Job Search Television Network, Inc.v.Digi.me Limited

Trademark Trial and Appeal Board

Sep 15, 2020

92066851 (T.T.A.B. Sep. 15, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 15, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Job Search Television Network, Inc.
v.
Digi.me Limited
_____

Cancellation No. 920668511
_____

Alain Villeneuve of Duane Morris LLP,
for Job Search Television Network, Inc.
Austen Zuege, Z. Peter Sawicki and Amanda Prose of Westman, Champlin &
Koehler, P.A., for Digi.me Limited.
_____

Before Zervas, Bergsman and Greenbaum,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Respondent Digi.me Limited (“Digi.me”) owns a registration on the Principal
Register for the mark DIGI.ME (in standard characters) for
Computer software for creation of an archive of a user’s
social media, on-line, off-line and life-logging information

1 The Board consolidated Opposition No. 91238260 and Cancellation No. 92066851 on
February 22, 2018, deeming the Opposition the “parent” case in which all papers should be
filed. 5 TTABVUE. Although, as we explain below, we are issuing separate decisions in each
proceeding, references in this decision to the pleadings, the evidence of record and the parties’
briefs refer to the Board’s TTABVUE docket system in Opposition No. 91238260, unless
otherwise noted. Coming before the designation TTABVUE is the docket entry number; and
coming after this designation are the page or paragraph references, if applicable.
Cancellation No. 92066851
- 2 -

technology activity; computer software for providing
permission access to user’s life data for convenience,
service or reward, in International Class 9.2
Petitioner Job Search Television Network, Inc. (“JSTN”) seeks to cancel Digi.me’s
registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), asserting
priority and a likelihood of confusion with JSTN’s mark DIGI-ME (in standard
characters), registered on the Principal Register for
Providing a website featuring technology that enables
recruiters and hiring managers to manage hiring and
disseminate job opportunities and company information;
platform as a service (PAAS) featuring computer software
platforms for employee hiring and tracking in the field of
human resources management and recruitment, in
International Class 42.3
As a second ground for cancellation, JSTN asserts that Digi.me’s mark DIGI.ME
is merely descriptive of the identified goods under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. § 1052(e)(1).
In its Answer, Digi.me “admits that [JSTN] is the Registrant of Record” of the
pleaded registration for the identified services (4 TTABVUE 3 ¶ 1, Cancellation No.
92066851), and otherwise denies the salient allegations of the Petition to Cancel.4

2 Registration No. 5248371 issued on July 25, 2017 under Section 44(e) of the Trademark Act,
15 U.S.C. § 1126(e), based on United Kingdom Registration No. 3067001. The application
underlying the U.S. registration was filed on August 4, 2014 under Section 44(d) of the
Trademark Act, 15 U.S.C. § 1126(d), based on concurrently filed United Kingdom Application
No. 3067001.
3 Registration No. 4934801 issued on April 12, 2016. JSTN bases its claim of priority and
likelihood of confusion solely on this pleaded registration, which was filed on February 27,
2014. 52 TTABVUE 141 (JSTN’s Supplemental Response to Digi.me’s Interrogatory No. 31).
4 The February 22, 2018 Board Order dismissed JSTN’s alternative claims of non-ownership
and abandonment, and both of Digi.me’s putative affirmative defenses (estoppel and that
JSTN’s pleaded mark DIGI-ME is descriptive). 5 TTABVUE 6-10.
Cancellation No. 92066851
- 3 -

I. Preliminary Matters-Separate Decisions in Previously Consolidated
Cases
As noted above, the Board consolidated Opposition No. 91238260 and Cancellation
No. 92066851. 5 TTABVUE. Although the parties rely on the same record for both
proceedings, the opposition and cancellation present different issues primarily due to
the differences in Digi.me’s two marks (DIGITAL ME and DIGI.ME) with attendant
different analyses and presumptions, and because there is only evidence of use of
Digi.me’s DIGI.ME mark. Indeed, the arguments vary sufficiently such that Digi.me
filed separate Briefs and JSTN filed separate Rebuttal Briefs in each proceeding.
Thus, while consolidation might have saved the parties time, effort and expense, it is
more efficient and straightforward to issue separate decisions in each proceeding.
II. Accelerated Case Resolution (“ACR”)
On February 17, 2020, after discovery closed, the parties filed a Joint Stipulation
to resolve this case by the ACR procedure described in Sections 528.05(a)(2), 702.04
and 705 of the TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
(“TBMP”) (2020). 47 TTABVUE. The stipulated ACR procedure approximates cross-
motions for summary judgment and accompanying evidentiary submissions. The
Joint Stipulation includes agreements about: the admissibility of certain evidence,
including that the file histories of the involved application and registration “are
automatically made part of the record for the ACR proceeding without any action by
the parties” (47 TTABVUE 3 ¶ 6); evidentiary objections; page limitations and
Cancellation No. 92066851
- 4 -

schedules for submission of the parties’ Briefs and Rebuttal Briefs;5 and consent for
the Board to resolve all disputed issues of material fact and to render a final decision
based on the briefs and evidence.6 The Board approved the Joint Stipulation on
February 20, 2020. 48 TTABVUE.
“Because a trademark owner’s certificate of registration is ‘prima facie evidence of
the validity of the registration,’” JSTN, as the petitioner seeking cancellation of the
registration, bears the burden of proof and must establish its grounds for cancellation
by a preponderance of the evidence.7 Cerveceria Centroamericana, S.A. v. Cerveceria
India, Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989); see also On-Line
Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1476 (Fed. Cir.
2000).

