Vague-Protocol, Ltd.

Trademark Trial and Appeal Board

Oct 31, 2007

No. 78461638 (T.T.A.B. Oct. 31, 2007)

Mailed:
31 October 2007
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re VagueProtocol, Ltd.
________

Serial No. 78461638
_______

Arnold S. Weintraub of The Weintraub Group, P.L.C. for
VagueProtocol, Ltd.

Wendy B. Goodman, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Drost, Kuhlke, and Bergsman, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On August 4, 2004, VagueProtocol, Ltd. (applicant)
applied to register the mark MOBILTICKET (in standard
character form) on the Principal Register for services
ultimately identified as “electronic transmission of data
to a merchant in the nature of a machine readable code or
display representing a transaction receipt which is
displayed on a mobile device display screen” in Class 38.
Serial No. 78461638. The application contains an
THIS OPINION IS NOT
A PRECEDENT OF THE
TTAB
Ser. No. 78461638
2
allegation of applicant’s bona fide intention to use the
mark in commerce.
The examining attorney has finally refused
registration of the application on two grounds. First, the
examining attorney has refused to register applicant’s mark
on the ground that the term MOBILTICKET is merely
descriptive of applicant’s services. 15 U.S.C.
§ 1052(e)(1).
Second, the examining attorney has also refused to
register applicant’s mark under Section 2(d) of the
Trademark Act (15 U.S.C. § 1052(d)) because she determined
that it is likely to cause confusion, to cause mistake, or
to deceive as a result of three registrations owned by the
same party (Deutsche Telekom AG), and all for the identical
mark, MOBILETICKET (typed or standard character drawing)
for the following goods and services:
I.
Registration No. 2908484
Issued: December 7, 2004
Class: 9
For: Electric, electronic, optical, measuring,
signaling, controlling and teaching apparatus and
instruments, all for use with telecommunications,
namely, apparatus for producing sound, images or data;
blank magnetic and optical data carriers; data
processors; computers, namely, microcomputers,
minicomputers, computer central processors, computer
monitors, computer keyboards, computer terminals,
computer memories, computer laser printers, computer
impact printers, computer dot matrix printers,
computers and instructional manuals sold as a unit;
Ser. No. 78461638
3
computer interface apparatus, namely, computer
interface boards, computer mouse and mouse pad,
computer peripherals and parts thereof; computer
software for use in operating telecommunications and
business management systems and related instruction
manuals sold as a unit; computer software programs,
for financial accounting, for the provision of online
information services in the field of news, sports,
entertainment, culture, business and finance, weather
and travel, network management, computer proxy, for
controlling access and alarm monitoring of homes,
apartments, buildings and other properties, billing
analysis, network access control and for creating and
maintaining firewalls; computer software programs for
accessing a global computer network and interactive
computer communications networks; optical fibers sold
as a component of fiber optical cables; fiber optic
cables; optical scanners; optical character readers;
optical blank discs; optical glass for signal
transmission; optic transmitters for radio and
telephone; optic receivers for telephone, audio,
video; optical signal processors; optical attenuators;
optical amplifiers; optical character recognition
apparatus, for use in the telecommunications field,
and parts thereof; telecommunication audio, video and
data communications systems, namely, digital and
analogue signal transmitters, receivers and converters
for use with telephone, audio, video; radio and
telephone transmitters; communication receivers and
servers for telephone, audio, video; telephone
answering machines; teleprompters; facsimile machine;
electronic mail apparatus for electronic exchange of
data images and messages; electrical wire; electrical
wire connectors; integrated circuits; printed
circuits; electric circuits; circuit breakers; printed
circuit boards; circuit connectors; electrical
controllers; electrical converters; electrical
conductors; electrical fuses; electric luminescent
display panels; electrical switch plates; electric
plugs; electric coils; antennas; electrical cables;
computer cables; computer chips; silicon chips;
chronographs for use as specialized time recording
apparatus; computer buffers; blank computer discs;
blank computer floppy disks; computer hard discs;
acoustic conduits; electrical conduits; fiber optic
conduits and parts thereof; compact disc players;
audio and video tape recorders; audio and videotape
Ser. No. 78461638
4
players; audio and videocassette recorders; audio and
videocassette players; blank audio and videotapes,
cassettes, discs and microfiche; audio and video
tapes, cassettes, discs and microfiche featuring
information concerning telecommunications, and
concerning personal and business management systems;
audio and video recordings in the field of
telecommunications, information technology and safety;
television and television peripheral equipment,
namely, cameras, remote control units for interactive
and non-interactive use; video monitors; automatic
vending machines and timing mechanisms therefor and
parts thereof; machine readable, magnetically encoded
cards, namely, prepaid telephone calling cards and
credit cards; blank smart cards; magnetic coded card
readers; data processors and readers; word processors;
microprocessors; electronic encryption units;
demagnetizers for magnetic tapes and parts thereof;
lasers not for medical use; light emitting diodes;
light emitting diode displays; computer, data and
video networking and conferencing equipment, namely,
teleconferencing equipment and audiovisual teaching
equipment in the nature of overhead film; photographic
and slide projectors; projection screens; computer
based information display equipment, namely, computers
which display information on an overhead screen;
Teletypewriters and parts thereof, namely, caller
identification boxes, dialing assemblies, telephone
units, audio operated relays, audio/video signal and
optical filters, protectors and automatic signaling
and control equipment, telemeters, wireless and
cellular telephones, and radio pagers; intercoms;
portable computer devices, namely, laptops, handheld
and pocket computers, wireless fax machines; personal
communications equipment, namely, personal digital
assistants; calculators and related peripherals;
satellite processors, satellite and satellite
communication earth stations both stationary and
moveable; computer game programs for children and
adults; video and computer game cartridges; audio and
video recordings in the field of news, sports,
entertainment, culture, business and finance, weather
and travel; prerecorded compact discs, audiocassette
tapes, videocassette tapes, digital audiotapes and
digital video discs featuring musical, variety, news
and comedy shows

