Teligence (US), Inc.

Trademark Trial and Appeal Board

Apr 7, 2010

No. 78764988 (T.T.A.B. Apr. 7, 2010)

Mailed:
April 7, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Teligence (US), Inc.1
________

Serial No. 78764988
_______

Dana B. Robinson of Dana Robinson & Associates for
Teligence (US) Ltd.

Priscilla Milton, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney)
_______

Before Seeherman, Holtzman and Zervas, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Teligence (US), Inc. has appealed from the final
refusal of the trademark examining attorney to register
TANGO, in standard character format, for
“telecommunications services, namely electronic voice

1 The application was originally filed by Boulevard Media, Inc.,
and a merger and change of name to Teligence (US), Inc. was
recorded at the USPTO on December 1, 2006. In both its appeal
brief and reply brief applicant has identified itself as
Teligence (Canada) Ltd. However, no further merger or change of
name has been recorded, and therefore Teligence (US) Ltd. is the
applicant of record.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78764988
2
messaging services, namely, recording and subsequent
transmission of voice messages by telephone and wireless
communication devices.”2 Registration has been refused
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground that applicant’s mark so resembles
the following marks, that if used in connection with
applicant’s services, it is likely to cause confusion or
mistake or to deceive.
Registration No. 2958546 for TANGOWIRE
(typed drawing), owned by Tangowire
Corporation (assignee) and registered
on May 31, 2005 for, inter alia,
“electronic transmission of data and
documents via computer terminals;
electronic mail services; electronic
delivery of images and photographs via
a global computer network; streaming of
audio material on the Internet;
streaming of video material on the
Internet”;3 and

Registration No. 3159257 for TANGO
(typed drawing), registered by Siemens
Subscriber Networks, Inc. on
October 17, 2006, for
“telecommunications software for
providing broadband access to
telecommunications subscribers; network
management and service management
software for communications and
telecommunications networks that
simplifies subscriber access,

2 Application Serial No. 78764988, filed December 1, 2005, based
on Section 1(b) of the Trademark Act (intent-to-use).
3 The registration includes, in addition to these services in
Class 38, goods and services in classes 9, 35 and 42. Because
the examining attorney’s refusal is based on likelihood of
confusion with the mark for the services in Class 38, we have not
listed the goods and services in the other classes.
Ser No. 78764988
3
subscriber support and enables provider
differentiation.”

The appeal has been fully briefed. In her brief, the
examining attorney has requested that we take judicial
notice of the definition of the word “telecommunications,”
a request that we grant.4 With its reply brief applicant
has submitted Internet printouts regarding the activities
of the owners of both of the cited registrations. This
material was never properly made of record and its
submission with a reply brief is manifestly untimely. See
Trademark Rule 2.142(d). Accordingly, we have given the
printouts no consideration.
As both applicant and the examining attorney
recognize, 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). As applicant has pointed out, only the
relevant factors need be considered; in its brief applicant
has discussed the similarity of the marks, the similarity

4 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
Ser No. 78764988
4
of the goods and services, the similarity of trade
channels, the classes of customers, and the number and
nature of similar marks in use in connection with similar
goods and services. The examining attorney has indicated
that the relevant factors in determining the issue of
likelihood of confusion with respect to both of the cited
registrations are the similarity of the marks, similarity
of the goods or services, and similarity of the trade
channels. Accordingly, and because no evidence regarding
any other factors has been submitted, we will confine our
analysis to these factors. To the extent that any other
factors might be relevant, we treat them as neutral.
We must first address an argument made by applicant
with respect to both of the cited registrations. Applicant
asserts that it filed applications for the marks
TANGOPERSONALS and TANGO PERSONALS and design prior the
issuance of the cited registrations.5 Its registration No.
2480708 for TANGOPERSONALS for “electronic voice messaging,
namely, the recording, storage and subsequent transmission