5 The parties agreed that each would submit their ACR Brief 30 days from the date on which
the ACR proceeding was instituted, and each would submit their Rebuttal Brief 21 days
thereafter, i.e., 51 days from the date on which the ACR proceeding was instituted. 47
TTABVUE 4-5 ¶ 15.
6 After the Board approved the Joint Stipulation, which included a 20-page limit for each
party’s Rebuttal Brief, the parties agreed to six additional pages for each Rebuttal Brief. 57
TTABVUE 2 n.1. This is procedurally improper, as it is simply an agreement between the
parties to exceed the page limits without prior leave of the Board. See Trademark Rule
2.128(b), 37 C.F.R. § 2.128(b). The Board may not consider briefs exceeding the page limit.
See TBMP §§ 537 and 801.03. Nonetheless, we recognize that this is an unusual situation,
where we are issuing separate decisions in what was a previously consolidated ACR case. We
approve the parties’ informal addendum to the Joint Stipulation, and have considered each
party’s Rebuttal Brief to avoid any prejudice the parties may have imagined had we stricken
the Rebuttal Briefs.
7 The standards of proof in an ACR proceeding are the same as the standards of proof in a
traditional Board proceeding. Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016).
Cancellation No. 92066851
- 5 -

III. Evidentiary Issues
JSTN submitted as Exhibit C to its Brief the Testimony Declaration of Roger
Stanton, JSTN’s Chief Executive Officer, with two exhibits (“Stanton Test. Dec.”).8 49
TTABVUE 86-146. Much of Mr. Stanton’s testimony focuses on purported instances
of actual confusion. In its Rebuttal Brief, Digi.me objects to, and asks the Board to
strike or disregard, specific testimony from Mr. Stanton and related portions in
JSTN’s brief about these purported instances, and all “evidence of alleged confusion,”
on various grounds including hearsay, expert opinion from a lay witness, lack of
personal knowledge, relevance (including evidence pertaining to a foreign country),
and undue prejudice. 56 TTABVUE 29-49. Digi.me also objects to the Stanton Test.
Dec. “as being replete with hearsay and lack of personal knowledge, as well as being
directed to irrelevant evidence,” 56 TTABVUE 49, and to statements in paragraphs
4, 8, 16 and 18 on various grounds including relevance, lack of personal knowledge
and hearsay. 56 TTABVUE 49-51.
“[T]he Board generally does not strike testimony taken in accordance with the
applicable rules on the basis of substantive objections; rather, the Board considers
such objections when evaluating the probative value of the testimony at final
hearing.” Bd. of Regents v. S. Ill. Miners, LLC, 110 USPQ2d 1182, 1194 n.19 (TTAB
2014) (citations omitted). As a general matter, “the Board is capable of weighing the
relevance and strength or weakness of the objected-to testimony and evidence,

8 JSTN titles this document “Affidavit in Support of Petitioner/Plaintiff’s Motion for
Summary Judgment as to Confusion.” We follow the parties’ example, and treat this
document as testimony by declaration on behalf of JSTN.
Cancellation No. 92066851
- 6 -

including any inherent limitations,” and keeping in mind “the various objections
raised by the parties” in determining the probative value of objected -to testimony and
evidence. Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1479
(TTAB 2017). We therefore overrule the objections but will weigh the relevance and
strength or weakness of the objected-to testimony, including any inherent limitations
therein. For example, we have disregarded any opinion testimony regarding the
conclusions of law in this case. Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc.,
107 USPQ2d 1750, 1755 (TTAB 2013), aff’d mem, 565 Fed. Appx. 900 (Fed. Cir. 2014).
We also discount Mr. Stanton’s use of hyperbolic language like “shocking” (¶ 8) and
“massive, ongoing confusion” that is “leading consumers of all types and sources
astray” (¶ 16), as well as the admittedly speculative “We can only imagine the
massive confusion which would destroy our brand and our name if the software
solutions sold by DIGI.ME began to truly sell or be used.” (¶ 16).
As for Digi.me’s objections to Mr. Stanton as a lay witness who provided expert
testimony, we do not treat Mr. Stanton as an expert, but as a fact witness with
experience in the employment industry. However, “[w]e have also weighed the
probative value of [the] testimony against any potential bias,” Alcatraz Media, 107
USPQ2d at 1755, including taking into account the witness’ potential bias based on
his position as JSTN’s CEO. See Tao Licensing, LLC, v. Bender Consulting Ltd., 125
USPQ2d 1043, 1047 (TTAB 2017).
Cancellation No. 92066851
- 7 -

IV. Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the application file underlying Digi.me’s registration. The
application file underlying JSTN’s registration is automatically part of the record
through the Joint Stipulation. 47 TTABVUE 3, ¶ 6.
Neither party included in its Brief a description of the record, JSTN did not
include in its Brief or Rebuttal Brief an index of cases or a table of contents, and
Digi.me did not include in its Rebuttal Brief an index of cases or a table of contents.
See Trademark Rule 2.128(b), 37 C.F.R. § 2.128(b). Given these procedural anomalies
and the nature and extent of the evidence submitted by both parties, we simply
summarize the record. We have considered all evidence submitted, including that
which is not detailed here, subject to any evidentiary objections, and have provided
record citations to the best of our ability.
Keeping the foregoing qualifications in mind, the record includes one testimony
declaration (with exhibits) from each party: the aforementioned Stanton Test. Dec.,
and the Testimony Declaration of Digi.me’s Vice President of Marketing, Josie
Hirtenstein (“Hirtenstein Test Dec.”); and the Cross-Examination of Roger Stanton
on Written Questions (confidential) (56 TTABVUE 70-80 (Exhibit AM)).9 The record

9 While the Board is sensitive to the confidential nature of the agreements about Mr.
Stanton’s signature, his testimony on written question does not appear to contain confidential
information. It is the general policy of the Board that all papers in a proceeding be public.
Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1476 n.19 (TTAB 2017). Thus,
Trademark Rule 2.116(g), 37 C.F.R. § 2.116(g), provides “[t]he Board may treat as not
confidential that material which cannot reasonably be considered confidential,
notwithstanding as designation as such by a party.”
Cancellation No. 92066851
- 8 -

also includes discovery requests, responses and supplemental responses; press
releases and marketing materials, including printouts from the parties’ websites and
third-party websites such as the Google Play store; third-party registrations and
marketplace evidence of DIGI and DIGI-formative marks; and definitions of “digi”
and “digital.”
V. Entitlement to Statutory Cause of Action10
To establish entitlement to a statutory cause of action under Sections 13 or 14 of
the Trademark Act, a plaintiff must demonstrate a real interest in the proceeding
and a reasonable belief of damage. Australian Therapeutic Supplies Pty. Ltd. v.
Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837 at *3 (Fed. Cir. 2020); see also
Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058
(Fed. Cir. 2014); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1727 (Fed. Cir. 2012). A “real interest” is a “direct and personal stake”
in the outcome of the proceeding. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d
1023, 1025 (Fed. Cir. 1999).

