The Weisscomm Group Ltd.

Trademark Trial and Appeal Board

Mar 13, 2018

No. 86935762 (T.T.A.B. Mar. 13, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 13, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re The Weisscomm Group Ltd.
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Serial No. 86935762
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William D. Wiese and Coti Heusmann of DuBois, Bryant & Campbell, LLP,
for The Weisscomm Group Ltd.
Ingrid C. Eulin, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
_____

Before Mermelstein, Bergsman and Wellington,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
The Weisscomm Group Ltd. (“Applicant”) seeks registration on the Principal
Register of the mark W2O GROUP (in standard characters) for the services listed
below:
Business data analysis; market research and business
analyses; business services, namely, business consulting
specializing in the use of analytic and statistic models for
the understanding and predicting of consumers,
businesses, and market trends and actions; Business
consulting and marketing services with relation to
branding, advertising, corporate and product
Serial No. 86935762
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communications and content development, in
International Class 35.1
Applicant disclaimed the exclusive right to use the word “Group.”
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark W2O GROUP so resembles the registered mark W2O (typed
drawing) for “dissemination of advertising for others via an on-line electronic
communication network,” in Class 35, as to be likely to cause confusion.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973) (“du Pont”) (cited in B&B Hardware, Inc. v. Hargis
Indus., Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015)); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have
considered each du Pont factor that is relevant or for which there is evidence of record.
See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947
(Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242

1 Application Serial No. 86935762 was filed on March 10, 2016, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and
use in commerce since at least as early as March 2012.
2 Registration No. 2714089, registered May 6, 2003; renewed.
Serial No. 86935762
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(TTAB 2015) (“While we have considered each factor for which we have evidence, we
focus our analysis on those factors we find to be relevant.”). In any likelihood of
confusion analysis, two key considerations are the similarities between the marks
and the similarities between the goods or services. See In re Chatam Int’l Inc.,
380 F.2d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); 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 and differences in the marks.”); see also
In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The
likelihood of confusion analysis considers all DuPont factors for which there is record
evidence but ‘may focus … on dispositive factors, such as similarity of the marks and
relatedness of the goods’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d
1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
A. The similarity or dissimilarity of the marks.
We turn first to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. du Pont, 177 USPQ at 567. “Similarity in
any one of these elements may be sufficient to find the marks confusingly similar.” In
re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014). “The proper test is not a side-by-side
comparison of the marks, 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.
Serial No. 86935762
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Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(citation omitted).
Applicant’s mark is W2O GROUP (standard characters) and the registered mark
is W2O (typed drawing form). Prior to November 2, 2003, “standard character”
drawings were known as “typed” drawings. Effective November 2, 2003, Trademark
Rule 2.52, 37 C.F.R § 2.52, was amended to replace the term “typed” drawing with
“standard character” drawing. A typed mark is the legal equivalent of a standard
character mark. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2
(Fed. Cir. 2012) (“until 2003, ‘standard character’ marks formerly were known as
‘typed’ marks.”).
The marks are similar because they share the term W2O. The only difference
between the marks is that Applicant has added the word “Group.” Applicant
disclaimed the exclusive right to use “Group” because it is “commonly used in
connection with similar services to convey the services are provided by a professional
affiliation comprised of multiple persons.”3 It is well-settled that disclaimed,
descriptive matter may have less significance in likelihood of confusion
determinations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1846 (Fed. Cir. 2000) (“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.’”) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 224

