TracFone Wireless, Inc.v.Spy Phone Labs LLC

Trademark Trial and Appeal Board

Aug 16, 2018

No. 91218042 (T.T.A.B. Aug. 16, 2018)

1
Mailed: August 16, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
————
TracFone Wireless, Inc.

v.

Spy Phone Labs LLC
___

Opposition No. 91218042
___
Candice E. Kim and Matthew R. Gershman of Greenberg Traurig, LLP
for TracFone Wireless, Inc.

Michael A. Freeman of Greenberg Freeman LLP
for Spy Phone Labs LLC.
______
Before Lykos, Adlin and Pologeorgis,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Applicant Spy Phone Labs LLC seeks registration on the Principal Register of the
mark PHONE TRACKER PRO, in standard characters, with a disclaimer of “PHONE
or PRO”, for “computer application software for mobile phones, namely, software for
backup of data” in International Class 9.1 In its notice of opposition, Opposer

1 Application Serial No. 85969404, filed June 25, 2013, under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce.
This Opinion is not a
Precedent of the TTAB
Opposition No. 91218042
2
TracFone Wireless, Inc. alleges prior use and registration of TRACFONE, and
variations thereof, for cellular telephones, prepaid cellular telephone services and
related goods and services, including smart phone apps. Some of Opposer’s pleaded
registrations are over five years old.2 As grounds for opposition, Opposer alleges that
use of Applicant’s mark would be likely to cause confusion with Opposer’s previously
used and registered TRACFONE marks under Section 2(d) of the Trademark Act; and
that use of Applicant’s mark would be likely to dilute Opposer’s TRACFONE marks
under Section 43(c) of the Act.3 In its answer, Applicant denies the salient allegations
in the notice of opposition, and asserts a number of purported “affirmative defenses”
which are in fact merely amplifications of its denials.
I. The Record and Evidentiary Objections
The record consists of the pleadings and, by operation of Trademark Rule 2.122(b),
the file of Applicant’s involved application. In addition, Opposer introduced:

2 Applicant stipulated that Opposer’s pleaded registrations, all of which were properly
submitted with the Notice of Opposition under Trademark Rule 2.122(d)(1), are “valid and
subsisting.” 18 TTABVUE 9.
3 Opposer also pleaded that use of Applicant’s mark would falsely suggest a connection with
Opposer. However, in denying Applicant’s motion for summary judgment, we found this claim
insufficiently pleaded. 13 TTABVUE 1 n.2. Opposer did not amend the claim, which has
therefore been given no consideration. In the same order, we deemed Opposer’s dilution claim
to be amended by consent, and thus sufficient. Id. at 2 n.3 and 10.
Citations to the record refer to TTABVUE, the Board’s online docketing system. Specifically,
the number preceding “TTABVUE” corresponds to the docket entry number(s), and any
number(s) following “TTABVUE” refer to the page number(s) of the docket entry where the
cited materials appear. Where cited testimony or evidence has been designated “confidential,”
we have cited to the confidential filing, which is inaccessible to the public.
Opposition No. 91218042
3
Notice of Reliance (“NOR”) on several of its unpleaded
registrations which have been given no consideration;4 and
Internet printouts. 15 TTABVUE.

NOR on its discovery deposition of Dan Parisi, Applicant’s
owner, President and sole member. 16 TTABVUE.

Testimony deposition of Maria Lovera, Opposer’s Vice
President for Brand Marketing. 18 TTABVUE.5

Applicant introduced:
NOR on third-party registrations; and Opposer’s
interrogatories and document requests and Applicant’s
written responses thereto. 17 TTABVUE.6

Testimony deposition of Dan Parisi, Applicant’s President.
23 TTABVUE.

