87258464 (T.T.A.B. Aug. 15, 2019)

Star2Star Communications LLC

Trademark Trial and Appeal BoardAug 15, 2019

87258464 (T.T.A.B. Aug. 15, 2019)

This Opinion is Not a Precedent of the TTAB Mailed: August 15, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Star2Star Communications, LLC _____ Serial No. 87258464 _____ Katharyn E. Owen for Star2Star Communications, LLC. Jason Malashevich, Trademark Examining Attorney, Law Office 114, Laurie Kaufman, Managing Attorney. _____ Before Wolfson, Larkin, and Hudis, Administrative Trademark Judges. Opinion by Larkin, Administrative Trademark Judge: Star2Star Communications, LLC (“Applicant”) seeks registration on the Principal Register of the mark STARPHONE in standard characters for “downloadable computer application software for desktop computers, tablets, and mobile devices which allows a user to make and receive voice over internet protocol (VoIP) calls via a subscription-based unified communications service, and includes presence Serial No. 87258464 - 2 - management tools, voicemail, direct inward dialing, faxing features, and chat features,” in International Class 9.1 The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that it so resembles the registered mark STARPHONE in standard characters for the following goods: Mobile telephones; cordless, wireless or satellite telephones; dedicated network computer terminals for telecommunications, facsimiles, communicators; smart telephones, namely, telephones with capability of transmitting data voice and images and accessing the internet, sending and receiving e-mail; antennas, batteries, battery chargers, power supplies, housings, casings, covers, clips, and carrying cases for mobile telephones, PDAs and computers and carrying cases for accessories therefor; accessories for mobile telephones, PDAs, and computers namely, microphones, speakers, headsets, batteries, covers and battery chargers, holders and desktop stands; mobile telephone accessories in the nature of hands free holders, headsets, microphones and speakers for mobile telephones; car kits for the adaptation of portable communication apparatus and instruments for vehicular use, comprising cables, earphones, hands free microphones, phone holders, speakers, car chargers, data cables and electrical wires; telephone stands being parts of telephones; electric adaptor cables; telephone cables; apparatus for recording, storing, transmission, receiving or reproducing of data, sound, images; electrical cables and optical fibers cables; electronic systems and apparatus, namely, scramblers, descramblers, encoders and decoders, for scrambling, descrambling, encoding and/or decoding of voice, data, image and video transmissions; electronic data input and output apparatus, namely, terminals, receivers, 1 Application Serial No. 87258464 was filed on December 6, 2016 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s claim of first use of the mark anywhere and first use in commerce since at least as early as January 17, 2013. Applicant did not designate an International Class for the identified software when Applicant filed its application, but as discussed below the software was classified as goods in Class 9. Serial No. 87258464 - 3 - transmitters, decoders, and transceivers capable of processing broadcast, in International Class 9,2 as to be likely, when used on or in connection with the goods identified in the application, to cause confusion, to cause mistake, or to deceive. After the Examining Attorney made the refusal final, Applicant appealed and requested reconsideration, 4 TTABVUE,3 which was denied. 5-7 TTABVUE. Applicant and the Examining Attorney have filed briefs. We affirm the refusal to register. I. Record on Appeal The record on appeal includes Applicant’s original and substitute specimens,4 and Internet webpages showing the use of marks in connection with Applicant’s goods and one or more of the goods identified in the cited registration, made of record by the Examining Attorney.5 2 The cited Registration No. 4761774 issued on June 23, 2015. 3 Citations in this opinion to the briefs and the reconsideration request refer to TTABVUE, the Board’s online docketing system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Specifically, the number preceding TTABVUE corresponds to the docket entry number, and any numbers following TTABVUE refer to the page number(s) of the docket entry where the cited materials appear. 4 December 6, 2016 Specimen at TSDR 1-6; September 6, 2017 Substitute Specimen at TSDR 1-2. All citations in this opinion to the application record are to pages in the Trademark Status & Document Retrieval (“TSDR”) database of the United States Patent and Trademark Office (“USPTO”). 5 March 9, 2017 Office Action at TSDR 8-40; April 6, 2018 Final Office Action at TSDR 5-49; 5-7 TTABVUE (October 25, 2018 Denial of Request for Reconsideration). Serial No. 87258464 - 4 - II. Analysis of Likelihood of Confusion Refusal Section 2(d) of the Trademark Act prohibits registration of a mark that so resembles a registered mark as to be likely, when used on or in connection with the goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C. § 1052(d). Our determination of likelihood of confusion under § 2(d) is based on an analysis of all probative facts in the record that are relevant to the likelihood of confusion factors set forth in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). We consider each DuPont factor for which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Two key factors in every § 2(d) case are the similarity or dissimilarity of the marks and the goods or services because 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.