TradingScreen Inc.

Trademark Trial and Appeal Board

May 16, 2016

No. 86271338 (T.T.A.B. May. 16, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: May 16, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re TradingScreen Inc.
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Serial No. 86271338
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Scott T. Beall of the Law Offices of Scott T. Beall,
for TradingScreen Inc.
Alicia Collins Edwards, Trademark Examining Attorney, Law Office 115,
John Lincoski, Managing Attorney.
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Before Kuhlke, Adlin and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
TradingScreen Inc. (“Applicant”) seeks registration on the Principal Register of
the mark TUBE (in standard characters) for “an online communication and
messaging service, namely, providing the electronic transmission and electronic
messaging of financial trading and securities information across the world with
guaranteed delivery and multi-pathing” in International Class 38.1

1 Application Serial No. 86271388 was filed on May 5, 2014, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
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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 of
likelihood of confusion with the mark TRADERTUBE (in standard characters)
registered on the Principal Register for “showing, displaying, and electronically
transmitting information, audio, and video clips in the field of finance” in
International Class 38.2
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.
I. Analysis
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all 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); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
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

2 Registration No. 3794556, registered on May 25, 2010. Section 8 and 15 affidavits accepted
and acknowledged on February 11, 2016.
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cumulative effect of differences in the essential characteristics of the goods and
differences in the marks.”).
A. Comparison of the Marks
We first address 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.” 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). “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.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(quotation omitted).
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, our analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). On the other hand, there is nothing improper
in stating that, for rational reasons, more or less weight has been given to a particular
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feature of a mark, provided the ultimate conclusion rests on a consideration of the
marks in their entireties. In re Nat’l Data, 224 USPQ at 751.
Applicant’s mark is TUBE, and the cited mark is TRADERTUBE. The difference
between the marks is the inclusion of the term TRADER in the cited mark. The
Examining Attorney, however, has submitted evidence which demonstrates that the
term TRADER is conceptually weak for services in the cited registration. Specifically,
the Examining Attorney has submitted a screenshot from a page of Registrant’s
website which demonstrates that Registrant’s services consist of trading tools
provided to individual traders “geared towards improving trading strategies and
investment performance.”3 A copy of the screenshot is displayed below:

3 See Exhibit 1 of January 26, 2015, Office Action.
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Because the term TRADER in the cited mark TRADERTUBE is descriptive of the
Registrant’s services it is less dominant and, for that reason, the wording TUBE is
the more dominant element of the cited mark. 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
National Data Corp., 753 F.3d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)).
Furthermore, because Applicant intends to provide “financial trading and securities
information,” which is of obvious interest to “traders,” consumers of Applicant’s
services, including traders familiar with Registrant’s mark, may assume that
Applicant’s mark is an abbreviated version of Registrant’s mark or that Applicant’s
services are connected to Registrant’s.
Moreover, likelihood of confusion has been found where, as here, a party merely
adopts a non-descriptive portion of a registered mark as its own mark. See In re
Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (applicant’s
mark ML is similar to registrant’s mark ML MARK LEES); Lilly Pulitzer, Inc. v. Lilli
Ann Corp., 376 F.2d 324, 153 USPQ 406, 407 (CCPA 1967) (THE LILLY as a mark
for women's dresses is likely to be confused with LILLI ANN for women's apparel
including dresses); Hunter Indus., Inc. v. Toro Co., 110 USPQ2d 1651, 1660-61 (TTAB
2014) (applicant’s mark PRECISION is similar to registrant’s mark PRECISION
DISTRIBUTION CONTROL); In re United States Shoe Corp., 229 USPQ 707, 709
(TTAB 1985) (CAREER IMAGE for women's clothing stores and women's clothing
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likely to cause confusion with CREST CAREER IMAGES for uniforms including
items of women's clothing). In United States Shoe, the Board observed that
“Applicant’s mark would appear to prospective purchasers to be a shortened form of
registrant’s mark.” 229 USPQ at 709.
Applicant argues that that the cited mark should not be accorded a broad scope of
protection because “there are literally hundreds of websites on the Internet using
service marks and trademarks that contain the suffix ‘___TUBE’ which are related to
playing or replaying of video clips based on the viewing preferences of broad and
diverse groups of consumers.”4 Applicant further maintains that, in sharp contrast to
websites that use the suffix “___TUBE,” Applicant’s mark is simply TUBE (with no
prefix or any other word associated with it) and Applicant’s use of TUBE has nothing
to do with a website available to the general public, much less a website that
broadcasts or replays videos on the Internet. Rather, Applicant contends that its
TUBE mark is used only in connection with an online, interactive messaging system
to be used by Applicant’s consumers who receive access to Applicant’s proprietary
suite of financial software products and services.5
In support of its arguments, Applicant submitted only a list of website domain
names containing the suffix “___TUBE” without any evidence of actual use of these
websites in commerce, much less use of the domain names as trademarks, and
without any relevant excerpts from the underlying websites. In this instance, merely

