Timothy Stewart

Trademark Trial and Appeal Board

Mar 24, 2014

No. 77811113 (T.T.A.B. Mar. 24, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 24, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Stewart
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Serial No. 77811113
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Luke Brean of Brean Law LLC,
for Timothy Stewart.
Jean H. Im, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
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Before Bucher, Ritchie and Masiello,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
Timothy Stewart (“applicant”) seeks registration on the Principal Register of the
mark Drive (in standard character format) for services recited as follows:
advertising services, namely, promoting car dealerships of
others; advertising, marketing and promotional services
for automotive dealerships; promoting the goods and
services of others by providing hypertext links to the
websites of others in International Class 35.1

1 Application Serial No. 77811113 was filed on August 24, 2009, based upon applicant’s
claim of first use anywhere and use in commerce since at least as early as May 16, 2005.
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The examining attorney has refused registration of applicant’s mark under
Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that
applicant’s mark so resembles the registered mark iDrive TV (in standard character
format), for the following services:
advertising services, public relations and marketing
services, namely, promoting and marketing the goods and
services of others through all public communication
means; advertising particularly services for the promotion
of goods; internet advertising services; advertising
services, namely, providing information as to the
availability of automobiles, trucks, recreational vehicles,
accessories, motorcycles, ATVs, boats and watercraft for
rent or purchase; advertising through all public
communication means; advertising, marketing and
promotion services; on-line advertising and marketing
services; preparation and realization of media and
advertising plans and concepts; preparation of custom
advertisements for others; preparing advertisements for
others; preparing and placing advertisements for others;
preparing and placing of advertisements; preparing
audio-visual displays in the field of television, cable
television and internet advertising and programming;
production and distribution of radio and television
commercials; production of television commercials;
promoting the goods and services of others by distributing
advertising materials through a variety of methods;
providing advertising, marketing and promotional
services, namely, development of advertising campaigns
for the automobile and related transportation industries
in International Class 35,2
that when used on or in connection with applicant’s recited services, it is likely to
cause confusion, to cause mistake or to deceive.

2 Registration No. 4084158 issued on January 10, 2012. No claim is made to the exclusive
right to use the term “TV” apart from the mark as shown.
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Upon final refusal of registration, applicant appealed and requested
reconsideration. After the examining attorney denied the request for
reconsideration, the appeal was resumed. Both applicant and the examining
attorney filed briefs. For the reasons discussed herein, the Board affirms the refusal
to register.
We base our determination under Section 2(d) upon an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the relationship of the services. See 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”). We discuss each of the du Pont factors as to which applicant or the
examining attorney submitted argument or evidence.
A. Services, Trade Channels and Customers
Applicant appears to concede that the services herein are legally identical and
will be offered through the same channels of trade, stating that “ … the consumers
of both the Registrant[’s] and Applicant’s advertising services are business people in
the automotive industry.” Applicant’s brief at 8. Hence, we agree with the
examining attorney that based upon the respective recitations of services of the
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applicant and registrant, it is clear that the services are legally identical and that
they travel in the same channels of trade to the same class of consumers, e.g.,
advertising for retailers in the automotive and transportation industry. See In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (the Board
may rely on this legal presumption in determining likelihood of confusion). See also
Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76
(CCPA 1973); Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA
1958); American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they
must be presumed to travel in the same channels of trade, and be sold to the same
class of purchasers.”).
In view thereof, the du Pont factors focusing on the relatedness of the services as
recited, their same presumed channels of trade and overlapping classes of
customers weigh heavily in favor of likely confusion.
B. The marks
Turning then to the factor of the similarity or dissimilarity of the marks, in
making our determination, we compare the marks “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005) quoting du Pont, 177 USPQ at 567. We also note that
where, as here, the services are legally identical, the degree of similarity necessary
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to find likelihood of confusion need not be as great as where there is a recognizable
disparity between the services. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises
Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare
Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
Applicant argues that there are obvious differences as to appearance and sound
based on registrant’s mark beginning with the letter “i” and ending with the term
“TV.” Applicant argues that the resulting differences in the marks as to connotation
and commercial impression are sufficient to distinguish the marks. By contrast, the
examining attorney focuses on the shared word “Drive” – the dominant source-
identifying element in registrant’s mark and the whole of applicant’s mark.
While we view the marks in their entireties, “there is nothing improper in
stating that, for rational reasons, more or less weight has been given to a particular
feature of a mark … .” In re National Data Corp., 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985). Additionally, when a mark such as registrant’s consists of
multiple words, consumers are more likely to perceive an arbitrary term rather
than a descriptive or generic term, as the source-indicating feature of the mark.
Dixie Rests., 41 USPQ2d at 1533-34 (affirming the Board’s finding that the word
“Delta,” not the disclaimed generic term “Cafe,” is the dominant portion of the mark
THE DELTA CAFE).
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In support of a finding that the prefix letter “i” in the cited mark would be
viewed by consumers as simply a reference to the Internet, the examining attorney
submitted for the record the following entries:

