Halo2Cloud, LLC

Trademark Trial and Appeal Board

Jun 16, 2014

No. 85977086 (T.T.A.B. Jun. 16, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
June 16, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Halo2Cloud, LLC
_____

Serial No. 85977085
Serial No. 85977086
_____

Wm. Tucker Griffith of McCormick, Paulding & Huber, LLP for Halo2Cloud, LLC.

Susan B. Allen, Trademark Examining Attorney, Law Office 105 (Susan Hayash,
Managing Attorney).
_____

Before Mermelstein, Bergsman and Adlin, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Halo2Cloud, LLC (“applicant”) filed use-based applications for the marks
HALO, in standard character form (Serial No. 85977086), and HALO and design,
shown below (Serial 85977085):

Serial No. 85977085
Serial No. 85977086

2

Both applications, as originally filed, set forth the following identification of
services:
Computer services, namely, remote and on-site
management of cloud computing systems and
applications, and management of data backup, recovery
and storage; Cloud computing featuring software for use
in database management, document management, data
management, and electronic messaging management;
Providing electronic devices for accessing and using a
cloud computer network, in Class 42.
The Trademark Examining Attorney refused to register applicant’s marks
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground
that applicant’s marks so resemble the three registered marks listed below as to be
likely to cause confusion. The registrations are owned by different entities.
1. Registration No. 3974053 for the mark HALOTEQ, in standard
character form, for the services set forth below:
Computer services, namely, remote and on-site
management of the information technology (IT) cloud
computing systems of others; Computer services, namely,
remote management of the information technology (IT)
systems of others; Hosting the web sites of others;
Planning, design and implementation of virtualization
technologies for enterprises and businesses; Website
development for others, in class 42;1
2. Registration No. 4145954 for the mark HALO, in standard character
form, for the services set forth below:
Database management software for marine seismic
pressure and velocity data, and seismic imaging data;
subsurface imaging data and geophysical data for use in
the oil and gas industry; marine streamer cables for

1 Issued June 7, 2011.
Serial No. 85977085
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3

geophysical exploration for oil and gas and other
minerals; seismic exploration machines and apparatus, in
Class 9
Geophysical exploration for oil and gas and other
minerals; recording of seismic data; performing
geophysical data gathering services for others in the oil
and gas industry; providing geophysical data to others for
use in the oil and gas industry, in Class 42;2
3. Registration No. 4120795 for the mark HALO, in standard character
form, for the goods set forth below:
Computer security software; computer gateway software
for providing security for enterprise cloud services;
computer software for managing and monitoring the
internal and external vulnerability of cloud computer
networks and cloud computer servers; computer software
that provides firewall and gateway protection; computer
software that allows users to build, deploy and manage
host-based firewall policies across Infrastructure-as-a-
Service (IaaS) cloud environments, in Class 9.3
The Trademark Examining Attorney also issued a final requirement
regarding the identification of services.
Because the issues and the records in the two applications are the same, we
consolidate the appeals. References to the record are to Serial No. 85977086 unless
otherwise indicated.
I. Whether applicant’s proposed amendment
to the identification of services is acceptable?

There is confusion as to the currently-operative identification of services. In
fact, the identification of services in this case has gone through several iterations

2 Issued May 22, 2012.
3 Issued April 3, 2012.
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during the prosecution of the application, the history of which is more fully
recounted below.
Before setting forth the history, we should point out that an ex parte appeal
to the Board is not the ideal procedural context in which to assess an appropriate
identification of services. Nevertheless, the Board may consider on appeal the
examining attorney's final requirement for an amendment to the identification of
goods or services. 37 C.F.R. § 2.141; In re Stenographic Machines, Inc., 199 USPQ
313, 315 (Comm'r Pats. 1978) (“Once a refusal to register is made final, an
applicant’s options are limited to compliance with any outstanding requirement or
appeal to the Trademark Trial and Appeal Board.”). See also In re Faucher Indus.
Inc., 107 USPQ2d 1355, 1357-58 (TTAB 2013) (reviewing applicant’s options for
resolving issues concerning identifications). Similarly, the Board may consider on
appeal a Trademark Examining Attorney’s refusal to accept an identification
amendment filed by the applicant.
The ability to amend an application that the Board has reviewed on appeal is
limited by the Trademark Rules. See 37 C.F.R. § 2.142(g) (“An application which
has been considered and decided on appeal will not be reopened except for the entry
of a disclaimer… or upon order of the Director….”). In the cases before us, if we find
that the applications as they now stand, including applicant's latest amended
identification, is in acceptable form, we can reverse the examining attorney's
refusal. However, we cannot re-write the application to reinstate an identification
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previously discarded by the applicant, nor can we re-open the application for
amendment of the identification by applicant following our decision on the appeals.
An option affording a broader scope of possible relief for applicant would have
been a timely petition to the Director under 37 C.F.R. §§ 2.146(a) and 2.63(b).
While questions of substance arising during the ex parte prosecution of an
application are not appropriate subject matter for a petition to the Director, 37
C.F.R. § 2.146(b), requirements with respect to identifications of goods or services
are generally regarded as petitionable matter. In re Stenographic Machines, 199
USPQ at 315. The Director has more flexibility in providing a remedy to applicant,
within the scope of her supervisory authority under 35 U.S.C. §§ 2 and 3.4
It is clear, however, that the applicant's best option for resolving the issue of
the identification of its services (and, in our view, the option having the best
prospects for success) would have been to engage in an direct, open, and frank
discussion with the Trademark Examining Attorney. Examination procedures
provide ample time for telephone discussion and resolution of the issues raised
during the prosecution of an application. It is not clear from the prosecution record
why neither the Trademark Examining Attorney, nor applicant’s counsel, initiated
a telephone conference to talk through the challenges that applicant faced in
drafting a definite identification of services. It is unfortunate that the issue raised
regarding the identification of services was not resolved more efficiently.

