United Data Technologies, Inc.

Trademark Trial and Appeal Board

Dec 2, 2016

No. 86535975 (T.T.A.B. Dec. 2, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: December 2, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re United Data Technologies, Inc.
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Serial No. 86535975
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Stewart L. Gitler of Welsh Flaxman & Gitler,
for United Data Technologies, Inc.
David A. Hoffman, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
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Before Seeherman, Bergsman and Wolfson,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
United Data Technologies (“Applicant”) seeks registration on the Principal
Register of the mark UCLOUDSUITE (in standard characters) for the services listed
below:
Information technology consulting services in the field of
wireless sensor networks, mobile data acquisition and
collection for data-mining, mobile signature analysis,
developing cooperative distributed peer-to-peer ad hoc
networking and data processing for others, data storage
and retrieval services, autonomic self-healing network
design for others; information technology consulting
services in the field of cloud computing, namely deploying
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and managing large-scale wireless LANs by managing all
data client, communications, and system administration
functions, performing radio resource management (RRM)
functions, managing system-wide mobility policies, and
coordinating all cloud network functions, in Class 42.1
The Trademark Examining Attorney has 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 so resembles the registered mark UCLOUD (in standard
characters) for the services listed below as to be likely to cause confusion.2
Electronic mail and messaging services; electronic voice
messaging, namely, the recording and subsequent
transmission of voice messages by telephone; providing e-
mail and instant messaging services; telephone voice
messaging services; network conferencing services;
providing telephone conferencing services; provision of
video conferencing services; teleconferencing and video
conferencing services; telepresence conferencing services;
video conferencing services; web conferencing services;
presence services, namely, a feature of instant messaging
services whereby an icon gives the users availability status
so others can determine the users availability to
communicate via instant messaging; voice mail delivery
services, namely, transmitting voice mails to designated
recipients for others; unified messaging services, namely,
electronic transmission of voicemail, e-mail, facsimiles and
instant messages to one location where they can be
accessed; hosting services, namely, hosting online web
facilities for other[s] to engage in electronic mail and
messaging, telephone voice messaging via the Internet,
networking conferencing, telephone conferencing, video
conferencing, telepresence conferencing, web conferencing,
voice mail delivery, unified messaging and unified
communications; unified communication services, namely,
integration of voicemail, e-mail, facsimiles and instant

1 Application Serial No. 86535975 was filed on February 16, 2015, under Section 1(b) of the
Trademark Act, 15 US.C. § 1052(b), based upon Applicant’s allegation of a bona fide intention
to use the mark in commerce.
2 Registration No. 4321788, registered on April 16, 2013.
Serial No. 86535975
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messages to one location where they can be electronically
transmitted to one location, in Class 38; and
Computer services, namely, cloud hosting provider
services; application service provider, namely, hosting,
managing, developing, analyzing, and maintaining
applications, software and web sites of others in the fields
of telecommunications, in Class 42.
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. 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 Ind.,
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 and 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 (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 services. See In re Chatam Int’l Inc., 380 F.2d 1340, 71
USPQ2d 1944 (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
Serial No. 86535975
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the goods and differences in the marks.”); see also In re i.am.symbolic, llc, 116
USPQ2d 1406, 1409 (TTAB 2015).
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. In re E. I. du Pont De Nemours & Co., 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); see also San Fernando Electric Mfg. Co. v. JFD
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem.,
972 F.2d 1353 (Fed. Cir. 1992).
Applicant has stated that its mark is the combination of three components, U,
CLOUD and SUITE, while Registrant’s mark is the combination of the components
U and CLOUD.3 We agree.
The word “suite” is defined, inter alia, as “a group of things forming a unit or
constituting a collection” and as “a set of computer programs designed to work

3 Applicant’s Brief, p. 2 (4 TTABVUE 3).
Serial No. 86535975
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together and usually sold as a single unit.”4 The word “suite” is at least descriptive
when used in connection with computer related services. See the seven marks
registered on the Supplemental Register with a disclaimer of “suite” used in
connection with software services (e.g., Registration No. 4810466 for the mark
PRODUCER SUITE, Registration No. 4833861 for the mark CAMPAIGN SUITE,
and Registration No 4745343 for the mark REPAIR SUITE).5
The word “cloud” is defined, inter alia, as “the computers and connections that
support cloud computing .”6 The Encyclopaedia
Britannica (2009) provides the following explanation of cloud computing:
Cloud computing, method of running application software
and storing related data in central computer systems and
providing customers or other users access to them through
the Internet.
Cloud computing encompasses a number of different
services. One set of services, sometimes called software as
a service (SaaS), involves the supply of a discrete
application to outside users. The application can be geared
either to business users (such as an accounting application)
or to consumers (such as an application for storing and
sharing personal photographs). Another set of services,
variously called utility computing, grid computing, and
hardware as a service (HaaS), involves the provision of
computer processing and data storage to outside users, who
are able to run their own applications and store their own
data on the remote system. A third set of services,
sometimes called platform as a service (PaaS), involves the

4 Merriam-Webster Dictionary (merriam-webster.com). The Board may take judicial
notice of dictionary definitions, including online dictionaries that exist in printed format. In
re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118
USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d
1031, 1038 n.14 (TTAB 2010).
5 November 23, 2015 Office Action.
6 Merriam-Webster Dictionary (merriam-webster.com).
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supply of remote computing capacity along with a set of
software-development tools for use by outside software
programmers.7
Thus, the word “cloud” is descriptive when used in connection with cloud computing
activities such as Applicant’s “technology consulting services in the field of cloud
computing” and Registrant’s “cloud hosting provider services.”
Because “suite” and “cloud” are descriptive when used in connection with the
services at issue, the dominant element of the marks is the letter “U.” It is well-settled
that 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 National Data Corp., 753 F.2d 1056,
224 USPQ 749, 752 (Fed. Cir. 1985)); In re Dixie Rests. Inc., 105 F.3d 1405, 1407, 41
USPQ2d 1531, 1533-34 (Fed. Cir. 1997). 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 National Data Corp., 224
USPQ at 751.