Testimony deposition of Maria Lovera, Opposer’s Associate
Vice President of Brank Marketing. 25 TTABVUE.7

Testimony deposition of Marc Mahan, Opposer’s Senior
Vice President of Customer Care. 28 TTABVUE.8

4 These registrations issued after Opposer filed its notice of opposition, but before trial.
Opposer did not plead the underlying applications in its notice of opposition, nor did it ever
amend its notice of opposition to plead ownership of these registrations (or their underlying
applications). Opposer may not rely on unpleaded registrations. Herbaceuticals, Inc. v. Xel
Herbaceuticals, Inc., 86 USPQ2d 1572, 1576 n.4 (TTAB 2008); Wet Seal Inc. v. FD Mgt. Inc.,
82 USPQ2d 1629, 1634 (TTAB 2007).
5 The confidential version of this transcript is at 19 TTABVUE.
6 Typically, discovery responses may only be offered into evidence by the inquiring party.
However, we have considered these discovery responses because Opposer has not objected
thereto. TRADEMARK TRIAL AND APPEAL BOARD MANUEL OF PROCEDURE (“TBMP”) § 704.10
(June 2018). Moreover, these requests and responses relate to certain objections made during
testimony depositions.
7 The confidential version of this transcript is at 26 TTABVUE.
8 The confidential version of this transcript is at 29 TTABVUE.
Opposition No. 91218042
4
Portions of the record have been designated confidential pursuant to the parties’
stipulated protective order,9 and have been treated as such.
Applicant makes a number of “objections” to Opposer’s evidence which are not true
evidentiary objections to the admissibility of evidence, but rather attacks on the cred-
ibility of the evidence. For example, Applicant argues that portions of the Lovera tes-
timony cited in Opposer’s brief do not support Opposer’s assertions concerning its
customer base for TRACFONE products or its use of the TRACFONE marks specifi-
cally, but instead address all of Opposer’s brands, in combination. Applicant also “ob-
jects” to the timing of certain evidence based on its erroneous belief that Opposer’s
evidence of fame of the TRACFONE mark which postdates Applicant’s filing date is
“irrelevant.”10
Suffice it to say, we are capable of determining whether and to what extent
arguments are supported by the evidence on which they are based. In short, “we

9 Effective June 24, 2016, the Board instituted a revised standard protective order for
currently pending inter partes cases. However, insofar as the parties had already designated
materials as confidential pursuant to the tiers of confidentiality under their own stipulated
protective order (filed May 8, 2015 and approved on May 12, 2015), those designations remain
in effect.
10 “For purposes of likelihood of confusion, the Board generally accepts and considers evidence
related to likelihood of confusion for the period up to the time of trial, and this includes
evidence of the fame of a plaintiff’s mark. This is distinct from a claim of dilution under
Section 43(c) of the Trademark Act where an element of the claim is acquisition of fame prior
to the defendant’s first use or application filling date.” Inter IKEA Sys. B.V. v. Akea, LLC,
110 USPQ2d 1734, 1740 n.18 (TTAB 2014) (citation omitted). Moreover, while fame prior to
a defendant’s priority date is an element of a dilution claim, that does not mean we would
not also consider dilution fame evidence through the time of trial, provided that the
prerequisite of establishing fame prior to the defendant’s priority date is met.
Opposition No. 91218042
5
simply accord the evidence whatever probative value it deserves, if any at all …
Ultimately, the Board is capable of weighing the relevance and strength or weakness
of the objected-to testimony and evidence in this specific case, including any inherent
limitations, and this precludes the need to strike the testimony and evidence.” Hunt
Control Sys. Inc. v. Koninkijke Philips Electronics N.V., 98 USPQ2d 1558, 1564
(TTAB 2011); see also Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1478
(TTAB 2017) (quoting Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121
USPQ2d 1477, 1479 (TTAB 2017)). We have kept Applicant’s “objections” in mind in
determining the probative value of Opposer’s evidence.11
II. Relevant Facts
Opposer was formed and first used the TRACFONE mark for cell phones and
related services in 1996. 18 TTABVUE 11-14 (Lovera Tr. 10-13). It now offers cellular
and smart phones and related goods and services, including prepaid “service plans”
and apps which customers use to manage their accounts. Id. Opposer offers its
products through major retailers such as Walmart, Target, Best Buy and CVS, and
online on its own website, Amazon.com, Walmart.com and other sites. Id. Goods sold
under Opposer’s TRACFONE mark are offered in over 100,000 retail locations. Id. at

11 During Mr. Parisi’s testimony deposition, Opposer objected to the introduction of certain
documents on various grounds, including that the materials were not produced during
discovery, but did not preserve the objections in its Trial Brief. They are therefore waived.
See e.g. TBMP § 527.01(e).
Opposition No. 91218042
6
25 (Lovera Tr. 24). Among Opposer’s pleaded registrations properly made of record
are the following:
Mark Reg. No./
Issue Date
Goods/Services
TRACFONE (typed)12 2114692
Nov. 18, 1997
Renewed

Class 9: electronic communications
equipment, namely, cellular
telephones, prepaid airtime cellular
telephones and cellular telephone
accessories, namely, prepaid airtime
debit cards, battery chargers,
stands, antennae, voice amplifiers
and microphones; computer
programs for use in controlling
and monitoring prepaid airtime
cellular telephone service.13

Class 38: providing cellular
telephone services and providing
monitoring and control services for
use in conjunction with prepaid
airtime cellular phones and debit
cards.

