ZONE Telecom, Inc.

Trademark Trial and Appeal Board

Sep 14, 2007

No. 78644185 (T.T.A.B. Sep. 14, 2007)

Mailed: 9/14/07

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re ZONE Telecom, Inc.
________

Serial No. 78644185
_______

Gerald E. McGlynn, III of Bliss McGlynn for ZONE Telecom,
Inc.

Laura A. Hammel, Trademark Examining Attorney, Law Office
116 (Michael W. Baird, Managing Attorney).
_______

Before Quinn, Hairston and Zervas, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by ZONE Telecom, Inc. to
register the mark shown below

(“BROADBAND PHONE” disclaimed) for “providing
telecommunication services, namely, providing business and
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 78644185
2
residential VOIP-based (voice-over-internet-protocol based)
telephone-communication services.”1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, when used in connection with applicant’s
services, so resembles the previously registered mark shown
below

(“PHONE” disclaimed) for “telecommunication services,
namely, personal communication services (PCS)”2 as to be
likely to cause confusion.
When the refusal to register was made final, applicant
appealed. Applicant and the examining attorney filed

1 Application Serial No. 78644185, filed June 6, 2005, alleging a
bona fide intention to use the mark in commerce. The application
includes the following description of the mark: “The mark
consists of a design comprising a solid stylized ‘Z’ partially
enclosed by a hollow, partial oval, which is enclosed by a solid,
shaded oval and the word mark ‘ZONE BROADBAND PHONE’ located
immediately and directly to the right of the design and including
a tilde located over the letters ‘ND,’ wherein the lower half is
shaded.”
2 Registration No. 2499309, issued October 23, 2001.
Ser No. 78644185
3
briefs.3
Applicant contends that there are “very strong
differences” between the marks in sound and appearance. In
arguing that the cited mark is weak, applicant relied on a
list of third-party registrations and applications.
Throughout the prosecution of its application, applicant
has not disputed the examining attorney’s finding that the
services are related.
The examining attorney maintains that the involved
marks are dominated by the identical term, ZONE, and that
the marks, when considered in their entireties, are
similar. The examining attorney also asserts that the
services are similar telecommunication services that target
the same consumers. In connection with this argument, the
examining attorney relied upon third-party registrations
listing both types of services, as well as excerpts of
articles retrieved from the NEXIS database. Also of record
are dictionary definitions of the terms “personal
communication services” and “broadband.”
Before turning to the merits, we first direct our
attention to an evidentiary matter. Applicant’s brief is

3 The examining attorney has requested that the Board accept her
late-fled brief. She indicated that the brief was filed one day
late due to illness. In view of the circumstances set forth by
the examining attorney, the brief is accepted as if timely filed.
Ser No. 78644185
4
accompanied by a printout of listings of third-party
registrations and applications retrieved from the USPTO’s
TESS database. The examining attorney objected to the
evidence as untimely submitted. Applicant responded by
asserting that, contrary to the examining attorney’s view,
this evidence was introduced during the prosecution of its
application.
Applicant, in its June 23, 2006 response, made a
general reference to the existence of various third-party
registrations, contending that the cited mark is weak and
entitled to a narrow scope of protection.4 In response, the
examining attorney, in her final refusal dated August 2,
2006, quoted applicant’s reference to the third-party
registrations, but indicated that such evidence is entitled
to little weight in the likelihood of confusion analysis.
Applicant then submitted with its appeal brief a TESS
printout listing third-party registrations, as well as
third-party applications.
Applicant’s mere general reference to the existence of
third-party registrations clearly was insufficient to make
any registrations of record. Rather than alert applicant

