Virtus Junxit LLC

Trademark Trial and Appeal Board

May 12, 2015

No. 85408558 (T.T.A.B. May. 12, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: May 12, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Virtus Junxit LLC
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Serial No. 85408558
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James A. Cardle of Cardle Patent Law Chtd for Virtus Junxit LLC

Paul Fahrenkopf, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
_____

Before Wellington, Adlin and Hightower,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Virtus Junxit LLC (“Applicant”) seeks registration on the Principal Register of
the standard character mark IGOVERN in connection with the following services:
electronic transmission of messages; electronic
transmission of messages and data in International Class
38; and

application service provider (ASP) featuring software for
use to allow the user to engage interactively within the
political process; computer services, namely, creating an
on-line community for registered users to interact with
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political actors in a political process in International Class
42.1

The Trademark Examining Attorney refused registration of Applicant’s mark on
the ground of likelihood of confusion under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d), in view of the registered mark:

for “computer software for providing access to systems and data by means of mobile
devices and computers” in International Class 9.2 The registration contains a
disclaimer of the exclusive right to use of the wording CITIZEN CENTRIC
SOLUTIONS.
Applicant filed a request for reconsideration and appealed the final refusal. The
Examining Attorney denied the request for reconsideration. The refusal has been
briefed by Applicant and the Examining Attorney.
For the following reasons, we affirm the likelihood of confusion refusal with
respect to the services in both Classes 38 and 42.