Ser. No. 78461638
5
II.
Registration No. 2914551
Issued: December 28, 2004
Class: 42
For: Computer programming services for others; rental
of software and hardware for online access; data
encryption services, namely, administration of digital
keys and/or digital certificates; application service
provider, namely, hosting computer software
applications for others, hosting of digital content on
the internet; hosting the websites of others on a
computer server for a global computer network;
computer services, namely creating indexes of
information available on computer networks; consulting
and design services in the field of information
technology, computer programming and global
communication networks; installation, maintenance and
repair of computer software; technical project
planning services related to telecommunications
equipment; providing entertainment information and
general information at the specific request and [sic]
end-users by means of telephone or global
communications networks

III.
Registration No. 2962135
Issued: June 14, 2005
Class: 38
For: Telecommunications and information technology
services, namely electric, digital, cellular and
wireless transmission of voice, data, information,
images, signals and messages and transmission of
voice, data, images, audio, video and information via
telephone, television and global communication
networks; providing telecommunications connections
over a global communications network, electronic mail,
voice mail and messaging services, namely, the
recording and storage and subsequent transmission of
voice messages by telephone; audio and video
teleconferencing, rental of telecommunications
equipment, namely, equipment for electronic access to
global telecommunications network, equipment for
transmitting, receiving, recording and monitoring
voice, data, information, images, signals, messages,
comprised of data and word processors, and
telecommunications hardware and software including
components and peripherals thereof for use in the
Ser. No. 78461638
6
telecommunications industry, and rental of equipment
for transmitting, receiving, recording and monitoring
computer programs for use in operating and accessing
telecommunications systems; audio and video
broadcasting featuring entertainment in the nature of
live visual and audio performances, and musical,
variety, news and comedy shows; providing access to
computer information networks; personal communications
services; pager services; electronic mail services;
transmission and broadcast of audio and video
programming; providing multiple-user access to a
global communication network; leasing
telecommunications equipment, components, systems and
supplies

After the examining attorney made the refusals to
register final, this appeal followed.1
Descriptiveness
We will start our analysis by addressing the
descriptiveness refusal. A mark is merely descriptive if
it immediately conveys “knowledge of a quality, feature,
function, or characteristics of the goods or services.” In
re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828,
1831 (Fed. Cir. 2007). See also In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987); and In re Quik-
Print Copy Shops, Inc., 616 F.2d 523, 205 USPQ 505, 507
(CCPA 1980). To be “merely descriptive,” a term need only
describe a single significant quality or property of the
goods. Gyulay, 3 USPQ2d at 1009 (Fed. Cir. 1987);