4 Authority to review and decide petitions to the Director, in trademark matters, has been
delegated to the Commissioner for Trademarks. Trademark Manual of Examining
Procedure (TMEP) § 1709 “Matters Delegated by Director” (April 2014).
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The primary purposes for requiring a clear identification of the goods or
services in a trademark application are (i) to allow for informed judgments
concerning likelihood of confusion under 15 U.S.C. § 1052(d) and (ii) to allow for the
proper classification of the goods. TMEP § 1402.01 (April 2014). The Trademark
Examining Attorney has discretion in determining the degree of particularity that
is needed to clearly identify the goods or services and to classify them under the
international system of classification that has been adopted by the Trademark
Office. In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)
(“It is within the discretion of the PTO to require that one’s goods be identified with
particularity.”).
The easiest way to determine, in the cases at hand, the operative description
of services is to review the sequence of amendments. In this analysis, we follow the
procedure set forth in the TMEP § 1402.07(e).
Once an applicant amends the identification of goods
and/or services in a manner that is acceptable to the
examining attorney, the amendment replaces all previous
identifications and restricts the scope of goods/services to
that of the amended language. Further amendments that
would add to or expand the scope of the recited goods or
services, as amended, will not be permitted. In re Swen
Sonic Corp., 21 USPQ2d 1794 (TTAB 1991); In re M.V Et
Associes, 21 USPQ2d 1628 (Comm’r Pats. 1991).

A. The original identification of services.
As indicated above, applicant originally sought to register its mark for the
following services:
Computer services, namely, remote and on-site
management of cloud computing systems and
Serial No. 85977085
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applications, and management of data backup, recovery
and storage; Cloud computing featuring software for use
in database management, document management, data
management, and electronic messaging management;
Providing electronic devices for accessing and using a
cloud computer network, in Class 42.
The Trademark Examining Attorney required that the original identification
of services be amended because “[t]he wording ‘management of data backup,
recovery and storage’ in the identification of services must be clarified because it is
too broad and could include services in other international classes.”5
B. July 25, 2012 amendment.
In its July 25, 2012 response to Office action, applicant amended the
identification of services to read as follows:
Computer services, namely, remote and on-site
management of cloud computing systems and applications
of others, remote online backup of computer data, and
recovery of computer data; Cloud computing featuring
software for use in database management, document
management, data management, and electronic
messaging management.
In the August 28, 2012 Office action the Trademark Examining Attorney
withdrew the requirement that applicant must “clarify” the identification of
services.
● Current Status:
* * *
Based on applicant’s Response, the examining attorney
WITHDRAWS the requirement to clarify the

5 February 22, 2012 Office action.
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identification of services and to provide an appropriate
Specimen.6
However, later in the August 28, 2012 Office action, the Trademark Examining
Attorney referenced applicant’s identification of services as it was set forth in
applicant’s July 25, 2012 amendment. Thus, the Trademark Examining Attorney
did not technically withdraw the requirement to clarify the previous identification
of services; rather, she accepted the proposed amendment. Therefore, it would have
been more accurate for the Trademark Examining Attorney to have said that the
requirement has been satisfied.
To be clear, there was no further requirement that applicant amend or
otherwise clarify its identification of services in the August 28, 2012 Office action,
and the operative identification of services as of the July 25, 2012 amendment reads
as follows:
Computer services, namely, remote and on-site
management of cloud computing systems and applications
of others, remote online backup of computer data, and
recovery of computer data; Cloud computing featuring
software for use in database management, document
management, data management, and electronic
messaging management.
C. February 21, 2013 amendment.
In its February 21, 2013 response to Office action, applicant wrote:
… to further distinguish Applicant’s services from those
goods/services set forth in each of the Cited Registrations,

6 In her March 25, 2013 Office action, the Trademark Examining Attorney repeated that in
her August 28, 2012 Office action, she withdrew her previous requirement that applicant
clarify its identification of services.
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Applicant has clarified its identification of services in
Class 42 as follows:
* * *
Proposed Amendment to Identification of Services
International Class 42: ‘Computer services, namely, local
and remote online backup, recovery and encryption of
computer data via an external hard drive and via cloud-
based servers for others.’” (Emphasis in the original).
The Trademark Examining Attorney refused to accept the above-noted
amendment “because the following wording refers to services that are not within
the scope of the identification that was set forth in the application at the time of
filing: ‘Computer services, namely local …backup, recovery and encryption of
computer data via an external hard drive and via cloud-based servers for others.’
See 37 C.F.R. §2.71(a). This wording is beyond the scope of the original wording
because “local” is not encompassed by the term “remote” in the identification, and
“encryption” is not encompassed by the identification.”7
After refusing to accept the proposed identification of services as discussed
above, the Trademark Examining Attorney wrote the following:
Applicant may proceed with the following identification, if
accurate:
“Computer services, namely, remote and on-site
management of cloud computing system and applications
of others, remote online backup of computer data, and
local and remote recovery of computer data” in Class
42.

