Applicant’s mark IMAYL as if it were spelled with the letter “I” instead of “Y.” See,
e.g., Fleetwood Co. v. Mende, 298 F.2d 797, 132 USPQ 458, 460 (CCPA 1962) (noting
that TINTZ is a phonetic spelling of “tints”); In re Carlson, 91 USPQ2d 1198, 1201
(TTAB 2009) (finding URBANHOUZING phonetically identical to URBAN
HOUSING). The presence of the hyphen in Opposer’s mark does not distinguish it
from Applicant’s mark. Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701,
1712 (TTAB 2010) (finding that hyphen does not distinguish MAG-NUM from
MAGNUM), aff’d mem., 2011 WL 5400095 (Fed. Cir. Nov. 9, 2011).
As to the meaning or commercial impression of the marks, they are both likely to
be understood as referring to “mail” and possibly with an Internet component to the
goods or services. That is, given the context of Applicant’s identified goods and
services, which both involve mail, consumers will be predisposed to understand the
element MAYL as at least suggestive of the mail tracking features of Applicant’s
Opposition No. 91227829
18
software goods and application services. As discussed supra, the “I” element in the
marks will likely be understood as suggestive or alluding to an Internet feature of the
parties’ goods and services – again, Applicant describes its mail tracking application
services as being accessible via the Internet. As a result, the marks IMAYL and I-
MAIL heavily suggest the parties’ goods and services involve a mail-related feature
with an Internet component or characteristic.
In sum, we find that the marks IMAYL and I-MAIL are very similar in
appearance, sound, meaning, and commercial impression, and that the first du Pont
factor favors a finding of likelihood of confusion
B. Strength of Opposer’s I-MAIL Mark
In arguing that the marks are dissimilar, Applicant asserts that “I-MAIL is
merely descriptive of software for mailing that is accessible over the internet. As such,
‘I-MAIL’ must be accorded a narrow scope of protection.”36 Applicant is essentially
challenging the inherent strength of Opposer’s mark, based on the nature of the mark
itself, as opposed to its commercial strength which is based on the marketplace
recognition value of the mark. See In re Chippendales USA, Inc., 622 F.3d 1346, 96
USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its
conceptual strength (distinctiveness) and its marketplace strength (secondary
meaning).”); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1171-72
(TTAB 2011) (the strength of a mark is determined by assessing its inherent strength
and its commercial strength).

36 16 TTABVUE 16.
Opposition No. 91227829
19
In determining the inherent strength of Opposer’s mark, we initially point out
the genericness claim has been dismissed and a mere descriptiveness claim has not
been made; indeed, a descriptiveness claim is time-barred because the registration is
more than five years old. See Section 14(3) of the Trademark Act, 15 U.S.C.
§ 1064(3); see also Milliken & Co. v. Image Indus. Inc., 39 USPQ2d 1192, 1195 n.7
(TTAB 1996). Accordingly, because the registration is no longer being challenged and
it resides on the Principal Register, it “is entitled to all Section 7(b) presumptions
including the presumption that the mark is distinctive and moreover, in the absence
of a Section 2(f) claim in the registration, that the mark is inherently distinctive for
the goods.” Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB
2006), referencing Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b); see also
Nat’l Pork Bd. v. Supreme Lobster and Seafood Co., 96 USPQ2d 1479 (TTAB 2010).
Nevertheless, based on the meanings of its component terms (discussed supra),
we are able to find that there is some inherent weakness to Opposer’s mark. It is
suggestive of functions or features of the software. Specifically, when viewed in the
context of the software, the mark implies a connection with a mail(ing) feature or
purpose and also suggests that the software can be accessed or operated via the
Internet. Unlike a fanciful or arbitrary mark, Opposer’s inherently weak mark does
not enjoy the wide latitude of protection afforded to owners of strong trademarks. On
the other hand, the record does not show that this mark has been weakened as a
source identifier by third-party use of marks that include I-MAIL or other similar
designations. Cf. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New
Opposition No. 91227829
20
Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir.
2015) (“evidence of third-party use of similar marks on similar goods ‘can show that
customers have been educated to distinguish between different marks on the basis of
minute distinctions.”’) (quoting Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d
1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015)).
Accordingly, we find that Opposer’s mark I-MAIL is conceptually weak due to its
suggestive meaning, but further find no commercial weakness in this term. We are
also mindful that “[i]t has often been emphasized that even weak marks
are entitled to protection against confusion.” Hunt Control Sys. Inc. v. Koninklijke
Philips Elecs. N.V., 98 USPQ2d 1558, 1567-68 (TTAB 2011) (quoting King Candy
Co., 182 USPQ at 109).
C. Relatedness of Goods and Services; Trade Channels
We turn now to the second du Pont factor which concerns the “similarity or
dissimilarity and nature of the goods or services as described in an application or
registration . . . .” Stone Lion Capital Partners, LP v. Lion Capital LLP, 110 USPQ2d
at 1159, and the third du Pont factor involving the trade channels of the goods and
services.
With the above in mind, we must address once more the fact that Opposer’s
pleaded registration describes the software goods very broadly -- “computer program
for the transmission of data between multiple locations.” As the Board acknowledged
in a recent ex parte decision that also involved software, an unrestricted or broadly-
described identification of goods in a registration can create issues for others; however
Opposition No. 91227829
21
“we [the Board] lack the authority to read limitations into the
identification, including a specification of the function of the [software application],
or to ‘grant relief under Section 18 sua sponte.’” In re Solid State, 125 USPQ2d 1409,
1414 (TTAB 2018) (citing In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744,
1748 (Fed Cir. 2017) and quoting In re Cook Med. Tech. LLC, 105 USPQ2d
1377, 1384 n. 6 (TTAB 2012)).37 Indeed, in Solid State, the Board held that because
the function of software in a cited registration was not specified, it must be construed
as encompassing the particular purpose and function of applicant’s software, and “the
goods as identified must be deemed to be legally identical in part . . . .” Id.
Likewise, in this case, Opposer’s “computer program for the transmission of data
between multiple locations” encompasses Applicant’s “computer software for use in
mail management, namely, creating and developing invoices, tracking inbound
parcels, tracking mail, sending mail alerts, scanning parcels, tendering invoices,
verifying postage, and monitoring and managing productivity and processes” because
the latter clearly involves the transmission of data. Indeed, Applicant’s own materials
demonstrate how Applicant’s IMAYL software transmits information or data between