1 On July 31, 2007, the board affirmed the examining attorney’s
refusal to register applicant’s mark MOBILTICKETING under Section
2(d) and (e) for the same services. Serial No. 78431149.
Ser. No. 78461638
7
Meehanite Metal Corp. v. International Nickel Co., 262 F.2d
806, 120 USPQ 293, 294 (CCPA 1959). Descriptiveness of a
mark is not considered in the abstract, but in relation to
the particular goods or services for which registration is
sought. In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 218 (CCPA 1978).
The examining attorney’s argument concerning the
descriptiveness of the term MOBILTICKET is based on
evidence from the internet and NEXIS that shows that the
term “mobile ticket” and “mobile ticketing” are terms
commonly used to refer to tickets that are transmitted to
cell phones.
Scottish mobile marketing firm Mobiqa operated a
mobile ticketing system for the band Grinspoon at
Sydney’s Metro Theatre last year. More than half the
attendees at the two sold-out Australia shows opted
for the mobile ticket instead of the paper version –
35% of whom later redeemed the mobile ticket for a
discount off the band’s CD.
Billboard, February 25, 2006.

McCallum also said that O2 would be using mobile
ticketing as a central plank of its plans for The O2
and the new name for the Millennium Dome, which is due
to reopen in 2007 as an entertainment complex. He
revealed that the operator has already sold over 5,000
mobile tickets for this year’s Wireless festival and
pointed to this as an indication of the popularity of
the ticketing medium in the future.
New Media Age, March 9, 2006.

The IT-3000 terminal shall be deployed within Deutsche
Bahn to optimize the mobile ticket sales in the trains
as well as the ticket control in the long distance and
Ser. No. 78461638
8
suburban traffic and renew the previous equipment
generation.
Total Telecom, March 9, 2006.

Radio ads invited listeners to text a shortcode to
receive a mobile ticket in the form of a code. The
two-for-one offer promoted the new Rita: Queen of
Speed ride in May and June.
Revolution, December 2005.

By texting a number, consumers receive a mobile ticket
in the form of a bar code, to be scanned on arrival.
ASAP, November 30, 2005.

ACS Solutions … Details: Supply the city’s
transportation authority, by the end of 2008, with
1,100 automatic ticket-vending machines and 500 mobile
ticketing devices.
TechNews, January 26, 2006.

Mobile ticketing to enable the secure download of
tickets and manage them. Mobile payment to enable the
secure execution of payments.
eWeek.com

Verizon is using a pre-Grammy Awards Fugees concert as
a pilot program for mobile ticketing. The operator
sent select subscribers a text message inviting them
to the free concert taking place Feb. 5 in Hollywood.
Those responding received a multimedia message
containing a bar code that can be scanned at a special
entrance to the venue in lieu of a paper ticket.
Billboard, February 11, 2006.

The ringing success of cell phones threatens to change
box office sales, with companies around the world
adding mobile tickets to their customer options.
Variety, October 4-10, 2004.

Nexus trials mobile ticket
Metro operator Nexus is planning to allow customers to
purchase tickets using their mobile phones.
www.serco.com.

Mobile Ticket Purchases to Spur M-Commerce Growth:
The ability to purchase tickets for events using

Ser. No. 78461638
9
mobile phones will help the mobile commerce (m-
commerce) market grow dramatically in coming years.
http://informationweek.mobilepipeline.com.

About Mobile Ticketing
Mobile ticketing is a method of purchasing a fare
to ride the aircoach, the proof of purchase being
shown on your mobile telephone’s display.
Please scan your mobile telephone over machine on
bus or enter the code on the keypad. The machine will
then print out a ticket that your need to show to the
driver in order to board the bus. Keep the ticket for
inspection.
www.aircoarch.ie.2

Mobile Ticketing
This new form of m-commerce service is using mobile
technology and existing barcode scanning to provide
mobile phone users with mobile tickets and therefore
better serve customers’ needs. Mobile ticketing
simply makes your mobile phone the ticket.
www.gavitec.com

Mobile Ticketing
Mobile Ticketing provides a quick, easy way for event
promoters to connect with their mobile audience in a
secure and convenient environment. Consumers order
tickets using their mobile phones and the charge
appears on their credit card, debit card, or mobile
phone bill. Mobile Ticketing is perfectly suited for
a wide range of activities including cinemas, sporting
events, ski resorts, and concerts.
www.moremagic.com

