TelescanL.L.C.

Trademark Trial and Appeal Board

Jun 28, 2006

No. 76414674 (T.T.A.B. Jun. 28, 2006)

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Mailed:
June 28, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Telescan L.L.C.1
________

Serial No. 76414674
_______

Paul M. Denk for Telescan L.L.C.

Brian Pino, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Seeherman, Kuhlke and Cataldo, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Telescan L.L.C. (applicant) has filed an application
to register VMAIL (in standard character form) on the
Principal Register for goods ultimately identified as
“computer for a voice message system and a computer program
for operating a voice messaging system for use in [sic]

1 The assignment of the application from Telescan Corporation,
the original applicant, to Telescan, L.L.C. is recorded at
reel/frame 2970/0507.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76414674
2
with a computer voice messaging system” in International
Class 9.2
The examining attorney originally refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, VMAIL, when
used on its identified goods, so resembles the registered
mark OPTIMAL V-MAIL (in standard character form V-MAIL
disclaimed) for “telecommunication services, namely,
providing voice mail services” in International Class 38,3
as to be likely to cause confusion, mistake or deception.
When the refusal was made final, applicant appealed. After
applicant filed its appeal brief, the examining attorney
requested remand of the application for issuance of an
additional refusal under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. §1052(e)(1), on the ground that applicant’s
mark is merely descriptive of its goods. When the
additional refusal under Section 2(e)(1) was made final and
the Section 2(d) refusal maintained, the appeal was resumed
and applicant filed a supplemental brief. Applicant did

2 Application Serial No. 76414674, filed June 3, 2002, alleging
May, 1989 as the date of first use and first use in commerce. If
appeal is taken and applicant is ultimately successful, applicant
should file an amendment to correct the typographical error in
the identification of goods prior to publication.

3 Registration No. 2385238, issued September 12, 2000.
Ser No. 76414674
3
not request an oral hearing. We affirm the refusal to
register under Section 2(e)(1).
Refusal Based on Mere Descriptiveness Under Section 2(e)(1)
“A mark is merely descriptive if it ‘consist[s] merely
of words descriptive of the qualities, ingredients or
characteristics of’ the goods or services related to the
mark.” In re Oppendahl & Larson LLP, 373 F.3d 1171, 71
USPQ2d 1370, 1371 (Fed. Cir., 2004), quoting, Estate of
P.D. Beckwith, Inc. v. Commissioner, 252 U.S. 538, 543
(1920). See also In re MBNA America Bank N.A., 340 F.3d
1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003). The test for
determining whether a mark is merely descriptive is whether
it immediately conveys information concerning a quality,
characteristic, function, ingredient, attribute or feature
of the product or service in connection with which it is
used, or intended to be used. In re Engineering Systems
Corp., 2 USPQ2d 1075 (TTAB 1986); In re Bright-Crest, Ltd.,
204 USPQ 591 (TTAB 1979). It is not necessary, in order to
find a mark merely descriptive, that the mark describe each
feature of the goods or services, only that it describe a
single, significant quality, feature, etc. In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re
Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
Further, it is well-established that the determination of
Ser No. 76414674
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mere descriptiveness must be made not in the abstract or on
the basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the mark is used, and the impact that it is likely to
make on the average purchaser of such goods or services.
In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218
(CCPA 1978).
In support of the refusal under Section 2(e)(1), the
examining attorney submitted the following definitions:
V-MAIL (2) short for voice mail. The New Oxford
American Dictionary, Oxford University Press
(2001);

V-MAIL (2) See voice mail. CDE Computer Desktop
Encyclopedia (Ver. 17.3, 3rd Quarter 2004);

VMAIL voice mail (computer science). Acronyms,
Initialisms & Abbreviations Dictionary (33rd ed.
2004).

We take judicial notice of the definition of VOICE
MAIL:4
VOICE MAIL An interactive computerized system for
answering and routing telephone calls, for
recording, saving, and relaying messages, and
sometimes for paging the user. The American
Heritage Dictionary of the English Language (4th
ed. 2000).