5 Although not relevant to the issue before us, we clarify that
the filing date of the application which issued into the
registration for TANGO PERSONALS and design, March 3, 2004, was
prior to the filing date of the application which matured into
the cited registration for TANGO, but not the filing date of the
application which matured into the registration for TANGOWIRE.
The filing date for the application for the TANGOPERSONALS mark
was September 7, 1999, and was prior to the filing dates of the
applications which matured into both of the cited registrations.
Ser No. 78764988
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of messages for social purposes; telephone communication
services; providing on-line chat rooms for transmission of
messages among computer users concerning topics of general
interest” and “social introduction agencies and computer
dating services via a global computer network” issued in
2001, and its registration No. 3053190 for TANGO PERSONALS
and design for “providing on-line chat rooms for
transmission of messages among computer users concerning
dating, relationships and topics of general interest, and
electronic voice messaging, namely, the recording and
subsequent transmission of voice messages for social
purposes by telephone; telephone communication services”
and “social introduction agencies and computer dating
services via a global computer network” issued in 2006.
Applicant argues that it is “inconsistent to allow a later
entrant to block an earlier entrant when the earlier
entrant should have blocked the later entrant on the same
theory,” and that the allowance of these later
registrations “indicates that the USPTO does not feel the
new entrants were likely to be confused with the
Applicant’s earlier registrations.” Brief, p. 1.
We are not persuaded by these arguments. As the
examining attorney has pointed out, actions of other
examining attorneys in registering different marks have
Ser No. 78764988
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little evidentiary value and are not binding upon the
Office. Each case is decided on its own facts. Here,
applicant’s previously registered marks are different from
its current mark, and those registrations identify
different services from those identified in the subject
application.
We turn first to the question of whether applicant’s
mark, for “telecommunications services, namely electronic
voice messaging services, namely, recording and subsequent
transmission of voice messages by telephone and wireless
communication devices,” is likely to cause confusion with
Registration No. 2958546 for TANGOWIRE for “electronic
transmission of data and documents via computer terminals;
electronic mail services; electronic delivery of images and
photographs via a global computer network; streaming of
audio material on the Internet; streaming of video material
on the Internet.” In support of her position that the
services are related, the examining attorney has submitted
a large number of third-party registrations showing that
similarly identified services as those of applicant and the
registrant have been registered under a single mark. See,
in particular, the registrations highlighted in her brief
Ser No. 78764988
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at pages 13-15,6 including Registration No. 3008704 for,
inter alia, electronic voice messaging, namely the
recording, storage and subsequent transmission of voice
messages, and electronic voice mail and e-mail services;
Registration No. 3064231 for, inter alia, “electronic
transmission of data and documents via computer terminals,
electronic transmission of messages, electronic mail
services, electronic voice messaging namely the recording
and subsequent transmission of voice messages by telephone;
and No. 3242429 for, inter alia, “electronic transmission
of data and documents among users of computers,
transmitting streamed sound and audio-visual recordings via
the Internet, telephone voice messaging services, and
electronic voice messaging namely the recording and
subsequent transmission of voice messages by telephone.”
Third-party registrations which individually cover a number
of different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).

6 As we stated in In re Max Capital Group Ltd., 93 USPQ2d 1243,
1246 (TTAB 2010), the Board prefers that when a large amount of
evidence is submitted, the most persuasive should be highlighted
in the brief.

