Kobil Systems GmbH

Trademark Trial and Appeal Board

Jul 10, 2020

79240555 (T.T.A.B. Jul. 10, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 10, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Kobil Systems GmbH
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Serial No. 79240555
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Timothy P. Naill of Reinhart Boerner Van Deuren, P.C.
for Kobil Systems GmbH.

Anthony Rinker, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
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Before Mermelstein, Wellington, and Greenbaum,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Kobil Systems GmbH (“Applicant”) seeks registration on the Principal Register of
the mark KOBIL mSign, in standard characters, for goods that include:
software for secure transactions in the fields of finance, recreation, games,
bookings, telecommunications, fidelity, providing of training and tuition,
identity verification, entrance and access control, pay tv, security, health,
medicine, transport, measurements, closed environments, localisation and
information technology; . . . computer software for use in the encryption
and decryption of digital files; . . . software for the secure transmission of
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data; . . . software for electronically securing online transactions and data
transfers; . . . [and] software for controlling entrance and access to
computers, computer systems, electronic networks and databases

in International Class 9.1
The Examining Attorney partially refused registration under Trademark Act
Section 2(d), 15 U.S.C. § 1052(d), based on a likelihood of confusion with the
registered mark mSign, in standard characters, for “Computer software for
producing digital certificates and digital signatures” in International Class 9.2 The
partial refusal is limited to Applicant’s goods in Class 9 listed above and does not
pertain to the other goods listed in that class or services in Class 42 (see n.1).
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. The appeal has been fully briefed.
For the reasons set forth below, we affirm the refusal to register.
I. Likelihood of Confusion
Our 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, referred to as “DuPont factors”); see also In re Majestic Distilling Co., 315

1 Application Serial No. 79240555 was filed on May 9, 2018 based upon a request for extension
of protection filed under Section 66(a) of the Trademark Act, 15 U.S.C. § 1141f. The
application also covers services in Class 42, but the refusal is limited to certain of the Class
9 goods.
2 Registration No. 5337214 issued on November 14, 2017.
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F.3d 1311, 65 USPQ2d 1201, 1203 (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). Two key considerations are the
similarities between the marks and the relatedness of the goods. See In re Chatam
Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004); 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.”).
A. Relatedness of the Goods and Their Trade Channels
We first consider the DuPont factors involving the relatedness of the goods and
their channels of trade, and make our determination in this regard based on the goods
identified in the application (and subject to the partial refusal) and those in the cited
registration. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1052
(Fed. Cir. 2018); In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed.
Cir. 1997); see also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014).
The goods that the Examining Attorney has identified as subject to the refusal
involve security software used in connection with secure transactions, identity
verification, and encryption and decryption of digital files. The cited registration
covers “computer software for producing digital certificates and digital signatures.”
Applicant does not dispute the relatedness of the involved goods. A plain reading
of the identifications reveals these goods are very closely related inasmuch as they
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consist of software used for secure identification and data transmission security
purposes.3
Indeed, Applicant’s more broadly described “identity verification” software can be
construed as overlapping with or encompassing of Registrant’s “digital certificate and
signature” software.4 To the extent that these goods are overlapping or legally
identical, at least in part, we must further assume that these goods will be offered in
the same trade channels to the same classes of purchasers. See In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (identical goods or services are
presumed to travel in same channels of trade to same class of purchasers); see also In
re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1745 (TTAB 2018), aff’d mem. 777 Fed.
Appx. 516 (Fed. Cir. Sept. 13, 2019) (“Because the [goods or] services described in the
application and the cited registration are identical, we presume that the channels of

