No. 85471161 (T.T.A.B. Jul. 30, 2013)

Website Nation, LLC

Trademark Trial and Appeal BoardJul 30, 2013

No. 85471161 (T.T.A.B. Jul. 30, 2013)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: July 30, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Website Nation, LLC _____ Serial No. 85471161 _____ Matthew H. Swyers of the Trademark Company, PLLC for Website Nation, LLC. Rebecca Gilbert, Trademark Examining Attorney, Law Office 103 (Michael Hamilton, Managing Attorney). _____ Before Grendel, Bergsman and Gorowitz, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Website Nation, LLC (“applicant”) filed a use-based application to register the mark Website Nation, in standard character form, for “computer services for others, namely, website hosting, website development, and consulting,” in Class 42. Applicant disclaimed the exclusive right to use the word “Website.” The Trademark Examining Attorney refused to register applicant’s mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that applicant’s mark so resembles the previously registered mark WEB NATION Serial No. 85471161 2 (stylized), as shown below, for “computer services, namely, creating and maintaining web sites for others,” in Class 42, as to be likely to cause confusion.1 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). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks”). These factors, and any other relevant du Pont factors in the proceeding before us, will be considered in this decision. 1 Registration No. 3720537, issued December 8, 2009. Serial No. 85471161 3 A. The similarity or dissimilarities and nature of the services, the established, likely-to-continue trade channels and classes of consumers. Applicant is seeking to register its mark for “computer services for others, namely, website hosting, website development, and consulting.” Web or website development is defined as “the design and coding of World Wide Web pages.”2 Applicant’s specimen advertises its services as follows: We will make technology easy for you. Our websites are developed to produce the results you are seeking. We will sit down with you, discuss your needs and translate all that technical jargon into results for you or your company. Further, applicant stated that its “Website related services” include ASP programming, VB.Net programming, and website repair. The recitation of services in the cited registration is “computer services, namely, creating and maintaining web sites for others.” The word “create” is defined, inter alia, as “to make or bring into existence something new” and “design.”3 The term “creating websites” is synonymous with “website development.” Accordingly, applicant’s “website development” and registrant’s “creating web sites” are essentially the same and, therefore, the services of applicant and registrant are in part legally identical. 2 MICROSOFT COMPUTER DICTIONARY, p. 563 (5th ed. 2002). 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). 3 Merriam-Webster (m-w.com). The Board may take judicial notice of dictionary definitions from online dictionaries that exist in printed format or have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). Serial No. 85471161 4 To the extent that both registrant’s recitation of services and applicant’s recitation of services include more than “creating websites” or “website development,” likelihood of confusion may be found based on any item that comes within the recitation of services in the involved application and registration.” In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008). Thus, we may find that there is a likelihood of confusion under Section 2(d) if there is a likelihood of confusion involving any of the services set forth in the application and cited registration. See, e.g., Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); and Shunk Mfg. Co. v. Tarrant Mfg. Co., 318 F.2d 328, 137 USPQ 881, 883 (CCPA 1963). Because the services described in the application and the cited registration are in part legally identical, we must presume that the channels of trade and classes of purchasers are the same. See American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers.”). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (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). Serial No. 85471161 5 Applicant contends that its services and the registrant’s services are different, move in different channels of trade and are sold to different consumers because registrant’s “mark is used in connection with HTML training tips on how to build your own website, and training in writing Android applications.”4 However, with respect to the services, the question of likelihood of confusion must be determined on the basis of the services set forth in applicant's application and those in the cited registration, rather than on what any evidence may show those services to be. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987). See also 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); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). Registrant's services are identified as “computer services, namely, creating and maintaining web sites for others” without any limitation. Therefore, we must assume that registrant's services encompass all forms of creating and maintaining websites despite what the evidence may show. In other words, we may not resort to extrinsic evidence to restrict registrant’s services. See In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986) (evidence that relevant goods are expensive wines sold to discriminating purchasers must be disregarded given the absence of any such restrictions in the application or registration). 4 Affidavit of Steve Lewis, applicant’s “owner,” ¶¶4-7 attached to the September 13, 2012 response to Office action. Serial No. 85471161 6 We must also assume that the services would travel in the same channels of trade normal for those services and to all classes of prospective purchasers for those services. