Zenlayer Inc.

Trademark Trial and Appeal Board

Sep 17, 2019

87406942 (T.T.A.B. Sep. 17, 2019)

This Opinion is not a
Precedent of the TTAB
Mailed: September 17, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Zenlayer Inc.
_____

Serial No. 87406942
_____

Philip Thomas Horton of Horton Law, PLLC,
for Zenlayer Inc.

Alison Keeley, Trademark Examining Attorney, Law Office 113,
(Myriah Habeeb, Managing Attorney).

_____

Before Cataldo, Shaw and Heasley,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Zenlayer, Inc., seeks registration on the Principal Register of the mark
BETTER CONNECTED WORLD, BETTER LIFE (in standard characters),
identifying the following services in International Class 42:
Computer services, namely, cloud hosting provider services; Computer
services, namely, integration of private and public cloud computing
environments; Computer services, namely, remote management of the
information technology (IT) systems of others; Consulting services in the
field of cloud computing; Hosting of digital content on the Internet;
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Rental of space in a computer co-location facility for containerized data
centers of others.1

The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of
likelihood of confusion with the cited registered mark BETTER CONNECTION,
BETTER LIFE (in standard characters)2 identifying the following services in
International Class 38:
Telecommunications services, namely, providing internet access via
wireless broadband networks; wireless broadband communication
services.

After the Examining Attorney made the refusal final, Applicant appealed and
requested reconsideration. The appeal resumed after the Examining Attorney denied
the request for reconsideration. Applicant and the Examining Attorney filed briefs.
We affirm the refusal to register.
I. Evidentiary Matter
Applicant submitted eight pages of evidence as exhibits to its appeal brief.3 To the
extent the evidence Applicant submitted with its appeal brief is duplicative of

1 Application Serial No. 87406942 was filed on April 11, 2017, based upon Applicant’s
assertion of a bona fide intent to use the mark in commerce under Section 1(b) of the
Trademark Act. 15 U.S.C. § 1051(b).

Page references to the application record are to the downloadable .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs, motions
and orders on appeal are to the Board’s TTABVUE docket system.

2 Registration No. 4886971 issued on the Principal Register on January 12, 2016.
3 6 TTABVUE 17-25.
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evidence previously submitted during prosecution, we need not and do not give this
redundant evidence any consideration.4 Further, any of the evidence submitted with
Applicant’s appeal brief that was not previously submitted during prosecution is
untimely and will not be considered.5 See Trademark Rule 2.142(d), 37 C.F.R.
§ 2.142(d); TBMP § 1203.02(e) and § 1207.01 (June 2019) and authorities cited
therein.
II. Likelihood of Confusion

We base our determination of likelihood of confusion under Trademark Act Section
2(d) on an analysis of all of the probative facts in evidence that are relevant to the
factors enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973) (“DuPont”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc.,
575 U.S. __, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Guild
Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1161-62 (Fed. Cir. 2019).
We have considered each DuPont factor that is relevant, and have treated other
factors as neutral. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797,

4 The Board discourages the practice of the submission of duplicative evidence. In re SL&E
Training Stable Inc., 88 USPQ2d 1216, 1220 n.9 (TTAB 2008) (attaching as exhibits to brief
material already of record requires Board to determine whether attachments had been
properly made of record and adds to the bulk of the file); In re Thor Tech Inc., 85 USPQ2d
1474, 1475 n.3 (TTAB 2007) (attaching evidence from record to briefs is duplicative and is
unnecessary).
5 The proper procedure for an applicant or examining attorney to introduce evidence after an
appeal has been filed is to submit a written request with the Board to suspend the appeal
and remand the application for further examination. See Trademark Rule 2.142(d), 37 C.F.R.
§ 2.142(d). See also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
(TBMP) § 1207.02 (June 2019) and authorities cited therein.
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1800 (Fed. Cir. 2018) (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d
1257, 1259 (Fed. Cir. 2010) (“Not all of the DuPont factors are relevant to every case,
and only factors of significance to the particular mark need be considered.”));
ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015)
(“While we have considered each factor for which we have evidence, we focus our
analysis on those factors we find to be relevant.”).
Varying weights may be assigned to each DuPont factor depending on the evidence
presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1688 (Fed. Cir. 1993) (“[T]he various evidentiary factors may play more or less
weighty roles in any particular determination”). Two key considerations are the
similarities between the marks and the relatedness of the goods or 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.”); In re FabFitFun, Inc., 127 USPQ2d 1670, 1672 (TTAB 2018).
A. The Services, Channels of Trade, and Classes of Customers