In addition, Digi.me did not file a redacted copy of its 56 TTABVUE submission, in
noncompliance with Trademark Rule 2.126(c), 37 C.F.R. § 2.126(c). That rule requires parties
which submit confidential material to concurrently file a copy of the submission for public
viewing with the confidential portions redacted. At the end of this decision, we allow Digi.me
time to submit in Opposition No. 91238260 a redacted version of 56 TTABVUE, failing which
it will be made public.
10 Our decisions previously have analyzed the requirements of Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Mindful of the Supreme
Court’s direction in Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 125-
26 (2014), we now refer to this inquiry as entitlement to a statutory cause of action. Despite
the change in nomenclature, our prior decisions and those of the Federal Circuit interpreting
Sections 13 and 14 remain equally applicable.
Cancellation No. 92066851
- 9 -

As noted above, JSTN attached to the Petition to Cancel a USPTO database
printout of its pleaded registration, and as noted above, Digi.me admits in its Answer
that JSTN “is the Registrant of Record” of the pleaded registration for the identified
services.11 4 TTABVUE 3 ¶ 1 (Cancellation No. 92066851). In addition, in his
Testimony Declaration, JSTN’s CEO Roger Stanton avers:
As part of my functions, in conjunction with help from my
trademark counsels, I secured U.S. Registration No.
4,934,801 for the mark DIGI-ME with the U.S. Patent and
Trademark Office. Our date of first use in commerce was
at least January 13, 2014, and we applied diligently for the
mark on February 27, 2014. Since that time, we have used
openly and continuously DIGI-ME® for all our goods and
services and have never rebranded. 49 TTABVUE 87 ¶ 2.
We have given no licenses to any third party or any
collaborator to use DIGI-ME®. We remain exclusive and
sole owners with the right to enforce. 49 TTABVUE 91
¶ 19.
On this record, JSTN has demonstrated (and Digi.me has not challenged) that
JSTN has a real interest in this cancellation proceeding and a reasonable belief of
damage, thereby establishing a statutory cause of action under Section 14 of the
Trademark Act. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1844 (Fed. Cir. 2000) (petitioner’s prior registrations establish “direct commercial
interest and its standing to petition for cancellation”); Lipton Indus., Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Having established its statutory entitlement to a cause of action with respect to
its likelihood of confusion claim, JSTN need not separately show its statutory

11 JSTN resubmitted this document as Exhibit D to its ACR Brief, 49 TTABVUE.
Cancellation No. 92066851
- 10 -

entitlement to a cause of action to assert its merely descriptive claim. Corporacion
Habanos SA v. Rodriguez, 99 USPQ2d 1873, 1877 (TTAB 2011); Liberty Trouser Co.,
Inc. v. Liberty & Co., Ltd., 222 USPQ 357, 358 (TTAB 1983).
VI. Merely Descriptive
In the absence of acquired distinctiveness, Section 2(e)(1) of the Trademark Act
prohibits registration of a term on the Principal Register that, when used in
connection with the goods or services identified in the registration, is merely
descriptive of them.12 “A term is merely descriptive if it immediately conveys
knowledge of a quality, feature, function, or characteristic of the goods or services
with which it is used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102
USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer AG, 488 F.3d 960, 82
USPQ2d 1828, 1831 (Fed. Cir. 2007)). See also In re TriVita, Inc., 783 F.3d 872, 114
USPQ2d 1574, 1575 (Fed. Cir. 2015). A mark is suggestive, and not merely
descriptive, if it requires imagination, thought, and perception on the part of someone
who knows what the goods or services are to reach a conclusion about their nature
from the mark. See, e.g., In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1513
(TTAB 2016). Suggestive marks, unlike merely descriptive terms, are registrable on
the Principal Register without proof of acquired distinctiveness. See Nautilus Grp.,

12 “No trademark by which the goods of the applicant may be distinguished from the goods of
others shall be refused registration on the principal register on account of its nature unless
it . . . (e) Consists of a mark which, (1) when used on or in connection with the goods of the
applicant is merely descriptive ….” 15 U.S.C. § 1052(e)(1).
Cancellation No. 92066851
- 11 -

Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330, 71 USPQ2d 1173, 1180 (Fed. Cir.
2004).
The determination of whether a mark is merely descriptive must be made in
relation to the goods or services identified in the registration, not in the abstract.
Chamber of Commerce, 102 USPQ2d at 1219; Bayer, 82 USPQ2d at 1831. This
requires consideration of the context in which the mark is used or intended to be used
in connection with those goods or services, and the possible significance that the mark
would have to the average purchaser of the goods or services in the marketplace.
Chamber of Commerce, 102 USPQ2d at 1219; Bayer, 82 USPQ2d at 1831; In re
Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859, 1861 (Fed. Cir. 1987). In other
words, the question is not whether someone presented only with the mark could guess
the goods or services listed in the identification. Rather, the question is whether
someone who knows what the goods or services are will understand the mark to
convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices,
Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower
Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)). It is not necessary, in order to
find a term merely descriptive, that the term describe each feature of the goods or
services, only that it describe a single, significant ingredient, quality, characteristic,
function, feature, purpose or use of the goods or services. In re Gyulay, 820 F.2d 1216,
3 USPQ2d 1009 (Fed. Cir. 1987).
“Evidence of the public’s understanding of [a] term … may be obtained from any
competent source, such as purchaser testimony, consumer surveys, listing in
Cancellation No. 92066851
- 12 -

