Click Control Marketing, LLC aka ClickControlMarketing.com

Trademark Trial and Appeal Board

Jan 24, 2020

87895626 (T.T.A.B. Jan. 24, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: January 24, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Click Control Marketing, LLC
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Serial No. 87895626
_____

Gene Bolmarcich of Law Offices of Gene Bolmarcich,
for Click Control Marketing, LLC.
Jacquelyn A. Jones, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
_____

Before Cataldo, Goodman, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
Click Control Marketing, LLC (“Applicant”) seeks registration on the Principal
Register of the standard character mark CLICK CONTROL MARKETING
(“MARKETING” disclaimed) for “Advertising and marketing services provided by
means of indirect methods of marketing communications, namely, social media,
search engine marketing, inquiry marketing, internet marketing, mobile marketing,
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blogging and other forms of passive, sharable or viral communications channels” in
International Class 35.1
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 that it
so resembles the registered mark shown below (“MARKETING” disclaimed)

for “Promoting, advertising and marketing of the brands, products, services and
online websites of individuals, businesses and nonprofit organizations” in
International Class 35,2 as to be likely, when used in connection with the services
identified in the registration, to cause confusion, to cause mistake, or to deceive.
After the Examining Attorney made the refusal final, Applicant appealed and
requested reconsideration, which was denied. Applicant and the Examining Attorney
have filed briefs.3 We affirm the refusal to register.

1 Application Serial No. 87895626 was filed on April 26, 2018 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s claimed first use of the mark and
first use of the mark in commerce at least as early as June 30, 2010. Applicant claims that
the mark has acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C.
§ 1052(f).
2 Registration No. 5574831 issued on October 2, 2018. The registered mark is described as
consisting of “‘Ctrl MARKETING’ text surrounded by a keyboard outline.”
3 Citations in this opinion to the briefs refer to TTABVUE, the Board’s online docketing
system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Specifically, the
number preceding TTABVUE corresponds to the docket entry number, and any numbers
Serial No. 87895626
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I. Record on Appeal4
The record on appeal consists of Applicant’s specimen of use and the following
additional materials:
• TSDR records for the cited registration, made of record by the Examining
Attorney;5
• Dictionary definitions of “crtl,”6 “click,”7 and “control key,”8 made of record
by the Examining Attorney;
• Third-party registrations of marks,9 and third-party webpages,10 made of
record by the Examining Attorney to show use of the same marks in
connection with the same or similar services as Applicant and the cited
registrant, offered through the same channels of trade to the same classes
of consumers;

following TTABVUE refer to the page number(s) of the docket entry where the cited materials
appear.
4 Citations in this opinion to the application record, including the request for reconsideration
and its denial, are to pages in the Trademark Status & Document Retrieval (“TSDR”)
database of the United States Patent and Trademark Office (“USPTO”).
5 March 29, 2019 Office Action at TSDR 2-4.
6 Id. at TSDR 5-6; April 23, 2019 Final Office Action at TSDR 6-7 (MACMILLAN DICTIONARY);
May 24, 2019 Denial of Request for Reconsideration at TSDR 4-5 (THE AMERICAN HERITAGE
DICTIONARY).
7 April 23, 2019 Final Office Action at TSDR 8-11 (ENGLISH OXFORD LIVING DICTIONARIES);
May 24, 2019 Denial of Request for Reconsideration at TSDR 2-3 (THE AMERICAN HERITAGE
DICTIONARY).
8 May 24, 2019 Denial of Request for Reconsideration at TSDR 6-7 (THE AMERICAN HERITAGE
DICTIONARY).
9 March 29, 2019 Office Action at TSDR 7-35.
10 April 23, 2019 Final Office Action at TSDR 12-50.
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• A page from the website of the cited registrant, made of record by
Applicant;11
• A Wikipedia entry entitled “Pay-per-click,” made of record by the
Examining Attorney;12 and
• Results of a search on the term “advertising clicks” using the Google search
engine, made of record by Applicant.13
II. Analysis of Likelihood of Confusion Refusal
Section 2(d) of the Trademark Act prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). Our determination of likelihood of confusion under Section 2(d) is based on
an analysis of all probative facts in the record that are relevant to the likelihood of
confusion factors set forth in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). We consider each DuPont factor for which there is
evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d
1160, 1162-63 (Fed. Cir. 2019).
Two key factors in every Section 2(d) case are the first two DuPont factors
regarding the similarity or dissimilarity of the marks, and the similarity or
dissimilarity of the goods or services, because the “fundamental inquiry mandated by