The second DuPont factor concerns the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration,” Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1159
(Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918
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F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). “This factor considers whether ‘the
consuming public may perceive [the respective goods or services of the parties] as
related enough to cause confusion about the source or origin of the goods and
services.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir.
2014) (quoting Hewlett-Packard, 62 USPQ2d at 1004).
Therefore, to support a finding of likelihood of confusion, it is not necessary that
the services be identical or even competitive. It is sufficient that the services are
related in some manner, or that the circumstances surrounding their marketing are
such that they would be encountered by the same persons in situations that would
give rise, because of the marks, to a mistaken belief that they originate from the same
source or that there is an association or connection between the sources of the
services.6 In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009).
In support of the refusal of registration, the Examining Attorney introduced with
the July 7, 2017 first Office Action7 and February 12, 2018 final Office Action8
printouts from third-party websites offering, under the same mark, various cloud
computing services, cloud computing consultation services and computer co-location
services as well as broadband internet access services. These include:

6 For this reason, we do not find compelling Applicant’s argument that “Applicant’s services
offer cloud services and co-location services, not access or an instant connection to the
internet.” Applicant’s brief, 6 TTABVUE 15. We consider whether consumers may confuse
the source of the identified services, not differences in the services themselves. See, e.g., In re
St. Helena Hosp., 113 USPQ2d at 1086.
7 At .pdf 29-55.
8 At .pdf 55-125.
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• VerizonEnterprise.com and Verizon.com offer both cloud computing
services and broadband services under the same mark.

• ATT.com offers both cloud computing services and broadband services
under the same mark.

• Comcast.com and Xfinity.com offer both cloud computing services and
broadband services.

• Cox.com offers cloud storage as part of an internet service package.

• BT.Com offers network connection services and cloud computing
services under the same mark.

• N2Net.net offers internet connection services, cloud computing, and
data center storage under the same mark.

• DLS.net offers internet access, data centers, and IT consulting under
the same mark.

• Otelco.com offers cloud computing services and broadband internet
services under the same mark.

• Wowforbusiness.com offers internet services and cloud hosting under
the same mark.

• XLInternetnow.com offers cloud computing services and online storage
as part of a broadband package.

• Citescape.com offers internet connections and cloud storage under the
same mark.

• Directlink.coop offers cloud storage as part of a broadband service.

• Windstreambusiness.com offers broadband and cloud computing
services under the same mark.

These websites demonstrate that services of the type offered by both Applicant … and
Registrant are marketed and sold together online under the same marks. See Hewlett-
Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir.
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2002) (evidence that “a single company sells the goods and services of both parties, if
presented, is relevant to the relatedness analysis”). We find that consumers would
readily perceive these types of services as being sufficiently related as to be offered
by a single business. In re Integrated Embedded, 120 USPQ2d 1504, 1514-15 (TTAB
2016).
The Examining Attorney also introduced into the record with the July 7, 2017 first
Office Action9 and February 12, 2018 final Office Action10 copies of fifteen use-based,
third-party registrations for marks identifying, inter alia, broadband or internet
access services as well as cloud computing or co-location services. The following
examples are illustrative:
Reg. No. 4635301 for the mark ONE SOURCE NETWORKS and design;

Reg. No. 4848799 for the mark GIGANET BROADBAND (in standard
characters, BROADBAND disclaimed); and

Reg. No. 4379075 for the mark WILCON (standard characters).

