Vernal Creative, LLC

Trademark Trial and Appeal Board

Sep 17, 2015

No. 86247525 (T.T.A.B. Sep. 17, 2015)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
September 17, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Vernal Creative, LLC
_____

Serial No. 86247525
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Kevin W. Grierson of Culhane Meadows PLLC for Vernal Creative, LLC.

Cassondra Anderson, Trademark Examining Attorney, Law Office 103 (Michael
Hamilton, Managing Attorney).
_____

Before Ritchie, Kuczma, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Vernal Creative, LLC (“Applicant”) has filed an application to register on the
Principal Register the mark PROMPT (in standard characters) for the following
services:1
E-mail forwarding services; Electronic mail; Electronic
mail services; Providing e-mail services; Providing on-line
listservers for transmission of messages among computer
users concerning Internet and mobile communications;
Providing private and secure real time electronic

1 Application Serial No. 86247525, filed April 9, 2014 under Trademark Act Section 1(b), 15
U.S.C. § 1051(b), on the basis of Applicant’s bona fide intention to use the mark in
commerce.
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communication over a computer network, in International
Class 38.
The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as used
in connection with Applicant’s services, so resembles the registered mark shown
below as to be likely to cause confusion, or to cause mistake, or to deceive:

The cited mark is registered for “Telephone voice messaging services,” in
International Class 38.2
The Examining Attorney made her refusal final and Applicant has appealed.
Applicant and the Examining Attorney have filed briefs.
1. Evidentiary matter.
Applicant submitted with its brief, for the first time, a portion of the prosecution
file of the cited registration. Such submission is untimely. “The record in the
application should be complete prior to the filing of an appeal. The Trademark Trial
and Appeal Board will ordinarily not consider additional evidence filed with the
Board by the appellant or by the examiner after the appeal is filed.” 37 C.F.R. §
2.142(d). See also TBMP § 1207.01 (2015). Accordingly, we have not considered the
matter attached to Applicant’s brief. The applicant has the responsibility to make

2 Reg. No. 3634090, issued June 9, 2009; Section 8 affidavit accepted. Color is not a feature
of the mark. “The mark consists of the wording ‘PROMPTSPLUS’ in stylized form with
‘PLUS’ displayed as a raised superscript.”
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sure that the record is complete prior to filing a notice of appeal. In re Van
Valkenburgh, 97 USPQ2d 1757, 1768 n. 32, 1769 (TTAB 2011).
2. Refusal under Section 2(d).
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 as set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods and services at issue. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, Applicant
and the Examining Attorney have also submitted arguments regarding trade
channels, customers, and care of selection of the services.
(a) The marks.
We first consider the similarity or dissimilarity of the marks at issue in their
entireties as to appearance, sound, connotation and commercial impression. See
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). “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)
(citation omitted).
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The two marks are, in part, similar in appearance and sound to the extent that
Applicant’s mark is PROMPT and Registrant’s mark includes the term PROMPTS.
The presence of the additional letter “S” in Registrant’s mark does create a visual
and phonetic element of distinction, which we recognize. Applicant points out that
its mark is rendered in standard characters, while the registered mark includes a
design element;3 and that the registered mark contains the additional term PLUS,
presented as a superscript, “which distinguishes it both verbally and visually from
Applicant’s mark.”4
The “design element” of Registrant’s mark consists of the stylization of the
lettering, which is not particularly distinctive. In any event, we note that
Applicant’s mark, which it seeks to register in standard character form, is not
limited to any particular font, size, style or color, and could be presented in a
manner that resembles the style of Registrant’s mark. See In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012). Further, our principal
reviewing court has “rejected an applicant’s argument that its standard character
mark was distinct from a mark registered in stylized lettering with a design.” Id.,
citing SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983).
See also In re Mighty Leaf Tea, 601 F. 3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010).
We do agree with Applicant’s contention, however, that the additional wording
PLUS creates a noticeable distinction between the two marks in appearance and
sound.