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). Both Applicant and the Examining Attorney address these key factors. 9 TTABVUE 7-10; 11 TTABVUE 7- 14. Both also briefly discuss the third DuPont factor, the similarity or dissimilarity of established, likely-to-continue trade channels, 9 TTABVUE 10; 11 TTABVUE 15, and the fourth DuPont factor, the sophistication of the relevant consumers. 9 TTABVUE 10; 11 TTABVUE 15. Serial No. 87258464 - 5 - A. Similarity or Dissimilarity of the Marks The first DuPont factor considers “‘the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.’” Palm Bay Imps., Inc. v. Veuve Cliquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting DuPont, 177 USPQ at 567). The registered and applied-for STARPHONE standard character marks are identical in all respects.6 The first DuPont factor thus strongly supports a finding of a likelihood of confusion. See, e.g., In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017) (where marks are identical and neither suggestive nor descriptive of the subject goods, “the first DuPont factor ‘weighs heavily’ in favor of a likelihood of confusion”) (quoting In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003)). B. Similarity or Dissimilarity of the Goods and Channels of Trade The second DuPont factor “considers ‘[t]he similarity or dissimilarity and nature of the goods or services as described in an application or registration,’” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (quoting DuPont, 177 USPQ at 567), while the third DuPont factor “considers ‘[t]he similarity or dissimilarity of established, likely-to-continue trade channels.’” Id. at 1052 (quoting DuPont, 177 USPQ at 567). Our analysis under these factors is based on the 6 Applicant purports to argue that “The Parties’ Marks are Not Confusingly Similar,” 9 TTABVUE 7, but we agree with the Examining Attorney that this “argument conflates the ‘similarity of the marks’ and ‘relatedness of the goods/services’ duPont factors,” 11 TTABVUE 8, because it focuses on the claimed difference in the goods. 9 TTABVUE 7-8. Serial No. 87258464 - 6 - identifications of goods in the application and cited registration. Id.; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161- 63 (Fed. Cir. 2014). It is “‘not necessary that the products . . . be identical or even competitive to support a finding of a likelihood of confusion.’” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven, Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). “[L]ikelihood of confusion can be found ‘if the respective products are related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.’” Id. (quoting 7-Eleven, 83 USPQ2d at 1724). Where, as here, the marks are identical, “[i]t is only necessary that there be a ‘viable relationship between the goods’ to support a finding of likelihood of confusion.” Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1471 (TTAB 2016) (quoting L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012)); see also In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993) (“even when goods or services are not competitive or intrinsically related, the use of identical marks can lead to the assumption that there is a common source”); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech Inc., 90 USPQ2d 1634, 1636 (TTAB 2009). The goods identified in the application are “downloadable computer application software for desktop computers, tablets, and mobile devices which allows a user to make and receive voice over internet protocol (VoIP) calls via a subscription-based Serial No. 87258464 - 7 - unified communications service, and includes presence management tools, voicemail, direct inward dialing, faxing features, and chat features.” There is a lengthy recitation of goods in the cited registration, but the Examining Attorney’s argument on the similarity of the goods focuses on the fact that “Applicant provides software that enables consumers to make voice calls over the Internet through a unified communications service,” while the registrant “provides a wide variety of telecommunications equipment, including a variety of phones (which are used to communicate by voice) and apparatus for recording, storing, transmission, receiving or reproducing of data, sound, [and] images.” 11 TTABVUE 12. “Likelihood of confusion may be found based on any item that comes within the identification of goods in the involved application and registration.” Davey Prods., 92 USPQ2d at 1202 (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)). Like the Examining Attorney, we will focus on the goods identified in the cited registration as “mobile telephones,” “cordless, wireless or satellite telephones,” and “smart telephones, namely, telephones with capability of transmitting date voice and images and accessing the internet,” as well as “apparatus for recording, storing, transmission, receiving or reproducing of data, sound, [and] images.” The Examining Attorney claims that the goods are related for two reasons. First, he argues that it “is obvious from the face of the goods themselves that Applicant’s VOIP software and Registrant’s telephone goods serve the same or related purposes, namely, to enable consumers to communicate by voice.” 