7 March 25, 2013 Office action.
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We interpret this to mean that the operative identification of services is the
identification of services from the July 25, 2012 amendment, but that applicant may
also select the above-noted identification of services if it is accurate.
Since the proposed identification of services was not accepted, according to
TMEP § 1402.07(e) we must revert back to the last acceptable identification of
services (i.e., that from the July 25, 2012 response to Office action). The operative
identification of services continues to read as follows:
Computer services, namely, remote and on-site
management of cloud computing systems and applications
of others, remote online backup of computer data, and
recovery of computer data; Cloud computing featuring
software for use in database management, document
management, data management, and electronic
messaging management.
D. September 25, 2013 amendment.
In its September 25, 2013 response to Office action, applicant again
attempted to amend the identification of services, to read as follows:
Computer services, namely, remote and on-site
management of applications and data of others via a cloud
computing system, excluding applications in the field of
geophysical exploration for oil and gas and other minerals
and geophysical data gathering services, remote online
backup of computer data, and local and remote recovery of
computer data.
The Trademark Examining Attorney refused to accept the September 25,
2013 amendment to the identification of goods for the following reason:
… it exceeds the scope of the original identification. In
particular, the addition ‘and data’ is not part of the
identification “Computer services, namely, remote
and on-site management of cloud computing
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systems and applications of others, remote online
backup of computer data, and recovery of computer
data.” Applicant argues that the “management” of “data”
is covered by “backup and recovery of data.” However,
“management” is broader than mere “Backup and
recovery,” as it encompasses concepts such as “data
security” and “data warehousing” and how to create
policies stating how the data backup and recovery will
occur.”8 (Emphasis in the original).

However, the Trademark Examining Attorney appears to have accepted the limiting
language “excluding applications in the field of geophysical exploration for oil and
gas and other minerals and geophysical data gathering services” because she did
not reject it.
Accordingly, the last identification of goods which the Trademark Examining
Attorney approved was from the July 25, 2012 response to Office action with the
addition of the exclusionary language from the September 13, 2013 amendment.
Thus, the last operative identification of services reads as follows:
Computer services, namely, remote and on-site
management of cloud computing systems and applications
of others, excluding applications in the field of geophysical
exploration for oil and gas and other minerals and
geophysical data gathering services, remote online backup
of computer data, and recovery of computer data; Cloud
computing featuring software for use in database
management, document management, data management,
and electronic messaging management.
E. Analyzing the identification of services.
At issue is whether applicant’s addition of the term “and data” to the July 25,
2012 amendment to the identification of services would be an impermissible

8 October 22, 2013 Office action.
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expansion. According to the July 25, 2012 amendment, the identification of services
reads as follows:
Computer services, namely, remote and on-site
management of cloud computing systems and applications
of others, remote online backup of computer data, and
recovery of computer data; Cloud computing featuring
software for use in database management, document
management, data management, and electronic
messaging management.
With the addition of the term “and data” and the exclusionary language from the
September 25, 2013 amendment, the identification of services reads as follows
(emphasis added):
Computer services, namely, remote and on-site
management of cloud computing systems and applications
and data of others, excluding applications in the field of
geophysical exploration for oil and gas and other minerals
and geophysical data gathering services, remote online
backup of computer data, and recovery of computer data;
Cloud computing featuring software for use in database
management, document management, data management,
and electronic messaging management.
The Trademark Examining Attorney contends that the addition of the term
“and data” is impermissible because “‘data’ is broader than mere ‘applications.’ In
fact, ‘data management’ can encompass ‘the development and execution of
architectures, policies, practices and procedures that properly manage the full data
lifecycle needs of an enterprise.’”9
We interpret the phrase “remote and on-site management of cloud computing
systems and applications and data of others” to mean (1) remote and on-site

9 Trademark Examining Attorney’s Brief, p. 5 (unnumbered).
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management of cloud computing systems of others, (2) remote and on-site
management of applications of others, and (3) remote and on-site management of
data of others. Thus, the addition of “and data” to the above-noted identification of
services is an impermissible expansion of the services.
In reaching this conclusion, we realize that “cloud computing” is defined as a
“method of running application software and storing related data in central
computer systems and providing customers or other users access to them through
the Internet.”10 This means that cloud computing encompasses the management of
data as part of managing a cloud computing system. However, the identification of
services at issue is the remote and on-site management of data of others separate
and apart from a cloud computing system.
In view of the foregoing, the operative identification of services reads as
follows:
Computer services, namely, remote and on-site
management of cloud computing systems and applications
of others, excluding applications in the field of geophysical
exploration for oil and gas and other minerals and
geophysical data gathering services, remote online backup
of computer data, and recovery of computer data; Cloud
computing featuring software for use in database
management, document management, data management,
and electronic messaging management.

