Servicios Tecnologicos Singulares, S.A.

Trademark Trial and Appeal Board

Nov 12, 2010

No. 77401161 (T.T.A.B. Nov. 12, 2010)

Mailed:
November 12, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Servicios Tecnologicos Singulares, S.A.
________

Serial No. 77401161
_______

Perla M. Kuhn of Hughes Hubbard & Reed LLP for Servicios
Tecnologicos Singulares, S.A.

Thomas M. Manor, Trademark Examining Attorney, Law Office
110 (Chris A. F. Pedersen, Managing Attorney).
_______

Before Grendel, Zervas and Ritchie, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

On February 20, 2008, Servicios Tecnologicos
Singulares, S.A. (“applicant”) filed an application to
register the mark

THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.
Ser No. 77401161
2
on the Principal Register for goods and services including:1
“Teaching apparatus and instruments, namely,
computer software for databasing, visualization,
virtual reality immersion end integration of
Spanish language courses with on-line member
communities; apparatus for recording,
transmission or reproduction of sound or images;
prerecorded magnetic data carriers for recording,
storage and reproduction of information, data,
texts, sounds or signals and education courses of
instruction in the field of Spanish language;
recording discs, namely, pre-recorded video
cassettes, digital video discs, digital versatile
discs, DVDs, and high definition digital disks
featuring educational courses of instruction in
the field of Spanish language” in International
Class 9; and

“education, namely, education information;
education services, namely, providing classes,
seminars, workshops in the field of the teaching
and training of the Spanish Language; providing
of training in the fields of teaching and
training of Spanish language; organizing
exhibitions for cultural activities” in
International Class 41.

Applicant filed its application pursuant to the provisions
of Sections 1(b) and 44(d) of the Trademark Act, 15 U.S.C.
§§ 1051(b) and 1126(d), and entered a translation statement
into the application record providing that the mark
translates into English as “HELLO, HOW ARE YOU?”2 During

1 Some goods in International Class 9 and all of the goods
in International Class 16 have not been refused
registration.
2 Applicant also entered the following description of the
design into the application record: “The mark consists of
a quotation mark shape outlined in white/grey and then
green. The interior field is shaded light green with the
Ser No. 77401161
3
prosecution of its application, applicant withdrew the
Section 1(b) basis for registration, after the examining
attorney accepted applicant’s foreign registration
certificate.
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), in view of
the following two previously registered marks:
Registration No. 1970154 (renewed) issued to
Scholastic Inc. (“Scholastic”) for the mark QUE
TAL? (in standard character form) for “series of
periodicals, namely magazines used for teaching
high school students the Spanish language” in
International Class 16;3 and

Registration No. 3035109 for the mark HOLA (in
standard character form) issued to Hola Spanish
Language Center (“HSLC”) for “educational
services, namely, conducting Spanish language
instruction in private, one-on one or small group
conversational tutorials, group classes, high
school Advanced Placement exam preparation
classes, and classes in the field of Spanish
culture travel” in International Class 41.4

Applicant has appealed the final refusal of its
application. Both applicant and the examining attorney
have filed briefs. As discussed below, the refusal to