3 June 22, 2016 Office Action (TSDR 3). References to the TSDR database are to the .pdf
format.
Serial No. 86935762
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USPQ 749, 752 (Fed. Cir. 1985)); In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1533-34 (Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702
(TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s
commercial impression”). There is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular feature of a mark, such as
a common dominant element, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. In re Nat’l Data Corp., 224 USPQ at
751.
In this regard, we note that Applicant, in its specimen, refers to itself as W2O
without including the word “Group,” highlighting the dominance of W2O. See for
example:
W2O’s Ecosystem
We are a family of integrated marketing and
communications agencies. Each agency has its own
identity and focus, but W2O’s core teams of strategists,
thinkers, and creatives globally lend expertise across
agency lines.
And
Analytics Powers Everything We Do
... W2O’s Analytics are driven by humans, and we partner
with you to ensure all of our insights are actionable and
meaningful to your customers.
The significance of W2O as the dominant element of Applicant’s mark is further
reinforced by its location as the first part of the mark. See Palm Bay Imports Inc. v.
Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005) (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT
Serial No. 86935762
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because “veuve” is the first word in the mark and the first word to appear on the
label); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first notice
the identical lead word); Presto Prod. Inc. v. Nice-Pak Prod., Inc., 9 USPQ2d 1895,
1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be
impressed upon the mind of a purchaser and remembered”).
Accordingly, the term W2O is the dominant element of Applicant’s mark and that
part of Applicant’s mark is identical to the registered mark. “[I]f the dominant portion
of both marks is the same, then confusion may be likely notwithstanding peripheral
differences.” In re Denisi, 225 USPQ 624, 624 (TTAB 1985). The peripheral
differences in this case fail to distinguish the marks.
Finally, the fact that Applicant’s mark incorporates the entire registered mark
increases the similarity between the two marks. See, e.g., See Coca-Cola Bottling Co.
of Memphis, Tennessee, Inc. v. Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188
USPQ 105 (CCPA 1975) (applicant’s mark BENGAL LANCER for club soda, quinine
water and ginger ale is similar to BENGAL for gin); In re Toshiba Med. Sys. Corp.,
91 USPQ2d 1266, 1271 (TTAB 2009) (applicant’s mark VANTAGE TITAN for
medical magnetic resonance imaging diagnostic apparatus is similar to TITAN for
medical ultrasound diagnostic apparatus); In re El Torito Rests., Inc., 9 USPQ2d
2002, 2004 (TTAB 1988) (applicant’s mark MACHO COMBOS for food items is
similar to MACHO for restaurant entrees).
Serial No. 86935762
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In view of the foregoing, we find that Applicant’s mark W2O GROUP is similar to
the registered mark W2O in terms of appearance, sound, connotation and commercial
impression.
B. The similarity or dissimilarity and nature of the services.
As noted above, the cited mark W2O is registered for “dissemination of advertising
for others via an on-line electronic communication network” and Applicant is seeking
to register W2O GROUP for the services listed below:
Business data analysis; market research and business
analyses; business services, namely, business consulting
specializing in the use of analytic and statistic models for
the understanding and predicting of consumers,
businesses, and market trends and actions; Business
consulting and marketing services with relation to
branding, advertising, corporate and product
communications and content development.
To show that the services are related, the Trademark Examining Attorney
submitted copies of 15 third-party registrations covering both Applicant’s services
and the services in the cited registration.4 Third-party registrations based on use in
commerce that individually cover a number of different services may have probative
value to the extent that they serve to suggest that the listed services are of a type
that may emanate from the same source.5 In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785-1786 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467,
1470 n.6 (TTAB 1988), aff’d mem. 864 F.2d 149 (Fed. Cir. 1988). Copies of five

4 January 17, 2017 Office Action (TSDR 7-73).
5 We did not consider Registration No. 4980611 for the mark YISUAL (TSDR 17-19) because
it was not based on use in commerce.
Serial No. 86935762
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representative registrations, with relevant portions of the identifications, are listed
below:
Mark Reg. No. Services
WHAT DO YOU
RUN FOR?
4590033 Advertisement for others on the Internet;
dissemination of advertising;

Business consulting, management, planning and
supervision; advertising and marketing;
marketing services
JEXAN 4488362 Advertising and business services, namely,
securing airtime on all forms of media
communications stations, systems, networks,
and services for the purpose of promoting the
goods and services of others; advertising by
transmission of on-line publicity for third parties
through electronic communications networks;