Class 42: wholesale distributorship
featuring of cellular telephones,
prepaid airtime cellular telephones
and prepaid airtime debit cards, and
software for controlling and
monitoring prepaid airtime cellular
service.

12 “[U]ntil 2003, ‘standard character’ marks formerly were known as ‘typed’ marks, but the
preferred nomenclature was changed in 2003 to conform to the Madrid Protocol … we do not
see anything in the 2003 amendments that substantively alters our interpretation of the
scope of such marks.” In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir.
2012).
13 As discussed below, we find that this mark, when used for the services in bold type, is
closest to Applicant’s mark.
Opposition No. 91218042
7

(WIRELESS, INC.
disclaimed)
3220091
March 20, 2007
Renewed
Class 38: Cellular telephone
telecommunications services
provided via prepaid air time
cellular telephones and prepaid air
time cellular telephone calling card
services.

3664479
Aug. 4, 2009
Section 8 Affidavit
accepted
Class 35: Distributorship services
featuring cellular telephones,
prepaid air time cellular telephones
and prepaid air time debit cards,
and software for controlling and
monitoring prepaid air time cellular
services, on-line retail store services
featuring cellular telephones,
prepaid wireless air time cards,
cellular telephone accessories and
wireless services.
1 TTABVUE 19-136. As indicated, Applicant stipulated that Opposer’s pleaded
registrations are “valid and subsisting.” 18 TTABVUE 9.
Opposer has a large customer base, though the specifics are designated as
confidential. Id. at 25-26 (Lovera Tr. 24-25). While Ms. Lovera eventually admitted
- - but not until Applicant took her testimony deposition -- that only about 25% of
Opposer’s customers purchased TRACFONE-branded goods and services, that
subpopulation is nonetheless also large. 26 TTABVUE 13-15 (Lovera Tr. 12-14).
Opposer’s “main” domain name, which receives approximately 2.8 million hits per
month, is “tracfone.com.” 18 TTABVUE 32 (Lovera Tr. 31).14 The “tracfone.com”
website is ranked by Quantcast as the 514th most trafficked in the United States,

14 There is no evidence about how many unique customers this “hit count” represents.
Opposition No. 91218042
8
immediately behind “npr.org” and immediately ahead of “irs.gov.” Id. at 33 (Lovera
Tr. 32); 15 TTABVUE 49-53 (printouts from “quantcast.com”). However, there is no
evidence revealing where Opposer’s competitors rank on the list. Opposer has over
100,000 Facebook “likes,” 18 TTABVUE at 34 (Lovera Tr. 33), but again there is no
evidence concerning how many “likes” Opposer’s competitors have on Facebook.
Opposer was rated first in customer satisfaction among prepaid cell phone providers
by Consumer Reports from 2012-2014 and first for best customer experience by JD
Powers. Id. at 34-35 (Lovera Tr. 33-34). The Consumer Reports rankings were
discussed in articles by NBC News, Yahoo Finance, and others. 15 TTABVUE 20-47
(printouts from multiple websites). The Consumer Reports January 2014 “Smart-
Phone Shopping Guide” article references “Prepaid carriers TracFone, Straight Talk,
and Net10 (brands of TracFone Wireless, a subsidiary of América Móvil).” Id. at 76-
78 (copy of Consumer Reports article).
Opposer advertises nationally, in print (OK, People and AARP magazines),