dictionaries, trade journals, newspapers and other publications,” Real Foods Pty Ltd.
v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1374 (Fed. Cir. 2018)
(quoting Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1046
(Fed. Cir. 2018)), as well as “labels, packages, or in advertising material directed to
the goods [or services].” In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218
(CCPA 1978). It may also be obtained from websites and, in the case of a use-based
application or registration, an applicant’s or registrant’s own specimen of use and any
explanatory text included therein. In re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d
1707, 1710 (Fed. Cir. 2017); In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564,
1565 (Fed. Cir. 2001).
Here, Digi.me’s registration for the mark DIGI.ME issued under Section 44(e) of
the Trademark Act, meaning that Digi.me has yet to claim use in the United States.
Nonetheless, JSTN is not precluded from introducing excerpts from Digi.me’s own
materials, website, or news articles as evidence of public perception of the mark. Cf.
In re Promo Ink, 78 USPQ2d 1301, 1303 (TTAB 2006) (examining attorney may
introduce evidence that applicant’s own literature supports descriptiveness of term
despite the fact that application based on intent-to-use under Trademark Act Section
1(b); fact that applicant has filed an intent-to-use application does not limit the
examining attorney’s evidentiary options or shield an applicant from producing
evidence that it may have in its possession).
JSTN contends that DIGI.ME describes a purpose of Digi.me’s identified
“computer software for providing permissioned access to user’s life data for
Cancellation No. 92066851
- 13 -

convenience, service or reward,” namely that “digi” is a diminutive of or acronym for
the word “digital,” and Digi.me’s software “creates a digital copy of you.” 49
TTABVUE 29. As evidence, in its main brief JSTN points to (1) a webpage on
Digi.me’s website titled “What is digi.me?,” which explains that it is “A new ethical
and sustainable way for individuals to take control of their data and privately share
with data-driven apps and services,” 49 TTABVUE 75, (2) an email and press release
announcing Digi.me’s change of name from SocialSafe to Digi.me, stating that “[t]his
represents ‘your digital life’ and not just your social network life,” 49 TTABVUE 161-
165, and (3) a webpage for the digi.me app on the Google Play store website, which
we reproduce here:
Digi.me helps your personal data power the apps and
services you use, without compromising your privacy, and
always remaining within your control.
Our key founding principles:
No one can see the data you import. Only you hold the key.
We do not hold your data. You decide where it lives.
Your data is only ever shared with your express, informed
consent.

How does it work?
Once installed just create a password and decide where to
keep your digi.me. That’s it! You can now add data from
thousands of sources. Everything in your digi.me is
protected by military-grade encryption.
When you find an app that uses our private-sharing
technology, your digi.me will present a share summary
screen. This explains what parts of your data are required
and how it will be used. After agreeing, you will be able to
Cancellation No. 92066851
- 14 -

see what was shared and with the tap of a button, stop
sharing altogether.

If I am not paying for the product, I am not the product?
With digi.me you can celebrate and benefit from being the
product! Your personal data is yours to exchange with
others, on your terms, and under your control.

What is personal data?
 Your medical records
 Your workouts and fitness activities
 What you watch and listen to
 Interactions with services you use
 And, it’s growing all the time!

What can I do with this personal data?
The ecosystem of companies, apps and services using our
private-sharing technology is young but growing fast. Here
are some powerful things your data can already do:
 Find potentially objectional [sic] social media posts
on your profiles with TFP
 Download copies of any or all of the photos you’ve
previously posted to Instagram, Facebook, Twitter
and others with SocialSafe
 Identify the risk for diabetes-induced sight-
threatening retinopathy with Retina Risk
 Highlight which vaccines you might need before
travelling with VaxAbroad
Cancellation No. 92066851
- 15 -

 A unified financial dashboard providing a summary
of your spending habits with Finsights
Check out digi.me/share regularly to see what else your
data can do for you.
49 TTABVUE 72-73.
In its Rebuttal Brief, JSTN contends that “[t]he purpose of this software is clear,
it creates a digital repository of a person’s entire digital life information,” and “[t]he
expression DIGI ME clearly describes a software designed as a depository of a user’s
own digital data.” 54 TTABVUE 4, 6. As additional support, JSTN points to the
following testimony from Digi.me’s Vice President of Marketing, Josie Hirtenstein:
Digi.me’s goods are akin to a tool that allows a user to
create something like a private storage locker or library of
his or her personal electronic data accessible only by the
user or to others provided access and permission directly
by that user. 52 TTABVUE 149-150 ¶ 18.
Digi.me’s goods allow users to control their own electronic
data in view of data privacy concerns over data-mining,
collection and sale of user data, and the like by social media
companies and other online entities, as well as in view of a
user’s potential loss of control over such data otherwise
held by others. 52 TTABVUE 150 ¶ 19.
After reviewing all of the evidence, we find that JSTN did not establish how the
term DIGI.ME directly and immediately conveys information about a feature,
function or characteristic of the identified goods.13 Even if, as JSTN contends,
consumers understand “digi” to be a diminutive of or acronym for “digital,” the record