1 Application Serial No. 85408558 was filed on August 26, 2011, based on an intent to use
the mark in commerce, under Section 1(b) of the Trademark Act.
2 Registration No. 4168314 issued July 3, 2012. The mark is described as consisting, in
part, of a clover design above the letter “I” in IGOVERN.
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Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). In any likelihood of confusion analysis, however, two key considerations are
the similarities between the marks and the similarities between the goods or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405,
41 USPQ2d 1531 (Fed. Cir. 1997).
Similarity of the Marks
We begin by comparing the two marks in their entireties and, in doing so, look to
their 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, 1692 (Fed. Cir. 2005). We keep in mind that, under this factor,
the test is not whether the marks can be distinguished when subjected to a side-by-
side comparison; “[i]nstead, it is the similarity of the general overall commercial
impression engendered by the marks which must determine, due to the fallibility of
memory and the consequent lack of perfect recall, whether confusion as to source or
sponsorship is likely.” Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735,
1741 (TTAB 1991); see also, Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d
1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted).
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In this case, we agree with the Examining Attorney that the marks are very
similar because Applicant is essentially seeking to register the dominant element of
the registered mark. While we consider Registrant’s mark in its entirety, it is
entirely permissible, and often appropriate, to focus on a composite mark’s
dominant term, in this case the term “iGovern” in Registrant’s mark. In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“There is nothing
improper in stating that, for rational reasons, more or less weight has been given to
a particular feature of a mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties.”). The “iGovern” element not only
visually dominates but is most important in creating the mark’s overall commercial
impression and, for these reasons, is most likely to be impressed in consumers’
minds. The term appears prominently, first and in significantly larger and bolder
letters and is the only non-descriptive literal portion of the mark 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”). The fact that the registered mark depicts “iGovern,”
mixing upper and lower case lettering is of little or no consequence because
Applicant seeks registration of its mark in standard characters and thus we must
assume it may appear with the same lower and upper case letters, as well as the
same or similar font as used in the registered mark. See In re Viterra Inc., 671 F3d
1358, 101 USPQ2d 1905 (Fed. Cir. 2012); see also, Citigroup Inc. v. Capital City
Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011).
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As to the additional elements in the registered mark, obviously not found in
Applicant’s mark, they have little source-identifying value and they do not
sufficiently distinguish the two marks. The additional wording in the registered
mark, “Citizen Centric Solutions,” appears below in smaller letters and has been
disclaimed and therefore may be descriptive of Registrant’s goods. As this wording
may be descriptive, consumers are less likely to rely on it to distinguish the marks.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed.
Cir. 2000) (quoting In re National Data Corp., 224 USPQ at 752 (“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”));
In re Dixie Rests. Inc., 41 USPQ2d at 1533-34; and In re Code Consultants, Inc., 60
USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in
creating the mark's commercial impression”). Likewise, the addition of the flower or
clover design in the registered mark does not obviate the similarity because the
design is less likely to be impressed in consumers’ memories. See, e.g., Viterra, 101
USPQ2d at 1911; In re Dakin's Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB
1999). See also CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir.
1983); In re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261, 1267-68 (TTAB 2011). In
other words, consumers already familiar with the registered mark are more likely to
rely on the non-descriptive literal portion, “iGovern,” when recalling the goods being
sold under the registered mark, and may assume that Applicant’s services are
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offered under an abbreviated version of the mark in the cited registration, without
the accompanying design.
We have also considered Applicant’s argument that the term IGOVERN is
descriptive, conceptually weak and diluted, and thus that this term is found in both
marks will not cause confusion to consumers as to source. As to Applicant’s
descriptiveness argument, IGOVERN has not been disclaimed in either the involved
application or the cited registration. Thus, Applicant is making a collateral attack
on the registered mark, which cannot be considered in the context of an ex parte
proceeding such as this. See, e.g., In re Dixie Restaurants, 41 USPQ2d at 1534; and
Cosmetically Yours, Inc. v. Clairol Inc., 424 F.2d 1385, 165 USPQ 515, 517 (CCPA
1970). With respect to Applicant’s argument that the term IGOVERN is diluted by
third-party use, the evidence does not support the contention. Applicant submitted
a third-party registration for a mark containing the term IGOVERN (Reg. 3907153
for “Software for managing and enforcing controls and information and data
compiling and analyzing in the field of data governance”); however, this registration
is not evidence that the mark has actually been used in commerce or “of what
happens in the market place or that customers are familiar with [it].” AMF Inc. v.
American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973).
Applicant also submitted Internet printouts from two different websites showing
use of the term “iGovern”; however, it is not possible to decipher the context in
which the term is being used or the extent of relevant consumer exposure to these
websites. As the Examining Attorney notes, one website appears to involve summer
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leadership camps and the other involves software for governmental compliance in
the field of pharmaceuticals. These materials, and the entire record, fall far short of
a showing that the term IGOVERN is entitled to only a narrow scope of protection
because of widespread third-party use that has conditioned consumers to
distinguish among marks containing the term by resort to other terms or other
means.
At most, the evidence shows that the term IGOVERN is suggestive of goods or
services that involve the Internet and government or assisting a consumer to
“govern.” However, the meaning of the term “govern” is vague and may take on
several different meanings; to wit, the Internet printouts show the term being used
in the context of governmental compliance for pharmaceuticals as well as leadership
development in governmental agencies. Likewise, third-party registrations
submitted by Applicant for marks containing the term GOVERN cover a variety of
goods and services, e.g., furniture, pesticides, software for “facilitating access to
governmental records,” and “installing of computer software … hosting websites for
governmental entities … all concerning the fields of governmental records and
information concerning real property.” It has not been demonstrated that there is a
highly suggestive meaning to the term IGOVERN, in the context of Applicant’s
services or Registrant’s software, on which to base a finding that this term is
conceptually weak and has lessened source-identifying significance. To the contrary,
we must consider the possibility that consumers may perceive a similar suggestive
nature in both Applicant’s and Registrant’s marks and this would actually increase
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the likelihood of confusion. That is, both Applicant’s mark and the registered mark
may be understood as creating similar commercial impressions or connotations of
goods and services being accessed through or involving the Internet and governing,
whether as in “government” or simply as in managing and controlling a thing, such
as data or systems.
For the foregoing reasons, we find that the source-identifying essence of both
marks is the shared literal term IGOVERN and, even when viewed in their
entireties, the marks are very similar. This du Pont factor therefore weighs in favor
of finding a likelihood of confusion.
Similarity of the Goods and Services Described in the Application and Registration
We turn now to the du Pont factor involving the relatedness of Applicant’s
services and Registrant’s goods. It is settled that in making our determination, we
must look to the goods and services as identified in the application vis-à-vis those
recited in the cited registration. See Octocom Sys., Inc. v. Houston Computers Servs.,
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Giovanni Food Co.,
97 USPQ2d 1990, 1991 (TTAB 2011). It is also not necessary that the respective
goods and services be competitive, or even that they move in the same channels of
trade to support a holding of likelihood of confusion. It is sufficient that the
respective goods and services are related in some manner, or that the conditions
and activities surrounding the marketing of the goods or services are such that they
would or could be encountered by the same persons under circumstances that could,
because of the similarity of the marks, give rise to the mistaken belief that they
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originated from the same producer. In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991).
Because the Examining Attorney has refused registration of Applicant’s mark
for the services in both Classes 38 and 42, we address the relatedness of
Registrant’s goods with respect to each of these classes of services.
Applicant’s Class 38 Services
Again, Applicant seeks registration of its mark in connection with “electronic
transmission of messages; electronic transmission of messages and data” in
International Class 38, and we compare this to Registrant’s “computer software for
providing access to systems and data by means of mobile devices and computers.”
The Examining Attorney, in his brief, does not offer any specific reason or
rationale as to how Applicant’s Class 38 services and Registrant’s goods are
related.3 Moreover, there is no evidence of record showing that they are related.4
However, Applicant did not argue in its appeal brief that the goods and services are
unrelated.
In reaching a decision, the Board is bound by the evidence of record; however,
the rationale for the decision is not confined necessarily to the arguments raised by
the Examining Attorney and Applicant. See, e.g., In re D.B. Kaplan Delicatessen,
225 USPQ 342, 343 n.2 (TTAB 1985) (The Board need not “limit its determination of
the question of registrability to the reasons set forth by the Examining Attorney