10 "Cloud computing," ENCYCLOPAEDIA BRITANNICA (2014). The Board may take judicial
notice of information from encyclopedias. In re White Jasmine LLC, 106 USPQ2d 1385,
1392 n.24 (TTAB 2013); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La
Michoacana Inc., 98 USPQ2d 1921, 1934 n.6 (TTAB 2011). See also DICTIONARY OF
COMPUTER AND INTERNET TERMS, p. 94 (11th ed. 2013) (cloud computing does
“document storage, and other kinds of work.”).
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II. Likelihood of Confusion
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 proceedings now before us, will be considered
in this decision.
We focus the likelihood of confusion analysis on Registration No. 3974053 for
the mark HALOTEQ for “computer services, namely, remote and on-site
management of the information technology (IT) cloud computing systems of others;
computer services, namely, remote management of the information technology (IT)
systems of others; hosting the web sites of others; planning, design and
implementation of virtualization technologies for enterprises and businesses;
website development for others.” This registration is for services that, when
considered vis-à-vis the applied-for mark and identified services, is most likely to
support a finding of likelihood of confusion. If there is no likelihood of confusion
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between applicant’s mark and HALOTEQ, then there would be no likelihood of
confusion with the other cited marks with more remote services. See, e.g., In re Max
Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
A. The similarity or dissimilarity and nature of the services.
Applicant is seeking to register its mark for the following services (emphasis
added):
Computer services, namely, remote and on-site
management of cloud computing systems and
applications and data of others, excluding applications in
the field of geophysical exploration for oil and gas and
other minerals and geophysical data gathering services,
remote online backup of computer data, and recovery of
computer data; Cloud computing featuring software for
use in database management, document management,
data management, and electronic messaging
management.
The services in the cited registration are set forth below (emphasis added):
Computer services, namely, remote and on-site
management of the information technology (IT)
cloud computing systems of others; computer services,
namely, remote management of the information
technology (IT) systems of others; hosting the web sites of
others; Planning, design and implementation of
virtualization technologies for enterprises and businesses;
website development for others.”
The services are in part identical. Under this du Pont factor, the Trademark
Examining Attorney need not prove, and we need not find, similarity as to each and
every activity listed in the Class 42 identification of services. It is sufficient for a
refusal based on likelihood of confusion that relatedness is established for any item
encompassed by the identification of services in the application. Tuxedo Monopoly,
Serial No. 85977085
Serial No. 85977086

16

Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981);
Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB 2007).
B. The established, likely-to-continue channels of trade and classes of
consumers.

Because the services described in the application and cited registration are in
part identical, we must presume that the channels of trade and classes of
purchasers are the same. See 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). 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).
C. The similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression and the number
and nature of similar marks in use in connection with similar services.

We turn now 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., 177
USPQ at 567. 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 “[t]he proper test is not a side-by-side
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17

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)
(citation omitted). See also 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 USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No.
92-1086 (Fed. Cir. June 5, 1992).
We also note that where, as here, the services are in part 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).
Applicant’s marks are HALO, in standard character form, and HALO and
design, shown below:

The dominant element of applicant’s composite mark is the word “Halo.” 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.
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Serial No. 85977085
Serial No. 85977086