Ser No. 78764988
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Applicant asserts that “TANGOWIRE is for streaming of
video material on the internet and other electronic
transmissions of data,” and the “consumers at issue for
TANGOWIRE are people seeking to transmit data through the
internet, not people engaged in telephone dating.” Brief,
p. 10. In effect, applicant is attempting to limit its
services to “internet dating services,” but in determining
the issue of likelihood of confusion we must consider the
services as they are identified in applicant’s application
and the cited registration. See In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997).
See also Canadian Imperial Bank of Commerce v. Wells Fargo
Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
Applicant’s services, as identified, are not limited to
electronic voice messaging services for the purpose of
dating or social networking. Moreover, the registrant’s
electronic mail services, electronic delivery of
photographs via a global computer network and streaming of
audio and video material on the Internet are not limited as
to content; they may be used in connection with dating or
social networking. In fact, applicant states in its reply
brief that the mark TANGOWIRE “is used as a dating website
not unlike eHarmony or Match.com.” p. 2.
Ser No. 78764988
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Thus, the evidence shows that both applicant’s and the
registrant’s services can be offered by a single entity
under a single mark, and that, at the very least, these
services are complementary. Even in the context of dating,
consumers can use the computer delivery and audio and video
streaming of data to post information and pictures of
themselves, and use the recording and transmission of voice
messages by telephone and wireless communication devices to
make more personal connections. We find that applicant’s
and the registrant’s services are related, and that this du
Pont factor favors a finding of likelihood of confusion.
We do not have any evidence as to the channels of
trade in which the services are marketed, but because the
services, as identified, can include electronic voice
messaging services for the purposes of dating and social
networking, and the registrant’s electronic mail services,
electronic delivery of photographs via a global computer
network, and streaming of audio and video material can also
be used for such purposes, the classes of customers for
both applicant’s and the registrant’s services must be
considered to be the same. This du Pont factor also favors
a finding of likelihood of confusion.
This brings us to a consideration of the marks.
Applicant’s mark is TANGO; the cited mark is TANGOWIRE.
Ser No. 78764988
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Applicant recognizes that “if two marks for related goods
or services share the same dominant feature and the marks,
when viewed in their entireties, create similar overall
commercial impressions, then confusion is likely.” Brief,
p. 7, citing In re J.M. Originals Inc., 6 USPQ2d 1391 (TTAB
1987). Applicant also acknowledges that “consumers would
be more likely to perceive a fanciful or arbitrary term
rather than a descriptive or generic term as the source-
indicating feature of the mark,” brief, p. 7, and that “the
word ‘wire’ is significant for Registrant’s mark in that it
describes, or at least is suggestive of Registrant’s means
of providing telecommunications software.” Brief, p. 8.
Notwithstanding applicant’s own acknowledgement that the
term WIRE in the registrant’s mark is descriptive or at
least suggestive, and that descriptive terms in a mark are
less likely to be perceived as the source-indicating
feature, applicant asserts that the WIRE portion of
TANGOWIRE is dominant in terms of creating the commercial
impression of the mark.
We cannot agree with applicant’s conclusion. On the
contrary, it is TANGO, as the arbitrary part of the
registrant’s mark, that has a greater source-indicating
significance, and must be accorded greater weight as we
consider both marks in their entireties. Although
Ser No. 78764988
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consumers may notice that applicant’s mark consists of just
the word TANGO, while the registrant’s mark TANGOWIRE
includes the word WIRE, because of the descriptiveness or
suggestiveness of the word WIRE,7 consumers are likely to
view the marks as variations of each other, and perhaps
attribute the absence of “wire” in TANGO as reflecting that
the services are for the transmission of messages by
wireless communication devices. Applicant’s omission of
the word WIRE from its mark does not serve to distinguish
the marks; consumers are likely to view both marks as
indicating services emanating from a single source. Thus,
when we consider the marks in their entireties, and giving
due weight to the dominant element TANGO in the cited mark,
which forms the entirety of applicant’s mark, we find that
the marks are very similar in appearance, pronunciation,
connotation and commercial impression. This du Pont factor
favors a finding of likelihood of confusion.
Applicant has argued that the factor of “the number
and nature of similar marks in use on similar goods” favors
its position. The only marks that applicant points to,
however, are the two registered marks that have been cited

7 For purposes of our analysis it is not necessary for us to
determine whether WIRE is descriptive or suggestive; in either
case it is entitled to less weight than the word TANGO.