4 The reference was to the total number of existing
registrations; applicant neither gave registration numbers nor
any other information. There also was no reference to third-
party applications.
Ser No. 78644185
5
that this mere reference was insufficient at a point where
applicant could have corrected the error, the examining
attorney responded in kind, with a general statement that
such evidence is entitled to little probative value. We
therefore have considered applicant’s general reference to
the state of the register, but the mere reference is
entitled to no probative value. TBMP § 1208.02 (2d ed.
rev. 2004). As noted above, applicant then submitted with
its appeal brief a printout listing third-party
registrations and applications taken from the TESS
database. This listing is insufficient to make the
registrations and applications of record. In re Ruffin
Gaming LLC, 66 USPQ2d 1924, 1925 n.3 (TTAB 2002). Nor can
we deem the examining attorney to have waived any objection
to the TESS listing by failing to advise applicant of the
original insufficiency, since at the point that applicant
filed the list it no longer had an opportunity to add to
the record of the application. Accordingly, we have not
considered the TESS listing. See In re 1st USA Realty
Professionals, Inc., ___USPQ2d___ (Ser. No. 78553715, TTAB
August 7, 2007). We hasten to add that, even if we were to
consider the list, it has no probative value since it does
not show the goods or services for which the marks are
registered. In addition, the third-party applications have
Ser No. 78644185
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no evidentiary value other than to show that they were
filed. In re Juleigh Jeans Sportswear Inc., 24 USPQ2d
1694, 1699 (TTAB 1992). Thus, even if considered, the list
of third-party registrations and applications does not
compel a different result in this case.
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
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).
With respect to the services, it is not necessary that
the respective 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 services are related in some manner, and/or that
the conditions and activities surrounding the marketing of
Ser No. 78644185
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the 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 originated from the same
entity. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
It is well settled that the question of likelihood of
confusion must be determined based on an analysis of the
services recited in applicant’s application vis-à-vis the
services identified in the cited registration. In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir.
1993); and Canadian Imperial Bank v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992). Where the
services in the application at issue and/or in the cited
registration are broadly identified as to their nature and
type, such that there is an absence of any restrictions as
to the channels of trade and no limitation as to the
classes of purchasers, it is presumed that in scope the
identification of services encompasses not only all the
services of the nature and type described therein, but that
the identified services are offered in all channels of
trade which would be normal therefore, and that they would
be purchased by all potential buyers thereof. In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Ser No. 78644185
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Applicant’s services are identified as
“telecommunication services, namely, providing business and
residential VOIP-based (voice-over-internet-protocol based)
telephone-communication services.” Registrant’s services
are “telecommunication services, namely, personal
communication services (PCS).” As shown by the record,
“personal communication services (PCS)” are defined as
“wireless communications services that use the 1900 MHz
band.” (www.computeruser.com). PCS involve the use of
digital cellular technologies.
Applicant, throughout the prosecution of its
application, has not disputed the examining attorney’s
finding that the services are related. Indeed, applicant
has been entirely silent on this point. Lest there be any
doubt regarding the close relationship between applicant’s
and registrant’s services, the examining attorney
introduced several use-based third-party registrations
showing that each entity adopted a single mark for
telecommunications services of the types involved herein.
Third-party registrations that individually cover different
items and that are based on use in commerce serve to
suggest that the listed goods and/or services are of a type
that may emanate from a single source. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and In re
Ser No. 78644185
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Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
The examining attorney also introduced NEXIS articles that
serve to buttress her finding that the services are closely
related.
Based on the close relationship between the services,
we presume that the services would be rendered to the same
classes of purchasers, including ordinary consumers.
The similarities between the services and the identity
in the classes of consumers to whom the services are
rendered weigh in favor of a finding of likelihood of
confusion.
We next turn to compare the marks. In determining the
similarity or dissimilarity of the marks, we must compare
the marks in their entireties as to 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 (Fed. Cir. 2005). The test is
not whether the marks can be distinguished when subjected
of the average purchaser, who normally retains a general
rather than a specific impression of trademarks to a side-
by-side comparison, but rather whether the marks are
sufficiently similar in their entireties that confusion as
to the source of the goods and/or services offered under
the respective marks is likely to result. The focus is on
Ser No. 78644185
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the recollection of the average purchaser, who normally
retains a general rather than a specific impression of
trademarks. Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106 (TTAB 1975).
With respect to comparing applicant’s mark Z ZONE
BROADBAND PHONE and design with registrant’s mark THE ZONE
PHONE and design, it is well settled that one feature of a
mark may be more significant than another, and it is not
improper to give more weight to this dominant feature in
determining the commercial impression created by the 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. Indeed, this type of analysis appears to
be unavoidable.”]
It is further well established that, in the case of a
logo mark, the literal portion of a mark generally is the
dominant feature because it is the element by which
consumers will refer to and call for the goods. In re
Dacombe, 9 USPQ2d 1813, 1814 (TTAB 1988). This is clearly
the case with respect to applicant’s and registrant’s
marks. We find that the literal portions ZONE BROADBAND
Ser No. 78644185
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PHONE and THE ZONE PHONE dominate the involved marks,
respectively.5
Descriptive matter generally is subordinate to source-
identifying portions of a mark. For example, in the past
merely descriptive matter that is disclaimed has been
accorded subordinate status relative to the more
distinctive portions of a mark. In re Dixie Restaurants
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”]. In the present case, applicant
has disclaimed the highly descriptive/generic term
“BROADBAND PHONE” while registrant has disclaimed the
generic term “PHONE.” 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’”]. Further, the term “THE” in registrant’s mark
clearly has no source-identifying function. Thus, these