As a general proposition, although use-based, third-party registrations alone are
not evidence that the marks shown therein are in use or that the public is familiar
with them, they nonetheless may have some probative value to the extent they serve
to suggest that the services are of a kind that emanate from a single source. See In re
Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel &

9 At .pdf 8-23.
10 At .pdf 9-43.
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Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard, 6
USPQ2d 1467, 1470 n.6 (TTAB 1988).
In this case, the totality of the website and third-party registration evidence
demonstrates that consumers would readily expect that providers of cloud computing
and consultation services also provide internet access and broadband communication
services and that, as a result, the services identified in the involved application and
cited registration could emanate from the same source. It is not necessary for the
Examining Attorney to submit evidence of relatedness of every service recited in
Class 42 to the services in the cited registration. See Tuxedo Monopoly, Inc. v. Gen.
Mills Fun Grp., Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (It is sufficient
for a finding of likelihood of confusion if the relatedness is established for any item
encompassed by the identification of goods within a particular class in the
application); see also Research in Motion Ltd. v. Defining Presence Mktg. Grp., Inc. et
al, 102 USPQ2d 1187 (TTAB 2012) (“Likelihood of confusion must be found if there
is likely to be confusion with respect to any item that comes within the identification
of goods in the application.”); Hewlett-Packard Dev. Co., L.P. v. Vudu, Inc., 92
USPQ2d 1630, 1633 n.4 (TTAB 2009) (“[I]t is sufficient if likelihood of confusion is
found with respect to use of the mark on any item that comes within the description
of goods in the application or registration”) (internal citations omitted).
The third DuPont factor concerns “[t]he similarity or dissimilarity of established,
likely-to-continue trade channels.” DuPont, 177 USPQ at 567. Evidence of record
demonstrates that both Applicant’s services and Registrant’s services may be
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encountered by the same classes of consumers, that is, individuals and businesses
seeking broadband or internet access services as well as cloud computing and related
consulting services under the same marks in at least one common trade channel, i.e.,
the physical locations and corresponding websites of third-parties offering both
services. Applicant argues:
Applicant’s trademark reaches the end consumer by and through
businesses and consumers who want [to] expand their ability to access
their data or, at the least, access their information on the cloud. These
consumers are not looking for a fast or reliable connection to the data,
but instead are interested in being able to have a reliable location to host
their data. In contrast, the registered trademark appears to reach its
end consumers by and through businesses and consumer’s looking to
connect and have access to the internet.11

However, neither the identification of services in the cited registration nor the
involved application recites any limitations as to the channels of trade in which the
services are offered. In the absence of trade channel limitations on the services offered
under the applied-for and registered marks, we must presume that these services are
offered in all customary trade channels. See Citigroup v. Capital City Bank Grp., 98
USPQ2d at 1261; In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006).
Further, Applicant’s rather speculative arguments are contradicted by evidence of
record discussed above indicating that third parties offer the related services of both
Applicant and Registrant to the same consumers. Applicant fails to explain why
consumers and businesses seeking access to their data on the cloud would not also