3 Applicant’s brief at 6, 4 TTABVUE 7.
4 Id. at 7, 4 TTABVUE 8.
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With respect to the meanings of the two marks, Applicant requests that we take
judicial notice of the definition of “prompt” found at
, although Applicant has not provided a
copy of that web page. Nonetheless, we will consider it.5 Applicant suggests that we
focus on definition No. 13:
noun:

13. Computers. a message or symbol from a computer
system to a user, generally appearing on a display screen,
requesting more information or indicating that the system
is ready for user instructions.

Applicant argues that “‘PROMPT’ is arguably suggestive of both Applicant’s
services and Registrant’s services and thus is entitled to less protection than an
arbitrary or coined term.”6 We agree that the term PROMPTS, as it appears in
Registrant’s mark, suggests something about an aspect of Registrant’s services (i.e.,
that computerized messages or “prompts” are used in some way in the provision of
Registrant’s voice messaging service; it might also be interpreted to suggest that
Registrant’s service is provided quickly or without delay). However, on this record,
the nature of this suggestiveness in relation to Registrant’s services remains
somewhat unclear. Accordingly, while we acknowledge that the suggestiveness of
PROMPTS weakens this element of Registrant’s mark to some extent, we do not

5 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac
v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or
have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
The online definition suggested by Applicant indicates that it is based on the RANDOM
HOUSE DICTIONARY (2015).
6 Applicant’s brief at 8, 4 TTABVUE 9.
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consider the mark to be particularly weak in source-indicating potential. We note
further that weak marks, too, are entitled to protection against confusion. See In re
Smith & Mehaffey, 31 USPQ2d 1531, 1533 (TTAB 1994); King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974) (“Confusion is
confusion. The likelihood thereof is to be avoided, as much between ‘weak’ marks as
between ‘strong’ marks, or as between a ‘weak’ and a ‘strong’ mark.”).
To complete our consideration of the meanings of the marks, we note that
PROMPT in Applicant’s mark carries the same suggestive meanings as PROMPTS
in Registrant’s mark, whether in the sense of a computerized message or in the
sense of quickness. The additional letter S in the word PROMPTS in Registrant’s
mark has little distinguishing impact on the meaning of the mark. Wilson v.
Delaunay, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957) (pluralizing S). Certainly
the most significant difference in meaning between the marks is the additional
wording PLUS in Registrant’s mark. PLUS is an extremely common word that is
understood to mean “something additional or extra.”7 Customers would likely
perceive PLUS as a term that might be appended to any mark to indicate additional
or extra features in the marked product or service. As such it has little capacity to
distinguish one mark from another.
Considering the overall commercial impressions created by the marks in their
entireties, we find that, in Registrant’s mark, PROMPTS would be perceived as the
primary source indicator for the services, and that PLUS would likely be perceived

7 1745 WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY (1993).

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as an ancillary element, indicating an improved variant of the PROMPTS brand
product. Although our determination as to likely confusion must always be based on
a consideration of the marks in their entireties, there is nothing improper in giving
more or less weight to a particular feature of a mark for rational reasons. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). “Indeed,
this type of analysis appears to be unavoidable.” Id. The likelihood that customers
would perceive PROMPTS as the dominant source-indicating element in
Registrant’s mark is reinforced by the fact that PROMPTS is presented in
substantially larger typeface than the superscript PLUS. The dominant element of
Registrant’s mark, PROMPTS, is highly similar to the entirety of Applicant’s mark,
PROMPT. Accordingly, we find that the overall commercial impressions that the
marks create are quite similar. While we appreciate the two marks’ differences in
appearance, we find that the similarities in appearance, sound and meaning
outweigh the differences. We bear in mind that the marks ‘must be considered … in
light of the fallibility of memory …,’” In re St. Helena Hosp., 774 F.3d 747, 113
USPQ2d 1082, 1085 (Fed. Cir. 2014), and that the proper focus is on the recollection
of the average customer, who retains a general rather than specific impression of
the marks. Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430
(TTAB 2013). We therefore find that the du Pont factor of the similarity or
dissimilarity of the marks weighs in favor of a finding of likelihood of confusion.