37 The Board elaborated in Solid State:
We are obligated to decide this appeal on the basis of the registration that was issued.
… We note, however, that an applicant has the option of “seeking a consent from the
owner of the cited registration, or seeking a restriction of the registration under
Section 18 of the Trademark Act, 15 U.S.C. §1068,” which permits the Board in an
inter partes proceeding “to cancel registrations in whole or in part, or to ‘otherwise
restrict or rectify … the registration of a registered mark.’” Id. at 1410. [Internal
citations omitted].
The instant proceeding is inter partes and thus a claim under Section 18 to restrict the
pleaded registration could have been asserted by Applicant by way of a counterclaim. We
make no comment whether such a claim would have merit. In any event, a Section 18 claim
was neither pleaded nor argued herein.
Opposition No. 91227829
22
multiple locations “to improve visibility … receiving and tracking for internal mail
packages once a carrier has delivered them to your facility”:38

Ultimately, Applicant’s software is encompassed by the goods described in
Opposer’s pleaded registration and, accordingly, the involved goods are in-part legally
identical. When the respective identifications of goods overlap or list legally identical
goods, and without restrictions as to channels of trade or classes of purchasers, as is
the case here, those legally identical goods are further presumed to travel in the same
channels of trade to the same class of purchasers. In re Viterra, Inc., 101 USPQ2d
1908; Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001,
1005 (Fed. Cir. 2002) (citing CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed.
Cir. 1983) (“[A]bsent restrictions in the application and registration, goods and
services are presumed to travel in the same channels of trade to the same class of
purchasers.”)). Thus, because the goods at issue are legally identical, at least in part,
we presume the trade channels and classes of purchasers are the same for both
Opposer’s and Applicant’s identical goods.
There is also little, if any, meaningful difference with respect to Applicant’s
services inasmuch as they include “providing” software that is also encompassed and

38 11 TTABVUE 7.
Opposition No. 91227829
23
thus legally identical to Opposer’s software. In other words, should Applicant be
providing access to the same software that Opposer sells, the same consumers would
obviously be interested in the goods and services.
In view of the above, we find the du Pont factor involving the relatedness of the
goods and services, given their legal identity or near legal identity, weighs strongly
in favor of finding a likelihood of confusion. Moreover, given the presumption that the
legally identical goods will also be found in the same trade channels, the du Pont
factor involving trade channels for the goods and services weighs in favor of finding
a likelihood of confusion.
D. Lack of Actual Confusion
Applicant makes a brief assertion in its brief that “[d]espite two years of
coexistence, neither party is aware of a single instance of actual confusion.”39 It is not
necessary to show actual confusion in order to establish likelihood of
confusion. Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375,
1380 (Fed. Cir. 2002); Weiss Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 14
USPQ2d 1840, 1842-43 (Fed. Cir. 1990). Yet, as our primary reviewing court has
stated, “extended periods of side-by-side sales without actual confusion may tend to
refute a likelihood of confusion. . . .” Han Beauty Inc. v. Alberto-Culver Co., 236 F.3d
1333, 57 USPQ2d 1557, 1560-61 (Fed. Cir. 2001). Two years of coexistence is not an
extensive period of coexistence, and we are not persuaded that there has been a

39 16 TTABVUE 21. In support, Applicant cites to the declaration of its Vice President, Mr.
Vannoy, who avers that “I have not been aware of any instances of actual confusion” between
the marks (13 TTABVUE 4), as well as Opposer’s admission that “at the present time, it is
not itself aware of specific instances of actual confusion” (12 TTABVUE 15).
Opposition No. 91227829
24
meaningful opportunity for actual confusion to have occurred. See Barbara’s Bakery
Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007). Accordingly, we find the
eighth du Pont factor neutral.
E. Balancing of Factors - Conclusion
We have considered all of the evidence pertaining to the relevant du Pont factors,
as well as the parties’ arguments with respect thereto (including any evidence and
arguments not specifically discussed in this opinion). In balancing the relevant du
Pont factors, we conclude that the similarity of the marks, the legal identity of the
goods moving in the same trade channels or close relatedness of the goods and
services, all offered to the same classes of purchasers, indicate a likelihood of
confusion. Although we find a degree of inherent weakness in Opposer’s mark, its
scope of protection is not so restricted as to deprive the mark of all protection, and
given the aforementioned factors, we find that a likelihood of confusion exists
between Applicant’s mark, IMAYL, and Opposer’s registered mark, I-MAIL.
Decision: Applicant’s counterclaim to cancel Opposer’s pleaded registration is
DISMISSED. The opposition is SUSTAINED on Opposer’s claim of likelihood of
confusion under Section 2(d).