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). In view of the foregoing, we find that the services are in part legally identical and that we must presume the services move in the same channels of trade and are sold to the same classes of consumers. B. The number and nature of similar marks in use in connection with similar services. Applicant submitted copies of eight third-party registrations for marks comprised in part of the word “Nation” for the services at issue in this appeal. Applicant argues that because the word “Nation” has been registered eight times for similar services, it is diluted and, therefore, applicant’s marks should be entitled to registration.5 However, third-party registrations do not prove that the word “Nation” is a weak term entitled to only a narrow scope of protection or exclusivity of use. Absent evidence of actual use, third-party registrations have little probative value because they are not evidence that the marks are in use on a commercial scale or that the public has become familiar with them. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the purchasing public is not aware of registrations reposing in the U.S. Patent and Trademark Office); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011). See also In re Hub Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983). 5 Applicant’s Brief, pp. 8-10. Serial N In re H Roundy strength N dictiona Foods, 2 evidenc employe T same et Thus, w “Nation F registra registra 6 THE RA 1279 (2d o. 854711 [I]t w about (sic) third about in te condi distin ub Distrib ’s Inc., 96 of a mark evertheles ry to show 4 USPQ2 e of use, d in the m he word “N hnic fami e find tha ” means a inally, we nt’s mark tions that NDOM HO ed. 1987). 61 ould be s which, if registratio party (si the impa rms of tioning of guishing s uting, Inc. 1 F.2d 20 , however s, third-p the mean d 1270, 12 the regist arketplace ation” is ly, often t as used “communit note tha WEB NAT applicant USE DICTI heer spec any of the ns are stil c) registr ct of the t dilution o the purch ource. , 218 USP 0, 22 US , registrati arty regis ing of a w 77 (TTAB rations sh , similar t defined, in speaking in applican y” or “sha t applican ION (styli made of re ONARY OF 7 ulation to marks sub l in use. B ation evid hird-party f the m asers as Q at 286. PQ2d 154 on evidenc trations m ord. See 1972) (“A ow the s o a diction ter alia, a the same t’s mark red interes t’s mark zed) than cord. THE ENGLI draw any ject of the ecause of ence prov marks on ark in q to their w See also 2, 1545 ( e may not ay be us General M lthough t ense in w ary definit s “an aggr language and the re t” in the I Website any of the SH LANGU inference third par this doub es nothin purchase uestion o eakness Olde Tym Fed. Cir. be given a ed in the ills Inc. v. he registr hich the ion.”). egation of or cognat gistered m nternet. Nation is marks in t AGE (UNAB s ty t, g rs r in e Foods In 1992) (“A ny weight manner Health Va ations are term ‘fibe persons of e languag ark, the w closer to he third-p RIDGED), c. v. s to ”). of a lley not r’ is the es.”6 ord the arty p. Serial No. 85471161 8 In view of the foregoing, we find that the number and nature of similar marks in use in connection with similar services is neutral. C. The similarity or dissimilarity of the marks in their entireties in terms of appearance, sound, connotation and commercial impression. We now turn 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., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). In a particular case, any one of these means of comparison may be critical in finding the marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1987). In comparing the marks, we are mindful that where, as here, the services are in part legally identical, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the services. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007). Moreover, the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the goods offered under the respective marks is likely to result. 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 Serial No. 85471161 9 USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The marks Website Nation and WEB NATION (stylized) while clearly different, are similar in appearance and sound because both marks start with the word “Web” and end with the word “Nation.” The design of the registered mark WEB NATION is not so highly stylized that it forms a commercial impression separate and apart from the words themselves. Generally, in the case of marks consisting of words and a design, the words are normally given greater weight because they would be used by consumers to request the products. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 2 USPQ2d 1553, 1554 (TTAB 1987). See also Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987); Giant Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). Further, the design of the registered mark is not so stylized that it distinguishes the registered mark from applicant’s mark. The term “Web” in the registered mark WEB NATION (stylized) refers to the World Wide Web or the Internet.7 The Web gives users access to a vast array of documents that are connected to each other by means of hypertext or hypermedia links—i.e., hyperlinks, electronic connections that link related pieces of information in order to allow a user easy access to them. Hypertext allows the user to 7 “World Wide Web (WWW)," Encyclopædia Britannica, Encyclopædia Britannica Online Academic Edition. Encyclopædia Britannica Inc., (2013) (“World Wide Web (WWW), byname The Web, the leading information retrieval service of the Internet (the worldwide computer network.”). Serial No. 85471161 10 select a word from text and thereby access other documents that contain additional information pertaining to that word; hypermedia documents