universal symbol for standby in the center which is
white/grey and outlined in green.”
3 The registration record provides that an English
translation of "QUE TAL?" is "how are you?".
4 The registration record provides that HOLA translates to
“hello.”
Ser No. 77401161
4
register is affirmed for both registrations for both
International Classes.
Before considering the merits of this appeal, we
address an evidentiary issue. Applicant submitted with its
brief printouts from Internet searches on the Google
database and various webpages with its brief. None of this
material was submitted prior to the filing of the notice of
appeal. The record in an appeal closes upon the filing of
a notice of appeal and the “Board will ordinarily not
consider additional evidence filed with the Board by the
applicant or by the examiner after the appeal is filed.”
See Trademark Rule 2.142(d) and Trademark Trial and Appeal
Board Manual of Procedure (TBMP) § 1207 (2d ed. rev. 2004).
Because this material was not submitted prior to the filing
of the notice of appeal, the examining attorney’s objection
to this material is sustained and we have not considered
the material attached to applicant’s brief. We add that
our decision would not be any different had we considered
this material.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
Ser No. 77401161
5
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
We begin our analysis with the du Pont factor
regarding the similarity of the goods and services.
Applicant has not addressed this issue in its brief, and
has not offered any evidence to dispute any suggestion that
the goods and services are related to one another.
Applicant’s “teaching apparatus and instruments,
namely, computer software for databasing, visualization,
virtual reality immersion end integration of Spanish
language courses with on-line member communities; apparatus
for recording, transmission or reproduction of sound or
images; prerecorded magnetic data carriers for recording,
storage and reproduction of information, data, texts,
sounds or signals and education courses of instruction in
the field of Spanish language; recording discs, namely,
pre-recorded video cassettes, digital video discs, digital
versatile discs, DVDs, and high definition digital disks
featuring educational courses of instruction in the field
of Spanish language” are related to HSLC’s educational
Ser No. 77401161
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services and Scholastic’s series of periodicals because a
consumer would use applicant’s goods concurrently and in
conjunction with both registrants’ goods and services,
while learning Spanish. As for applicant’s “education
services, namely, providing classes, seminars, workshops in
the field of the teaching of the Spanish Language,” these
services are identical to HSLC’s “conducting Spanish
language instruction in private, one-on one or small group
conversational tutorials, group classes, high school
Advanced exam preparation classes.” Applicant’s other
services are otherwise related to HSLC’s services and
Scholastic’s goods because they all relate to Spanish
language instruction and most would be used concurrently by
customers in learning Spanish.
Additionally, the Examining Attorney submitted
numerous use-based, third-party registrations for goods and
services listed in the application and registrations.5
Third-party registrations which individually cover a number
of different products that are based on use in commerce may
have some probative value to the extent that they serve to
suggest that the listed products are of a type which may

5 We have given no consideration to expired or cancelled
third-party registrations; generally they are evidence only
of the fact that the registrations issued. In re Brown-
Forman Corp., 81 USPQ 1284 (TTAB 2006).
Ser No. 77401161
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emanate from the same source. In re Albert Trostel & Sons
Co., 29 USPQ2d 1783 (TTAB 1993); In re Mucky Duck Mustard
Co. Inc., 6 USPQ2d 1467 (TTAB 1988). The registrations
listed below are representative.
Registration No. 2718676 for DEP for newsletters
and teaching materials in the field of language
arts; pre-recorded computer disks featuring
educational information in the field of language
arts; and providing courses of instruction in the
field of language arts;

Registration No. 2902928 for D DYNED and Design
for software for foreign language acquisition,
and providing foreign language instruction at all
levels;

Registration No. 3209505 for A (stylized) for
providing courses of instruction to students
kindergarten through Grade 12 and educational
DVDs and CDs in language instruction;

Registration No. 3540624 for TEACHSTAR and Design
for DVDs featuring educational programs, printed
educational materials in the field of language
and educational programs in the field of language
arts;

Registration No. 3510867 for MUSIC LINGUA FOREIGN
LANGUAGE FOR KIDS for CDs featuring foreign
language instruction for children, educational
booklets in the field of foreign language, and
conducing classes in foreign language education
for children; and

Registration No. 3030014 for EUROCENTRES for
computer software and compact discs featuring
instruction in learning languages, magazines and
newspapers in the field of language learning, and
conducting classes in the field of language
learning.