11 TTABVUE 12. Second, the Serial No. 87258464 - 8 - Examining Attorney cites “record evidence showing that goods like those of Applicant and Registrant may be provided by the same entities under a common source indicator, and that such goods may travel in the same channels of trade to the same classes of purchasers,” id., in the form of webpages showing the sale of what the Examining Attorney describes as “applications for accessing VOIP services” and telephones and related devices under the same mark. Id. at 13. Applicant responds that although the cited registration covers “‘telephones with capability of transmitting data voice and images and accessing the Internet,’” 9 TTABVUE 9, Applicant’s “identifications discuss services of ‘downloadable computer application software for desktop computers, tablets, and mobile devices which allows a user to make and receive Voice over Internet Protocol (VoIP calls).’” Id. Applicant further argues that [o]ffering mobile telephones and telecommunications equipment as a good and offering downloadable computer application software for mobile devices as a service cannot be construed as similar or even substantially similar, especially upon application of the Coach Servs. test in which no consumer or business entity user of the Registrant’s access to goods or Applicant’s described services as a service would assume a connection between Applicant and Registrant. The type of “services” at issue here are so dissimilar that a substantial likelihood of confusion between the two is impossible to connect. Id.7 Applicant acknowledges, and attaches to its brief, webpages cited by the Examining Attorney, id. at 5-6, 12-45, but Applicant does not discuss them. 7 Application also claimed during prosecution that it was providing a service and purported to classify its software in Class 42, September 6, 2017 Response to Office Action at TSDR 5, but the Examining Attorney required an amendment to reclassify it in Class 9. September 26, 2017 Office Action at TSDR 1. When Applicant disputed such reclassification, March 9, Serial No. 87258464 - 9 - Goods may be related for several reasons. One is “conjoint use” (where goods are likely to be purchased and used together). See, e.g., In re Davia, 110 USPQ2d 1810, 1815 (TTAB 2014) (citing Scholl Dental Lab. Co. v. McKesson & Robbins, Inc., 150 F.2d 718, 66 USPQ 223, 226 (CCPA 1945)). The identifications of goods in the application and cited registration show that the goods are used together by definition. Applicant’s identification recites that its “downloadable computer application software” is used with “mobile devices” for the purpose of allowing the “user to make and receive voice over internet protocol (VoIP) calls via a subscription-based unified communications service, and includes presence management tools, voicemail, direct inward dialing, faxing features, and chat features.” In the context of the identification as a whole, the phrase “mobile devices” covers various mobile telephones, which may be used “to make and receive [VoIP] calls . . . .” This is confirmed by Applicant’s original specimen, which illustrates the use of its software with goods falling within the identifications of “mobile telephones,” “cordless, wireless or satellite telephones,” and “smart telephones, namely, telephones with capability of transmitting date voice and images and accessing the internet” in the cited registration: 2018 Response to Office Action at TSDR 2, the Examining Attorney responded that the “TEAS portion of [Applicant’s prior] Response reclassifies Applicant’s identified goods/services in International Class 9,” and advised Applicant that “having provided a definite and unambiguous amended identification of ‘downloadable software’” in its prior response, “any attempt to amend the identification to ‘Software as a Service services’ or ‘online non-downloadable software,’ which are service forms of software, would be rejected on the ground that such amendments would exceed the scope of the identification as acceptably amended.” April 6, 2018 Final Office Action at TSDR 1. “‘[T]he question of proper classification is not a substantive one and therefore not a matter for appeal.’” In re Faucher Indus. Inc., 107 USPQ2d 1355, 1358 (TTAB 2013) (quoting In re Tee-Pak, Inc., 64 USPQ 88, 89 (TTAB 1969)). In this application, Applicant seeks registration for goods, not services, and we will analyze the second DuPont factor accordingly. Serial No. 87258464 - 10 - 8 The original specimen also characterizes Applicant’s STARPHONE software as an upgrade to a smart phone: 9 Applicant’s substitute specimen displays an iPhone screenshot as an example of the use of Applicant’s software: 8 December 6, 2016 Specimen at TSDR 2. 9 Id. at TSDR 6. Serial No. 87258464 - 11 - 10 Goods may also be related because they are commonly offered under the same mark. See, e.g., Davey Prods., 92 USPQ2d at 1203. Applicant’s original specimen offers both smart phone application software and VoIP phones as part of a hardware and software package offered under Applicant’s house mark: 10 September 6, 2017 Response to Office Action at TSDR 6. Serial No. 87258464 - 12 - 11 The Examining Attorney also made of record webpages showing the use of the same mark for smart phone application software and one or more of the goods identified in the cited registration, or the offering of application software and a VoIP phone as part 11 December 6, 2016 Specimen at TSDR 6. Serial No. 87258464 - 13 - of a hardware and software package like Applicant’s. We reproduce three examples below: 12 13 12 April 6, 2018 Final Office Action at TSDR 10. 13 Id. at TSDR 9. Serial No. 87258464 - 14 - 14 15 16 14 April 6, 2018 Final Office Action at TSDR 32. 15 Id. at TSDR 37. 16 Id. at TSDR 38. Serial No. 87258464 - 15 - 17 18 Against the backdrop of the inherent conjoint use of the goods identified in the application and cited registration, the record as a whole, including Applicant’s specimens, establish that there is far more than just a “viable relationship” between the goods. The respective goods in the application and cited registration are closely 17 5 TTABVUE 8 (October 25, 2018 Denial of Request for Reconsideration). 