4 Applicant’s Appeal Brief, p. 1 (8 TTABUVE 1).
5 Applicant’s Appeal Brief, p. 2 (8 TTABVUE 2).
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providing a list of websites with the suffix “___TUBE” is of no probative value because
there is no content for any of the identified websites to prove the point which
Applicant is seeking to make (i.e., the suffix “___TUBE” is commonly used by third-
parties as service marks or trademarks for displaying video clips online).6 See In re
HSB Solomon Associates LLC, 102 USPQ2d 1269, 1274 (TTAB 2012) (reference to
website internet address not sufficient to make content of website of record); In
Remacle, 66 UPSQ2d 1222, 1223 n.2 (TTAB 2002); In re Fitch IBCA Inc., 64 UPSQ2d
1058, 1060 (TTAB 2002). Accordingly, the Board has given no consideration to this
evidence. In any event, Registrant’s services rendered under the cited mark are not
solely limited to the provision of online video clips in the field of finance.
Because Applicant’s mark is identical to the dominant element of the cited mark,
we find that consumers are likely to view TUBE as a variation of the cited mark
TRADERTUBE. Therefore, we find Applicant’s mark, considered in its entirety, to be
highly similar to the cited mark.
The first du Pont factor thus supports a finding that confusion is likely.
B. Comparison of the Services, Trade Channels and Consumers
We next compare Applicant’s and Registrant’s services. In making our
determination under this second du Pont factor, we look to the services as identified
in the involved application and cited registration. See Octocom Systems, Inc. v.
Houston Computers Services 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

6 Applicant’s December 24, 2014 Response to Office Action.
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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.”). See also Paula Payne Products v. Johnson
Publishing 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.”).
In this case, Applicant’s services are identified as “an online communication and
messaging service, namely, providing the electronic transmission and electronic
messaging of financial trading and securities information across the world with
guaranteed delivery and multi-pathing” and Registrant’s services are identified as
“showing, displaying, and electronically transmitting information, audio, and video
clips in the field of finance.”
Applicant argues that the respective services are different because it provides a
wide range of proprietary software-based financial services to sophisticated
institutional investors and financial-broker-dealer firms, while Registrant provides
online videos related to securities trading which are only available to consumers who
subscribe to Registrant’s website, i.e., www.traderplanet.com.7
We disagree. Inasmuch as the services offered by Registrant under the cited mark
are broadly identified to include the provision of online information in the field of

7 See Declaration of Philippe Buhannic, Applicant’s Chief Executive Officer, ¶¶ 10-13 and
17 (5 TTABVUE 2, 3).
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finance, we find that these services encompass Applicant’s more narrowly identified
provision of online financial trading and securities information which, as recited in
the involved application, are a subset of “information in the field of finance.” Thus,
Applicant’s services are included within Registrant’s. As a result, Applicant’s services
are legally identical in part to Registrant’s services.
Because the services at issue are legally identical in part, we must presume that
the services of Applicant and Registrant move in the same channels of trade and are
offered to the same classes of consumers. See In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012). Notwithstanding, since the identification of
services for Applicant’s mark and the cited mark do not include any limitation as to
the trade channels or class of purchasers for the listed services, it is presumed that
the services move in all channels of trade which would be normal therefor, and that
they would be purchased by all potential buyers thereof. See, e.g., Levi Strauss & Co.
v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 107 USPQ2d 1167, 1173 (Fed.
Cir. 2013); In re Thor Tech, Inc., 90 USPQ2d 1634, 1638 (TTAB 2009) (“We have no
authority to read any restrictions or limitations into the registrant’s description of
goods.”); In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006). An
application, such as Applicant’s, with an identification of services having no
restriction on trade channels or class of purchasers, is not narrowed by Applicant’s
argument that its use is, in fact, restricted to a particular trade channel or class of
purchasers. Tuxedo Monopoly, Inc. v. General Mills Fun Grp., 648 F.2d. 1335, 209
USPQ 986, 988 (CCPA 1981) (restricted outlets irrelevant when application not so
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limited).8 Given the relatedness of Applicant’s services and Registrant’s services and
the lack of any restrictions in their identifications as to trade channels or purchasers,
these factors also weigh in favor of a finding of likelihood of confusion.
Even assuming that purchasers of Applicant’s services are sophisticated, as
Applicant claims, when it comes to their buying decisions, it is settled that even
sophisticated purchasers are not immune from source confusion, especially in cases
such as this one involving similar marks and legally identical services. See Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746, F.3d 1317, 110 USPQ2d 1157, 1163
(Fed. Cir. 2014) (although the services recited in the application also encompass
sophisticated investors, Board precedent requires the decision to be based on the least
sophisticated potential purchasers who will exercise care when making financial
decisions but who are not immune from source confusion where similar marks are
used in connection with related services).
Thus, the similarity of services, channels of trade and classes of purchasers weigh
in favor of finding a likelihood of confusion.

II. Conclusion.
Based on all evidence and arguments bearing on the du Pont factors, including
the evidence and arguments that we have not specifically discussed herein, we

8 It is settled that “…it is the identification of goods [and/or services] that controls, not what
extrinsic evidence may show about the specific nature of the goods [and/or services]. …. An
applicant may not restrict the scope of the goods covered in the cited registration by argument
or extrinsic evidence.” In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008).

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conclude that Applicant’s mark, as used in connection with the services identified in
the application, so resembles the cited mark as to be likely to cause confusion or
mistake, or to deceive under Section 2(d) of the Trademark Act.
Decision: The refusal to register Applicant’s TUBE mark is affirmed.