Symphonic Source

Trademark Trial and Appeal Board

Mar 14, 2013

No. 85443743 (T.T.A.B. Mar. 14, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: March 14, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Symphonic Source
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Serial No. 85443743
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William H. Dietrich of Slater & Matsil, LLP for Symphonic Source
Jason Paul Blair, Trademark Examining Attorney, Law Office 104 (Chris Doninger,
Managing Attorney).
_____

Before Bucher, Zervas and Wolfson, Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Symphonic Source (“applicant”) seeks registration on the Principal Register
of the mark cloudingo (in standard characters) for services ultimately identified as
“cloud computing featuring software for use in customer relationship management
(CRM) database management, deduplication, and data cleansing,” in International
Class 42.1
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), having
determined that registration would lead to a likelihood of confusion in view of the

1 Application Serial No. 85443743 was filed on October 10, 2011, based on an allegation of
first use of December 13, 2010, and first use in commerce of August 30, 2011.
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services recited in Reg. No. 2170665, for the mark depicted below, for “computer
programming for others; computer software design for others; rental of computers
and software; consultation services and technical research in the field of computer
technology; maintenance of computer software; and retail and wholesale store
services featuring computer software, computer hardware, computer packages, kits,
computer parts, fittings and accessories and related printed materials” in
International Class 42.2

After the examining attorney made the refusal final, applicant appealed to
this Board. We affirm the refusal to register.
Applicable Law
Our determination under Trademark Act § 2(d) is based on an analysis of the
probative facts in evidence that are relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the
evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry

2 Registered July 7, 1998; renewed.
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mandated by Section 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In
re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
A. Comparison of the Services
We first consider the services. We base our evaluation on the services as they
are identified in the registration and application. Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See
also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001
(Fed. Cir. 2002). It is settled that it is not necessary that the respective services be
identical or even competitive in order to find that they are related for purposes of
our likelihood of confusion analysis, it being sufficient that the services are related
in some manner and/or that the circumstances surrounding their marketing are
such that they would be likely to be encountered by the same persons under
circumstances that would give rise, because of the marks employed thereon, to the
mistaken belief that the services originate from or are in some way associated with
the same producer. In re Home Builders Assn. of Greenville, 18 USPQ2d 1313, 1317
(TTAB 1990).
The services identified in applicant’s mark cloudingo are “cloud computing
featuring software for use in customer relationship management (CRM) database
management, deduplication, and data cleansing.” “Cloud computing” is defined as
“computing operations carried out over computers linked to the web. The users pay
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for computing as a service rather than pay for hardware purchases.”3 A “cloud
computing” service company thus provides a server for others, on which the
provider’s clients store their data, and carries out computing operations by way of
the web. As can be seen, applicant specializes in cloud computing in the CRM field,
providing management of CRM databases, deduplication and data cleansing of
CRM files saved to the cloud over the Internet.
The registrant’s services are broadly stated as including “computer
programming for others” and “computer software design for others.” By their terms,
they encompass programming and design of CRM software. The web pages placed
in the record by the examining attorney illustrate that companies do, in fact,
program/design CRM software for others, namely large and small business clients
with marketing, sales and customer service and support divisions within their
organization. For example:
The web page from “Rightway Solution” notes that:
“CRM is one of those systems through which you can store
all the important information about your customer’s
behavior, their likes and dislikes, the latest trends and
the basic requirements in a centralized system so that it
can be accessed ay time required. … Righway [sic] has
that special skill set that is required to develop tailored
CRM Software using SaaS, SOA, Web 2.0, RIA
technologies like AJAX, Adobe Flex and Adobe AIR for
multi-screen applications. We also integrate the custom
CRM software with other business applications and

3 Barron’s Educational Series, Inc., Dictionary of Computer and Internet Terms, 10th ed.
2009. Judicial notice may be taken of dictionary evidence. University of Notre Dame du
Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983); see also, TBMP §712.01 (3d. ed. rev. 2012).
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websites of our clients to bring a coherent communication
prototype within the organization.”4
The web page from “Reality Software” advertises that it:
“specializes in custom software development and develops
high quality customer relationship management
software.” It defines customer relationship management
software (CRM software) as “a system that allows a
business to maintain all customer records in one
centralized location that is accessible to an entire
organization. CRM software is essentially meant to
address the needs of marketing, sales and customer
service and support divisions within an organization and
allow the three to share data on clients to improve sales
and customer service. … A good CRM program will allow
a business to effectively manage a large number of
customers, increase the value of each customer to the
company, retain good customers, and determine how
customers can be given a higher level of service.”5
The website for “Soft Age Group” advertises that:
“CRM application development and CRM integration
become an integral part of today’s solution packages
offered by our specialists. … CRM development…is
successfully realized by means of implementing various
Customer Relationship management application
programming strategies. Thus software is designed in
compliance with specific needs of a particular business,
irrespective of its size: CRM for small business is as
essential as for any large company. … Softage Group is an
expert in CRM integration and CRM programming. …
Our software development services, backed up by our
commitment and focus will help raise your effectiveness
manifold. … Our large and small business customer
Relationship management software is customizable. …
Our CRM specialists develop fully customizable software.