19

rational reasons, more or less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on a consideration of the marks in
their entireties).
Registrant’s mark is HALOTEQ. The word “Halo” is the dominant element of
registrant’s mark because the term “Teq” would be viewed as an abbreviation for
information technology in registrant’s identification of services. As shown above by
registrant’s use of its mark, HALOTEQ is “Technology Heaven.” In addition, the
websites attached to the March 25, 2013 Office action show the use of “Teq” as an
abbreviation for technology:
1. TeqWorks website (teqworks.com). The website displays the
advertising tagline “Making IT Work” used to describe the company’s technical
support and managed IT support services. The company asserts that it “will be
referred to as your technical support and solutions provider.”;
2. TeqServices website (teqservices.com) advertising “a strategically
designed team of technical experts that makes complex data easy, taking databases
of information and turning them into flexible, safe and intuitive web-based systems
for organizations;
3. TeqCorner website (teqcorner.com) advertising, inter alia, wireless IT
solutions and services and virtual office solutions; and
4. C-Teq Data Consultants described in a June 14, 2013 posting on the
Reuters (US) website (reuters.com) as “full-service, e-discovery service provider
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specializing in forensic collection, early data assessment, litigation readiness
planning and data processing.”
It is well-settled that descriptive matter may have less significance in
likelihood of confusion determinations. 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., 105 F.3d 1405, 1407, 41
USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (where the word “Delta” is dominant
portion of both marks, neither the design element nor the generic term “cafe”
offered sufficient distinctiveness to create a different commercial impression).
The significance of the word “Halo” as the dominant element of registrant’s
mark is further reinforced by its location as the first part of the mark. See Hercules
Incorporated v. National Starch and Chemical Corporation, 223 USPQ 1244, 1246
(TTAB 1984) (NATROL is similar to NATROSOL in part because “the clearly
dominant aspect of both marks is that the first four letters and the final two are the
same.”). See also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most
prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word
in the mark and the first word to appear on the label); Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992)
(upon encountering the marks, consumers will first notice the identical lead word);
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Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)
(“[I]t is often the first part of a mark which is most likely to be impressed upon the
mind of a purchaser and remembered”).
HALO is similar to HALOTEQ because HALOTEQ engenders the commercial
impression of HALO brand technology. Thus, HALOTEQ used in connection with
cloud computing systems is similar to HALO used in connection with the same
services. In its brief, applicant relies heavily on the non-precedential case In re
Angel Computer Network Services, Inc. (Serial No. 77438719) (TTAB 2013) arguing
that under similar factual circumstances the Board found that ANGEL
COMPUTER NETWORK SERVICES, INC. and design was not likely to cause
confusion with ANGELPC and design. However, in Angel Computer, the Board
found that the marks engendered sufficiently different commercial impressions,
thus, tilting the balance toward no likelihood of confusion, whereas in the case
before us, we find that the marks engender similar commercial impressions. In
short, HALO is a more significant common element in these cases than ANGEL was
in that case.
In its February 21, 2013 response to an Office action, applicant submitted
copies of 17 third-party registrations comprising marks with the word “Halo” in
connection with computer hardware and software arguing that this “establishes
that the consuming public is commonly exposed to use of similar marks in the fields
of computer- and software-related goods and services, and ‘is relevant to show that
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a mark is relatively weak and entitled to only a narrow scope of protection.’”13
“[S]light differences between the marks and/or differences among the goods/services
will be enough to prevent consumer confusion.”14
Under this du Pont factor, we consider evidence pertaining to the number
and nature of similar marks in use in connection with similar services. “The
purpose of a defendant introducing third party uses is to show that customers have
become so conditioned by a plethora of such similar marks that customers ‘have
been educated to distinguish between different [such] marks on the bases of minute
distinctions.’” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 73 USPQ2d at 1694, quoting Veuve Clicquot Ponsardin v. Palm Bay
Imports, Inc., Opp'n No. 115,438, 2000 WL 21953664 (TTAB Aug. 4, 2003). See also
Nat’l Cable Television Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-
80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991).
While the third-party registrations prove that such marks have been
registered by others, the registrations are not evidence of the extent of any use or
the market impact any of the marks may have made upon consumers. “The
probative value of third-party trademarks depends entirely upon their usage.”
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73
USPQ2d at 1693. 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

13 Applicant’s Brief, pp. 12-13.
14 Applicant’s Brief, p. 13.
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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).
[I]t would be sheer speculation to draw any inferences
about which, if any of the marks subject of the third party
(sic) registrations are still in use. Because of this doubt,
third party (sic) registration evidence proves nothing
about the impact of the third-party marks on purchasers
in terms of dilution of the mark in question or
conditioning of the purchasers as to their weakness in
distinguishing source.
In re Hub Distributing, Inc., 218 USPQ at 286. See also Olde Tyme Foods Inc. v.
Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992) (“As to
strength of a mark, however, registration evidence may not be given any weight”).
Third-party registrations may be used in the manner of a dictionary to show
that mark or a portion of a mark is descriptive or suggestive of goods and services.
In re Toshiba Medical Systems Corp., 91 USPQ2d 1266, 1270 (TTAB 2009); In re
Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006) (“[T]hird-party
registrations can be used in the manner of a dictionary definition to illustrate how a
term is perceived in the trade or industry”); In re J.M. Originals Inc., 6 USPQ2d
1393, 1394 (TTAB 1987) (“[T]hird party registrations are of use only if they tend to
demonstrate that a mark or a portion thereof is suggestive or descriptive of certain
goods and hence is entitled to a narrow scope of protection”).
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However, with the exception of the third-party registrations, applicant has not
submitted, nor have we found, any evidence to support how or why the word “Halo”
has any suggestive or descriptive meaning when used in connection with computer
hardware or software or specifically cloud computing. Based on the third-party
registrations, applicant is asking us to infer that the word “Halo” has suggestive
significance in the field of computer hardware, software or cloud computing. But
the suggestive significance is not apparent.
In our attempt to understand why “Halo” has suggestive significance when
used in connection with computer hardware, software or cloud computing, we have
found an explanation of the derivation of cloud computing.
The origin of the expression cloud computing is obscure,
but it appears to derive from the practice of using
drawings of stylized clouds to denote networks in
diagrams of computing and communications systems. The
term came into popular use in 2008, though the practice
of providing remote access to computing functions
through networks dates back to the mainframe time-
sharing systems of the 1960s and 1970s.15
Our best conjecture is that the connection between the word “Halo” and cloud
computing is that clouds denote computer networks in cyberspace, angels reside in
the clouds, and angels wear halos. Because the term “Halo” does not directly convey
any information about a cloud computing system and we must utilize a multistep
reasoning process to connect the word “Halo” to cloud computing systems, we are
left with the distinct impression that the word “Halo” is an inherently distinctive

15 "Cloud computing," Encyclopaedia Britannica (2014). See also Dictionary of
Computer and Internet Terms, p. 94 (11th ed. 2013) (“everything is ‘off in the clouds.’”).