feature links to images, sounds, animations, and movies. The Web operates within the Internet’s basic client-server format; servers are computer programs that store and transmit documents to other computers on the network when asked to, while clients are programs that request documents from a server as the user asks for them. Browser software allows users to view the retrieved documents.8 A “Website,” on the other hand, is a “[c]ollection of files and related resources accessible through the World Wide Web and organized under a particular domain name.”9 Typical files found at a Web site are HTML documents with their associated graphic image files (GIF, JPEG, etc.), scripted programs (in Perl, CGI, Java, etc.), and similar resources. The site’s files are usually accessed through hypertext or hyperlinks embedded in other files. A Web site may consist of a single HTML file, or it may comprise hundreds or thousands of related files. A Web site’s usual starting point or opening page, called a home page, usually functions as a table of contents or index, with links to other sections of the site. Web sites are hosted on one or more Web servers, which transfer files to client computers or other servers that request them using the HTTP protocol. Although the term “site” implies a single physical location, the files and resources of a Web site may actually be spread among several servers in different geographic locations. The particular file desired by a client is specified by a URL that is either typed into a browser or accessed by selecting a hyperlink.10 8 Id. 9 "Web site," Encyclopædia Britannica, Encyclopædia Britannica Online Academic Edition, Encyclopædia Britannica Inc., (2013). 10 Id. Serial No. 85471161 11 Thus, a web site is a file on the Web. The marks Website Nation and WEB NATION (stylized) have similar meanings and engender similar commercial impressions; an Internet community. In view of the foregoing, we find that the marks Website Nation and WEB NATION (stylized) are similar in terms of appearance, sound, connotation and commercial impression. D. Degree of consumer care. Applicant argues that its customers exercise a high degree of care because its “clients will be purchasing services which are designed exclusively for them.”11 Further, applicant asserts that because registrant’s mark “is designed to attract individuals wishing to learn HTML coding, how to develop their own website, or create their own Android application,” “the average user of services provided under registrant’s mark would exercise a very high level of sophistication in choosing registrant’s services.”12 First, as discussed above, we may not use extrinsic evidence to limit or restrict registrant’s recitation of services. Moreover, even assuming that purchasers are sophisticated when it comes to their buying decisions, it is settled that even sophisticated purchasers are not immune from source confusion, especially in cases such as the this one involving similar marks and legally identical services. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), citing Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 11 Applicant’s Brief, p. 12. 12 Id. at 13. Serial No. 85471161 12 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories even of discriminating purchasers...are not infallible.”). See also In re Decombe, 9 USPQ2d 1812 (TTAB 1988). We find that the similarities between the marks and the services rendered thereunder outweigh any sophisticated purchasing decision. See HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks outweigh sophisticated purchasers, careful purchasing decision, and expensive goods). Thus, this factor is neutral. E. There is no evidence of actual confusion. Applicant argues that it has been using its mark since 2002 and that there have been no reported instances of confusion.13 However, the contemporaneous use of applicant’s and registrant’s marks without actual confusion is entitled to little weight in an ex parte appeal. See In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003) (“uncorroborated statements of no known instances of actual confusion are of little evidentiary value”). See also In re Bisset- Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (stating that self- serving testimony of applicant’s corporate president’s unawareness of instances of actual confusion was not conclusive that actual confusion did not exist or that there was no likelihood of confusion). The lack of evidence of actual confusion carries little weight especially in an ex parte context. J.C. Hall Co. v. Hallmark Cards, Inc., 13 Applicant’s Brief, p. 13; Lewis Declaration ¶13. Serial No. 85471161 13 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965) (“Absence of proof of actual confusion is of minor relevancy in the resolution of the issue.”). Moreover, the record is devoid of probative evidence relating to the extent of use of applicant’s and registrant’s marks and, thus, whether there have been meaningful opportunities for instances of actual confusion to have occurred in the marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); and Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). In view thereof, the du Pont factor of the length of time during and conditions under which there has been contemporaneous use without evidence of actual confusion is considered neutral. F. Balancing the factors. Because the marks are similar, the goods are in part legally identical and because we must presume that the services move in the same channels of trade and are sold to the same classes of consumers, we find that applicants mark Website Nation for “computer services for others, namely, website hosting, website development, and consulting” is likely to cause confusion with the registered mark WEB NATION (stylized) for “computer services, namely, creating and maintaining web sites for others.” Decision: The refusal to register is affirmed.