4 University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983) (Board may take judicial notice of
dictionary definitions).
Ser No. 76414674
5
The record also includes excerpts from third-party
websites where VMAIL is used to describe voice mail goods
and services. See, e.g., aurora.edu (“This feature allows
for users to automatically direct all incoming calls to
another number...enter destination. If vmail, press
or dial...); archive.cpsr.net (“On the other
hand, vmail is a term for voice message switching. Using
computers, the telephone system, and other electronic means
to store and forward voice messages.”).
Applicant argues that use of VMAIL with its computer
“is suggestive that the entire combination of the computer,
and its software, might be used in a voice mail setting, or
have some ability to be used in that manner, but it really
does not per se describe a function, or purpose, of the
operations of a computer.” Supp. Br. p. 2. Further,
applicant states that its computer “can be used by a live
operator or under a stand alone option, provides visual
administrative interface, provides automatic down-file of
associated text message, provides client notification,
provides client announcement recording, and does provide
automated e-mail delivery of messages. But, the computer,
and its program, just is not alone a voice messaging
system.” Supp. Br. p. 3.
Ser No. 76414674
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Considering the mark VMAIL in connection with the
identified goods, as we must, and keeping in mind that it
need only describe a single significant quality,
characteristic, function, ingredient, attribute or feature
of the goods, there is no question that VMAIL, a recognized
alternative for voice mail, describes a significant
function of applicant’s goods, namely, its voice messaging
function. Nothing requires the exercise of imagination,
cogitation, mental processing or gathering of further
information in order for prospective purchasers of
applicant’s goods to perceive readily the merely
descriptive significance of the term VMAIL as it pertains
to applicant’s goods. Applicant’s argument that details
how the computer operates and clarifies that it alone does
not comprise a voice messaging system, does not change the
ultimate purpose of applicant’s goods which is the
provision of voice mail to users.
We further note that the question of registration
under Section 2(f) based on acquired distinctiveness is not
before us. Applicant did make reference to its prior
registration, Reg. No. 1587594, for the mark VMAIL in
stylized form in a box design,5 but this was in response to

5 Applicant did not make this registration of record.
Ser No. 76414674
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the original Section 2(d) refusal. Applicant also filed a
post appeal “Amendment C” that included a declaration
wherein applicant states that “Usage of this trademark has
been made by the Applicant for many years, well over five
years of substantially exclusive and continuous of this
mark in commerce, upon the equipment, and it is believed
that the mark as coined by applicant herein deserves
registration and protection as the exclusive trademark
rights of the Applicant Telescan Corporation.” However,
this amendment was filed at the time the only ground for
refusal was likelihood of confusion, and therefore
applicant’s statements appear to have been made with
respect to its priority, vis-à-vis the rights of the
registrant. In its first appeal brief, applicant argues in
traversing the Section 2(d) refusal that:
Continuous and substantial usage of the mark,
apparently exclusively up to 1999, the date of
first use alleged by the registrant, should
provide the Applicant with benefits that inure to
it, notwithstanding the fact that another
registrant may have [been] issued a mark and
disclaimed [the] portion of its mark that is
related to, but not identical with, the mark of
this current application. It is believed that
registration under §2(f) (15 U.S.C. 1052) of the
act is warranted. In fact, the examiner in this
current application has never really issued any
rejection of this current mark upon any grounds
relating to descriptiveness, and rejection based
upon descriptiveness does not enter into these
discussions as a basis for rejection, such as may
have occurred during the prosecution of the mark
Ser No. 76414674
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of the cited registration No. 2,385,238. Thus,
the issue becomes is Applicant’s mark so likely
to be confused with the mark of a cited
registration where the related terms of the cited
registration, have been disclaimed, while
Applicant can show substantial and continuous
usage, and application of its mark to a product,
for at least fifteen years, far earlier than the
registration of the same mark to another. Br. p.
6.