4 More specifically and to be clear, the Examining Attorney issued five Office actions,
including the denial of the request for reconsideration, and the only evidence attached was
a copy of the cited registration.
Serial No. 85408558
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during the prosecution of this application”); see also, TBMP § 1217 (2014) and
authorities cited therein. That is, the Board may find goods and services related, or
not related, even if our specific reasoning was not previously argued by Applicant or
the Examining Attorney during the application’s prosecution and on appeal.
In making our determination as to the relatedness of Registrant’s software and
Applicant’s Class 38 services, we initially note that the software is described in an
ambiguous but unquestionably broad manner. When interpreting the language
contained in the description of goods or services, “[t]he common understanding of
words or phrases used in an identification determines the scope and nature of the
goods or services.” TMEP § 1402.03 (January 2015). See also TMEP § 1402.07 (“for
the purpose of determining the scope of an identification, the examining attorney
should consider the ordinary meaning of the wording apart from the class number
designation”). We also do not read limitations into the identification of goods.
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983). With
this in mind, the registration’s wording “providing access to systems and data by
means of mobile devices and computers,” is essentially unlimited with respect to the
types of systems or data covered. Likewise, Applicant’s “electronic transmission of
messages and data” is not restricted to any one specific field of data being
transmitted and certainly would include transmission to mobile devices and
computers.
As a result, Applicant’s Class 38 services and Registrant’s software, as
identified, leave open the possibility that they are complementary products and
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services. In other words, it is plausible that a user of Registrant’s application
software would use this software to access a data base or system and,
contemporaneously, use Applicant’s data transmission services to retrieve the data.
Alternatively, it is also possible that consumers may purchase registrant’s software
or use Applicant’s data transmission services for very similar purposes. For
example, a consumer may subscribe to Applicant’s services in order to receive the
transmission of sports-related data and messages to a mobile device or computer, or
the same consumer may choose to purchase Registrant’s software which according
to the identification could provide access to sports-related data via a mobile device
or computer.
In sum, we find that Applicant’s Class 38 services and Registrant’s software are
related. Again, in making this determination, we are bound by the wording in the
respective identifications of goods and services and have given this wording its full
scope of interpretation, as required. We are well aware that Registrant’s software,
in actuality, may be more limited in purpose and could be unrelated to Applicant’s
services; however, and for the reasons mentioned above, this is not reflected in the
identifications. Moreover, as we explained under similar circumstances in In re
Cook Medical Technologies LLC, 105 USPQ2d 1377 at 1384 (TTAB 2012),
[A]pplicant was not without possible remedies here,
including seeking a consent from the owner of the cited
registration, or seeking a restriction of the registration
under Section 18 of the Trademark Act, 15 U.S.C. § 1068.
Although we are sympathetic to applicant's concerns
about the scope of protection being given to the cited
registration, applicant did not avail itself of the remedy
afforded by Section 18 that gives the Board the equitable
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power to cancel registrations in whole or in part, or to
“otherwise restrict or rectify…the registration of a
registered mark.” See Trademark Rule 2.133(b). See also
TBMP § 309.03(d) and cases cited therein. A party in
applicant's position can file a petition for cancellation of
the cited registration, requesting a restriction or
modification of registrant's description of its mark on the
basis that the description is “ambiguous or overly broad
and not specific to the mark actually used” in the
marketplace. … Such a claim can be used to modify overly
broad identification of goods (for example, “computer
programs”). See IdeasOne Inc. v. Nationwide Better
Health Inc., 89 USPQ2d 1952, 1954-55 (TTAB 2009),
citing In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB
2000). However, the Board will not entertain claims to
modify overbroad descriptions of marks unless the
proposed modification will avoid a finding of likelihood of
confusion between the parties’ marks. The Wellcome
Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478, 1479
(TTAB 1998).