Advertising and publicity services, namely,
promoting the goods, services, brand identity
and commercial information and news of third
parties through print, audio, video, digital and
on-line medium; advice on the analysis of
consumer buying habits and needs provided with
the help of sensory, quality and quantity-related
data; analysis of market research data and
statistics; business monitoring and consulting
services, namely, tracking web sites and
applications of others to provide strategy,
insight, marketing, sales, operation, product
design, particularly specializing in the use of
analytic and statistic models for the
understanding and predicting of consumers,
businesses, and market trends and actions.
THE POWER OF
TALK
4638235 displaying advertisements for others;
dissemination of advertising for others via the
Internet;

Business marketing services; marketing
consulting; marketing services, namely,
conducting consumer tracking behavior research
and trend analysis.
Serial No. 86935762
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Mark Reg. No. Services
GIFTIZING 4828385 Advertising, including promotion relating to the
sale of articles and services for third parties by
the transmission of advertising material and the
dissemination of advertising messages on
computer networks;

Marketing services.
SOLE TARGET 4839494 Dissemination of advertising for others via the
Internet;

Business marketing consultation, namely,
providing marketing research and analysis
services in the field of online marketing,
promoting the goods and services of others
through search engine referral traffic analysis
and reporting, and providing marketing
consulting in the field of social media.

The Trademark Examining Attorney also contends that because marketing
encompasses advertising, the services are related. The Trademark Examining
Attorney submitted the following evidence to show that marketing encompasses
advertising:
• Vocabulary.com6
marketing
Marketing is how you go about promoting and selling a
product. Any ad campaign is a type of marketing.
Marketing has to do with making people aware of what you
have to offer, whether it’s updated software, a clearance
sale, or ice-cold lemonade. If a commercial really makes you
want to buy something, the marketing worked. Politicians
use marketing in their campaigns to convince voters.
Marketing is all about selling – and given how many ads

6 August 19, 2018 Office Action (8 TTABVUE 3).
Serial No. 86935762
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there are everywhere you look, it’s probably one or the most
powerful forces in the world.
Definitions of
marketing
1
n the commercial process involved in promoting and
selling and distributing a product or service
• BusinessDictionary.com7
marketing
The management process through which goods and
services move from concept to the customer. It includes the
coordination of four elements called the 4 P’s of marketing:
(1) identification, selection and development of a product,
(2) determination of its price,
(3) selection of a distribution channel to reach the
customer’s place, and
(4) development and implementation of a promotional
strategy.
The excerpt in BusinessDictionary.com further explains that marketing involves
the entire business process of creating a demand for a product and fulfilling the
customer’s needs while advertising involves the process of getting people to pay for
the product.

7 August 19, 2017 Office Action (7 TTABVUE 12).
Serial No. 86935762
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Applicant argues that “the Examining Attorney has ignored the realities of the
marketplace” and explains how the services rendered by Applicant and Registrant
differ.8
The services offered under Applicant’s Mark are
sophisticated marketing, advertising and data analysis
services offered to Applicant’s clients, which range from
large, well-known companies to smaller biotech firms. In
contrast, the services offered in connection with the Cited
Mark, appear to be directed toward individuals who are
interested in receiving offers anonymously, and those
individuals are simply using Registrant and its services as
a way to communicate with those businesses anonymously.
Further, a customer of Applicant would not be seeking
Registrant’s services, and a customer of Registrant would
not be seeking Applicant’s services. As such, the respective
services are not competitive, since they are not
interchangeable for the same purpose.9
In determining whether the services are related, it is not necessary that the
services of the parties be similar or competitive in character to support a holding of
likelihood of confusion; it is sufficient for such purposes that the services are related
in some manner or that conditions and activities surrounding marketing of these
services are such that they would or could be encountered by the same persons under
circumstances that could, because of similarities of marks used with them, give rise
to the mistaken belief that they originate from or are in some way associated with
the same producer. Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at
1722; Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB

8 Applicant’s Brief, p. 15 (11 TTABVUE 20).
9 Applicant’s Brief, pp. 15-16 (11 TTABVUE 20-21).
Serial No. 86935762
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2010); Schering Corp. v. Alza Corp., 207 USPQ 504, 507 (TTAB 1980); Oxford
Pendaflex Corp. v. Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978).
Also, we must consider the services as they are described in the application and
registration. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,
1321, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys, Inc. v. Hous. Comput.
Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is
legion that the question of registrability of an applicant’s mark must be decided on
the basis of the identification of goods set forth in the application regardless of what
the record may reveal as to the particular nature of an applicant's goods, the
particular channels of trade or the class of purchasers to which the sales of goods are
directed.”); Paula Payne Prods. v. Johnson Publ’g Co., 473 F.2d 901, 177 USPQ 76,
77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of confusion must
be decided on the basis of the respective descriptions of goods”). If the so called
“realities of the marketplace” are not included in the descriptions of services, we may
not consider them because we may not limit, by resort to extrinsic evidence, the scope
of services as identified in the cited registration or in the subject application. That is,
we do not read limitations into the identification of services. Squirtco v. Tomy Corp.,
697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983) (“There is no specific limitation
and nothing in the inherent nature of Squirtco's mark or goods that restricts the
usage of SQUIRT for balloons to promotion of soft drinks. The Board, thus,
improperly read limitations into the registration”); see also In re Dixie Rests. Inc., 105
USPQ2d, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); In re Fisher Scientific Co., 440 F.2d
Serial No. 86935762
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43, 169 USPQ 436, 437 (CCPA 1971); In re La Peregrina Ltd., 86 USPQ2d 1645, 1646
(TTAB 2008); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986).
Therefore, we must presume that Applicant’s and Registrant’s services could include
all of the possible activities encompassed by those identification of services.
In view of the foregoing, we find that the services are related.
C. Established, likely-to-continue channels of trade.
With respect to the channels of trade, the test is whether the “in the absence of
specific limitations in the application and registration, on the normal and usual
channels of trade and methods of distribution” are the same. CBS Inc. v. Morrow, 708
F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983). Applicant argues, for the same
reasons that the services are not similar, that the channels of trade are different.10
Because the identification of services in the cited registration is “dissemination of
advertising for others via an on-line electronic communication network” and
Applicant is seeking to register its mark for, inter alia, “market research and business
analyses” and “business consulting and marketing services with relation to …
advertising,” a consumer interested in marketing services “with relation to …
advertising” may also require or want to disseminate advertising through the
Internet. Therefore, some of the consumers for the services as set forth in the
application and the cited registration may be the same and, thus, the services move
in some of the same channels of trade.

10 Applicant’s Brief, pp. 8-11 (11 TTABVUE 13-16).
Serial No. 86935762
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D. The conditions under which and buyers to whom sales are made, i.e.,
‘impulse’ vs. careful, sophisticated purchasing.
Applicant contends that the relevant purchasers for both Applicant’s and
Registrant’s services will exercise a high degree of care when making their decision
to engage marketing or advertising services.
Here, the purchasers of Applicant’s services would likely be
the head of marketing of a large corporation, or other high
ranking officer, with many years of experience, or persons
sufficiently knowledgeable in the field of marketing. This
person would be required to make a significant decision for
a large company and thus would be made only after careful
and due consideration of the services offered and whether
those services meet the needs of the business. Applicant’s
clients are likely to exercise a high level of care and are not
likely to be confused in thinking Registrant’s services
originate from, or are sponsored by, Applicant or vice versa.
It is also the case the Registrant’s customers and potential
customers would be somewhat sophisticated if they are
seeking out services to receive advertisements
anomalously. Also, it appears customers of Registrant
would likely have to subscribe to use Registrant’s services,
and would be required to use a username and password to
receive Registrant’s services, and therefore Registrant’s
services would not be an impulse purchase and would
require some thought.11
As discussed above, we are required to give full sweep to the identification of
services in the application and cited registration. We cannot resort to extrinsic
evidence, or in this case, mere argument, to restrict Applicant’s or Registrant’s
potential consumers See In re Bercut-Vandervoort & Co., 229 USPQ at 764 (evidence
that relevant goods are expensive wines sold to discriminating purchasers must be