18 Id. at 5. Serial No. 87258464 - 16 - related, and the second DuPont factor thus strongly supports a finding of a likelihood of confusion given the identity of the marks. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (where goods are related because of complementary use, “the association of identical trademarks with these products is likely to produce confusion when the products are not of common origin”). With respect to the third DuPont factor regarding channels of trade, Applicant argues that the cited registrant “markets its goods to end-users through storefront locations whereas the Applicant markets its services as part of a full spectrum unified communications offering to business end-users via the Internet and through a third- party sales channel.” 9 TTABVUE 10. Applicant acknowledges that “the Registrant’s and Applicant’s products and services . . . may travel in commerce to reach end users,” id., but claims that “the same end users, whether consumers or business purchasers, would not encounter these marketing materials in the same manner,” and that “Registrant’s goods and Applicant’s services are not offered in the same channels of trade.” Id. According to Applicant, its “purchasers are business entities, whereas Registrant’s purchasers are consumers.” Id. We agree with the Examining Attorney that “neither Applicant’s nor Registrant’s identification of goods contains any restrictions as to channels of trade and classes of purchasers.” 11 TTABVUE 15.19 In the absence of such restrictions, the identified 19 We disagree, however, with the Examining Attorney’s argument that in the absence of such restrictions, “the channels of trade and classes of purchasers are presumed to be the same.” 11 TTABVUE 14 (citing In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (internal citation omitted)). Such a presumption applies only where, as in Viterra, the goods are identical. Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018). Because the goods here are not identical, the ordinary channels of trade and Serial No. 87258464 - 17 - goods are presumed to travel in all ordinary channels of trade for such goods and to reach all ordinary consumers of such goods. Davia, 110 USPQ2d at 1818. Even if Applicant currently markets its goods only to “business entities,” goods broadly identified as “downloadable computer application software for desktop computers, tablets, and mobile devices which allows a user to make and receive voice over internet protocol (VoIP) calls via a subscription-based unified communications service, and includes presence management tools, voicemail, direct inward dialing, faxing features, and chat features” could also be purchased by individual consumers. Similarly, although there is nothing in the record showing that the registrant currently sells only to individual consumer, even if that were the case, goods broadly identified as “mobile telephones,” “cordless, wireless or satellite telephones,” and “smart telephones, namely, telephones with capability of transmitting date voice and images and accessing the internet,” could also be purchased by business entities. In addition, as shown in part by Applicant’s original specimen, the record shows that the channels of trade for the goods may overlap because VoIP hardware and device application software may be offered or referenced together, including on the same websites,20 and that the consumers of the goods also overlap at least to the extent that they include business and individual users of various types of telephones classes of consumers for the identified goods must be determined from the identifications themselves, and from the record. 20 See, e.g., April 6, 2018 Final Office Action at TSDR 10-14 (displaying Cisco VoIP phones and allowing visitors to click on a link to “Download Software for this Product”); 25-31 (displaying the Ooma phone system and referencing the Ooma Office Mobile App). Serial No. 87258464 - 18 - that may be used to make and receive VoIP calls. The third DuPont factor also supports a finding of a likelihood of confusion. C. Purchase Conditions and Sophistication of Purchasers The fourth DuPont factor concerns the “conditions under which and buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.” DuPont, 177 USPQ at 567. Applicant invokes this factor, 9 TTABVUE 10, arguing that its customers are “business entities,” which it appears to claim have a different level of sophistication from the registrant’s purported individual consumers. Id. As noted above, the consumers for both sets of goods are deemed to include both businesses and ordinary members of the public. “Board precedent requires our decision to be based on the least sophisticated potential purchasers.” In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion, 110 USPQ2d at 1163). There is nothing in the record to show that the least sophisticated purchasers of the identified goods would exercise anything more than ordinary care. The fourth DuPont factor is accordingly neutral. D. Conclusion All of the pertinent DuPont factors support a finding of a likelihood of confusion, two strongly. The marks are identical, the goods are closely related, and the channels of trade and classes of consumers overlap. The fourth DuPont factor is neutral. Under the circumstances, we find that a purchaser or prospective purchaser of STARPHONE mobile telephones who is exposed to STARPHONE application software for use with mobile telephones could easily believe mistakenly that the Serial No. 87258464 - 19 - software originates with, or is sponsored or authorized by, the producer of the telephones. Decision: The refusal to register is affirmed.