Ser No. 77401161
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With this evidence, the examining attorney has demonstrated
that the goods and services in the registrations are of a
type that come from the same source as the goods and
services in the application which are the subject of this
appeal.
In view of the foregoing, we find that the goods and
services of the application are similar to the goods and
services of the registrations and resolve the du Pont
factor regarding the similarity of the goods and services
against applicant.
Next, we consider the similarity of the marks when
viewed in their entireties in terms of appearance, sound,
connotation and overall commercial impression. Palm Bay
Imports, Inc., supra. The test, under this 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 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). When
marks would appear on even some identical services, as they
Ser No. 77401161
9
do here with respect to the services of the HSLC’s
registration, the degree of similarity necessary to support
a conclusion of likely confusion declines. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698 (Fed. Cir. 1992). Additionally, in articulating
reasons for reaching a conclusion on the issue of
likelihood of confusion, “there is nothing wrong in stating
that, for rational reasons, more or less weight has been
given to a particular feature of a mark, provided [that]
the ultimate conclusion rests on a consideration of the
marks in their entireties.” In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
With these principles in mind, we turn to applicant’s
mark, which contains word and design components. The
examining attorney cites the proposition that the word
component of a mark is normally accorded greater weight in
determining the likelihood of confusion because the word
portion is more likely to be impressed upon a purchaser’s
memory and used in calling for the goods or services. In
re Dakin’s Miniatures Inc. 59 USPQ2d 1593 (TTAB 1999).
This proposition holds true in this case, where the design
component is not likely to be considered in calling for the
goods or services. Also, there is no apparent relationship
between the design and the wording in the mark. In other
Ser No. 77401161
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words, the meaning or commercial impression of the wording
in the mark is not affected by the design.
Applicant has argued that the power button in the
shape of a dialogue bubble is the dominant component
because it “occupies the central portion in the mark and is
larger than the associated word elements,” and that it is
“an unmistakable reference to the technological nature of
the goods and services.” Brief at 6. The design is not
such that it relegates the wording to a minor component of
the mark; rather, the design is centered over the wording,
which is proportionate to the design, and the combination
give symmetry to the mark. Also, even if power button
depicted in the mark somehow highlights the technological
nature of the services, its design is composed of rather
common, ordinary elements which, alone or in combination,
are not likely to make much of an impression on consumers.
Applicant itself has stated in the description of the mark
that the power button is “universal”; and the dialog bubble
is certainly a common manner of depicting wording meant to
be spoken. Although the combination of these two common
elements may be unusual, the two elements themselves are
not unusual, and would not be articulated when pronouncing
the mark.
Ser No. 77401161
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Based on the foregoing, we find the wording in the
mark dominates over the design component, and give the
wording more weight than the design in determining the
similarity of the marks.
The wording in applicant’s mark is composed of two
parts, each of which is a registered mark owned by a
different registrant. The two phrases, translated jointly
as “hello, how are you,” is a phrase commonly used when
greeting someone.
Applicant has argued that the mark is diluted and weak
and has submitted evidence with its October 21, 2009
response in support.6 Its Google search results for “HOLA
‘language classes’” are not particularly probative because
they do not indicate whether the websites are active, they
do not necessarily show trademark use (e.g., “Spanish
Classes – Language classes[,] Hola, I’m a Native Spanish
Teacher living in Singapore, if you want to have Private
Spanish Classes, contact me via email…”) and we cannot
discount that Hola Language Service, Hola! Language Center,
and H.O.L.A. Language LLC, all identified in the Google
results, are somehow related to one another or to

6 To be clear, we have not considered the evidence submitted late
with applicant’s brief to show that the registered marks are
diluted and weak.
Ser No. 77401161
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registrant Hola Spanish Language Center. The Google search
results applicant submitted for the Google search “Que Tal
Language program” similarly suffers, thereby limiting its
probative value. In addition, (a) the quetalwayzata.org
webpage, if it is active, as one webpage does not convince
us that QUE TAL is widely used as a trademark for Spanish
language programs; and (b) Que Tal? as the title of the
book on the amazon.com webpages does not show trademark
use. From applicant’s limited evidence, we cannot conclude
that the shared terms are diluted and weak.7
Applicant has also argued at p. 4 of its brief that
“the terms HOLA and QUE TAL are commonly used in connection
with Spanish language education materials and are therefore
weak,” relying on Daddy’s Junky Music Stores Inc. v. Big
Daddy’s Family Music Center, 42 USPQ2d 1173, 1178 (6th Cir.
1977), which stated:
It is true that the more common a word or phrase
is, the less inherent trademark strength it may
have, even when the mark has an arbitrary
relation to the good or service to which it
applies. See Amstar Corp., 615 F.2d at 260
(although application of word “Domino” to sugar
is arbitrary, mark enjoys only limited protection
beyond sugar and related food products in part
because the word “Domino” is extremely common).
Again, however, a reduction in the strength of a
mark due to its frequent … usage in the English

7 Applicant has no support for its statement at p. 3 of its brief
that “hola” and “que tal” are “among the very first terms taught
to students learning the Spanish language ….” Even if they are,
this does not diminish any trademark strength in these terms.
Ser No. 77401161
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language generally occurs only if the products
and services of the parties are different.