Opposition No. 91218042
9
online (CNN.com, NewYorkTimes.com, Yahoo.com) and television (ABC, NBC, CBS,
Fox) and radio (Steve Harvey Morning Show and Pandora). 18 TTABVUE at 26-28
(Lovera Tr. 25-27). Opposer’s advertising expenditures and gross revenues since 2013
are also impressive, but again there is no basis for comparing these figures with those
for Opposer’s competitors. These figures are also designated as confidential. Id. at 31-
32 (Lovera Tr. 30-31). While the totals provided cover each of Opposer’s brands,
rather than TRACFONE products and services alone, the record reveals that the
TRACFONE numbers are also large. Celebrities including Danica Patrick and
Vanessa Williams endorse Opposer’s TRACFONE products and services:

and Opposer has marketing relationships with the owners of the SpongeBob and
Teenage Mutant Ninja Turtles characters. Id. at 35 (Lovera Tr. 34).
Opposer offers its “TracFone My Account” app on Google Play and the Apple Store:

Opposition No. 91218042
10

Id. at 16-17, 92, 95 (Lovera Tr. 15-16 and Ex. 16). The app “launched” in 2013 and
allows Opposer’s customers to “monitor and track their service. They can track their
balance. They can track their service due dates or end dates, and they can track their
usage.” Id. The TRACFONE mark is displayed in the app. Id. The app allows users
to monitor and track multiple accounts; thus, parents may use the app to monitor
their children’s accounts and account activities, for example. Id. at 19-20 (Lovera Tr.
18-19).
Opposer also offers another app, Transfer Wizard, through which customers “can
transfer their contacts information from one phone to another. So it gets stored in the
cloud, and then it comes back down onto the phone that they choose to transfer it to.”
The app also stores and transfers pictures and other information. Id. at 20-21 (Lovera
Tr. 19-20). However, there is no evidence that Opposer uses the TRACFONE mark in
Opposition No. 91218042
11
connection with this app.15 See 25 TTABVUE 27-34 (Lovera Tr. 26-33). Opposer
licenses the app’s software from a third party. 18 TTABVUE 20 (Lovera Tr. 19).
In 2014 and 2015, Opposer offered a parental monitoring app named NQ Family
Guardian to its customers at no charge. Id. at 45-46 (Lovera Tr. 44-45). Opposer
licensed the app’s software from NQ Family Mobile. Id. The app allows users, often
parents tracking their children’s activities, to track locations via GPS, to review texts
sent from or received by the phone, and to monitor phone calls and web activities. Id.
at 47 (Lovera Tr. 46). Opposer does not use any TRACFONE marks in connection
with this app, however.
Applicant was formed in 2009 or 2010. 23 TTABVUE 7 (Parisi Tr. 6). It develops
and markets apps for “child protection.” 23 TTABVUE 8 (Parisi Tr. 7). Specifically,
the PHONE TRACKER PRO app Applicant intends to offer under its involved mark,
like the PHONE TRACKER app it currently offers
would track telephone calls. It would track GPS, which is
the location of where the phone is. It would also check the
– phone number and the actual content of the text
messages sent on the phone. It would also check the web
pages visited on the phone. And we would be taking
information off the phone, I think it’s like every thirty
minutes from the phone. So it’s, you know, con – constantly

15 Ms. Lovera initially testified that the TRACFONE WIRELESS mark appears in this app.
18 TTABVUE 20 (Lovera Tr. 19). When Applicant took her testimony deposition, however,
she modified her testimony, claiming only that Opposer’s trade name “TracFone Wireless,
Inc.” appears in the “legal” fine print at the bottom of the Google Play listing for the app.
While this is not completely irrelevant, we do not assume that many consumers generally
read fine print in contracts or offers for sale, and there is no evidence that TRACFONE is
featured more prominently than this in connection with Opposer’s products or services
offered under different brands such as STRAIGHT TALK.
Opposition No. 91218042
12
being updated. So you would know the location of where
your child is at all times.
Id. at 9 (Parisi Tr. 8). Currently, Applicant offers its PHONE TRACKER app in what
Mr. Parisi referred to as the “Android store,” presumably meaning Google Play

and its SPY PHONE app in the Apple store. Id. at 10, 100 (Parisi Tr. 9 and Ex. 1).16
Applicant also offers the PHONE TRACKER app on its website, “phonetracker.com”:

16 The SPY PHONE app is much less robust than the PHONE TRACKER app because the
Apple operating system only allows GPS to be tracked rather than texts, website visits, etc.
23 TTABVUE 31 (Parisi Tr. 30).
Opposition No. 91218042
13