11 April 2, 2019 Response to Office Action at TSDR 9.
12 April 23, 2019 Final Office Action at TSDR 2-5.
13 April 29, 2019 Request for Reconsideration at TSDR 2-4.
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§ 2(d) goes to the cumulative effect of differences in the essential characteristics of
the goods and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). Applicant “has argued that the
marks at issue are not similar in terms of their different meanings and continues this
argument on appeal,” 7 TTABVUE 3, and contends on appeal that “[t]his factor alone
is determinative of the issue of likelihood of confusion.” Id. Applicant does not address
any other DuPont factors.
A. Similarity or Dissimilarity of the Services and Channels of
Trade
The second DuPont factor “considers ‘[t]he similarity or dissimilarity and nature
of the goods or services as described in an application or registration,’” while the third
DuPont factor considers “the similarity or dissimilarity of established, likely-to-
continue trade channels.” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047,
1051 (Fed. Cir. 2018) (quoting DuPont, 177 USPQ at 567). Our analysis under these
factors is based on the identifications of services in the application and the cited
registration. Id.; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,
110 USPQ2d 1157, 1161-63 (Fed. Cir. 2014).
It is “not necessary that the [services] be identical or even competitive to support
a finding of a likelihood of confusion.” Coach Servs. Inc. v. Triumph Learning LLC,
668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven, Inc. v.
Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). “[L]ikelihood of confusion can be
found ‘if the respective [services] are related in some manner and/or if the
circumstances surrounding their marketing are such that they could give rise to the
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mistaken belief that they emanate from the same source.’” Id. (quoting 7-Eleven, 83
USPQ2d at 1724).
The services identified in the cited registration are “Promoting, advertising and
marketing of the brands, products, services and online websites of individuals,
businesses and nonprofit organizations,” while the services identified in the
application are “Advertising and marketing services provided by means of indirect
methods of marketing communications, namely, social media, search engine
marketing, inquiry marketing, internet marketing, mobile marketing, blogging and
other forms of passive, sharable or viral communications channels.”
The Examining Attorney argues that
the registration uses broad wording to describe
“advertising and marketing of the brands, products,
services and online websites of individuals, businesses and
nonprofit organizations,” which presumably encompasses
all services of the type described, including Applicant’s
more narrow “advertising and marketing services provided
by means of indirect methods of marketing
communications, namely, social media, search engine
marketing, inquiry marketing, internet marketing, mobile
marketing, blogging and other forms of passive, sharable
or viral communications channels.”
9 TTABVUE 7. She contends that “Registrant’s services are broad enough to include
Applicant’s ‘digital marketing’ services,” id. at 8, and that “Applicant’s and
Registrant’s services are legally identical.” Id. at 7.
The Examining Attorney argues alternatively that the Internet evidence and
third-party registrations in the record establish that “Applicant’s and Registrant’s
services are considered related for likelihood of confusion purposes.” Id. at 8. She
argues that this evidence shows that the same entity commonly provides the involved
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services under the same mark through the same channels of trade to the same classes
of customers in the same fields of use. Id.
As noted above, Applicant did not address the second and third DuPont factors in
its appeal brief, and did not file a reply brief to dispute the Examining Attorney’s
arguments on these factors, thus implicitly conceding that the involved services are
legally identical, or, at a minimum, closely related. In any event, we must give the
broad identification of services in the cited registration its full scope, and deem it “to
encompass ‘all the [services] of the nature and type described there.’” In re Solid State
Design Inc., 125 USPQ2d 1409, 1413 (TTAB 2018) (quoting In re Jump Designs, LLC,
80 USPQ2d 1370, 1374 (TTAB 2006)). By their terms, the services broadly identified
in the cited registration as “Promoting, advertising and marketing of the brands,
products, services and online websites of individuals, businesses and nonprofit
organizations,” encompass the narrower services identified in the application, which
are “advertising and marketing services” that are “provided by means of indirect
methods of marketing communications, namely, social media, search engine
marketing, inquiry marketing, internet marketing, mobile marketing, blogging and
other forms of passive, sharable or viral communications channels.” We find that the
services are legally identical. See, e.g., Double Coin Holdings Ltd. v. Tru Dev., 2019
USPQ2d 377409, *7 (TTAB 2019) (“tires” identified in the respondent’s registration
“encompass, and thus are legally identical to, at least the ‘vehicle wheel tires,’
‘automobile tires,’ and “tires for vehicle wheels” identified in the petitioner’s
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registration).14 The second DuPont factor strongly supports a finding of a likelihood
of confusion.
There are no pertinent restrictions in the respective identifications of services,
and “because the services are legally identical, they must be presumed to travel in
the same channels of trade and be rendered or offered to the same classes of
consumers.” In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1244 (TTAB 2010) (citing
Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005
(Fed. Cir. 2002)). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908
(Fed. Cir. 2012). The third DuPont also strongly supports a finding of a likelihood of
confusion.
B. Similarity or Dissimilarity of the Marks
Under the first DuPont factor, we consider “the similarity or dissimilarity of the
marks in their entireties as to appearance, sound, connotation and commercial
impression.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting DuPont, 177
USPQ at 567). “Similarity in any one of these elements may be sufficient to find the