As we noted, at the time these statements were made the
only refusal in issue was based on likelihood of confusion
under Section 2(d). After the application was remanded to
the examining attorney for issuance of the refusal based on
mere descriptiveness, the examining attorney did not
suggest the possibility of registration under Section 2(f)
and the applicant did not request it. To the contrary,
applicant argued that its mark is not merely descriptive.
See, e.g., Amendment D, After Appeal (June 21, 2005) (“It
is Applicant’s contention that VMAIL, is not merely
descriptive of voice messaging. VOICE MAIL may be
descriptive, but VMAIL, the partial acronym, it is
submitted, is not merely descriptive.”).
Refusal Based on Likelihood of Confusion Under Section 2(d)
Although we have found applicant’s mark to be merely
descriptive and therefore unregistrable, we will, in order
to render a decision on all the issues before us, now turn
to a consideration of the refusal based on the ground of
Ser No. 76414674
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likelihood of confusion. Because a descriptive mark would
not be registrable in any event, in our analysis of the
likelihood of confusion ground we must treat applicant’s
mark as being highly suggestive.
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,
two key 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 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
We turn first to a consideration of the goods
identified in the application and the services identified
in the cited registration. It is well settled that goods
or services need not be similar or competitive in nature to
support a finding of likelihood of confusion. The question
is not whether purchasers can differentiate the goods or
services themselves, but rather whether purchasers are
Ser No. 76414674
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likely to confuse the source of the goods or services. See
Helene Curtis Industries Inc. v. Suave Shoe Corp., 13
USPQ2d 1618 (TTAB 1989). Further, we must consider the
cited registrant’s goods or services as they are described
in the registration and we cannot read limitations into
those goods or services. See Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002); and Octocom Systems Inc. v. Houston Computer
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1987). If the cited registration describes goods or
services broadly, and there is no limitation as to the
nature, type, channels of trade or class of purchasers, it
is presumed that the registration encompasses all goods or
services of the type described, that they move in all
channels of trade normal for these goods, and that they are
available to all classes of purchasers for the described
goods or services. See In re Linkvest S.A., 24 USPQ2d 1716
(TTAB 1992).
Applicant’s identified goods are “computer for a voice
message system and a computer program for operating a voice
messaging system for use in [sic] with a computer voice
messaging system.” Registrant’s identified services are
“telecommunication services, namely, providing voice mail
services.” Applicant argues that applicant “is not in the
Ser No. 76414674
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service category” but rather that it “simply markets its
computer, and program, which may be used in a computer
voice messaging system, marketed as a product, under this
trademark, in International Class 009.” Br. p. 5.
Further, applicant argues that registrant’s services and
applicant’s goods are marketed in “two distinct channels of
trade.” Id. Applicant has not provided any evidence to
support its position.
The examining attorney has made of record an article
from an online business journal and excerpts from several
third-party websites to show that goods and services that
are encompassed by applicant’s and the registrant’s
identifications are offered in the same trade channels to
the same potential customers, i.e., businesses or large
institutions seeking voice mail goods or services. The
following are relevant examples, including one from
applicant’s website:
Smaller companies face spending thousands of
dollars to buy and install a voice-messaging
system, which often triggers the replacement of
existing telephone equipment, requiring thousands
more. Many companies end up facing a $5000 to
$10,000 investment to add voice mail to their
phone systems. One alternative to buying a voice
mail system is to rent mailboxes from a service
bureau. This can be particularly helpful for
companies that do not have phone systems that
work with voice mail. Voice mail service
bureaus, such as AccessDirect, and local
telephone service providers, such as Southwestern
Ser No. 76414674
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Bell...provide voice mail to customers on a
monthly subscription basis. The Business
Journal, kansascity.bizjournals.com;

On February 1, IST Telecommunications will
activate a new voice messaging system, replacing
the voice mail service the campus has used since
1990. While the original system was provided
through an outside service provider, the new
system was purchased by Telecommunications, which
will operate and maintain the system internally.
istpub.berkeley.edu;

The CommWorks Message Delivery System is designed
to let service providers offer voice mail
services without investing in new hardware and
software, and the system conserves network space
by working “on the fly.” CommWorks Corporation,
a company that builds softswitch-based networks,
is offering its new voice mail service to service
providers. CommWorks says that its voice mail
service lets service providers offer voice mail
services to its existing customers to increase
revenue and doesn’t require an investment in new
hardware and software...CommWorks says that
installation only requires a minimal expense
compared to the cost of hardware and software
that’s needed to install a traditional voice
messaging system. isp-planet.com;

Telescan provides the most reliable systems for
the TAS (Telephone Answering Service) industry
with the singular goal of “Keeping Your Business
in Business.” Telescan designs hardware and
software solutions that provide a full range of
services for inbound message call centers.
telescancorp.com.