3 We also note the Examining Attorney, with Office Action issued April 12, 2019, submitted
a few third-party registrations, each covering software like that described in the application
and subject of the refusal as well as software like that described in the cited registration.
This evidence helps show the involved goods are of a kind that may emanate from a single
source under a single mark. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86
(TTAB 1993). However, we note that one third-party registration submitted is irrelevant to
our analysis because it issued based solely on ownership of foreign registrations without any
claim of use in commerce in the U.S. See Calypso Tech., Inc. v. Calypso Capital Mgmt., LP,
100 USPQ2d 1213, 1221 (TTAB 2011).
4 We take judicial notice that a “digital signature” is defined as: “a type of electronic signature
— a mathematical algorithm routinely used to validate the authenticity and integrity of a
message (e.g., an email, a credit card transaction, or a digital document). Digital signatures
create a virtual fingerprint that is unique to a person or entity and are used to identify users
and protect information in digital messages or documents. In emails, the email content itself
becomes part of the digital signature. Digital signatures are significantly more secure than
other forms of electronic signatures.” Taken from Official U.S. Department of Homeland
Security -- Cybersecurity & Infrastructure Security Agency website (www.us-
cert.cisa.gov/ncas). See In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1642 (TTAB
2015) (taking judicial notice of U.S. government online publications).
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trade and classes of purchasers are the same.”); American Lebanese Syrian Assoc.
Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011)
(where the goods or services were legally identical, “the marketing channels of trade
and targeted classes of consumers and donors are the same”).
We accordingly weigh the second DuPont factor in favor of likely confusion. With
respect to the goods that are in part legally identical, we further find the third DuPont
factor, involving the goods’ trade channels, also strongly favors finding confusion
likely.
B. Similarity of the Marks and Alleged Weakness of MSIGN
We first compare Applicant’s standard character KOBIL mSign mark to the cited
standard-character mark mSign “in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imps. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005) (quoting DuPont, 177 USPQ at 567). “Similarity in any one of these elements
may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, 126
USPQ2d at 1746 (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). We
assess not whether the marks can be distinguished in a side-by-side comparison, but
rather whether their overall commercial impressions are so similar that confusion as
to the source of the goods offered under the respective marks is likely to result. Coach
Servs. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir.
2012); see also Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012). The
focus is on the recollection of the average purchaser, who normally retains a general
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rather than a specific impression of trademarks. In re Binion, 93 USPQ2d 1531
(TTAB 2009); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Here,
the relevant consumer is one seeking to purchase software for use in the fields
described in the application and cited registration, including identity verification,
encryption, digital certificates and digital signatures.
We also are mindful that “[w]hen marks would appear on virtually identical goods
or services, the degree of similarity necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Shen Mfg. Co., Inc. v. The Ritz Hotel
Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004) (where goods are highly
related, “the degree of similarity necessary to support a conclusion of likely confusion
declines.”).
It is readily apparent that Applicant is seeking to register a mark that
incorporates the registered mark, mSign, in its entirety and prefaces this term with
Applicant’s trade name, KOBIL. Although there is no per se rule that confusion is
likely when one mark encompasses another, it certainly increases the similarity
between them. See, e.g., Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 194 USPQ
419, 422 (CCPA 1977) (finding CALIFORNIA CONCEPT marks substantially similar
to prior mark CONCEPT); Coca-Cola Bottling Co. of Memphis, Tenn., Inc. v. Joseph
E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (applicant’s mark
BENGAL LANCER for club soda, quinine water and ginger ale is likely to cause
confusion with BENGAL for gin).
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A key issue in determining the degree of similarity between the marks is assessing
the level of distinctiveness of the term mSign, the registered mark. On the one hand,
if sufficiently distinctive, a consumer already familiar with Registrant’s mSign mark
may mistakenly believe that Applicant’s KOBIL mSign mark is identifying the same
source for the goods, albeit prefaced with a house mark or tradename that was
previously unknown to the consumer. See In re Fiesta Palms LLC, 85 USPQ2d 1360,
1364 (TTAB 2007) (“When, as in this case, the common part of the marks is identical,
purchasers familiar with the registrant’s mark are likely to assume that the house
mark simply identifies what had previously been an anonymous source.”); In re
Riddle, 225 USPQ 630, 632 (TTAB 1985) (“Richard Petty’s Accu Tune” for automotive
service centers specializing in engine tune-ups and oil changes likely to cause
confusion with “Accutune” automotive testing equipment).
On the other hand, if “mSign” is determined to be highly suggestive in the relevant
field of computer software used for encryption, producing secure digital certificates
and digital signatures, then the addition of Applicant’s tradename may suffice for
purposes of distinguishing the two marks. See Knight Textile Corp. v. Jones Inv. Co.,
75 USPQ2d 1313 (TTAB 2005) (NORTON MCNAUGHTON ESSENTIALS held not
likely to be confused with ESSENTIALS when the marks are used in connection with
women’s clothing based, in part, on dictionary evidence and twenty-three third-party
registrations, owned by twenty-one different owners, for similar goods for marks
which include ESSENTIALS showing that ESSENTIALS was highly suggestive).
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At the same time, we keep in mind that the cited registration for the standard
character mark is on the Principal Register without a claim of acquired
distinctiveness and thus is entitled to a presumption of validity that cannot be
challenged in this ex parte proceeding. 15 U.S.C. § 1057(b). That is, while we look to
whether the cited registered mark is highly suggestive, and perhaps has a limited
scope of protection as a result, we cannot entertain an attack on the mark as being
descriptive or otherwise not inherently distinctive.
Applicant argues in its brief that “[b]ecause MSIGN is highly suggestive of the
Compared Goods, then the Applicant’s use of its house mark KOBIL together with
MSIGN for the partial listing of goods related to software is sufficient to distinguish
the Compared Marks and obviate any asserted likelihood of confusion with respect to
the Compared Marks.”5 In support, Applicant relies on the following evidence:6
 Internet printouts of a Google search result for the term “msign,” with results
indicating a handful of uses of the term, including use by “Scriptel” (the owner
of the cited registration);

 Printouts from iTunes website (www.itunes.apple.com) showing an “mSign”
app for download that “makes attendance tracking and related activities fun
and simple.”