Id. at 1384.
Applicant’s Class 42 Services
With respect to Applicant’s Class 42 services, in particular those as an
“application service provider (ASP) featuring software for use to allow the user to
engage interactively within the political process,” we find there is a sufficient
relationship with Registrant’s software.
In his brief, the Examining Attorney contends:
[T]he registration uses broad wording to describe the
goods (“computer software for providing access to systems
and data by means of mobile devices and computers”) and
this wording is presumed to encompass those in
applicant’s more narrow identification.5

5 9 TTABVUE 6.
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Although we disagree with the conclusion that Registrant’s software
encompasses Applicant’s services, the record does show that it is possible that the
ASP services, as they are described in the application, will share a similar purpose
or function to that of Registrant’s software. ASP services, by definition, involve
“sell[ing] the usage of computer programs via [the] Internet” and an ASP is
“equipped with all required software, hardware, and trained employees” in
providing the programs to its customers.6
Here, Applicant’s ASP services “featur[e] software for use to allow the user to
engage interactively within the political process.” Registrant’s software is broadly
identified and its function of “providing access to systems and data by means of
mobile devices and computers” could include systems and data that allow a user to
engage interactively within the political process. In this regard, the Examining
Attorney also relies on the secondary, literal element of Registrant’s mark to make
the following assertion:
[I]t is clear from the rest of the registrant’s mark (which
includes CITIZEN CENTRIC SOLUTIONS) that the
registrant’s goods and applicant’s services are closely
related, both involving providing access to
communications equipment to facilitate the sharing of
opinions about political matters.7

As already mentioned, our analysis is restricted to the goods and services as they
are described in the application and cited registration and it is inappropriate to

6 “Application Service Provider (ASP)” definition obtained from the BusinessDictionary.com
website; a copy was submitted by Applicant with its response (filed December 1, 2013) to an
Office Action.
7 Office action issued on December 29, 2013.
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expand or restrict the scope of these goods or services based on elements in the
marks. However, we agree with the Examining Attorney to the extent that this
wording indicates that it is at least plausible that Registrant’s software, as
identified, involves “citizens” becoming involved in “solutions,” via the political
process.
In sum, we find a sufficient connection between Applicant’s ASP services
featuring software that facilitates political action and Registrant’s software that, as
identified, may have the same or similar purpose or function.
Trade Channels and Classes of Consumers
The Examining Attorney argues in his brief (at unnumbered page 4) that:
[T]he identifications set forth in the application and
registration have no restrictions as to nature, type,
channels of trade, or classes of purchasers. Therefore, it is
presumed that these goods and/or services travel in all
normal channels of trade, and are available to the same
class of purchasers.

This type of presumption is inappropriate under the circumstances of this
proceeding and apparently conflates two legal principles.
It is established that insofar as trade channels and consumers are concerned, if
there are no restrictions in the identification of goods and/or services, we must
assume the goods and/or services are available in all the normal or usual channels
of trade to all the usual purchasers for such goods and services. In re Elbaum, 211
USPQ 639, 640 (TTAB 1981) (citing Kalart Co., Inc. v. Camera-Mart, Inc., 258 F.2d
956, 119 USPQ 139 (CCPA 1958)).
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A second principle involves the situation where the goods or services, as
described in the identifications, are identical (including legally or partially so). In
this situation, there is a presumption that the identical goods or services share the
same trade channels and will be offered to the same consumers. In re Viterra Inc.,
101 USPQ2d 1908 (even though there was no evidence regarding channels of trade
and classes of consumers, the Board was entitled to rely on this legal presumption
in determining likelihood of confusion); 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);
American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011).
In this case, there are no real restrictions with respect to trade channels or
classes of consumers in the involved identifications of goods and services, except to
the extent that Applicant’s Class 42 services are directed to those involved in
political activity. Thus, we can assume that Applicant’s services are offered in all of
the usual trade channels to the usual consumers for those services, whereas
Registrant’s software goods are offered in all of the usual trade channels to the
usual consumers for those goods. Because Registrant’s goods are not identical to
Applicant’s services, and without any evidence showing that the actual trade
channels or classes of consumers for the goods and services would be the same, we
are unable to make a finding in this regard. Nevertheless, we recognize that, to the
extent Registrant’s software has a similar function or purpose to the software being
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featured through Applicant’s ASP services, there is the possibility that the software
and services may reach consumers seeking to become more politically active.
Accordingly, we find that the factor involving trade channels and classes of
consumers remains neutral in our analysis. Nonetheless, users of Registrant’s
application software, when later confronted with an ASP providing IGOVERN
software, may consider the latter to be sponsored by or sanctioned by Registrant.
Conclusion
For the aforementioned reasons, Applicant’s services in both International
Classes 38 and Class 42 are sufficiently related to Registrant’s software, as broadly
identified in the cited registration, such that when they are offered or sold under
the similar marks, IGOVERN and iGOVERN CITIZEN CENTRIC SOLUTIONS
(stylized with a design), we find that consumers are likely to mistakenly believe
that the goods and services emanate from a common source.
Decision: The likelihood of confusion refusal to register Applicant’s mark is
affirmed with respect to the services recited in both Classes 38 and Class 42 of the
application.