4 At www.rightwaysolution.com/software-development-expertise/crm-development-
software.html, accessed June 5, 2012; attached to Office action dated June 5, 2012.
5 At www.realitysoftware.ca/services/software-development/crm/, accessed June 5, 2012;
attached to Office action dated June 5, 2012.
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Every feature of our solutions can be altered, formatted or
modified in accordance with your concrete requirements.”6
The evidence shows that CRM software is typically created by custom
programming development service providers. The CRM software is used by
businesses to manage their client/customer database information across a wide
spectrum of functions within the business. Using cloud computing, businesses could
gain assistance from the cloud provider in managing the infrastructure and
platforms on which the CRM software runs, including such services as provided by
applicant, namely, deduplicating and data cleansing. We therefore find that based
on the evidence of record, the examining attorney has established that applicant’s
and registrant’s services are related and may emanate from the same source. See
In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009); In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck
Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
Applicant argues that the services “appear to travel in different trade
channels,” that “cloud computing services, especially for customer relationship
management, are likely purchased upon careful consideration in light of the fact
that sensitive customer data and/or proprietary data may be stored in the cloud,”
and that “applicant and registrant have co-existed in the marketplace since at least
October of 2011” without any instances of actual confusion. Applicant contends that
these facts corroborate a finding that there is no likelihood of confusion.

6 At www.softage-group.com/pages/section/3/crm-software-development-solutions, accessed
June 5, 2012; attached to Office action dated June 5, 2012.
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Suffice it to say that there is no evidence of record to support applicant’s
arguments. First, there is no evidence that programming CRM software for others
and providing a cloud computing environment for such software would be directed
through different channels of distribution. To the contrary, CRM software is
designed to span across multiple areas within a business, and thus appears highly
suitable for placement in a cloud computing environment. As to the conditions
under which sales are made, even assuming that purchasers of CRM software use a
higher degree of care when it comes to their buying decisions, even careful
purchasers are not immune from source confusion as to the producers of such
software or the computing environments in which it may be found. See In re
Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), citing
Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ
110, 112 (CCPA 1970) (“Human memories even of discriminating purchasers...are
not infallible.”). See also In re Decombe, 9 USPQ2d 1812 (TTAB 1988); HRL
Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss
Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir.
1990) (similarities of goods and marks outweigh sophisticated purchasers, careful
purchasing decision, and expensive goods).
Regarding the lack of actual confusion, at best, the marks have co-existed for
little over a year. Such use is insufficient to establish such long and continuous
contemporaneous use that would compel a finding that there have been meaningful
opportunities for instances of actual confusion to have occurred in the marketplace.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed.
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Cir. 2000); and Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB
1992).
Accordingly, the fact that the services are related weighs in favor of a finding
of likelihood of confusion. The du Pont factors regarding lack of actual confusion,
the degree of care in selecting the services, and the channels of trade are considered
neutral.
B. Comparison of the Marks
In considering whether there is a confusing similarity in appearance, sound,
connotation, and commercial impression between the marks, we note that the fact
that applicant seeks registration of its mark for services closely related to opposer’s
registered mark “accentuates the likelihood of consumer confusion about the
sources of services marketed under similar marks.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992)
(where the services are closely related, “the degree of similarity necessary to
support a conclusion of likely confusion declines.”). See also, Jansen Enterprises
Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); and Schering-Plough HealthCare
Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
Applicant argues that the cited mark is weak and that the marks are
dissimilar in appearance and overall commercial impression. The examining
attorney contends that the cited mark is strong and that the similarities in
connotation and overall commercial impression of the marks outweigh their
differences in appearance and pronunciation. As an arbitrary term (as applied to
computer services), the word DINGO is inherently distinctive. Moreover, the five
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third-party registrations of record do not prove otherwise. Absent evidence of actual
use, third-party registrations have little probative value because they are not
evidence that the marks are in use on a commercial scale or that the public has
become familiar with them. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d
1004, 177 USPQ 462, 463 (CCPA 1973) (the purchasing public is not aware of
registrations reposing in the U.S. Patent and Trademark Office); Productos Lacteos
Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934
(TTAB 2011); Scarves by Vera, Inc. v. Todo Imports, Ltd., 544 F.2d 1167, 192 USPQ
289, 294 (2d Cir. 1976) (“The significance of third-party trademarks depends wholly
upon their usage.”).
The probative value of the third-party registrations is further undercut by
the differences in the marks involved (with respect to Reg. Nos. 2000047 and
3613886) and the goods or services for which the marks have been registered. Reg.
No. 2000047, for the mark “BUILDINGONLINE,” clearly is a compound of the
words “building” and “online” and therefore has no bearing on the issues herein.
Reg. No. 3613886, for the mark FRISKY DINGO for “digital versatile discs
featuring music, comedy, drama, action, adventure and/or animation” is likewise
non-probative in view of the mark and the goods involved. The remaining three
registrations include Reg. No. 3760701, which was cited by both applicant and the
examining attorney, for the mark DINGO for providing a “computer search
platform” relating to mobile devices,7 does not involve computer programming or