Mobile Ticketing
Mobile ticketing makes paper tickets superfluous. It
offers entrepreneurs an additional channel for the
placement of orders, payment, distribution and
verification of tickets. Mobile ticketing by Emexus
is applicable for all possible tickets, ranging from

2 To the extent that some of the websites or articles are from
English language, foreign sources, they may nonetheless be
relevant to determine if the mark is merely descriptive. Bayer
Aktiengesellschaft, 82 USPQ2d at 1835 (“Information originating
on foreign websites or in foreign news publications that are
accessible to the United States public may be relevant to discern
United States consumer impression of a proposed mark”).
Ser. No. 78461638
10
transport tickets, entrance passes and hotel vouchers.
Waiting times at ticket machines are history and
queues for access control shortened because ticket
verification and registration is simplified.
www.emexus.com

Solutions > Mobile Ticketing
… Of course, a list of fare permutations can be
worked out with a small booklet, but for the average
transport operator, printing a booklet for every
vendor for every route would be a costly exercise.
And the vendor, flicking through the booklet to find
the right fares and then allocate a ticket to each
passenger before they get off without paying is
unlikely to happen.
Now it is clear why transport operators have
chosen TouchStar’s updateable, power saving, robust,
portable TouchPC computers and printers to take the
strain. A few passes of the touchscreen are enough to
have an accurately priced ticket heading out. Throw
in a credit/debit card reader and a comprehensive
ticketing service can be put into action.
www.touchpc.com

A mobile ticketing service, TicketTXT allows
moviegoers to purchase cinema tickets 24/7 using only
their cellphones.
BusinessWorld, March 9, 2006.

According to Juniper research, mobile ticketing (used
for ordering tickets for public transportation, car
parking, events, etc.) and mobile retail services will
assist the global mobile commerce market by generating
more than $63 billion worth of revenue by 2010.
VARBusiness, March 6, 2006.

In response to this evidence of the descriptiveness of
the term Mobile Ticket, applicant argues:
The term “Mobile Ticket” seems to have gained some use
as a phrase meaning an electronically transmitted
“ticket” for an event such as a concert or a sporting
event which is then scanned to permit an attendee to
gain entrance into the event. This is distinguishable
from an electronically displayed receipt. The word
“ticket” does not describe nor is it a receipt.
Ser. No. 78461638
11

Brief at unnumbered p. 4.
We begin by noting that the term “Mobile Ticket” and
“Mobile Ticketing” are commonly used to describe a more
recent option for event goers to order tickets by using
their mobile phones. The information needed to enter the
event is transmitted to the consumer’s mobile phone. The
consumer then displays this information in order to gain
entry into the event. In effect, “mobile ticketing” or
“mobile tickets” eliminate the need for a consumer to carry
paper tickets because the consumer’s mobile phone contains
all the necessary information.
Applicant’s mark is a slight misspelling of the
commonly used term “Mobile Ticket.” Applicant merely
eliminates the “e” in mobile and the space between the
words. The elimination of the space would not normally
change the meaning of the term. Abcor (GASBADGE at least
merely descriptive for “gas monitoring badges”); Cummins
Engine Co. v. Continental Motors Corp., 359 F.2d 892, 149
USPQ 559 (CCPA 1966) (TURBODIESEL generic for a type of
engine); In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB
1977) (BREADSPRED descriptive for jams and jellies that
would be a spread for bread); In re Perkin-Elmer Corp., 174
Ser. No. 78461638
12
USPQ 57 (TTAB 1972) (LASERGAGE merely descriptive for
interferometers utilizing lasers).
Furthermore, the absence of the “e” in mobile is also
not significant. It has long been held that such slight
misspellings do not overcome evidence of descriptiveness.
The word, therefore is descriptive, not indicative of
the origin or ownership of the goods; and being of
that quality, we cannot admit that it loses such
quality and becomes arbitrary by being misspelled.
Bad orthography has not yet become so rare or so
easily detected as to make a word the arbitrary sign
of something else than its conventional meaning….