Id. at 104 (Parisi Tr. Ex. 2). According to Mr. Parisi, Applicant’s attempt to register
PHONE TRACKER was unsuccessful: “We were turned down twice by the
Trademark Office.” Id. at 11 (Parisi Tr. 10).
Applicant is still developing its PHONE TRACKER PRO app, which is intended
to be an advanced version of the PHONE TRACKER app which Applicant currently
offers. The PHONE TRACKER PRO app would allow more than one phone and user
to be “tracked.” Id. at 53-55 (Parisi Tr. 52-54). According to Mr. Parisi, there is no
“overlap” between the functions Applicant’s PHONE TRACKER app performs and
the functions Opposer’s TRACPHONE My Account app performs. Id. at 41, 45, 51,
and 58-59 (Parisi Tr. 40, 44, 50, 57-58).
III. Standing and Priority
Opposer’s pleaded registrations, 1 TTABVUE 19-136, which Applicant stipulates
are “valid and subsisting,” 18 TTABVUE 9, establish Opposer’s standing. See
Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058,
Opposition No. 91218042
14
1062 (Fed. Cir. 2014); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1844 (Fed. Cir. 2000). Because Applicant has not counterclaimed to cancel any
of Opposer’s registrations, priority is not at issue with respect to the marks and goods
and services identified therein. King Candy Co. v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
IV. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth
factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d)
goes to the cumulative effect of differences in the essential characteristics of the goods
and differences in the marks.”). Opposer bears the burden of establishing that there
is a likelihood of confusion by a preponderance of the evidence. Cunningham, 55
USPQ2d at 1848. We consider the likelihood of confusion factors about which there
is evidence or argument, and treat the remaining factors as neutral.
Here, we focus on Opposer’s pleaded Registration No. 2114692 for TRACFONE in
typed form for, inter alia, “computer programs for use in controlling and monitoring
prepaid airtime cellular telephone service.” If we find confusion likely between this
Opposition No. 91218042
15
mark and Applicant’s involved mark, we need not consider the likelihood of confusion
between Applicant’s mark and Opposer’s other pleaded marks. On the other hand, if
we find no likelihood of confusion between Applicant’s mark and the mark in
Opposer’s pleaded ‘692 Registration, we would not find confusion likely between
Applicant’s mark and Opposer’s other pleaded marks, which are less similar to
Applicant’s mark in overall commercial impression. In re Max Capital Grp., 93
USPQ2d 1243, 1245 (TTAB 2010).
A. Strength/Fame of Opposer’s Mark
The fame of a mark is not “an all-or-nothing measure” when considered in the
context of likelihood of confusion. Joseph Phelps Vineyards, LLC v. Fairmont
Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734-35 (Fed. Cir. 2017). Rather,
likelihood of confusion fame “varies along a spectrum from very strong to very weak.”
Palm Bay Imps. Inc., 73 USPQ2d at 1694 (quoting In re Coors Brewing Co., 343 F.3d
1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003)). In examining the strength of
Opposer’s mark, the applicable viewpoint is that of the relevant market, that is, of
consumers of like products. Id. (“[A] mark’s renown within a specific product market
is the proper standard.”). The “stronger” or more “well known” a plaintiff’s mark, the
greater the likelihood that use or registration for even minimally related products
will cause confusion. “The stronger the mark, the more likely it is that encroachment
on it will produce confusion.” Champions Golf Club v. Champions Golf Club, 78 F.2d
1111, 38 USPQ2d 1161, 1164 (6th Cir. 1996). As noted by the Seventh Circuit:
What is intended by references to “strong” and “weak”
marks is the effect of such marks upon the mind of the
Opposition No. 91218042
16
consuming public. A mark that is strong because of its fame
or uniqueness, is more likely to be remembered and more
likely to be associated in the public mind with a greater
breadth of products and services than is a mark that is
weak because relatively unknown or very like similar
marks or very like the name of the product.

James Burrough Ltd. v. Sign of Beefeater, Inc., 540 F.2d 266, 192 USPQ 555, 563 (7th
Cir. 1976). Similarly, the Restatement observes the following:
The distinctiveness or “strength” of a mark measures its
capacity to indicate the source of the goods or services with
which it is used. The greater the distinctiveness of the
mark, the greater the likelihood that prospective
purchasers will associate the same or a similar designation
found on other goods, services, or businesses with the prior
user. “Strong” marks that have a high degree of
distinctiveness are thus protected against the use of
similar marks on a wider range of goods or services than
are “weak” designations that have less distinctiveness or
market recognition.