 Printouts from Google Play website (www.play.google.com) showing an
“mSign” app provided by Sacombank for download that “provide[s] strong and
reliable two-factor authorization for Sacombank eBanking’s customers.”

 Printouts from Wikipedia (www.wikipedia.org) for “Mobile Electronic
Signature Consortium (referred to as ‘mSign’)” indicating that the term
references a consortium comprising different member companies and “[i]n
October 2000, the consortium published an XMI-interface defining a protocol

5 7 TTABVUE 9.
6 Submitted with Applicant’s response filed March 25, 2019.
Serial No. 79240555
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allowing service providers to obtain a mobile (digital) signature from a mobile
phone subscriber.”

The evidence here does not rise to the level in terms of quantity or quality of that
relied upon in Knight Textile, or similar cases, where we have found one party’s mark
is so highly suggestive that a newcomer can adopt the same term prefaced by the
newcomer’s trade name or house mark, and use on closely related or overlapping
goods, without confusion being likely to ensue. Applicant’s evidence shows that there
is a consortium involved in digital signature and encryption software standards and
the consortium is referred to as “mSign.” The extent of familiarity with this
consortium among the relevant public in the U.S. is unknown and we note that many
of the consortium members are foreign organizations. Moreover, the combination of
the Google search and app websites evidence reveals only that, other than Registrant,
there are approximately 4-5 additional entities that use the term “mSign” in
connection with software.7 Furthermore, the iTunes app relates to “attendance
tracking” and thus appears to be only tangentially related to the involved goods. In
Knight Textile, the record included a dictionary definition defining the very term
“essentials,” as well as over 20 third-party registrations incorporating the term. In
this case, there is no evidence of any third-party registrations that incorporate the
term mSign (or MSIGN) in connection with computer software. Cf. In re
i.am.symbolic, 123 USPQ2d at 1751 (Registrations are not evidence of use of the

7 We note that two companies identified in the Google search printouts that use the term
“mSign” in connection with software -- “MCT Technology” and “Sacombank” -- are also the
two entities listing the apps in the iTunes and Google Play store websites.
Serial No. 79240555
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marks in the marketplace, but may be relevant to show whether a term is descriptive,
suggestive, or so common that the public will look to other elements to distinguish
the source of the goods or services).
Ultimately, the record here does not support a finding that the term “mSign” is so
highly suggestive and thus weak such that Applicant’s addition of its trade name,
KOBIL, to Registrant’s mark would be sufficient for purposes avoiding confusion.
Although we take notice that both marks contain the word “Sign,” and this is
suggestive of a signature feature or aspect of the software, it is immediately preceded
by a lower-case letter “m,” making the term “mSign” unitary and identical in both
marks. Again, we must presume Registrant’s mark, comprising this term, is
inherently distinctive in connection with its goods.
Finally, we point out the marks will obviously have aural and visual similarities
inasmuch as the second term in Applicant’s mark is mSign, which comprises the
entirety of Registrant’s mark. Accordingly, the DuPont factor involving the similarity
of the marks also weighs in favor of a likelihood of confusion.
C. Conclusion
Based on the record before us, we find confusion is likely because Applicant’s
mark, KOBIL mSign, incorporates and is thus very similar to the registered mark,
mSign, and both marks are used on very similar, if not the same, type of software.
We reach this conclusion keeping in mind that it is Applicant’s duty as a newcomer
to avoid confusion. Hewlett-Packard, 62 USPQ2d 1003; In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1691 (Fed. Cir. 1993).
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Decision: The partial refusal to register Applicant’s mark is affirmed.
The following goods, subject of the refusal, will be deleted from the application in
due course:
software for secure transactions in the fields of finance, recreation, games,
bookings, telecommunications, fidelity, providing of training and tuition,
identity verification, entrance and access control, pay tv, security, health,
medicine, transport, measurements, closed environments, localisation and
information technology; . . . computer software for use in the encryption
and decryption of digital files; . . . software for the secure transmission of
data; . . . software for electronically securing online transactions and data
transfers; . . . [and] software for controlling entrance and access to
computers, computer systems, electronic networks and databases.

The application will be forwarded for publication as to the remaining goods in
Class 9, and services in Class 42.