Standard Paint Co. v. Trinidad Asphalt Mfg. Co., 220 U.S.
446, 455 (1911). See also Armstrong Paint & Varnish Works
v. Nu-Enamel Corp., 305 U.S. 315 (1938) (NU-ENAMEL; NU held
equivalent of “new”); In re Quik-Print Copy Shops, 616 F.2d
523, 205 USPQ 505, 507 n.9 (CCPA 1980) (QUIK-PRINT held
descriptive; “There is no legally significant difference
here between ‘quik’ and ‘quick’”). Similarly here, the
slight differences between Mobilticket and Mobile Ticket do
not result in the marks having different meanings.
MOBILTICKET will be understood by many, if not most,
consumers as simply being a slight misspelling of Mobile
Ticket.
Concerning applicant’s argument that a “ticket” does
not describe nor is it a receipt, we note that the
examining attorney submitted a definition of “ticket” as “a
Ser. No. 78461638
13
paper slip or card indicating that its holder has paid or
is entitled to a specific service, right, or
consideration.” See Office Action dated July 25, 2005,
attachment. A “receipt” is defined as “a written
acknowledgement of having received a specified amount of
money, goods, etc.” The Random House Dictionary of the
English Language (unabridged) (2d ed. 1987).3 A ticket
indicates that the “holder has paid” for a specific
service” while a receipt is a “written acknowledgement of
having received” a specific good or service. In effect,
the definitions of “ticket” and “receipt” overlap. Indeed,
a phrase such as “Your ticket is your receipt” shows the
relationship between the terms “ticket” and “receipt.”
Therefore, the fact that applicant refers to a transmission
receipt rather than a ticket does not mean that the term
“Mobilticket” is not merely descriptive.
Applicant’s identification of services also indicates
that the information is transmitted to the merchant but
this appears to simply be an alternative method of delivery
of information for “mobile tickets.” For example, ACS
Solutions supplies “the city’s transportation authority, by