13 JSTN’s arguments about the purported descriptiveness of Digi.me’s other marks for some
of the same goods identified here have no bearing on whether the mark DIGI.ME is merely
descriptive of the identified goods, and constitute impermissible collateral attacks. 49
TTABVUE 7-8.
Cancellation No. 92066851
- 16 -

does not support a finding that DIGI.ME is merely descriptive of the goods. We find
instead that purchasers of Digi.me’s identified computer software would be required
to engage in a multi-stage reasoning process to understand that DIGI.ME refers to
“computer software for creation of an archive of a user’s social media, on-line, off-line
and life-logging information technology activity,” or “computer software for providing
permission access to user’s life data for convenience, service or reward.” See DuoPross
Meditech, 103 USPQ2d at 1755 (a mark is suggestive if it requires imagination,
thought, and perception to ascertain the nature of the goods or services).
On this record, JSTN has not established that Digi.me’s DIGI.ME mark is merely
descriptive of the identified goods. We deny JSTN’s claim that the mark DIGI.ME is
merely descriptive under Section 2(e)(1) of the Trademark Act.
VII. Priority
“In a cancellation proceeding such as this one where both parties own
registrations, priority is in issue.” Couch/Braunsdorf Affinity, Inc. v. 12 Interactive,
LLC, 110 UPQ2d 1458, 1474 (TTAB 2014) (citing Brewski Beer Co. v. Brewski Bros.,
Inc., 47 USPQ2d 1281, 1283-84 (TTAB 1998). Although Digi.me does not dispute
JSTN’s priority, JSTN still must prove that it has priority in its mark that predates
any interest Digi.me may claim in its mark. See Top Tobacco, L.P. v. N. Atl. Operating
Co., 101 USPQ2d 1163, 1169 (TTAB 2011) (“With respect to the petition to cancel
North Atlantic’s … mark, Top must prove that it has a priority interest in [its] mark
… and that interest was obtained prior to either the filing date of North Atlantic’s
[underlying] application for registration or North Atlantic’s date of first use.”).
Cancellation No. 92066851
- 17 -

Each party may rely on the filing date of its underlying application as its
constructive use date. See Trademark Act Section 7(c); see also J.C. Hall Co. v.
Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 437 (CCPA 1965). The February
27, 2014 filing date of the application that matured into JSTN’s pleaded and proven
registration predates the August 4, 2014 filing date of the application that matured
into Digi.me’s challenged registration. Digi.me has neither alleged nor proven an
earlier priority date. Accordingly, JSTN has established priority of use for the mark
DIGI-ME for the services set forth in the registration.
VIII. Likelihood of Confusion
The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. DuPont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, hereinafter referred to as “DuPont factors”); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). We must consider
each DuPont factor for which there is evidence and argument. See In re Guild Mortg.
Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Varying weights may
be assigned to each DuPont factor depending on the evidence presented. See Citigroup
Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir.
2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993)
(“[T]he various evidentiary factors may play more or less weighty roles in any
particular determination.”).
Cancellation No. 92066851
- 18 -

In any likelihood of confusion analysis, however, two key considerations are the
similarities between the marks and the similarities between the goods and services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(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 others are discussed below.
A. Similarity or Dissimilarity of the Marks
JSTN’s standard character mark DIGI-ME and Digi.me’s standard character
mark DIGI.ME, when compared in their entireties, are virtually identical in
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). Indeed, Digi.me concedes that the marks “may be similar in
sound, appearance or connotation,” and argues only that they “are not identical in
appearance.” 52 TTABVUE 12. Under this DuPont factor, however, identity of the
marks is not required. “The proper test is not a side-by-side comparison of the marks,
but instead ‘whether the marks are sufficiently similar in terms of their commercial
impression’ such that persons who encounter the marks would be likely to assume a
connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127
USPQ2d 1797, 1801 (Fed. Cir. 2018), 127 USPQ2d at 1801 (quoting Coach Servs., 101
USPQ2d at 1721).
The similarity of the marks weighs strongly in favor of a finding of likelihood of
confusion. In making this finding, we have considered Digi.me’s evidence of third -
Cancellation No. 92066851
- 19 -

party registrations and uses of DIGI-formative marks. 52 TTABVUE 234-329
(Exhibit AC) and 57 TTABVUE 76-110 (Exhibit AO). This evidence demonstrates
that DIGI-formatives are suggestive of, rather than arbitrary for, goods and services
that are digital in nature or have a digital component, a conclusion we would have
reached without the evidence. But it does not show that JSTN’s mark DIGI-ME is
conceptually weak or diluted for services that are the same as or similar to those
identified in the registration, as it does not appear that any of the third-party
registrations cover such services or that any of the third parties who use DIGI-
formative marks offer such services.14 Cf. Juice Generation, Inc. v. GS Enters LLC,
794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015); Jack Wolfskin Ausrustung
Fur Draussen GmbH v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d
1129, 1136 (Fed. Cir. 2015).
B. Similarity or Dissimilarity of the Goods and Services and Channels of
Trade
We next consider the DuPont factors involving the relatedness of the goods and
services and the similarity of established, likely to continue channels of trade. We
base our evaluation on the goods as they are identified in Digi.me’s registration, and

14 This is unsurprising, as JSTN claims that the services identified in the DIGI-ME
registration are the subject of its patent-pending technology that “it alone offers.” 52
TTABVUE 100-113 (Exhibit M, JSTN’s Responses to Digi.me’s Requests for Admission, Nos.
36, 39, 42 and 45). See also 52 TTABVUE 352-375 (Exhibit AG, JSTN’s Response to Digi.me’s
Interrogatory No. 35); Stanton Test. Dec., 49 TTABVUE 88 ¶ 4, referencing Digi.me’s
involved registration (“Because we offer a new service and the novelty of our patent pending
technology, we believe the U.S. Trademark Examiner did not fully understand our business
model and in error granted registration to U.S. Trademark No. 5,248,371 for our mark
DIGI.ME to a third party.”).
Cancellation No. 92066851
- 20 -

the services as they are identified in JSTN’s registration. See Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir.
2014); Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261,
62 USPQ2d 1001 (Fed. Cir. 2002).
1. Goods and Services
It is not necessary that the goods and services be identical or competitive, or even
that they move in the same channels of trade, to support a finding of likelihood of
confusion. Rather, it is sufficient that they are related in some manner, or that the
circumstances surrounding their marketing are such that they would or could be
encountered by the same persons in situations that would give rise, because of the
similarity of the marks, to a mistaken belief that they originate from the same source
or that there is an association or connection between the sources of the goods and
services. Coach Servs., 101 USPQ2d at 1721.
To recap, Digi.me’s identified goods are “computer software for creation of an
archive of a user’s social media, on-line, off-line and life-logging information
technology activity; computer software for providing permission access to user’s life
data for convenience, service or reward” in Class 9, and JSTN’s identified services are
“providing a website featuring technology that enables recruiters and hiring
managers to manage hiring and disseminate job opportunities and company
information; platform as a service (PAAS) featuring computer software platforms for
employee hiring and tracking in the field of human resources management and
recruitment,” in Class 42.
Cancellation No. 92066851
- 21 -