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mark when used in connection with computer hardware, software or cloud
computing notwithstanding the various third-party registrations for marks
including that term.
In our consideration of the third-party registrations, we note that applicant’s
mark is closer to the cited registration than any of the third-party registrations that
have been made of record. Even assuming that the word “Halo” is suggestive and is
entitled to only a narrow scope of protection or exclusivity of use, it is entitled to the
presumptions granted a registration on the Principal Register under Section 7(b) of
the Trademark Act, 15 U.S.C. § 1057(b) (i.e., prima facie evidence of the validity of
the registered mark, opposer’s ownership of the mark, and opposer’s exclusive right
to use the mark in commerce on or in connection with the services specified in the
certificate of registration). As has often been stated, likelihood of confusion is to be
avoided as much between “weak” marks as between “strong” marks, and as between
“weak” and “strong” marks. See King Candy Company v. Eunice King's Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA, 1974); In re Industrial Expositions,
Inc., 194 USPQ 456, 459 (TTAB 1977).
In view of the foregoing, we find that applicant’s marks HALO and
are similar to HALOTEQ in terms of appearance, sound, connotation and
commercial impression.
D. Degree of consumer care.
Applicant argues that the relevant consumers will exercise a high degree of
care.
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Registrants offer costly and highly technical products and
services that have the capacity to replace, protect and/or
improve a company’s IT infrastructure. As such, the
target consumers for [the services in] each of the Cited
Registrations are businesses and industries with
appreciable assets. Applicant’s services, on the other
hand, are services for personal computing backup and
recovery. Any potential consumer confusion is highly
diminished because the consumers of [the services in]
each of the Cited Registrations do not purchase on
impulse and the channels of trade are distinct.16
Applicant’s argument focuses on the different classes of consumers for
registrant’s services and applicant’s services. However, those differences in the
classes of consumers are not reflected in the respective identifications of services
which are in part identical. We cannot resort to such extrinsic evidence to restrict
the classes of consumers for applicant’s or 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). We must
presume that both applicant’s and registrant’s services will be sold to the same
classes of consumers and through the same channels of trade.
On this record, the most we can say is that due to the importance and
complexity of cloud computing services to the purchaser, engaging such a service
provider would not be made on impulse. The real question, though, is even if care is
exercised, are consumers likely to distinguish between the marks? As the Board
has often noted, even consumers who exercise a high degree of care are not

16 Applicant’s Brief, p. 24.
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necessarily knowledgeable regarding the trademarks at issue and, therefore,
immune from source confusion. In re Wilson, 57 USPQ2d 1863, 1865-1866 (TTAB
2001). In these cases, as we have discussed, the marks are similar and the services
are in part identical. Thus, while the sophistication of buyers and purchaser care
may be relevant considerations, they are not controlling on this factual record.
E. Miscellaneous factors.
Applicant argues that it “has received numerous Notices of Allowance for
marks incorporating the term ‘HALO’ in classes 9 and 42,” including Serial No.
85250451 for the mark HALO2CLOUD and design for “communications software for
connecting computers to offsite storage, namely, cloud computing systems for
database management, document management, and data management” in Class
9.17 However, applicant’s other applications were not made of record during the
prosecution of this application and, therefore, can be given no consideration.
Moreover, because applicant’s other applications have not registered, they do not
have any probative value. Pending applications are incompetent to prove anything
other than the fact that they were filed. Nike Inc. v. WNBA Enterprises LLC, 85
USPQ2d 1187, 1193 n.8 (TTAB 2007); Interpayment Services Ltd. v. Docters &
Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003); In re Juleigh Jeans Sportswear,
Inc., 24 USPQ2d 1694, 1699 (TTAB 1992).

17 Applicant’s Brief, pp. 13-14.
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F. Balancing the factors.
Because the marks are similar, the services are in part identical and there is
a presumption that the services move in the same channels of trade and are sold to
the same classes of consumers, we find that applicant’s marks HALO and for
“computer services, namely, remote and on-site management of cloud computing
systems and applications of others, remote online backup of computer data, and
recovery of computer data; cloud computing featuring software for use in database
management, document management, data management, and electronic messaging
management” are likely to cause confusion with the mark HALOTEQ for “computer
services, namely, remote and on-site management of the information technology
(IT) cloud computing systems of others; computer services, namely, remote
management of the information technology (IT) systems of others; hosting the web
sites of others; planning, design and implementation of virtualization technologies
for enterprises and businesses; website development for others.”
Decision: The refusals to register are affirmed.

Mermelstein, Administrative Trademark Judge, concurring:
While I agree with my colleagues’ conclusion on both of the ultimate issues
raised on appeal, I approach the question of applicant’s identification of services
somewhat differently. I write separately to explain my views.