Applicant’s argument is red herring; there is limited
evidence that HOLA and QUE TAL? are part of trade
designations. In Standard Brands Inv. V. Peters, 191 USPQ
158, 172 (TTAB 1976), the Board clarified that the inquiry
is not the frequency of use of the term in general, but the
frequency of use of the term as part of a trade
designation:
There is no question but that opposer, by virtue
of its long and extensive use and promotion of
its “ROYAL” marks in connection with its line of
food products has achieved a niche for itself in
the food industry and thereby possesses a
valuable and protectable interest in the mark
“ROYAL”. The question involved in this
proceeding is what measure of protection should
be afforded a mark like “ROYAL”. It is settled
that, unlike in the case of arbitrary or unique
designations, suggestive or highly suggestive
terms, because of their obvious connotation and
possible frequent employment in a particular
trade as a part of trade designations, have been
considered to fall within the category of “weak”
marks, and the scope of protection afforded these
marks have been so limited as to permit the use
and/or registration of the same mark for
different goods or of a composite mark comprising
this term plus other matter, whether such matter
be equally suggestive or even descriptive, for
the same or similar goods. The term “ROYAL”,
because of its obvious laudatory suggestive
connotation, has been considered by various
tribunals to be a “weak” mark entitled to a
narrow orbit of protection in determining the
question of the likelihood of confusion.
(Citations omitted.) As stated in Peerless
Electric Company v. Peerless Electric, Inc.,
supra;
Ser No. 77401161
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There are certain names which are given
different tags- descriptive, laudatory,
or the like- which are technically
known as ‘weak,’ meaning that an
exclusive right in them is hard to
obtain. Such names as ‘Superior,’
‘Majestic,’ and ‘Royal’ are so common
that the use in and of itself imports
nothing * * *. (Emphasis added.)

Applicant’s argument is therefore rejected.
When we consider applicant’s mark and HSLC’s HOLA
mark, we find them to be more similar than dissimilar in
view of the inclusion of HOLA in applicant’s mark. The
meaning and the commercial impression of the marks are
highly similar, with both communicating a greeting. They
are also more similar than dissimilar in appearance and
sound, due to the presence of HOLA in applicant’s mark. In
considering applicant’s mark and Scholastic’s QUE TAL?
mark, we find them to be similar for the same reasons we
stated in our discussion of HSLC’s mark. In sum, we find
both of the registered marks to be similar to applicant’s
mark and resolve the du Pont factor regarding the
similarity of the marks against applicant.
Because we find applicant’s marks to be similar to
both of registrants’ marks, and because the applicant’s
goods and services are either overlapping or related to
those of registrants, we find that there is a likelihood of
Ser No. 77401161
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confusion between applicant’s marks and those of HSLC and
Scholastic. Those consumers who know of HSLC’s mark will
likely be confused by applicant’s mark and those consumers
who know of Scholastic’s mark will likely be confused by
applicant's mark. Further, to the extent there is any
doubt in regard to this determination, we are bound to
resolve that doubt in favor of the prior registrants.
Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261,
62 USPQ2d 1001 (Fed. Cir. 2002).
Decision: The refusal to register under Section 2(d)
is affirmed for the goods and services in International
Classes 9 and 41, which are the subject of this appeal.
The application will move forward for publication for the
remaining goods and services in International Class 9,
namely, “automatic vending machines and mechanisms for
coin-operated apparatus; cash registers, calculating
machines; data processing equipment and computers; fire-
extinguishing apparatus,” and the International Class 38
services.