What does I stand for?
Abbr. Meaning
I Information
I One (Roman numeral)
I Internet
3
Internet-related prefixes
i- is not a generic prefix used to describe a type of service or
product; rather, it is used in the branding of individual products.
The i- prefix is especially connected to Apple Inc., who employed
it for their iMac and iBook and now uses many product names
starting with i-, including iPod, iTunes, iPhone, iLife and others.
Apple initially said the i stood for “Internet.”[10] [ “…15-inch iMac
– whose “i” stood for “Internet,” among other words …”
Manjoo, Farhad, “Grads Want to Study on EMacs, Too,” April 30,
2002, www.wired.com]
Despite its close association with Apple, the i- prefix has been used
by other companies as well, such as Google (iGoogle) and the
BBC (I Player). It has also been used extensively by shareware and
freeware developers in the branding of their products, and even by
non-IT companies for their online sites, such as www.icoke.com.
iCarly is a television show in which the main character hosts her
own web show. 4
However, applicant argues that the “i” prefix is intrinsically linked with Apple,
Inc., given its various product lines such as iPod, iPhone, iPad, iTunes, etc., and

3 http://www.acronymfinder.com/I.html as accessed by the examining attorney on July 13,
2012.
4 http://en.wikipedia.org/wiki/Internet-related_prefixes as accessed by the examining
attorney on December 26, 2012.
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hence registrant’s cited iDrive TV mark creates imagery of “Apple’s hip, innovative,
cutting edge technology as opposed to a generic notion of ‘internet’.” Applicant also
refers to a “Fresh Air” piece created by Geoff Nunberg entitled “Steve, Myself and i:
The Big Story of a Little Prefix”:
[Between 1979 and the late 90s], the Internet had
come of age, chewing up a succession of prefixes along the
way. First there was cyber-, which conjured up the
opening sequence of Star Trek, a vast universe on the
other side of the screen that we could cruise from our own
private holodecks. Then came the Internet boom and the
prefix e-…
And then there was i-. The prefix had actually been
around for several years before Apple adopted it for those
gumdrop-colored iMacs that Jobs introduced in 1999.
According to Apple’s ad agency, i- was meant to stand for
“Internet,” with overtones of “individual” and probably
the first-person pronoun as well. But the meaning of a
product name isn’t something you fix in advance. It has to
accumulate bit by bit, like dust bunnies. By the time i-
was fleshed out, Apple had transformed itself from a culty
computer-maker to a major religion. At least, that was the
impression you got from the global surge of sentiment
that Jobs’ death evoked.
A lot of that feeling was rooted in the obsessive
attachment that people form with their i-devices,
particularly the mobile iPods, iPhones and iPads….
But the i-devices are more than just elegant and easy
to use. They also invite fondling, even when they’re
hidden away in your pocket. In a way, they’re less like a
Swiss watch than a blankie or night-night — those
transitional objects that children clutch to allay their
separation anxiety.
There’s a bit of that in every cellphone, but the Apple
i-objects are standing in not just for absent loved ones,
but absent music collections, TV shows, restaurant
reviews, driving directions and baseball scores, not to
mention those aggravated avians. We don't think of those
things as floating out in cyberspace anymore, or as sitting
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on the shelves at some e-mall. They're right here, literally
on hand; nobody needs to be separated from anything
anymore.
The i-devices pushed the Internet out of our
consciousness, just as the Mac did with the operating
system. And the prefix that began as an abbreviation for
“Internet” wound up as a mark of its disappearance. Make
that i- for “immanent.”
… As Victor Hugo might have put it, nothing is as
powerful as an i- whose time has come.
Actually, we find that the gist of this radio broadcast is consistent with the
