Packet Host Inc.

Trademark Trial and Appeal Board

Aug 2, 2016

No. 86498638 (T.T.A.B. Aug. 2, 2016)

Mailed: August 2, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Packet Host Inc.
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Serial No. 86498638
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Gene Bolmarcich of Law Offices of Gene Bolmarcich
for Packet Host Inc.
Angela G. Duong, Trademark Examining Attorney, Law Office 104,
Dayna Browne, Managing Attorney.
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Before Bergsman, Wolfson and Kuczma,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Packet Host Inc. (“Applicant”) seeks registration on the Principal Register of the
mark PACKET (in standard characters) for “Web site hosting services” in
International Class 42.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Trademark Act Section 2(d); 15 U.S.C. § 1052(d), based on Reg. No. 4738253
for the mark ONEPACKET (in standard characters) for:
Communications services, namely, providing network
access points through which information on the global

1 Application Serial No. 86498638 was filed on January 8, 2015, under Section 1(a) of the
Trademark Act, based upon Applicant’s allegation of first use of the mark on October 1, 2014
and first use of the mark in commerce on December 2, 2014.
This Opinion is not a
Precedent of the TTAB
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computer information network passes from one global
computer information network service provider to another;
Telecommunications services, namely, data transmission
services via a fiber optic network; Providing multiple user
access to a global computer information network
in International Class 38, and:
Computer services, namely, hosting the software, websites
and other computer applications of others on a virtual
private server; Internet-based application service provider,
namely, hosting, managing, developing, analyzing, and
maintaining the code, applications, and software for web
sites of others; Computer services in the nature of
developing, leasing, maintaining, configuring, updating,
monitoring, optimizing, repairing and troubleshooting of
computer software; Providing data backup services;
computer services, namely, providing a website featuring
technology that provides restoration services; network
security management in the nature of firewall services and
virus protection for hosted websites
in International Class 42.2
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.3
Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.

2 Registered on the Principal Register on May 19, 2015.
3 The Examining Attorney also refused registration for the mark under Section 2(e)(1), 15
U.S.C. § 1052(e)(1), but withdrew the refusal in the Final Office Action dated February 5,
2016.
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2003). In any likelihood of confusion analysis, two key, though not exclusive,
considerations are the similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Similarities Between the Services
We turn first to a comparison of Applicant’s services with those of Registrant. In
making our determination under the second du Pont factor, we look to the services as
identified in the involved application and cited registration. We make our
determination regarding the similarity of the services, channels of trade and classes
of purchasers based on the services as they are identified in the application and
registration, respectively. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys. Inc. v. Houston
Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 17893, 1787 (Fed. Cir. 1990). See
also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002).
In this case, Applicant’s services are identified as “web site hosting services.” The
record defines “web hosting” as “a service that allows users to post web pages to the
Internet”4 and that a “web host, or hosting service provider (HSP), is a business that
provides the technologies and services needed for websites to be viewed on the web.”5