5 In saying this we recognize that applicant’s mark includes the
letter “Z.” This letter, however, is highly stylized and is
unlikely to be used in calling for applicant’s services.
Ser No. 78644185
12
terms play a very subordinate role, and each mark is
dominated by the identical term “ZONE.”6
Applicant’s arguments that “the font differences and
the tilde are more likely to be impressed upon a
purchaser’s memory than is the word ‘ZONE’ in [applicant’s]
mark” or that “the wording ‘BROADBAND PHONE’ is undoubtedly
the dominant portion in [applicant’s] mark” simply are ill
founded, and are entirely unpersuasive.
We must do more, however, than compare the individual
components of the mark; it is critical that we compare the
marks as a whole. M2 Software Inc. v. M2 Communications
Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1948-49 (Fed. Cir.
2006) [“When comparing the similarity of marks, a
disclaimed term...may be given little weight, but it may
not be ignored”]. The involved marks are similar because
they are dominated by the identical term “ZONE.” Because
of the presence of the identical term “ZONE,” the marks are
similar in sound and appearance. As to meaning, although
applicant states that the term “zone” is descriptive or
suggestive, there is no evidence on this point. In any
event, given the similarity between the services, it is

6 Applicant agrees when it states that “the word ‘ZONE’ is
undoubtedly the dominant portion in the registrant’s word mark.”
(Brief, p. 6).
Ser No. 78644185
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likely that the term, if suggestive, would convey the same
suggestion or meaning. While we recognize the obvious
differences between the marks, ultimately the similarities
in appearance, sound, meaning and overall commercial
impression outweigh the differences. In re Chatam
International Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946
(Fed. Cir. 2004) [Court affirmed refusal to register the
mark JOSE GASPAR GOLD in view of a prior registration of
GASPAR’S ALE. The “Board had good reason to discount ALE,
JOSE, and GOLD as significant differences between the
marks.”]. In comparing the marks, applicant engaged in a
painstaking, detailed analysis. In finding that the marks
are similar, however, we have kept in mind the fallibility
of the average purchaser, who normally retains a general
rather than a detailed, specific impression of trademarks
encountered in the marketplace.
The similarities between the marks weigh in favor of a
finding of likelihood of confusion.
We conclude that consumers familiar with registrant’s
personal communication services rendered under the mark THE
ZONE PHONE and design would be likely to believe, upon
encountering applicant’s mark Z ZONE BROADBAND PHONE and
design for business and residential VOIP-based (voice-over-
internet-protocol based) telephone-communication services
Ser No. 78644185
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that the services originate from or are associated with or
sponsored by the same source.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal to register is affirmed.