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(b) The services at issue.
We next consider the similarity or dissimilarity of the services of Applicant and
Registrant as identified in the application and the cited registration. Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-
62 (Fed. Cir. 2014); Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Applicant provides “e-mail services,”
among other services. Registrant provides “telephone voice messaging services.”
Services need not be identical or competitive in order to justify a refusal under
Section 2(d). Likelihood of confusion can be found if the respective services are
related in some manner or if the circumstances surrounding their marketing are
such that they could give rise to the mistaken belief that they emanate from the
same source. Coach Services Inc. v. Triumph Learning LLC, 101 USPQ2d at 1722.
In order to demonstrate that e-mail services are related to telephone voice
messaging services, the Examining Attorney has submitted web pages of three
businesses that offer both types of service. The website at offers “Voice
and Unified Messaging Solutions,” as follows:8
With Cisco voice and unified messaging solutions, you can
take control of your communications experience. Cisco has
a messaging solution for you, whether you need:
- Basic voice mail
- Integrated messaging with email, web, and mobile
clients
- Unified messaging with all voice, fax, and email
messages stored in the same inbox.

8 Office Action of July 28, 2014 at 30.
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The website at offers “Verizon.net Email” and sets forth instructions
for “Receiving Voice Mail Messages – FIOS Digital Voice.”9 The website at
offers “Business Voice Messaging Service” and “Email … Send
and receive email using Webmail.”10
With respect to the services, Applicant argues as follows:
Applicant’s proposed services are, in essence, an email
service similar to that of commercial providers such as
Gmail or Yahoo!. Applicant respectfully submits that
these services are seen as discrete from Registrant’s voice
mail services. … [T]he mere fact that both services involve
“communication” in some sense does not in any way imply
that the public views them as related. … Virtually every
type of business today uses email in some form to
communicate with its customers. If the Examining
Attorney’s argument were accepted at face value, the
mark of virtually any business that uses email to
communicate with or provide content to its customers
could be cited against any email provider. Simply put, the
fact that Registrant and similar businesses might use
email to deliver their services does not make them an
email service similar to Applicant.11
Applicant somewhat overstates the Examining Attorney’s argument. She does not
argue that all voice mail companies that use e-mail are related to e-mail providers.
Rather she has shown specific examples of companies that provide both voice mail
and e-mail services. Although the number of examples in the record are few, they
have probative substance and they are not rebutted by any evidence offered on the

9 Id. at 36, 39.
10 Office Action of August 21, 2014 at 17, 19. The Examining Attorney has also submitted
four registrations of Centurylink Intellectual Property LLC, which cover both email
services and telephone voice messaging service. Office Action of July 28, 2014 at 11-23.
However, to the extent that they are probative, they are merely duplicative of the website
evidence showing that Centurylink provides these services.
11 Applicant’s brief at 11-12, 4 TTABVUE 12-13 (emphasis in original).
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part of Applicant. The evidence of record therefore indicates that e-mail and
voicemail services are services that may be offered by a single business entity.
Accordingly, this du Pont factor weighs in favor of a finding of likelihood of
confusion.
(c) Trade channels.
With respect to trade channels, Applicant argues:
“[I]f confusion is to exist, it must be in the mind of some
relevant person who encounters both marks.” [Citation to
treatise omitted.] … Applicant’s services are more or less
traditional email services. By contrast, Registrant’s
services, from the description of services and from the
specimens provided, appears to be custom-tailored voice
mail messages. As such, rather than being purchased or
subscribed to online by a casual user as an email service
would, Registrant’s services are fairly specialized and are
geared toward ‘branding’ a business’s voice mail response
to callers.12
The “specimens provided,” to which Applicant refers, are not of record because
they were untimely submitted with Applicant’s brief. However, even if they were of
record we could not refer to them for the purpose of limiting the nature of
Registrant’s services to “custom-tailored” services that are “fairly specialized,”
“geared toward branding,” and not the type of services that would be “purchased or
subscribed to online.” The recitation of services in the registration does not contain
any of these limitations. We must presume that Registrant’s services include all
services of the type identified in the registration, that they move through all normal
channels of trade for such services, and that they are available to all classes of