14 In addition, the record contains 10 use-based third-party registrations that include both
the services identified in the cited registration and the services identified in the application,
March 29, 2019 Office Action at TSDR 7-35, and one third-party website in the record shows
that what it calls “traditional advertising” (such as print, billboard, and television and radio
advertising) may be offered under the same mark as what it calls “digital marketing” of the
sort specified in Applicant’s identification. April 23, 2019 Final Office Action at TSDR 31-38.
This evidence is probative of, at least, the close relatedness of the goods. See, e.g., In re I-Coat
Co., 126 USPQ2d 1730, 1738 (TTAB 2018); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198,
1202-04 (TTAB 2009).
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marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing
In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)).
The proper test regarding similarity “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.” Cai v. Diamond Hong, Inc., 901 F.3d,
127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., 101 USPQ2d at 1721
(internal quotation marks and citation omitted)). “The proper perspective on which
the analysis must focus is on the recollection of the average customer, who retains a
general rather than specific impression of marks.” In re i.am.symbolic, llc, 127
USPQ2d 1627, 1630 (TTAB 2018) (citations omitted).
Because the services here are legally identical, “the degree of similarity necessary
to support a conclusion of likely confusion declines.” Viterra, 101 USPQ2d at 1908
(quoting Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992)).
Applicant’s mark is CLICK CONTROL MARKETING in standard characters,
with “MARKETING” disclaimed. The cited mark is the composite word-and-design
mark shown again below:

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The word “MARKETING” is similarly disclaimed in the cited mark.
The marks must be considered in their entireties, but “in articulating reasons for
reaching a conclusion on the issue of confusion, 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.” Detroit Athletic Co., 128 USPQ2d at 1051 (quoting In re Nat’l Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)). The cited mark is a
composite mark consisting of a word and letters against a background design. The
Examining Attorney argues that in the cited mark, “the letters ‘ctrl’ are an
abbreviation for ‘control: the control key on a computer keyboard,’” 9 TTABVUE 5-6
(citing MACMILLAN DICTIONARY.COM), and Applicant acknowledges that “the Cited
Mark is a rendition of a ‘control’ key on a computer keyboard.” 7 TTABVUE 4. In
cases involving marks “consisting of words and a design, the words are normally
accorded greater weight because they are likely to make a greater impression upon
purchasers, to be remembered by them, and to be used to request the goods.” In re
Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing Viterra, 101
USPQ2d at 1908). Given the centrality and visual prominence of the verbal elements
“Ctrl” and “MARKETING,” and the fact that the background design is “a rendition of
a ‘control’ key on a computer keyboard,” 7 TTABVUE 4, and thus merely reinforces
the word “Ctrl,” we find that the verbal elements are the dominant portion of the cited
mark.
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We turn now to the required comparison of the marks in their entireties, giving
greater weight in that comparison to the verbal elements Ctrl and MARKETING in
the cited mark than to the design element. Applicant argues that the marks differ in
appearance and meaning, but does not address their similarity or dissimilarity in
sound. 7 TTABVUE 3-4. We begin with that means of comparison.
As noted above, the Examining Attorney and Applicant essentially agree the
letters “Ctrl” in the cited mark abbreviate “control,” and when they appear against
the backdrop of a computer keyboard they would be verbalized as “control.”
Accordingly, the cited mark as a whole would be verbalized as CONTROL
MARKETING and would be spoken and heard in a manner identical to the words
CONTROL MARKETING in Applicant’s mark. There are slight differences between
the marks in sound because of the presence of the word CLICK at the beginning of
Applicant’s mark, but we find that the marks are more similar than dissimilar in that
means of comparison.
With respect to appearance, because Applicant’s mark is a standard character
mark, its constituent words “may be presented in any font style, size or color,
including the same font, size or color as the literal portions of [the cited] mark.”
Aquitaine Wine USA, 126 USPQ2d at 1186 (quoting Trademark Rule 2.52(a), 37
C.F.R. § 2.52(a)). Accordingly, we must assume that the word CONTROL in
Applicant’s mark could be rendered as “Control” in a combination of upper and lower
case letters, as the abbreviation Ctrl is rendered in the cited mark, and that both
Serial No. 87895626
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CONTROL and MARKETING could be rendered in the font style and relative sizes
of their counterparts in the cited mark. Id.
Applicant argues that “the marks look very different” because “Applicant’s Mark
begins with the word ‘CLICK’ and the Cited mark begins with ‘CNTRL’” and that
“Applicant’s mark also does not conjure up the image [of] a control key on a computer
keyboard.” 7 TTABVUE 4. These differences might be apparent if the marks were
viewed together, as Applicant essentially views them, but they “‘must be considered
. . . in light of the fallibility of human memory’ and ‘not on the basis of side-by-side
comparison.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir.
2014) (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565
F.2d 683, 196 USPQ 1, 3 (CCPA 1977)). This form of comparison is required because
many consumers “may have but dim recollections from having previously seen or
heard one or the other of the involved marks,” Neutrogena Corp. v. Bristol-Myers Co.,
410 F.2d 1391, 161 USPQ 687, 688 (CCPA 1977), and the recall of marks “among
ordinary purchasers is often hazy and imperfect.” Edison Bros. Stores, Inc. v. Brutting
E.B. Sport-Int’l GmbH, 230 USPQ 530, 533 (TTAB 1986).
There are again differences between the marks in appearance because of the
presence of the word CLICK at the beginning of Applicant’s mark, but taking into
account the imperfect recollection of consumers and the possible manners in which
Applicant’s mark could be depicted, we find that the marks are more similar than
dissimilar in appearance as well as sound.
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Applicant’s primary argument is that the marks differ in meaning. Applicant
argues that in the context of its services, which it characterizes as “digital
marketing,” 7 TTABVUE 3, the “words ‘CLICK CONTROL’ take on a very specific
meaning having to do with the benefits of getting ‘clicks’ when selling a product or
service online.” Id. at 4. Applicant claims that its mark “thus conveys the meaning
that Applicant can control the ‘clicks’ they [sic] get online (which clicks are critical to
selling a product or service online).” Id. Applicant contrasts this claimed meaning
with its claimed meaning of the cited mark, arguing that it “is a rendition of a ‘control’
key on a computer keyboard” and is thus arbitrary when used in connection with the
services identified in the registration because “there is no apparent connection
between a control key on a computer keyboard and ‘Promoting, advertising and
marketing of the brands, products, services and online websites of individuals,
business and nonprofit organizations.” Id.
The Examining Attorney responds that the “term ‘CLICK’ in the applied-for mark
does not obviate the similarity between the marks,” 9 TTABVUE 6, and that CLICK
“is defined as ‘an instance of pressing down and releasing a button on a mouse or
other input device’ and as ‘an instance of selecting an items in a website or app by
click[ing] or tapping on a mouse, touchscreen, or other input device.’” Id.15 She argues
that “the mark ‘CLICK CONTROL MARKETING’ conveys the mental impression of
‘pressing down and releasing [the control key on a computer keyboard].’” Id.