RESTATEMENT THIRD, UNFAIR COMPETITION § 21, comment i (1995). See generally, 2
J.T. McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, § 11:73
(Author’s Note: (“The Federal Circuit uses the term ‘fame’ instead of ‘strength.’”;
§ 24:49 (4th ed. June 2017)).
Therefore, when an opposer’s mark is exceedingly strong or famous, that “plays a
‘dominant role in the process of balancing the DuPont factors,’ … and ‘[f]amous marks
thus enjoy a wide latitude of legal protection.’” Bose Corp. v. QSC Audio Prods., Inc.,
293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002) (quoting Recot, Inc. v. Benton,
214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000)). It is settled that a strong
mark “casts a long shadow which competitors must avoid.” Kenner Parker Toys, Inc.
v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
Opposition No. 91218042
17
While consumer surveys may provide direct evidence of a mark’s degree of
strength, they are not necessary; indeed, they “rarely appear.” Bose, 63 USPQ2d at
1305. In the absence of direct evidence, fame or strength “of a mark may be measured
indirectly, among other things, by the volume of sales and advertising expenditures
of the goods traveling under the mark, and by the length of time those indicia of
commercial awareness have been evident.” Bose, 63 USPQ2d at 1305. Other relevant
factors include “length of use of the mark, market share, brand awareness, licensing
activities, and variety of goods bearing the mark.” Coach Servs. Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012).
Here, while Opposer has designated most of its evidence of fame/strength as
“confidential,” and we therefore only discuss it generally, suffice it to say that Opposer
has been successful in selling products and services identified in the ‘692 Registration
under its pleaded TRACFONE mark since the mark was introduced more than 20
years ago.17 Opposer has advertised these TRACFONE products and services fairly
extensively, and, as reflected by its gross revenues, successfully. While only
approximately 25% of Opposer’s total customer base purchases goods and services
sold under the mark in the ‘692 Registration, that is still a significant number.
Nevertheless, “[w]e have no context for opposer’s advertising and sales figures,”
or its other evidence of strength/fame, “such as how the figures for [TRACFONE

17 To be clear, we are evaluating the strength/fame of only the TRACFONE mark for the
goods and services for which it is used and registered. Thus, we are considering the portion
of Opposer’s customer base, advertising and revenues attributable to the TRACFONE mark.
Opposition No. 91218042
18
products and services] compare with that for other brands of” cellular phone products
and services. Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826,
1831 (TTAB 2012); see also Bose, 63 USPQ2d at 1309 (“some context in which to place
raw statistics is reasonable”). Moreover, while Opposer has offered additional
evidence of the strength of TRACFONE, besides its sales and advertising figures, it
is also without context, such as circulation figures for print publications or “hit
counts” for websites, and the unsolicited media attention of record consists in large
part of a single article reproduced in many national publications or websites. While
Opposer’s celebrity endorsements and highly rated products and services indicate a
level of renown, there is a lack of specifics about the exact extent of consumer
exposure.
Accordingly, Opposer has not established that TRACFONE is at the highest
possible level of strength/fame. However, Opposer’s evidence easily establishes that
TRACFONE is “renowned” in the cellular phone market, and a commercially strong
mark which is entitled to a concomitantly broad scope of protection. See Joseph Phelps
Vineyards, 122 USPQ2d at 1734-35. This factor therefore weighs in favor of a finding
of likelihood of confusion.18

18 Applicant’s argument that TRACFONE is commercially weak due to the alleged “use” of
similar marks on similar goods is not well-taken because it is unsupported by the evidence
on which it is based. Specifically, the third-party registrations upon which Applicant relies,
17 TTABVUE 7-45, stand alone, unaccompanied by evidence that these marks are actually
in use, and accordingly are “not evidence of what happens in the market place or that
customers are familiar with them.” AMF Inc. v. American Leisure Prods., Inc., 474 F.2d 1403,
177 USPQ 268, 269 (CCPA 1973). Furthermore, the quantity of third-party registration
Opposition No. 91218042
19
B. Similarity of the Marks
We consider the marks “in their entireties as to 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)
(quoting du Pont, 177 USPQ at 567). In doing so, we are mindful that “the Lanham
Act’s tolerance for similarity between competing marks varies inversely with the
fame of the prior mark. As a mark’s fame increases, the Act’s tolerance for similarities
in competing marks falls.” Kenner Parker Toys, 22 USPQ2d at 1456. In this case,
given the strength of Opposer’s TRACFONE mark, the Act’s tolerance for similarity
between the marks is fairly low.
Nevertheless, the similarity between the marks is fairly high. In fact, the marks
are essentially what we have referred to as “reverse combinations” of the same words
or elements or a “transposition” of the most important words comprising the marks.
See e.g., In re Wine Society of America Inc., 12 USPQ2d 1139, 1142 (TTAB 1989)
(affirming refusal to register THE WINE SOCIETY OF AMERICA & Design based