4 At https://www.rackspace.com, attached to January 8, 2016 Office Action.
5 Id.
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The recitation of services in the cited registration includes the following computer
services: “hosting the software, websites and other computer applications of others
on a virtual private server” and “network security management in the nature of
firewall services and virus protection for hosted websites.” The recitation also
includes the provision of Internet-based application services, namely, “hosting,
managing, developing, analyzing, and maintaining the code, applications, and
software for web sites of others.” Registrant’s hosting services allow users to post
web pages to the Internet and to virtual private servers and Registrant hosts “code,
applications, and software” for the websites of others. Thus, the recitation of services
in the cited registration are legally identical in part to Applicant’s recitation of
services. Applicant has not argued to the contrary. Moreover, Registrant provides
network security management for hosted websites, which is related to web hosting
services.
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 description
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 a particular class in the application. Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116
USPQ2d 1406, 1409 (TTAB 2015); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d
1734, 1745 (TTAB 2014).
Accordingly, this du Pont factor strongly favors a finding of likelihood of confusion.
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Channels of Trade and Classes of Consumers
Because the services are legally identical in part, and neither Applicant’s
application nor the cited registration contain any limitations on the channels of trade
and classes of purchasers, we must presume that the channels of trade and classes of
purchasers for these identical services are the same. See Stone Lion Capital Partners,
110 USPQ2d at 1161; In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721,
723 (CCPA 1968); 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).
As such, the third du Pont factor – the similarity or dissimilarity of established,
likely to continue trade channels – also favors a finding of likelihood of confusion.
The Marks
We next turn to the first du Pont factor, i.e., whether Applicant’s PACKET mark
and Registrant’s ONEPACKET mark are similar or dissimilar when viewed in their
entireties in terms of appearance, sound, connotation and overall commercial
impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 110 USPQ2d at
1160 (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F. 3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)). We note initially that
because the services are legally identical in part, the degree of similarity between the
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marks which is required to support a finding of likelihood of confusion need not be as
great as where there is a recognizable disparity between the services. See In re Viterra
Inc., 101 USPQ2d at 1908 (citing Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992). See also In re Dixie
Restaurants, Inc., 41 USPQ2d at 1534.
The test under the first du Pont factor is not whether the marks can be
distinguished when subjected to a side-by-side comparison, but rather whether the
marks are sufficiently similar in terms of their overall commercial impression that
confusion as to the source of the goods or services offered under the respective marks
is likely to result. The focus is on the recollection of the average purchaser, who
normally retains a general rather than a specific impression of trademarks. See
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). In this case, both
Applicant and Registrant provide their services to website owners, be they corporate
entities or individuals, who desire a presence on the Internet. Such consumers are
not necessarily sophisticated, but even careful purchasers can be confused as to
source where similar marks are used on identical services. See In re Research
Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (citing Carlisle
Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112
(CCPA 1970)) (“Human memories even of discriminating purchasers … are not
infallible.”).
Applicant’s mark and Registrant’s mark are similar in appearance and
pronunciation to the extent that both include the term PACKET. This term has a
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defined meaning in association with web hosting services; it is “one unit of binary
data capable of being routed through a computer network.”6
In computer networks, a packet is a container or box that
carries data over a TCP/IP network and internetworks. A
packet is the most fundamental logical arbitration of data
that is passed over a network.

A packet normally represents the smallest amount of data
that can traverse over a network at a single time.
…

Whenever a node on a network sends some data over the
network, it passes the data frame to the switch, and later
to the router. The router, after looking at the destination
IP addresses, encapsulates the data and routes it toward
the recipient. This encapsulated data is the packet that is
forwarded over the network.

Packets contain two distinct types of information to reach
the destination completely and correctly, namely control
information and the data it is carrying. The control
information includes source destination addresses,
sequencing format, error detection and correction
mechanisms, all of which help to ensure the optimal
delivery of data. The control information usually resides in
the header and trailer, encapsulating the user data in
between them.7

Both Applicant’s mark PACKET and Registrant’s mark ONEPACKET have
similar meanings because of this shared element, namely, they bring to mind the
“smallest amount of data” that can traverse over a computer network and which are
deployed by hosting services to allow customers to reliably view web pages posted on

6 At http://compnetworking.about.com, attached to February 5, 2016 Office Action. Applicant
has provided a similar definition for the term “network packet” from Wikipedia. “A network
packet is a formatted unit of data carried by a packet-switched network.” Applicant’s
December 11, 2015 response to December 3, 2015 Office Action.
7 At https://www.technopedia.com, attached to January 8, 2016 Office Action.
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the Internet. The addition of the term ONE in Registrant’s mark simply underscores
the commercial impression of a single packet of encapsulated data capable of being
routed through a computer network. Applicant’s argument that because “data is
transmitted by millions, or billions, of packets of data,”8 consumers would pause to
consider the incongruity in Registrant’s mark ONEPACKET applies as well to
Applicant’s mark, and further highlights the similarities between the marks.
Applicant argues that the “evidence of record shows that the term ‘packet’ is a
very common term in trademarks for network and hosting related IT services”9 and
therefore the term PACKET in the registered mark is weak. In support of its
argument, Applicant submitted copies of web pages from thirteen third-party
websites that use the term PACKET. We initially note that none of the web pages
have been submitted in compliance with Safer v. OMS Investments Inc., 94 USPQ2d
1031, 1039 (TTAB 2010). That decision provides that a document obtained from the
Internet is admissible only if it can be identified according to (1) the date the evidence
was published or accessed from the Internet, and (2) its source (e.g., the complete
URL address of the website). However, no objection has been raised to the documents
on this basis, and we have therefore considered them. See In re International Business
Machines Corp., 81 USPQ2d 1677, 1682 n.9 (TTAB 2006); In re White, 73 USPQ2d
1713, 1716 n.5 (TTAB 2004) (Board considered web pages submitted by the
examining attorney because applicant did not object to them); TBMP § 1208.03.