3 We take judicial notice of this definition. University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594,
596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
Ser. No. 78461638
14
the end of 2008, with 1,100 automatic ticket-vending
machines and 500 mobile ticketing devices.” TechNews,
January 26, 2006 (emphasis added). TouchStar, at its
webpage entitled “Solutions > Mobile Ticketing” discusses
“why transport operators have chosen TouchStar’s
updateable, power saving, robust, portable TouchPC
computers and printers to take the strain. A few presses
of the touchscreen are enough to have an accurately priced
ticket feeding out.” www.touchpc.com. The evidence
suggests that there is nothing incongruous about a mobile
ticketing scheme in which the merchant receives the
transmission information. Therefore, this fact would not
make the term MOBILTICKET, when used in association with
applicant’s services, suggestive.
We, therefore, affirm the examining attorney’s refusal
to register on the ground that applicant’s mark MOBILTICKET
is merely descriptive for the identified services.
Likelihood of Confusion
Next, we turn to the question of whether there is a
likelihood of confusion. We consider this issue by
applying the factors set out in 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); and Recot,
Ser. No. 78461638
15
Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed.
Cir. 2000). In considering the evidence of record on these
factors, we must keep in mind that “[t]he 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.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
The first factor that we will consider is whether the
marks, in their entireties, are similar in sound,
appearance, meaning, 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).
Applicant’s mark is MOBILTICKET and registrant’s marks are
MOBILETICKET. Neither mark includes a design or any
stylization. Regarding the terms MOBILTICKET and
MOBILETICKET, we find that they are very similar, if not
almost identical. The only difference is the fact that
applicant spells the term “Mobile” without the “e” at the
end of the word before it is joined with the term “Ticket.”
Applicant’s misspelling of mobile is a very minor
difference. Because both marks eliminate the space between
the words, many consumers are unlikely to study the mark
closely enough to even notice the missing “e.” Those that
Ser. No. 78461638
16
do notice the difference are hardly likely to attribute
much, if any, significance to its absence. We add that
there “is no correct pronunciation of a trademark, and it
obviously is not possible for a trademark owner to control
how purchasers will vocalize its mark.” Centraz Industries
Inc. v. Spartan Chemical Co., 77 USPQ2d 1698, 1701 (TTAB
2006). Therefore, it is unlikely that the marks would be
pronounced differently by most purchasers. In this case,
we agree with the district court that held that: “Most
people would pronounce ‘Mobil’ and ‘mobile’ identically.”
Mobil Oil Corporation v. Mobile Mechanics, Inc., 192 USPQ
744, 747 (D. Conn. 1976). While the marks are not
identical, they nonetheless appear and sound very similar,
if not almost identical.
Regarding the meanings and commercial impressions of
the terms, they are virtually indistinguishable. To most
consumers, their meanings would be identical, a “mobile
ticket” and their commercial impressions are likewise
virtually the same. When we compare the marks in their
entireties, we conclude that they are at least very similar
in appearance, sound, meaning, and commercial impression.
The next factor we consider is whether the goods
and/or services are related. We must consider the goods as
they are identified in the identifications in the
Ser. No. 78461638
17
application and registrations. 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”). Here, applicant’s services
involve the transmission of electronic data that is
displayed on a mobile device display screen. A mobile
phone with a display screen would be a mobile device that
would be used in association with applicant’s identified
services.
Registrant’s goods and services include:
Class 9 - portable computer devices, namely, laptops,
handheld and pocket computers, wireless fax machines;
personal communications equipment, namely, personal digital
assistants; optical character readers; and optical
character recognition apparatus, for use in the
telecommunications field, and parts thereof;
telecommunication audio, video and data communications
systems, namely, digital and analogue signal transmitters;
receivers and converters for use with telephone, audio,
video; radio and telephone transmitters; and cellular
telephones;
Class 38 - Telecommunications and information
technology services, namely electric, digital, cellular and
Ser. No. 78461638
18
wireless transmission of voice, data, information, images,
signals and messages and transmission of voice, data,
images, audio, video and information via telephone,
television and global communication networks and rental of
telecommunications equipment, namely, equipment for
electronic access to global telecommunications network,
equipment for transmitting, receiving, recording and
monitoring voice, data, information, images, signals,
messages, comprised of data and word processors, and
telecommunications hardware and software including
components and peripherals thereof for use in the
telecommunications industry; and
Class 42 - Providing entertainment information and
general information at the specific request of end-users by
means of telephone or global communications networks.
These goods involve devices that would be used in
association with receiving electronic transmission of data
so that the same consumers would be exposed to applicant’s
and registrant’s marks on the goods and services. These
consumers are likely to assume that there is a relationship
between these goods and services. In addition, the
examining attorney submitted copies of registrations to
show that the same entity is the source of goods such as
telephones and wireless communications services. See,
Ser. No. 78461638
19
e.g., Registration No. 3066575 (cellular telephones and
wireless telecommunications services for voice and data
cellular services); No. 2958412 (cellular telephones,
mobile data receivers and transmitters and handheld units
for the wireless receipt of voice and data and
telecommunications services); No. 3060968 (telephones and
transmission of audio and video via electronic
communications networks); and No. 3030154 (electronic
components designed for transmission of medical data via
wireless and Internet and transmitting medical telemetry
information via wireless and Internet). Also, applicant’s
services are related to registrant’s services of providing
entertainment and general information at the specific
request of end-users by means of telephone or global
communications networks inasmuch as both identifications
encompass services that facilitate transactions in the
entertainment industry. For example, registrant’s services
involve transmission of entertainment information by
telephone, which could include providing information about
the same events that applicant’s services are transmitting
receipts. Registrant’s telecommunications services that
involve the wireless transmission of data and information
would overlap with applicant’s electronic transmission of
data that is displayed on a mobile display screen.
Ser. No. 78461638
20
[It] has often been said that goods or services need
not be identical or even competitive in order to
support a finding of likelihood of confusion. Rather,
it is enough that goods or services are related in
some manner or that circumstances surrounding their
marketing are such that they would be likely to be
seen by the same persons under circumstances which
could give rise, because of the marks used thereon, to
a mistaken belief that they originate from or are in
some way associated with the same producer or that
there is an association between the producers of each
parties' goods or services.

In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
See also Time Warner Entertainment Co. v. Jones, 65 USPQ2d
1650, 1661 (TTAB 2002).
Applicant also argues that: “It is of criticality
that the cited registrations are based upon CTM
applications and registrations… This, in essence, precludes
adoption and utilization of marks, in the United States, by
other applicants where they offer services or goods which
are clearly distinguishable from the actual goods or
services provided by the CTM-based registrant.” Brief at
unnumbered p. 6. Applicant goes on to argue that:
Adding to the perplexity of the instant situation is
that the apparent licensee of the cited marks is T-
Mobile USA, a United States entity. As such, the
registrations hardly deserve the extra protection
afforded the preclusive effect of Deutsche Telecom’s
[sic] CTM-based trademark registrations should not
apply herein, rather, because of the US affiliate
being the actual user of the marks, such registrations
should be restricted to actual use, as required of
other US-based businesses.