15 May 24, 2019 Denial of Request for Reconsideration at TSDR 2 (THE AMERICAN HERITAGE
DICTIONARY).
Serial No. 87895626
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(bracketing in original). She concedes that “the specific commercial impression may
differ slightly,” but argues that “[w]hen viewed in connection to the parties’
advertising and marketing services, the marks . . . each convey a general commercial
impression of using computers to control marketing.” Id.
The marks contain the common elements CONTROL/Ctrl and MARKETING. As
discussed above, in the cited mark, Ctrl and MARKETING are presented against the
backdrop of a computer keyboard, which contains a key marked with the designation
Ctrl. When the mark is used in connection with the services of “Promoting,
advertising and marketing of the brands, products, services and online websites of
individuals, businesses and nonprofit organizations,” we agree with the Examining
Attorney that it connotes using computers to control marketing.
In Applicant’s mark, the words CONTROL MARKETING are preceded and
modified by the word CLICK. The Examining Attorney acknowledges that one
definition of the noun “click” in the context of computers is “[a]n instance of selecting
an item in a website or app by clicking or tapping on a mouse, touchscreen, or other
input device.” Id.16 Applicant’s specimen of use17 shows that the word CLICK in
Applicant’s mark plausibly could have that meaning in the context of the identified
“advertising and marketing services provided by means of indirect methods of
marketing communications, namely, social media, search engine marketing, inquiry

16 Id.
17 April 26, 2018 Specimen of Use at TSDR 1-6.
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marketing, internet marketing, mobile marketing, blogging and other forms of
passive, sharable or viral communications channels.”
Applicant’s claimed “very specific meaning” of the words CLICK CONTROL in its
mark, however, is not supported by the dictionary definitions of “click,” and Applicant
points to no other supporting record evidence.18 The CLICK CONTROL
MARKETING mark as a whole alludes generally to the ability to control marketing
in some manner either through “pressing down and releasing a button on a mouse or
other input device” or through the “selecti[on] of an item in a website or app by
clicking or tapping on a mouse, touchscreen, or other input device.”
These two nebulous meanings differ subtly from the meaning of the cited mark
discussed above, but not sufficiently to make the marks dissimilar given their
similarities in sound and appearance. Applicant’s mark adds the word CLICK to the
dominant verbal elements of the cited registrant’s mark, and the record is devoid of
evidence of the use or registration of any other marks containing the elements
CONTROL/Ctrl and MARKETING that are common to the involved marks. Under
these circumstances, and taking into account that the added word CLICK in
Applicant’s mark is suggestive of Applicant’s services under either definition of “click”
discussed above, and that the services identified in the application are a subset of the
services identified in the cited registration, we find that CLICK CONTROL

18 Applicant made of record the results of a Google search engine search on the term
“advertising clicks.” April 29, 2019 Request for Reconsideration at TSDR 2-4. Because the
search term is not part of the applied-for mark, we find that the search results are not
probative of the meaning of the words CLICK CONTROL or the mark as a whole.
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MARKETING as a whole “looks, sounds, and conveys the impression of being a line
extension of” the cited mark into the specific services identified in the application.
Double Coin Holdings, 2019 USPQ2d 377409, *9 (ROAD WARRIOR found to be
confusingly similar to WARRIOR for legally identical goods). Given the legal identity
of the services, channels of trade, and classes of customers, the marks are sufficiently
similar for the first Du Pont factor to support a finding of a likelihood of confusion.
C. Conclusion
The first, second, and third DuPont factors all support a finding of a likelihood of
confusion. We find that a consumer familiar with the cited mark for the registrant’s
broadly identified services who encounters Applicant’s CLICK CONTROL
MARKETING mark for a subset of those services is likely to believe mistakenly that
Applicant’s narrower services originate with, or are sponsored or authorized by, the
registrant.
Decision: The refusal to register is affirmed.