7 The Board may take judicial notice of information from encyclopedias. B.V.D. Licensing
Corp. v. Body Action Design Inc., 846 F.2d 727, 6 USPQ2d 1719, 1721 (Fed. Cir. 1988)
(“dictionaries and encyclopedias may be consulted”); Productos Lacteos Tocumbo S.A. de C.V.
v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 n.61 (TTAB 2011); In re Broyhill
Furniture Indus. Inc., 60 USPQ2d 1511, 1514 n.4 (TTAB 2001) (dictionary entries and other
standard reference works).
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Further reinforcing the importance of the letter “U” as the dominant element of
the marks is its position as the first part of the marks. See Brown Shoe Co. v. Robbins,
90 USPQ2d 1752, 1755 (TTAB 2009) (PALOMA and PALOMITA); Hercules Inc. v.
National Starch and Chemical Corp., 223 USPQ 1244, 1246 (TTAB 1984) (“the clearly
dominant aspect of both marks [NATROL and NATROSOL] is that the first four
letters and the final two are the same.”); see also 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 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 America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first notice
the identical lead word); Presto Products Inc. v. Nice-Pak Products, 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”).
Considering the marks in their entireties (i.e., both marks begin with the letter
“U,” followed by the word “Cloud,” with the only difference being the addition of the
descriptive element “Suite” in Applicant’s mark), we find that the marks are similar.
Exact similitude is not required to support finding that marks are similar. When
there are small differences between the marks, the differences may be insignificant
in terms of distinguishing the marks. That is the case here, where the only difference
is the addition of the descriptive term “suite” in Applicant’s mark.
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Supporting our finding that the marks are similar is the fact that Applicant’s
mark UCLOUDSUITE encompasses Registrant’s entire mark UCLOUD. While there
is no explicit rule that likelihood of confusion automatically applies where an
applicant’s mark contains in part the whole of another mark, the fact that the cited
registered mark is subsumed by an applicant’s mark increases the similarity between
the two. See In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009)
(applicant’s mark VANTAGE TITAN for medical magnetic resonance imaging
diagnostic apparatus confusingly 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 confusingly similar to MACHO
for restaurant entrees); see also The Wella Corp, v. California Concept Corp., 558 F.2d
1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer design
for men’s cologne, hair spray, conditioner and shampoo is likely to cause confusion
with the mark CONCEPT for cold permanent wave lotion and neutralizer); 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 likely to cause confusion with BENGAL for gin).
In view of the foregoing, we find that the marks are similar in terms of appearance,
sound, connotation and commercial impression.
B. The similarity or dissimilarity and nature of the services.
The cited mark UCLOUD is registered for, inter alia, “cloud hosting provider
services.” Applicant is seeking to register its mark for, inter alia, “information
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technology consulting services in the field of cloud computing, namely deploying and
managing large-scale wireless LANs by managing all data client, communications,
and system administration functions, performing radio resource management (RRM)
functions, managing system-wide mobility policies, and coordinating all cloud
network functions.” As indicated by the excerpt from the Encylopaedia Britannica
noted above, cloud computing is a “method of running application software and
storing related data in central computer systems and providing customers or other
users access to them through the Internet.” It “involves the provision of computer
processing and data storage to outside users, who are able to run their own
applications and store their own data on the remote system.” Thus, Registrant’s
“cloud hosting provider services” encompass or include Applicant’s “deploying and
managing large-scale wireless LANs by managing all data client, communications,
and system administration functions, performing radio resource management (RRM)
functions, managing system-wide mobility policies, and coordinating all cloud
network functions,” and the services are in part identical. See In re Hughes Furniture
Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded
identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified
‘residential and commercial furniture.’”).
Under this du Pont factor, the Trademark Examining Attorney need not prove,
and we need not find, similarity as to each and every activity listed in the
identification of services. It is sufficient for a refusal based on likelihood of confusion
that relatedness is established for any activity encompassed by the identification of
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services in a particular class in the application. See Tuxedo Monopoly, Inc. v. General
Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re
i.am.symbolic, llc, 116 USPQ2d at 1409; Inter IKEA Sys. B.V. v. Akea, LLC, 110
USPQ2d 1734, 1745 (TTAB 2014).
C. Established, likely-to-continue channels of trade.
Because the services described in the application and the cited registration are in
part identical, we must presume that the channels of trade and classes of purchasers
are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012) (legally identical goods are presumed to travel in same channels of trade to
same class of purchasers); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ
721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade
and classes of purchasers are considered to be the same); United Global Media Grp.,
Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); American Lebanese Syrian
Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028
(TTAB 2011).
D. Weighing the factors.
Because the marks are similar, the services are in part identical, and there is a
presumption that these in part identical services move in the same channels of trade
and are sold to the same classes of consumers, we find that Applicant’s mark
UCLOUDSUITE for its identified services is likely to cause confusion with the
registered mark UCLOUD for, inter alia, “computer services, namely, cloud hosting
provider services.”
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Decision: The refusal to register Applicant’s mark UCLOUDSUITE is affirmed.