The record also includes a third-party registration,
Registration No. 2588670, that includes both voice mail and
voice messaging services in International Class 38 and
computers and computer software for use in voice mail and
Ser No. 76414674
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voice messaging in International Class 9 under the same
mark.
Based on the record before us, we find that
applicant’s goods and registrant’s services are directed at
the same purpose, that is, the provision of voice mail
capability to potential purchasers. Applicant’s goods, as
identified, can be an alternative to registrant’s services
or can be used in the provision of registrant’s services.
Further, inasmuch as the recitation of services in the
registration is not limited to any specific channels of
trade, we presume an overlap and that the services would be
offered in all ordinary trade channels for these services
and to all normal classes of purchasers. See In re
Linkvest S.A., supra. Thus, we find that the goods and
services are related and that the channels of trade
overlap.
We note, however, that the overlapping potential
purchasers of applicant’s goods and registrant’s services
appear to be businesses and large institutions rather than
general consumers and, therefore, would be somewhat more
sophisticated in the purchasing of applicant’s equipment or
registrant’s services and such purchases would not be made
on impulse.
Ser No. 76414674
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We turn now to the first du Pont factor, i.e., whether
applicant’s mark and registrant’s mark are similar or
dissimilar when compared in their entireties in terms of
appearance, sound, connotation and commercial impression.
Applicant’s mark VMAIL and the term V-MAIL in
registrant’s mark are highly similar and have a similar
connotation, i.e., voice mail, when used in connection with
the identified goods and services. However, as noted
above, we have found this term to be descriptive as it
pertains to applicant’s mark and it is disclaimed in the
cited registration. See In re Pollio Dairy Products Corp.,
8 USPQ2d 2012 (TTAB 1988) (by its disclaimer applicant
conceded term is descriptive). Although we must for the
likelihood of confusion analysis assume that applicant’s
mark is highly suggestive, rather than descriptive, the
source-indicating capacity of this term is extremely
limited. Accordingly, the mere fact that both marks
contain the term VMAIL is not a sufficient basis on which
to find that confusion is likely. While we recognize that
even weak marks are entitled to protection against
registration by a subsequent applicant of the same or
similar mark for the same or closely related goods or
services, King Candy Co. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974), they are
Ser No. 76414674
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accorded a narrow scope of protection. See In re Box
Solutions Corp., ___ USPQ2d ___, Serial No. 76267086 (May
23, 2006). Under the circumstances of this case, we find
that the additional word OPTIMAL in the registrant’s mark
is sufficient to create a different commercial impression
such that applicant’s mark is distinguishable from the
cited mark.
Thus, we find that despite the relatedness of the
goods and services, the marks are sufficiently dissimilar,
particularly in view of the very weak nature of the common
element VMAIL and the sophistication of the purchasers,
that confusion is not likely between applicant’s mark VMAIL
and registrant’s mark OPTIMAL V-MAIL.
Finally, to the extent applicant is arguing that the
refusals under Sections 2(d) and 2(e)(1) would constitute a
collateral attack on applicant’s prior registration, the
mark in the prior registration and the standard character
mark applicant now seeks to register are not identical and
are not legal equivalents. We do not regard the refusal to
register the application now before us as an attack on
applicant’s prior registration. See In re Best Software
Inc., 63 USPQ2d 1109 (TTAB 2002) (prior registration does
not give applicant right to register a different mark with
different commercial impression for similar goods); and In
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re BankAmerica Corp., 231 USPQ 873 (TTAB 1986) (prior
registration does not give applicant right to register mark
for different services). See also In re Merrill Lynch, 230
USPQ 128 (TTAB 1986), reversed and remanded on other
grounds, 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987); and
In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865
(Fed. Cir. 1985).
Decision: The refusal to register under Section
2(e)(1) of the Trademark Act is affirmed but the
refusal to register under Section 2(d) of the
Trademark Act is reversed.