Brief at unnumbered pp. 6-7.
Ser. No. 78461638
21
In response to applicant’s argument that registrant’s
marks should be limited to actual use, the Court of Appeals
for the Federal Circuit has made it clear that we must
consider the goods or services as they are described in the
identification of goods and services and that it is not
proper to attack a registration in an ex parte proceeding
by claiming that the mark has not been used on all the
goods or services.
Dixie's argument that DELTA is not actually used in
connection with restaurant services amounts to a
thinly-veiled collateral attack on the validity of the
registration. It is true that a prima facie
presumption of validity may be rebutted. See Dan
Robbins & Assocs., Inc. v. Questor Corp., 599 F.2d
1009, 1014, 202 USPQ 100, 105 (CCPA 1979). However,
the present ex parte proceeding is not the proper
forum for such a challenge. Id. ("One seeking
cancellation must rebut [the prima facie] presumption
by a preponderance of the evidence."); Cosmetically
Yours, Inc. v. Clairol Inc., 424 F.2d 1385, 1387, 165
USPQ 515, 517 (CCPA 1970); TMEP Section 1207.01(c)(v)
(1993); 3 J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition Section 23.24[1] [c] (3d ed.
1996). In fact, Cosmetically Yours held that “it is
not open to an applicant to prove abandonment of [a]
registered mark" in an ex parte registration
proceeding; thus, the "appellant's argument … that
[a registrant] no longer uses the registered mark …
must be disregarded." 424 F.2d at 1387,165 USPQ at
517; cf. In re Calgon Corp., 435 F.2d 596, 598, 168
USPQ 278, 280 (CCPA 1971) (applicant's argument that
its use antedated a registered mark was effectively an
improper collateral attack on the validity of the
registration, which should have been made in formal
cancellation proceedings).

Dixie claims that it is not arguing that the DELTA
mark has been abandoned, only that it has not been
used for restaurant services, so there is
Ser. No. 78461638
22
no likelihood of confusion. However, unless it
establishes abandonment, the registration is valid,
and we must give effect to its identification of
services. Cosmetically Yours, 424 F.2d at 1387, 165
USPQ at 517 ("As long as the registration relied upon
… remains uncanceled, it is treated as valid and
entitled to the statutory presumptions.").

In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1534-35 (Fed. Cir. 1997).
Therefore, we will not limit our consideration of the
cited registrations to the areas of registrant’s actual use
even if there were conclusive evidence of the actual extent
of registrant’s use.4 Furthermore, even if registrant had
licensed its registrations to a United States entity, this
would not change the case law that requires the board to
consider the goods as they are set out in the
identification of goods. Applicant’s cited case, Karsten
Mfg. Co. v. Editoy AG, 79 USPQ2d 1783 (TTAB 2006), held
that an application claiming Section 44(d) and (e) filing
bases was not invalid even if it was assigned to a United
States entity, provided the application was subsequently
amended to substitute a Section 1 basis. It does not
support applicant’s argument that we should limit our
consideration of the identification of goods to the goods

4 Inasmuch as this is an ex parte proceeding where the registrant
does not participate, it is not even clear how we would could
accurately determine the “actual use” of a entity who is not able
to present evidence of its own use.
Ser. No. 78461638
23
actually used. As we indicated in the footnote, this would
be inappropriate in an ex parte proceeding.
When we consider the relevant du Pont factors,
including the fact that the marks are similar and the goods
and services are related, we conclude that there is a
likelihood of confusion in this case.
We add that even if the cited mark is weak, “weak
marks are entitled to protection against registration of
similar marks, especially identical ones, for related goods
and services.” In re Colonial Stores, 216 USPQ 793, 795
(TTAB 1982). See also In re The Clorox Co., 578 F.2d 305,
198 USPQ 337, 341 (CCPA 1978) (ERASE for a laundry soil and
stain remover held confusingly similar to STAIN ERASER,
registered on the Supplemental Register, for a stain
remover).
Decision: The refusals to register the mark
MOBILTICKET on the grounds of mere descriptiveness and
likelihood of confusion are affirmed.