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I
As noted by the majority, an identification of goods or services may be
amended to clarify or limit the services previously identified, but an applicant may
not amend its identification to expand the goods or services as originally filed or as
amended. Once a good or service is deleted from an application, it may not be
restored by a subsequent amendment. Trademark Rule 2.71(a); In re Swen Sonic
Corp., 21 USPQ2d 1794, 1795-96 (TTAB 1991). But what is the effect of a proposed
amendment that is unacceptable because it seeks to broaden the currently-
identified goods or services or for some other reason? The answer, according to the
Trademark Manual of Examining Procedure, is “nothing”:
If the applicant proposes an amendment to the
identification of goods and services, and the examining
attorney determines that the amendment is unacceptable,
the examining attorney should refer to the identification
of goods before the proposed amendment to determine
whether any later amendment is within the scope of the
identification. In such a case, the applicant is not bound
by the scope of the language in the proposed amendment
but, rather, by the language of the identification before
the proposed amendment.
TMEP § 1402.07(d).
Thus if the goods were originally stated to be “hats,” and an amendment is
filed to change “hats” to “fedoras,” the amendment would be acceptable (fedoras
being a kind of hat), and the application would thereafter be limited to “fedoras.” A
subsequent amendment seeking to change “fedoras” to “bowlers” would not be
acceptable (while bowlers are a kind of hat, bowlers are not a kind of fedora).
Moreover, our hypothetical amendment seeking to change “fedoras” to “bowlers”
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would not limit the application to the subset of fedoras which are also bowlers; such
goods do not exist. Rather, because the replacement of “fedoras” with “bowlers”
would broaden the identification, the amendment has no effect, and the
identification of goods remains “fedoras,” as it was before the attempted
amendment.
But what if part of the amendment is acceptable, and part is unacceptable?
The TMEP also discusses that situation:
If the applicant submits an amendment to the
identification of goods and services, and the examining
attorney determines that it is unacceptable, in whole or in
part, the examining attorney must advise the applicant of
the item or items that are unacceptable. For those items
which are unacceptable, the examining attorney should
also advise the applicant that the previous items listed in
the existing identification (not the unacceptable
substitute) remain operative for purposes of future
amendment. If portions of an amended identification are
accepted, those items may not be further amended to
exceed the scope of the accepted amendment.
Id. (emphasis added).
So, the TMEP advises that an identification may be accepted in part and
rejected in part. If, and to the extent that it is accepted, the amendment restricts
the scope of the identification as originally filed or as subsequently amended. By
contrast, the identification remains unchanged with respect to “items” in an
amendment that are unacceptable for some reason.
II
In this case, the services were originally stated as follows:
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Computer services, namely, remote and on-site
management of cloud computing systems and
applications, and management of data backup, recovery
and storage; Cloud computing featuring software for use
in database management, document management, data
management, and electronic messaging management;
Providing electronic devices for accessing and using a
cloud computer network.
A
In her first Office action, the examining attorney (among other things)
refused registration under Trademark Act § 2(d) and required clarification of the
identification of services, which the examining attorney said was indefinite. In its
response, applicant included the following amendment to its identification:
Computer services, namely, remote and on-site
management of cloud computing systems and
applications, and management of data backup, recovery
and storage; Computer services, namely, remote and on-
site management of cloud computing systems and
applications of others, remote online backup of computer
data, and recovery of computer data; Cloud computing
featuring software for use in database management,
document management, data management, and electronic
messaging management; Providing electronic devices for
accessing and using a cloud computer network;
Response to Office Action (July 2012) (stricken wording was to be removed and
underlined wording was to be added). Although it could and should have been
stated more clearly, I conclude—as do my colleagues—that the examining attorney
accepted this amendment. The identification thus stood as follows:
[1] Computer services, namely, remote and on-site
management of cloud computing systems and applications
of others, remote online backup of computer data, and
recovery of computer data; [2] Cloud computing featuring
software for use in database management, document
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management, data management, and electronic
messaging management
This identification consists of two clauses, separated by a semicolon. (I have
numbered the clauses for ease of reference, but the numbers are not part of the
identification.).
B
Although the examining attorney identified no defect in the identification as
amended in July 2012, she maintained the § 2(d) refusal in a second non-final Office
action. In response, applicant voluntarily submitted another amendment:
[1] Computer services, namely, remote and on-site
management of cloud computing systems and applications
of others, remote online backup of computer data, and
recovery of computer data; Computer services, namely,
local and remote online backup, recovery and encryption
of computer data via an external hard drive and via cloud-
based servers for others; [2] Cloud computing featuring
software for use in database management, document
management, data management, and electronic
messaging management.
Response to Office action (Feb. 2013). Among other things, this amendment
changed clause [1] by adding “local” and “encryption.” And critically, clause [2] was
stricken and not replaced.
C
The examining attorney found the February 2013 amendment unacceptable
because of the noted additions to the first clause. Final Office action (March 2013).
Nonetheless, it appears that the deletion of clause [2] was accepted, although this
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too, unfortunately, was never clearly stated.18 In a discussion of the § 2(d) refusal
and in a suggested amendment to clause [1] (to cure the problem with “local” and
“encryption”), the examining attorney’s references to the identification of services
did not include clause [2]. Rather, the identification she referred to was clause [1] of
the July 2012 amendment:
[1] Computer services, namely, remote and on-site
management of cloud computing systems and applications
of others, remote online backup of computer data, and
recovery of computer data.
Thus it seems to me that the examining attorney in fact accepted the
amendment (without actually saying so) to the extent it deleted clause [2], but
(explicitly) rejected the amendment as to clause [1]. Applicant’s omission of clause
[2] from the February 2013 amendment thus limited the identification as it had
been previously amended in July 2012. But the services in clause [1] were
unaffected, because the examining attorney found the proposed amendment
unacceptable. This seems largely consistent with the guidance set out in TMEP
§ 1402.07(d), although the examining attorney did not “advise the applicant that the
previous items listed in the existing identification . . . remain operative for purposes
of future amendment.” Id. Therefore I conclude that clause [2] was deleted by the
February 2013 amendment.