The goods and services are each narrowly identified, and as written, are unrelated
on their face. More specifically, Digi.me’s software allows an individual to create his
or her own archive of personal social media, on-line, offline and life-logging technology
information, and to invite others to access such life data, while JSTN’s services allow
employers and recruiters to engage in employer-side activities, e.g., hiring,
disseminating information about the employer, and tracking employees. As such, the
goods and services serve different purposes. Indeed, as Digi.me points out, “user life
data permissioned access is something contrary to the ‘tracking’ explicitly recited in
JSTN’s asserted registration.” 52 TTABVUE 21 (referencing, as examples, Exhibits
H and I, 52 TTABVUE 77-83).
There is no testimony or evidence that the parties or any third parties have offered
goods of the type identified in Digi.me’s registration and services of the type identified
in JSTN’s registration, let alone offered both of those goods and services under the
same mark. Nor has JSTN shown that the customers for Digi.me’s identified software
and JSTN’s identified services overlap – and in view of their different purposes, we
see no reason why they would overlap. Rather, JSTN simply asserts that “nothing in
[Digi.me’s] recitation prevents the user’s life data from being employment/hiring
related and the user’s on-line, off-line and life logging information to be related to
employment/hiring.” 49 TTABVUE 19. The record does not support a finding that a
“user’s life data” and “on-line, off-line and life logging information” is worded broadly
enough to encompass or be related to employment or hiring.15 Further, the record

15 We do not find that the language in the description of goods is ambiguous. Nevertheless,
to the extent that JSTN contends otherwise, it was JSTN’s responsibility, as plaintiff in this
Cancellation No. 92066851
- 22 -

does not demonstrate any commercial relationship between Digi.me’s identified goods
and the employer-side activities identified in JSTN’s registration.
Even though the degree of similarity between the goods and services required for
confusion to be likely declines where, as here, the marks are virtually identical, see
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688-69 (Fed. Cir. 1993) (“even
where the goods or services are not competitive or intrinsically related, the use of
identical marks can lead to the assumption that there is a common source”) , the
record does not demonstrate that it is common for a single entity to offer under the
same mark the types of goods and services identified in Digi.me’s and JSTN’s
respective registrations. JSTN’s unsupported arguments to the contrary are no
substitute for evidence. Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 76
USPQ2d 1616, 1622 (Fed. Cir. 2005). We find that JSTN has not established a viable
commercial relationship among such goods and services.

proceeding, to submit evidence that consumers would understand the wording in the manner
JSTN posits. Nonetheless, we may look to Digi.me’s evidence of actual use, which evidence
we set out above in our discussion of the Section 2(e)(1) claim. See In re Trackmobile Inc., 15
USPQ2d 1152 (TTAB 1990) (“… when the description of goods for a cited registration is
somewhat unclear, as is the case herein, it is improper to simply consider that description in
a vacuum and attach all possible interpretations to it when the applicant has presented
extrinsic evidence showing that the description of goods has a specific meaning to members
of the trade.” (internal citations omitted)); see also In re W.W. Henry Co., 82 USPQ2d 1213,
1215 (TTAB 2007). Digi.me’s evidence of actual use shows that “life data” means “personal
data” such as medical history and social media posts, and is not related to hiring activities.
As Ms. Hirtenstein explains: “Digi.me’s DIGI.ME branded software has nothing to do with
recruiting, hiring, human resources management, or related employer-side hiring/recruiting
activities and instead is directed to app users who intend to privately and safely archive their
own personal social media, off-line and life-logging information technology activity and/or
provide permissioned access to their own personal life data for convenience, service or
reward.” 52 TTABVUE 150 ¶ 20.
Cancellation No. 92066851
- 23 -

2. Channels of Trade and Classes of Purchasers
Turning to the channels of trade and classes of purchasers, the identification of
goods in Digi.me’s registration is limited to personal use by individuals, while the
identification of services in JSTN’s registration is limited to employer -side
purchasers, namely recruiters and hiring managers. In light of these limitations in
the identifications, the potential purchasers for Digi.me’s goods and JSTN’s services
are different. And the record demonstrates that the identified goods and services
move through different channels of trade: Digi.me offers its identified computer
software as an app for download through app stores such as Apple and Google Play
(52 TTABVUE 114-127 (Exhibit N)), while JSTN offers its identified services directly
on its own website, and through “direct sales communication with associated paper
documentation and support,” and “Industry Associations sites including the
American Staffing Association, Society of Human Resource Management, Staffing
Industry Association….” (52 TTABVUE 164-165, Interrogatory No. 5 (Exhibit Q).
The parties also offer their respective goods and services at different trade shows.
For example, JSTN attended “Seattle Staffing Tec (2018),” “RecruitCon (2018)” and
other events for the human resources and recruiting industry (52 TTABVUE 165-171,
Interrogatory Nos. 6 and 7 (Exhibit Q)), while Digi.me attended “Internet Identity
Workshop” and “Personal Data Week.” 52 TTABVUE 187 (Exhibit R) and Hirtenstein
Test. Dec., 52 TTABVUE 152, ¶¶ 25-29.
We find that JSTN has not established that its identified services and Digi.me’s
identified goods are related, or that they are offered in the same channels of trade or
sold to the same classes of consumers. These factors weigh heavily against a finding
Cancellation No. 92066851
- 24 -