12 Id. at 12-13, 4 TTABVUE 13-14.
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purchasers for those services. See 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); see also Anheuser-Busch, LLC v. Innvopak
Sys. Pty Ltd., 115 USPQ2d 1816, 1825 (TTAB 2015) (“[A]bsent any explicit
restriction in the application or registration, we must presume the parties’
identified goods to travel through all normal channels of trade for goods of the type
identified …”), citing Coach Services Inc. v. Triumph Learning LLC, 101 USPQ2d at
1722.
Although there is no direct evidence of the channels of trade through which the
services of Applicant and Registrant are marketed, the Examining Attorney has
submitted evidence of 3 businesses that use e-mail as a conduit through which they
deliver voice mail services. The website at offers voicemail messaging
services, including a voice mail transcription service whereby “[y]our voicemail
message is converted … to text then emailed or texted directly to you!”13 The
website at offers a similar service.14 The website at
shows that the company offers voice mail service and provides voice messaging
alerts via e-mail (“we send you an email when someone leaves you a voice message
on Skype.”).15 The fact that e-mail services constitute a channel through which
customers can receive voice mail is a point of proximity between the services of
Applicant and Registrant that increases the likelihood of confusion. That is, a user

13 Office Action of August 21, 2014 at 8, 11.
14 Id. at 14.
15 Id. at 21.
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of e-mail who receives a voice message through his e-mail account could be exposed
to the marks of both Applicant and Registrant. Although we consider the amount of
evidence submitted by the Examining Attorney to be very slight, it out-balances the
complete lack of evidence submitted by Applicant.
(d) Customers; Care of selection of services.
Applicant implies, without demonstrating, that the classes of customers for the
services of Applicant and Registrant are different. “If the services of one party are
sold to one class of buyers in a different marketing context than the services of
another seller, the likelihood of confusion is less … If no one buyer ever buys both
products, there is little likelihood of confusion.”16 Applicant has submitted no
evidence regarding the classes of customers, but indicates in its brief that e-mail
services are purchased by “casual user[s].”17
The Examining Attorney has not apparently sought to put forward any evidence
regarding the relevant customers. However, we are not persuaded by Applicant’s
unsupported argument that the customers of e-mail and voice messaging services
are distinct and separate groups. Both e-mail service and telephone service with
voice messaging are ubiquitous services known to virtually all consumers. We note
that the website, which offers both e-mail service and voice mail
service, is in part directed to ordinary consumers, having listings for “Residential
Products and Services” and references to services such as “Email, News & TV,”
“Check Email,” “Read News,” “Watch TV Online,” “TV Listings,” “Rent or Buy

16 Applicant’s brief at 13, 4 TTABVUE 14.
17 Id.
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Movies,” “Sports,” and “Play Games,” all services that are typically directed to
individual consumers.18 We see no reason on this record to treat the relevant classes
of customers as different or as limited in any way.
Applicant argues that “Registrant’s services are not the type that can simply be
purchased by placing an order online – they are personalized in nature and require
thought by the customer and interaction with the Registrant’s staff.” Applicant also
argues that because of the “nature and cost” of Registrant’s services, customers
would exercise “extra care in selecting” them.19 All of these claims are unsupported
by any evidence. On this record, we see no reason to believe that the purchase of
Registrant’s services requires any special process or that the services cannot be
ordered online without interaction with Registrant’s sales staff. Nor is there any
meaningful evidence regarding the cost of the services of either Applicant or
Registrant or regarding any other factor that would entail “extra care” in selecting
the services. Accordingly, we treat the du Pont factors of the classes of customers
and the conditions under which sales are made to be neutral.
(e) Conclusion.
Having considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors, we find that
Applicant’s mark so resembles the cited registered mark as to be likely to cause
confusion, mistake or deception as to the source of Applicant’s services.
Decision: The refusal to register is affirmed.

18 Office Action of July 28, 2014 at 36, 40.
19 Applicant’s brief at 14, 4 TTABVUE 14.