7 The complete list of services in Reg. No. 3760701 is: “computer services, namely,
providing search platforms to allow users to request content from and receive content to a
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design services for others; thus the fact that this registration co-exists with the cited
registration does not prove that the mark DINGO is weak. Moreover, the final two
registrations both belong to the cited registrant: Reg. No. 2170665 (the cited
registration) and Reg. No. 2310150. The latter registration is for the mark DINGO
for “maintenance management software” in International Class 9. The software, as
described by the identification of goods in that registration, is used for applications
that are completely unrelated to customer relationship management software.8
Therefore, the term DINGO has not been shown by the registrations to be a weak
mark.
In comparing the marks in their entireties as to appearance, sound,
connotation and commercial impression, we find that registrant’s mark and
the applied-for term cloudingo are similar in connotation and commercial
impression and that these similarities outweigh their differences in appearance and
pronunciation. The test, under the first du Pont factor, is not whether the marks
can be distinguished when subjected to a side-by-side comparison, but rather
whether the marks are sufficiently similar in terms of their overall commercial
impression that confusion as to the source of the goods offered under the respective

mobile device; providing customer-defined generated content and content of others
automatically selected and customized based on the known or estimated geographical
location of an Internet, mobile telephone or other wired or wireless digital network based
customer.”
8 The complete list of goods for Reg. No. 2310150 is: “maintenance management software
used for condition monitoring, oil analysis, vibration analysis and thermography; and
maintenance management software used for the collection, storage and graphical
interpretation of condition monitoring data, oil analysis data, vibration analysis data and
thermography data for vehicles, machinery and equipment.”
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marks is likely to result. Palm Bay, 73 USPQ2d at 1692. On the other hand,
different features may be analyzed to determine whether the marks are similar.
Price Candy Company v. Gold Medal Candy Corporation, 220 F.2d 759, 105 USPQ
266, 268 (CCPA 1955); In re National Data Corp., 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985) (nothing improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of a mark, provided the ultimate
conclusion rests on a consideration of the marks in their entireties). 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).
There are apparent differences in the appearance of the two marks, given the
presence of the dingo design in registrant’s mark. However, the design does not
distinguish the marks, because the design is merely the pictorial representation of
the word DINGO, and carries the same impression as the word itself. The word
also carries greater weight than the design, because it is the word which “would be
used by purchasers to request the goods or services.” M.C.I. Foods, Inc. v. Brady
Bunte, 96 USPQ2d 1544, 1551 (TTAB 2010). Here, however, because the word and
the design are equivalents, there is no impression of registrant’s mark other than
that of the animal known as a “dingo.”
Applicant argues that because the term “CLOUD” comprises the first part of
applicant’s mark, it will make the greater impression, and be the portion most
likely remembered by a prospective purchaser when referring to applicant’s
services. See Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897
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(TTAB 1988) (“[I]t is often the first part of a mark which is most likely to be
impressed upon the mind of a purchaser and remembered”). The examining
attorney notes, however, that the term “cloud” is merely descriptive in relation to
applicant’s cloud computing services, arguing that it cannot, therefore, be
considered the dominant portion of the mark. See Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000), quoting, In re National Data
Corp., 224 USPQ at 752 (“Regarding descriptive terms, this court has noted that the
descriptive component of a mark may be given little weight in reaching a conclusion
on the likelihood of confusion”). In response, applicant argues that its mark is “a
single, coined term without any meaning or definition,” but that even if the term
CLOUD were “minimized,” the remainder of the mark – “ingo” – cannot be the
dominant portion because it “acts more as a suffix.”9
We believe that consumers will readily perceive the word “cloud” in
applicant’s mark. As to the remainder, while it is possible the relevant public will
consider the “-ingo” suffix to be a kind of exclamatory accent note appended to the
word “cloud,” it is just as likely that the telescoping of the words “cloud” and “dingo”
will be perceived as “cloud-dingo,” the letter “d” serving a dual purpose in forming
the beginning of the word “dingo.” Therefore, applicant’s mark cloudingo would be
perceived as similar in appearance to DINGO, the phonetic equivalent of CLOUD
DINGO, and as having similar connotation and commercial impression as the word
DINGO. As noted, both marks contain the same arbitrary word DINGO in
association with related services, and the addition of the descriptive word CLOUD

9 Applicant’s Brief, pp. 11-12.
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in applicant’s mark and the design of a dingo in registrant’s mark do not sufficiently
distinguish the marks overall to avoid a likelihood of confusion.
C. Balancing the factors
In view of the facts that the cited mark is commercially strong, the
marks are similar, and the services related, we find that applicant’s registration of
the mark cloudingo is likely to cause confusion.
The overriding concern is not only to prevent buyer confusion as to the source
of the services, but to protect the registrant from adverse commercial impact due to
use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208,
26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a
likelihood of confusion determination is resolved in favor of the registrant. TMEP
§1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265,
62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d
463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).
Decision: The refusal to register applicant’s mark cloudingo under
Trademark Act § 2(d) is affirmed.