of a likelihood of confusion, for “[i]t is difficult to establish likelihood of confusion in
the absence of overlap as to either factor.” M2 Software Inc. v. M2 Commc’ns Inc., 450
F.3d 1378, 78 USPQ2d 1944, 1948 (Fed. Cir. 2006).
C. Purchasing Conditions
Next, we consider “[t]he conditions under which and buyers to whom sales are
made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.” DuPont, 177 USPQ at 567.
The record demonstrates that JSTN’s identified services are expensive (e.g., a “3-
month Promo” includes “10 Job Videos,” “30 Days of Hosting” and “1 Candidate
Expectation Video” for $2,750, and a “5 Job Videos” version of the promo costs $499),
and generally involve direct contact with a JSTN sales representative. 52 TTABVUE
191-195 (Exhibits T and U). According to Ms. Hirtenstein, customers of Digi.me’s
DIGI.ME computer software generally are concerned about data and privacy
breaches, and they want to maintain control over their personal data. Consequently,
it is a logical extension to find that they exercise some degree of care when choosing
software to which they will provide their personal data, and where they send their
personal information for archiving. Hirtenstein Test. Dec., 52 TTABVUE at 150
¶¶ 21-22. Thus, although Digi.me offers its identified computer software at no cost
directly to the individual users via an app store, there is no evidence that the products
are subject to impulse buying such that purchasers are held to a lesser standard of
purchasing care. Cf. Recot Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1899 (Fed.
Cir. 2000). We find that purchasers of JSTN’s identified services and users of
Digi.me’s identified goods will exercise a degree of care when making their
Cancellation No. 92066851
- 25 -

purchasing and downloading decisions. This also weighs in favor of a finding of no
likelihood of confusion.
D. Evidence of Actual Confusion
The parties vigorously dispute the seventh DuPont factor, the nature and extent
of any actual confusion.16 In our proceedings, “[a]ctual confusion is entitled to great
weight but only if properly proven.” Georgia-Pacific Corp. v. Great Plains Bag Co.,
614 F.2d 757, 204 USPQ 697, 701 (CCPA 1980). Properly introducing instances of
actual confusion into the record and persuading the trier of fact as to the probative
value of such evidence is JSTN’s burden. See Couch/Braunsdorf Affinity, 110
USPQ2d at 1479.
JSTN contends that there is “massive” evidence of actual consumer confusion. As
support, JSTN introduced Mr. Stanton’s testimony about telephone calls that he or
his wife received from individuals, businesses and JSTN’s own (unnamed) investors;
emails and transcribed calls to Digi.me; a webpage from HR Exchange (a digital
magazine); Internet search engine results; Amazon Alexa “traffic statistics” for a
query for “DIGI.ME;” and JSTN’s Response to Interrogatory No. 12, which essentially

16 JSTN’s arguments listed under the eighth and twelfth DuPont factors (“length of time
during and conditions under which there has been concurrent use without evidence of actual
confusion,” and “the extent of potential confusion, i.e., whether de minimis or substantial”)
essentially rehash its arguments under the seventh DuPont factor, and are considered in this
section. We also consider in this section JSTN’s argument that both parties are small and
therefore any actual confusion is of great importance. JSTN lists this argument under the
thirteenth DuPont factor (“[a]ny other established fact probative of the effect of use.”). 49
TTABVUE 23, 25.
Cancellation No. 92066851
- 26 -

summarizes the foregoing.17 49 TTABVUE 86-146 (Exhibit C and Attachments 1 and
2).
Having reviewed the record, we find that the testimony and evidence collectively
shows that individuals and businesses have mistaken JSTN’s domain www.digi-
me.com and Digi.me’s domain www.digi.me. But it does not show customer or
prospective customer confusion as to the source of the JSTN’s identified services and
Digi.me’s identified computer software. We now address the general categories of
testimony and evidence.
Mr. Stanton’s testimony about the various phone calls is hearsay, and in the case
of a phone call that his wife received, hearsay within hearsay. The probative value of
this testimony is further reduced because JSTN introduced no testimony from any of
the purportedly confused individuals. We have only Mr. Stanton’s conclusory
testimony that the customers were confused without any exploration as to why the
customers were confused. Evidence of actual confusion “is too important to be
established by means of an inference, unsupported by corroborating evidence.” Toys
“R” Us, Inc. v. Lamps R Us, 219 USPQ 340, 346 (TTAB 1983).
In B’klyn Brewery Corp. v. B’klyn Brew Shop, LLC, 2020 USPQ2d 10914 *25
(TTAB 2020), the Board addressed averments in declarations of the plaintiff’s
employees about their phone calls from consumers, and explained:
Courts and leading trademark treatises consistently note
that relatively imprecise averments of employees of parties
in whose interest it is to prove confusion that the
employees have dealt with confused consumers is, without