8 Applicant’s Brief p. 5, 4 TTABVUE 6.
9 Applicant’s Brief p. 2, 4 TTABVUE 3.
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Although we have considered the websites, they provide little support for
Applicant’s argument that the cited mark is weak. None of the companies whose web
pages have been submitted by Applicant appear to be engaged in web hosting
services. To the extent that these companies are engaged in computer network, data
communication, or Internet-related services, however, we do not consider their use of
the term PACKET in their names or as service marks to have established that the
term is sufficiently weak or diluted to allow Applicant’s and Registrant’s marks to co-
exist. The websites use the following names and marks for the services indicated
(where such can be determined):
1. Greenpacket – delivering “best connectivity”
2. Packet Pushers – provides weekly content about networking technology
3. Packet Clearing House – provides operational support and security to Internet
infrastructure
4. Packet Forensics – network monitoring and active network defense
5. Cisco Packet Tracer – a network simulation program for students
6. Packet Networking from Ciena - packet-based products for Ethernet business
service delivery
7. Packet Design – helps network operators deliver service across the cloud; uses
telemetry and analytics to figure out how service traffic crosses the network
8. Capture the Packet – a closed network that provides a game-show interface to
assess user’s ability to recognize network threats
9. The Packet Factory – service for “all technology needs”
10. PacketIQ – troubleshooting service to optimize network performance
11. PacketFront Software – “improve your competitiveness by abstracting and
automating your network”
12. Transpacket Fusion Networks – “timing sensitive technology” and optical
network solutions
13. Packetflip – “proxy services” that allow clients to mask their true IP address

In determining the degree of weakness, if any, in the shared term PACKET, we
recognize that “extensive evidence of third-party use and registrations is ‘powerful on
its face,’ even where the specific extent and impact of the usage has not been
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established.” Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New
Millennium Sports, S.L.U., No. 2014-1789, 2015 WL 4934553 (Fed. Cir. Aug. 19,
2015) (citing Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d
1671, 1674-5 (Fed. Cir. 2015)). Nonetheless, here, each mark uses the term PACKET
as part of a composite mark that includes other distinguishing words, none of which
are as close to ONEPACKET as is Applicant’s mark. Further, the extent to which any
of these marks are used in connection with web hosting services is unknown. The
existence of these marks does not establish the weakness of the registered mark.
When the marks PACKET and ONEPACKET are viewed in their entireties, they
are similar in appearance and sound and convey similar connotations and commercial
impressions. Similarity in any one of the elements of sound, appearance, meaning, or
commercial impression would be sufficient to support a determination of likelihood of
confusion. See Krim-Ko Corp. v. The Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526
(CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone
is likely to cause confusion”); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB
1988). In view of the foregoing, we find that the similarities in the marks outweigh
the differences, and that this du Pont factor also weighs in favor of a finding of
likelihood of confusion.
Summary
We have considered all of the arguments and evidence of record as they pertain to
the du Pont likelihood of confusion factors. To the extent that any other du Pont
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factors for which no evidence was presented by Applicant or the Examining Attorney
may nonetheless be applicable, we treat them as neutral.
In light of the foregoing, we conclude that consumers familiar with Registrant’s web
hosting services offered under the mark ONEPACKET would be likely to believe,
upon encountering Applicant’s identical services offered under its mark PACKET
that the services originated with, are associated with, or are sponsored by the same
entity.
Decision: The refusal to register is affirmed.