11 Applicant’s brief; 6 TTABVUE 15.
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seek a fast, reliable connection to that data. To the contrary, it is likely that
consumers would seek both.
We find that the DuPont factors of the relatedness of the services, channels of
trade and consumers weigh in favor of likelihood of confusion.
B. Strength of the Cited Mark / Number and Nature of Similar Marks
We next evaluate the strength of the registered mark and the scope of protection
to which it is entitled. The fifth DuPont factor is the “fame” or strength of the prior
mark, and the sixth factor is the number and nature of similar marks in use for
similar goods or services. DuPont, 177 USPQ at 567. In determining strength of a
mark, we consider both inherent strength, based on the nature of the mark itself, and
commercial strength or recognition. In re Chippendales USA Inc., 622 F.3d 1346, 96
USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its
conceptual strength (distinctiveness) and its marketplace strength (secondary
meaning).”).
Applicant has submitted no evidence regarding the inherent strength of the
registered BETTER CONNECTION, BETTER LIFE mark. Although the mark may
be mildly indicative of a feature of broadband internet access and communications
services to the extent it implies that improved connectivity leads to an improved life,
the mark is inherently distinctive as it suggests, but does not describe, broadband
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services. There is no evidence regarding the registered mark’s commercial or
marketplace strength.12
Applicant submitted with its January 4, 2018 Response to the first Office Action13
lists of third-party CONNECT and BETTER-formative registrations retrieved from a
search of the USPTO’s Trademark Electronic Search System (TESS).14 In her
February 12, 2018 final Office Action,15 the Examining Attorney advised Applicant
that submitting a mere list of registrations does not make them of record and further
advised Applicant on the proper procedure for submitting third-party registrations.
However, Applicant did not subsequently submit the listed registrations.
A mere listing of third-party marks, without any accompanying indication of the
goods and/or services associated therewith, has little, if any, probative value. See, e.g.,
In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1264 n.6 (TTAB 2011) (Board
considered TESS listings for whatever probative value they had); In re Eagle Crest
Inc., 96 USPQ2d 1227, 1229 (TTAB 2010). To make a third-party registration of
record, a copy of the registration, either a copy of the paper USPTO record, or a copy
taken from the electronic records of the Office, must be submitted prior to appeal. In

12 Because of the nature of the evidence required to establish the “fame” or strength of a
registered mark, the Board normally does not expect an examining attorney to submit
evidence as to the commercial strength of the cited mark in an ex parte proceeding. See In re
Thomas, 79 USPQ2d 1021, 1027 n.11 (TTAB 2006).
13 At .pdf 14-15.
14 The lists provide the application serial numbers and registration numbers, marks, and
status of the registrations as live or dead.
15 At .pdf 6.
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re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013). Mere listings of or
references to registrations are not sufficient to make the registrations of record. In re
Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012); In
re Hoefflin, 97 USPQ2d 1174, 1177 (TTAB 2010).
Based upon the evidence of record, we find that the registered BETTER
CONNECTION, BETTER LIFE mark is inherently distinctive and has not been
shown to be commercially weak. We do not find it to be a strong mark, in light of its
connotation of better living as a result of better broadband connectivity as used in
connection with the recited services. Nonetheless, there is no evidence of third-party
use of similar marks in connection with providing broadband internet access and
communication services. Cf. In re FabFitFun, Inc., 127 USPQ2d 1673-4. Further,
there is no evidence of third-party registrations of similar marks for the services
identified in the cited registration. Cf. Juice Generation, Inc. v. GS Enters. LLC, 794
F.3d 1334, 115 USPQ2d 1671, 1674-75 (Fed. Cir. 2015); Jack Wolfskin Ausrustung
Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363,
116 USPQ2d 1129, 1135-36 (Fed. Cir. 2015).
We therefore find that the registered BETTER CONNECTION, BETTER LIFE
mark is to be accorded a somewhat slightly narrower scope of protection than that to
which inherently distinctive marks are normally entitled due to the mildly laudatory
nature of the mark in relation to the identified services. See Joseph Phelps Vineyards,
LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir.
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2017) (stating that likelihood of confusion fame varies along a spectrum from very
strong to very weak).
C. The Marks