18 The examining attorney says in her brief that she “accepted” this deletion, but the Final
Office action did not explicitly accept or even note the deletion of clause [2]. It would
obviously be preferable where there is potential confusion as to the operative identification
of goods for an examiner to set forth the then-operative identification in each Office Action.
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D
Finally, in September 2013, applicant filed a request for reconsideration, and
again attempted to amend its identification of services, proposing the following
changes:
[1] Computer services, namely, local and remote online
backup, recovery and encryption of computer data via an
external hard drive and via cloud-based servers for
others; Computer services, namely, remote and on-site
management of applications and data of others via a cloud
computing system, excluding applications in the field of
geophysical exploration for oil and gas and other minerals
and geophysical data gathering services, remote online
backup of computer data, and local and remote recovery of
computer data.
Once again, the examining attorney found the amendment unacceptable, this
time because the wording “and data” was said to broaden the previously-identified
services. Oct. 2013 Office action (denying reconsideration). Although this Office
action was terse, it appears from the examining attorney’s brief that this
amendment was rejected in its entirety, again leaving the identification as set out
in clause [1] of the July 2012 amendment.
My colleagues conclude that the examining attorney accepted (without
explicitly saying so) applicant’s limitation “excluding applications in the field of
geophysical exploration . . . .” I disagree. In her October 2013 denial of applicant’s
request for reconsideration, the examining attorney rejected the amendment and
added this paragraph:
However, while the exclusion of “the field of geophysical
exploration for oil and gas and other minerals and
geophysical data gathering services” in the proposed
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amendment may impact the likelihood of confusion
analysis with respect to the likelihood of confusion
refusals, the amendment would not obviate confusion
with respect to the remaining two cited registrations.
(emphasis added.) This paragraph is written tentatively: the “geophysical”
limitation “may impact” the analysis and “the amendment would not obviate
confusion.” I do not understand this language to signal acceptance of the proposed
limitation. Rather, I interpret this passage to mean only that even if applicant’s
amendment were accepted, the examining attorney’s refusal of registration under
Trademark Act § 2(d) would be well-founded. Moreover, in her brief, the examining
attorney does not include the “geophysical” limitation in the services that she
argues should be the focus of this appeal. Ex. Att. Br. at 9 (unnumbered).
The examining attorney’s reasoning for not accepting this limitation is not
stated in the denial of reconsideration or in her brief. It may be that she construed
the proposed amendment as a single “item[ ] which [is] unacceptable,” as that
language is used in TMEP § 1402.07(d). It seems clear that clause [2], deleted
earlier, was separable from the unacceptable amendment to clause [1]—the two
clauses were separated by a semicolon. But it is less clear that the “geophysical”
limitation is separate from the rest of the September 2013 proposed amendment,
which was deemed unacceptable. Whatever the reason, I conclude that the
“geophysical” limitation was not accepted and does not limit the current
identification of goods.

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III
For the reasons stated, I conclude that the “current” identification of services
is (still) clause [1] of the July 2012 amendment:
Computer services, namely, remote and on-site
management of cloud computing systems and applications
of others, remote online backup of computer data, and
recovery of computer data.
The first question on appeal is whether the following amendment (proposed
September 2013) is acceptable:
Computer services, namely, remote and on-site
management of applications and data of others via a cloud
computing system, excluding applications in the field of
geophysical exploration for oil and gas and other minerals
and geophysical data gathering services, remote online
backup of computer data, and local and remote recovery of
computer data.
The second question is whether there is a likelihood of confusion with the
cited registrations.
Although I disagree with my colleagues in the majority as to the current state
of applicant’s identification of services, it makes no difference in the outcome on
either question on appeal. Judge Bergsman’s analysis of whether “and data” in
applicant’s latest proposed amendment broadens the current identification does not
depend on either the now-deleted clause [2] or the “geophysical” limitation from the
September 2013 proposed amendment, and I agree with his conclusion; applicant’s
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proposed September 2013 amendment would impermissibly broaden the services as
they now stand.19
As for the examining attorney’s refusal to register under Trademark Act
§ 2(d), I likewise concur with Judge Bergsman’s analysis. Although we come to
differing conclusions on other parts of the identified services, the majority opinion
again does not depend in any way on clause [2] or the “geophysical” limitation. As
noted in my colleague’s thorough opinion, services recited in applicant’s clause [1]
(on which we all agree) are virtually identical to services set out in the cited
registration. Moreover, the rest of the du Pont analysis is not affected by our
disagreement, and I fully join the majority’s analysis of the likelihood of confusion.
Whatever else may—or may not—be included in applicant’s current identification of
services is not particularly important here; if confusion is found likely as to any of
applicant’s services, the refusal must be affirmed. Tuxedo Monopoly v. Gen’l Mills
Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
.oOo.

19 I note that this case is somewhat unusual in one respect: Our affirmance of the
examining attorney’s rejection of the September 2013 proposed amendment is not in itself
grounds for refusal of registration. The amendment was voluntary, and not the result of a
requirement to amend. Applicant already had an acceptable identification of services, and
its unsuccessful attempt to amend merely left the identification as it was.