examining attorney’s Wikipedia entry above inasmuch as it indicates that the
origins of the leading, lower-case letter “i” in the early Internet-age may well have
been short for “Internet.” Although Apple may have used “i-formatives” as
trademarks in the field of consumer electronics, the cited registrant is not Apple,
which contradicts applicant’s suggestion that the “i” prefix is “intrinsically linked
with Apple.” The record before us suggests that in many minds, i-formatives may
still have some connection to the Internet, but as to the connotations and
commercial impressions of i-formatives when applied to high-tech goods and
services, the letter “i-” may also have become associated in the minds of some
consumers with “individual,” the first-person pronoun, “immanent,” or even a
number of other “i-words.” Such suggestiveness weakens the leading letter “i” in
registrant’s iDrive TV mark as applied to Internet advertising services. As to the
term “TV,” registrant’s advertising services include television-related services, and
registrant has appropriately disclaimed the highly-descriptive term “TV” apart from
the mark as shown. Hence, we agree with the examining attorney that the word
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“Drive” is the dominant source-identifying element in registrant’s mark and makes
up the whole of applicant’s mark.
Nonetheless, in arguing for contrasting connotations and commercial
impressions with registrant’s imagery of “Apple’s hip, innovative, cutting edge
technology,” applicant argues that its mark connotes one’s driving an automobile, or
suggests the act of “compelling someone to act in a particular manner” through its
advertising services.
Despite the various suggestive connotations that prospective consumers may
take from the word “Drive” in the context of applicant’s mark, we assume it is
essentially an arbitrary designation. To the extent that the word “Drive” might be
seen as suggestive of “driving an automobile,” or even “compelling customers” later
to rent or purchase a motorized vehicle, it would have the same connotation in the
context of both applicant’s and registrant’s services. Given the identical nature of
the recited services, registrant’s use of the combined term “iDrive …” in connection
with Internet services, and applicant’s use of the nearly identical “Drive” in
connection with “promoting the goods and services of others by providing hypertext
links to the websites of others,” will engender quite similar overall commercial
impressions.
Hence, this critical du Pont factor also favors a finding of likely confusion.
C. Conditions under which and buyers to whom sales are made
In making clear its position on this du Pont factor, applicant argues as follows:
Here, the consumers of both the Registrant[’s] and
Applicant’s advertising services are business people in the
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automotive industry. The provided services are of the type
that commonly require negotiation on price and duration
of services. As such there is significant time and money
investment made by automotive businesses when
selecting a firm to provide advertising services.
However, as noted by the examining attorney, the record contains no evidence in
support of this claim. Neither involved recitation of services is limited to high-cost
services or sophisticated customers. Hence, we must presume that the respective
services are available to any customer seeking advertising, marketing or
promotional services, including small businesspersons having low advertising
budgets and possible needs for a one-off promotional deal. Hence, at best for
applicant, this du Pont factor is neutral.
D. Conclusion
In weighing the relevant du Pont factors, we conclude that the respective
services are legally identical, will be offered through the same trade channels to
overlapping classes of customers, and that the marks are quite similar.
Decision: The examining attorney’s refusal to register applicant’s Drive mark
under Section 2(d) of the Lanham Act is hereby affirmed.