Under the first DuPont factor, we determine the similarity or dissimilarity of
Applicant’s mark and Registrant’s mark in their entireties, taking into account their
appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at
567; Stone Lion Capital v. Lion Capital, 110 USPQ2d at 1160; Palm Bay Imps., Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692.
“‘Similarity in any one of these elements may be sufficient to find the marks
confusingly similar.’ In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014); accord Krim-
Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968)
(“It is sufficient if the similarity in either form, spelling or sound alone is likely to
cause confusion.”) (citation omitted). In re Inn at St. John’s, LLC, 126 USPQ2d 1742,
1746 (TTAB 2018). “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) (internal quotation marks
omitted). See also Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470
(TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016).
Consumers may not necessarily encounter the marks in proximity to one another and
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must rely upon their recollections thereof over time. In re Mucky Duck Mustard, 6
USPQ2d at 1468.
Applicant’s BETTER CONNECTED WORLD, BETTER LIFE mark is highly
similar to the registered mark, BETTER CONNECTION, BETTER LIFE, differing
only in the addition of the word “WORLD” and the substitution of “CONNECTED”
for “CONNECTION.” The four terms comprising the registered mark are present in
the applied-for mark in the same order. The terms comprising the registered mark
and the applied-for mark both appear as two phrases separated by a comma. The first
phrase in the registered mark, “BETTER CONNECTION,” is highly similar to the
first phrase of Applicant’s mark, “BETTER CONNECTED WORLD.” Both marks
include the identical second phrase, “BETTER LIFE” As a result, the marks are
highly similar in appearance and sound.
Applicant’s BETTER CONNECTED WORLD, BETTER LIFE mark suggests its
computer cloud and consulting services enhance the world’s communications
connections, creating a better life for users. The registered BETTER CONNECTION,
BETTER LIFE mark suggests broadband and internet access services that result in
better communications connections, creating a better life for users. Thus, one familiar
with broadband services identified by the registered mark BETTER CONNECTION,
BETTER LIFE may believe that Applicant’s computer cloud computing and
consulting services under its BETTER CONNECTED WORLD, BETTER LIFE mark
are related services that emanate from a common source.
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Based upon the above analysis, we find that Applicant’s BETTER CONNECTED
WORLD, BETTER LIFE mark is far more similar than dissimilar to the registered
BETTER CONNECTION, BETTER LIFE mark, in terms of appearance, sound,
connotation and overall commercial impression. In view thereof, the DuPont factor of
the similarity of the marks favors a finding of likelihood of confusion.
D. Conditions of Purchase

Under the fourth DuPont factor, we consider “[t]he conditions under which and
buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.”
DuPont, 177 USPQ at 567. “With consumers being smarter and more knowledgeable
about technology, Applicant argues consumers will know the difference between an
internet provider and cloud services.”16
To the extent we accept that the broadband and cloud computing services may be
marketed to increasingly tech-savvy purchasers, we expect that with highly similar
marks used on related services, even a careful, sophisticated consumer of these
services is not likely to note the differences in the marks. Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000). Furthermore, the
standard of care is that of the least sophisticated potential purchaser, and not all
purchasers may exercise a high level of care in their selection. See Stone Lion Capital
v. Lion Capital, 110 USPQ2d at 1163 cited in In re FCA US LLC, 126 USPQ2d 1214,
1222 (TTAB 2018) (“Board precedent requires our decision to be based on the least

16 6 TTABVUE 15.
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sophisticated potential purchasers.”). Even careful purchasers who do notice the
difference in the marks in connection with the related services may not ascribe it to
differences in the source of the services, but will see the marks as variations of each
other, pointing to a single source. See HRL Assocs., Inc. v. Weiss Assocs., Inc., 12
USPQ2d 1819, 1823 (TTAB 1989), aff’d, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir.
1990) (similarities of goods and marks outweigh sophisticated purchasers, careful
purchasing decision, and expensive goods). Accordingly, we deem this DuPont factor
to be neutral.
E. Conclusion
When we consider the record and the relevant likelihood of confusion factors, and
all of Applicant’s arguments relating thereto, we conclude that consumers familiar
with Registrant’s services offered under its mark would be likely to believe, upon
encountering Applicant’s mark, that the services originated with, are associated
with, or are sponsored by the same entity, notwithstanding potential consumer care
in the selection thereof.
Decision: The refusal to register Applicant’s mark is affirmed under Section 2(d)
of the Trademark Act.