17 The last three items were submitted as exhibits to Mr. Stanton’s testimony.
Cancellation No. 92066851
- 27 -

further corroboration, generally not entitled to much
weight. See, e.g., Vitek Sys., Inc. v. Abbott Labs., 675 F.2d
190, 216 USPQ 476, 479-80 (8th Cir. 1982) (factfinder could
refuse to credit uncorroborated testimony of interested
persons about interacting with unspecified confused
consumers); see also Duluth News-Tribune v. Mesabi Publ’g
Co., 84 F.3d 1093, 38 USPQ2d 1937, 1941 (8th Cir. 1996);
A. Gilson Lalonde, 5 GILSON ON TRADEMARKS § 5.04[4][c]
(“[W]here the evidence of actual contemporaneous
confusion is filtered through a plaintiff’s employees or
where people affiliated with the plaintiff proclaim their
confusion, courts are rightly wary of the possibility of bias
and view such evidence with skepticism”); id. n.44
(collecting cases).
We see no reason to give Mr. Stanton’s uncorroborated testimony more weight here.
Also, Mr. Stanton’s testimony about the telephone calls from JSTN’s investors do
not demonstrate customer confusion.18 We do not consider JSTN’s investors to be
customers. And, according to Mr. Stanton, the investors understand that JSTN and
Digi.me are different entities, but they are concerned about “why these people were
able to infringe our trademark.” 49 TTABVUE 89 ¶ 10.
The emails and transcribed calls suffer from the same evidentiary deficiencies,
and they do not support a finding that customers are confused as to the source of the
identified goods and services. As for the HR Exchange printout (49 TTABVUE 143-
144), this webpage from a digital magazine shows that HR Exchange correctly used
JSTN’s brand and logo, but provided an incorrect link to the Digi.me website rather
than the JSTN website. This can be discounted as inattentiveness of the HR
Exchange technical staff, but it is not evidence of actual confusion by consumers. Cf.

18 On cross-examination, Mr. Stanton testified that the “investors” include “some” who “are
prospective investors and potential clients.” 56 TTABVUE 74, Answer to Question No. 19.
Cancellation No. 92066851
- 28 -

Therma-Scan, Inc. v. Thermoscan, Inc., 295 F.3d 623, 63 USPQ2d 1659, 1666 (6th
Cir. 2002) (“[T]he fact that the confusion occurred in e-mail messages raises the
possibility that consumers sent the inquiries about the thermometers to TSI rather
than to Thermoscan because they were inattentive or careless, as opposed to being
actually confused.”).
As additional evidence of purported consumer confusion, JSTN points to
screenshots of Facebook, Bing, Google, and YouTube search results of the term “Digi-
Me” showing links to JSTN’s and Digi.me’s websites, among others. While such uses
might be indicative of an Internet key word search protocol or algorithm, they do not
reflect consumer confusion as to the source of Digi.me’s goods and JSTN’s services.
The same holds true for the Google Alerts set by JSTN (for DIGI-ME) and Digi.me
(for DIGI.ME), which resulted in news and articles about both companies being sent
to both companies. Likewise, the “traffic statistics” for the query “DIGI.ME” on
Amazon Alexa do not show consumer confusion as to the source of the identified goods
and services. Rather, we agree with Digi.me that the Alexa data is evidence of
“Digi.me’s proficiency at optimizing search engine results.” 57 TTABVUE 25.
In sum, none of the evidence submitted by JSTN proves that actual consumer
confusion as to the source of the identified goods and services has occurred. As noted
above, at best, JSTN’s testimony and evidence lends support to our finding that the
marks are virtually identical. “A showing of actual confusion would of course be
highly probative, if not conclusive, of a high likelihood of confusion.” Majestic
Distilling, 65 USPQ2d at 1205. “However, evidence of actual confusion is notoriously
Cancellation No. 92066851
- 29 -

difficult to come by and, in any event, such evidence is not required in order to
establish likelihood of confusion.” Time Warner Entm’t Co. v. Jones, 65 USPQ2d 1650,
1662 (TTAB 2002). We find the seventh DuPont factor to be neutral.19
E. Other DuPont Factors
We address JSTN’s remaining arguments (49 TTABVUE 23-25) collectively and
in short order.
The ninth DuPont factor considers the variety of goods or services on which a mark
is used. Because there is no evidence to support a finding that either party uses its
mark on a wide variety of goods and services, this factor is neutral.
The tenth DuPont factor requires us to consider evidence pertaining to the
“market interface” between the parties, including evidence of any past dealings
between the parties which might be indicative of a lack of confusion. Because there
is no evidence that the parties have had any past dealings, this DuPont factor is
neutral.
The eleventh DuPont factor considers any evidence that Digi.me has a right to
exclude third parties from using its mark.20 Because Digi.me has not provided any
significant information about the advertising and sales of its goods sold under the
DIGI.ME mark, and because there is no evidence that Digi.me has successfully
asserted its rights so as to “exclude” third parties from using its mark, this DuPont

19 Likewise, the eighth, twelfth and thirteenth DuPont factors also are neutral.
20 JSTN’s argument on this factor is inapposite as it pertains to its own right to exclude others
from use of its mark.
Cancellation No. 92066851
- 30 -

factor also is neutral. See, e.g., DeVivo v. Ortiz, 2020 USPQ2d 10153 at *15 (TTAB
2020) (citing McDonald’s Corp. v. McSweet LLC, 112 USPQ2d 1268, 1284-85 (TTAB
2014) (“Applicant’s sales figures and Applicant’s advertising and promotional
expenditures are not sufficient to establish an appreciable level of consumer
recognition.”) (internal citation omitted).
F. Conclusion
Even though the marks are virtually identical, JSTN has not established that the
identified goods and services are related, or that they move through the same
channels of trade to the same classes of purchasers or users. We also find that the
prospective purchasers or users are likely to exercise a degree of care when making
their purchasing or downloading decisions. We find the other DuPont factors neutral.
Confusion therefore is unlikely. See, e.g., Itell, 8 USPQ2d at 1171 (dismissing
opposition in which marks were identical but opposer failed to prove relatedness of
the goods and services).

Decision: The cancellation is denied on the grounds of likelihood of confusion and
mere descriptiveness.21

21 Digi.me is allowed until thirty (30) days from the mailing date of this decision to comply
with Trademark Rule 2.126(c) by filing in Opposition No. 91238260 a redacted version of 56
TTABVUE, failing which 56 TTABVUE will be treated as part of the public record. Kohler
Co., 125 USPQ2d at 1476 n.19 (TTAB 2017). See discussion supra. The parties are reminded
that the Board may treat as not confidential that material which cannot reasonably be
considered confidential, notwithstanding a designation as such by a party. Trademark Rule
2.116(g), 37 C.F.R. § 2.116(g).