11 Applicant’s Brief, p. 14 (11 TTABVUE 19).
Serial No. 86935762
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disregarded given the absence of any such restrictions in the application or
registration).
Nevertheless, based on the inherent nature of the services, we find that both
Applicant’s and Registrant’s clients will exercise a heightened degree of consumer
care in selecting their advertising and marketing vendors. However, we are not
persuaded that even consumers exercising this higher degree of purchasing care
would not be confused when the marks W2O and W2O GROUP are used in connection
with related services. These clients are likely to be aware that a single entity can be
the source of Applicant’s and Registrant’s services. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1695 (Fed. Cir.
2005) (“And even more sophisticated purchasers might be aware that champagne
houses offer both types of products under similar marks, and could easily conclude
that VEUVE ROYALE was Veuve Clicquot’s sparkling wine”). Moreover, clients,
familiar with Registrant’s marketing services, are likely to participate in purchasing
decisions involving Applicant’s advertising services, and assume that the marketing
and advertising services are associated or related in some way.
Nevertheless, in the absence of probative evidence, we find that the degree of
consumer care is a neutral factor.
E. The nature and extent of any actual confusion.
Jim Weiss, Applicant’s Chief Executive Officer, testified that it was his
understanding that Applicant and Registrant have coexisted for at least five years
Serial No. 86935762
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and that he was unaware of any reported instances of confusion between Applicant
and Registrant.12
The Federal Circuit has addressed the question of the weight to be given to an
assertion of no actual confusion by an applicant in an ex parte proceeding:
With regard to the seventh DuPont factor, we agree with
the Board that Majestic’s uncorroborated statements of no
known instances of actual confusion are of little
evidentiary value. See In re Bissett-Berman Corp., 476 F.2d
640, 642, 177 USPQ 528, 529 (CCPA 1973) (stating that
self-serving testimony of appellant’s corporate president’s
unawareness of instances of actual confusion was not
conclusive that actual confusion did not exist or that there
was no likelihood of confusion). A showing of actual
confusion would of course be highly probative, if not
conclusive, of a high likelihood of confusion. The opposite
is not true, however. The lack of evidence of actual
confusion carries little weight, especially in an ex parte
context.
Majestic Distilling, 65 USPQ2d at 1205 (citation omitted).
Accordingly, while examples of actual confusion may point toward a finding of a
likelihood of confusion, an absence of such evidence is not compelling in support of a
finding of no likelihood of confusion, particularly in an ex parte proceeding in which
the cited registrant cannot appear. Thus, we cannot conclude from the lack of
instances of actual confusion that confusion is not likely to occur.
In any event, this record is devoid of any probative evidence relating to the extent
of use of Applicant’s and Registrant’s marks and, thus, whether there have been
meaningful opportunities for instances of actual confusion to have occurred in the

12 Affidavit of Jim Weiss attached to Applicant’s July 13, 2017 Request for Reconsideration
(10 TTABVUE 44).
Serial No. 86935762
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marketplace. See Cunningham v. Laser Golf Corp., 55 USPQ2d at 1847; Gillette
Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992).
F. Analyzing the factors.
Because the marks are similar, the services are related and move in some of the
same channels of trade, we find that Applicant’s mark W2O GROUP for the services
listed in the application is likely to cause confusion with the registered mark W2O
for “dissemination of advertising for others via an on-line electronic communication
network.”
Decision: The refusal to register Applicant’s mark W2O GROUP is affirmed.