Ser No. 78764988
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against its application. The presumed use of these two
marks by different entities for their respective services
is not a sufficient basis for us to conclude that the
public has become so conditioned to TANGO marks in the
field of telecommunications that, when the marks TANGO and
TANGOWIRE are used for closely related services, as
discussed supra, consumers will be able to distinguish the
marks based on the presence or absence of the word WIRE.
Accordingly, we find that applicant’s mark TANGO for
its identified services is likely to cause confusion with
the cited registration for TANGOWIRE.
The second basis for the examining attorney’s refusal
is likelihood of confusion with Registration No. 3159257
for TANGO. Obviously applicant’s mark TANGO is identical
to this mark. This du Pont factor heavily favors a finding
of likelihood of confusion since, where an applicant's mark
is identical to the registrant's mark, there need be only a
viable relationship between the respective goods or
services in order to find that a likelihood of confusion
exists. See In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB
2001), and cases cited therein.
However, as applicant points out, there still must be
a viable relationship between the goods and the services.
The mere fact that goods and services can both be described
Ser No. 78764988
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as being the telecommunications field is not necessarily
sufficient to demonstrate such a relationship. See General
Electric Company v. Graham Magnetics Incorporated, 197 USPQ
690 (TTAB 1977) (it is not enough to find one term that may
generically describe the goods); In re Cotter and Company,
179 USPQ 828 (TTAB 1973) (the inquiry should be whether the
products appeal to the same market and not whether a term
can be found that describes the various products); Harvey
Hubbell Incorporated v. Tokyo Seimitsu Co., Ltd., 188 USPQ
517 (TTAB 1975). In order to show that applicant’s
services and the registrant’s goods are related, the
examining attorney has submitted a large number of third-
party registrations. We focus our discussion on the
registrations highlighted by the examining attorney, as
these are presumably the ones that she believes best
support her position.
Registration No. 2520900 (INSTANT ME) is for computer
software for use in providing real-time telecommunications
and providing on-line electronic bulletin boards for
transmission of messages among computer users concerning a
wide range of topics; Registration No. 2854201 (XO NOT JUST
TALK) is for telecommunications software for Internet
access, web hosting, networking, computer software for
processing, storing, transmission, reception and/or
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retrieval of sound and/or data, and electronic mail and
voice mail messaging services; Registration No. 2682507
(CEON) is for telecommunications software and
telecommunications services for telecommunications service
providers (emphasis added); Registration No. 2743529
(CURRENTLINK) is for communications software for
transmitting information via power lines, radio
frequencies, fiber and copper, and for providing access to
power line servers, and electronic communications networks,
namely transmission of audio and video via electronic
communications networks; Registration No. 2942897 (VERSO)
is for computer hardware and software for use in
facilitating the transfer of data in integrated switching
in telecommunications, and electronic transmissions of
voice, data, graphs and web conferencing; and Registration
No. 2702467 (VOXIVA) is for computer software for enabling
electronic data exchange and electronic voice messaging,
and communications and telecommunications services, namely
providing electronic messaging and electronic voice
messaging, and electronic transmission of messages and
data.
These registrations, while being generally for
telecommunications software and telecommunications
services, are for goods and services which are sufficiently
Ser No. 78764988
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different from the applicant’s and cited registrant’s
identified goods and services that they do not show that
applicant’s and registrant’s goods and services may emanate
from a single source. Although some of the registrations
identify services that would be considered legally the same
as applicant’s services, those registrations do not list
software that is the same as the software identified in the
cited registration.
Further, although we treat applicant’s identification
as encompassing all services of “electronic voice messaging
services, namely recording and subsequent transmission of
voice messages by telephone and wireless communication
devices,” and not merely such services used for the purpose
of dating and social networking, there is no clear evidence
that applicant’s identified services are sold through the
same channels of trade to the same classes of consumers as
the software identified in the cited registration.
Accordingly, although the marks are identical, there
is not sufficient evidence in this record for us to
conclude that the goods and services are related, and
therefore we find that the Office has not met its burden of
proving that applicant’s mark is likely to cause confusion
with Registration No. 3159257 for TANGO.
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Decision: The refusal on the basis of likelihood of
confusion with Registration No. 3159257 for TANGO is
reversed; the refusal on the basis of likelihood of
confusion with Registration No. 2958546 for TANGOWIRE is
affirmed.