evidence is well below the level that would lead to a finding of weakness. Cf. Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millenium Sports, S.L.U., 797 F.3d
1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Ents., LLC, 794
F.2d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). Perhaps most importantly, none of the
registrations include both PHONE (or a variation thereof such as FONE) and TRACK (or a
variation thereof such as TRAC), and the goods and services identified in many of the cited
third-party registrations are different than those at issue here. See In re i.am.symbolic, LLC,
866 F.3d 1315, 123 USPQ2d 1744, 1751-52 (Fed. Cir. 2017) (“Symbolic has not pointed to any
record evidence to support a finding that multiple third parties use the mark I AM for the
listed goods in its class 3 and 9 applications.”); In re Inn at St. Johns, LLC, 126 USPQ2d
1742, 1746 (TTAB 2018).

Opposition No. 91218042
20
on registration of AMERICAN WINE SOCIETY 1967 & Design, finding that “the
transposition of words does not change the overall commercial impression”) and Bank
of America National Trust and Savings Ass’n v. The American Nat’l Bank of St.
Joseph, 201 USPQ 842, 845 (TTAB 1978) (“the words ‘BANKAMERICA’ and ‘BANK
OF AMERICA’, on the one hand, and ‘AMERIBANC’, on the other, convey the same
meaning and create substantially similar commercial impressions”). In In re
Nationwide Industries, Inc., 6 USPQ2d 1882, 1884 (TTAB 1988), which affirmed the
refusal to register RUST BUSTER for rust-penetrating spray lubricant based on the
mark BUST RUST for penetrating oil, we held that “the reversal in one mark of the
essential elements of another mark may serve as a basis for a finding of no likelihood
of confusion only if the transposed marks create distinctly different commercial
impressions.” However, where transposed marks do not create different commercial
impressions, likelihood of confusion is ordinarily found. See Carlisle Chem. Works,
Inc. v. Hardman & Holden, 434 F.2d 1403, 168 USPQ 110 (CCPA 1970) (reversing
dismissal of oppositions to registration of COZIRC based on use of ZIRCO for related
goods, finding that the marks “are substantially similar, the difference being in a
reversal of syllables which are essentially the same”); In re General Tire & Rubber
Co., 213 USPQ 870, 871 (TTAB 1982) (affirming refusal to register SPRINT STEEL
RADIAL for pneumatic tires based on registration for RADIAL SPRINT for vehicle
tires, finding that the marks “convey the same meaning, that is, a steel radial tire
called ‘SPRINT’ or a radial tire called ‘SPRINT’ both of which could emanate from the
same source”); Plus Prods. v. Physicians Formula Cosmetics, Inc., 198 USPQ 111, 114
Opposition No. 91218042
21
(TTAB 1978) (“… the use of identical terms in inverse order as we have in the present
case is likely to cause confusion in trade when used on such closely related cosmetic
products”); Fisher Scientific Co. v. Ipco Hospital Supply Corp., 165 USPQ 471, 472
(TTAB 1970) (sustaining opposition to MIX O THERM based on THERMIX used for
identical goods, stating “they are in their essentials merely reverse combinations of
the same words, and such being the case, would more than likely convey substantially
the same commercial impressions”); Royal Crown Cola Co. v. Bakers Franchise, 150
USPQ 698, 700 (TTAB 1966), aff’d, 404 F.2d 985, 160 USPQ 192 (CCPA 1969) (“…
the applicant’s compound mark includes the same words which make up opposer’s
mark, that is to say ‘RITE DIET’ is merely ‘DIET-RITE’ transposed. The marks of the
parties create substantially the same commercial impressions …”).
Here, the marks create essentially the same commercial impression because they
each contain the terms PHONE (or Opposer’s modified version thereof, FONE) and
TRACK/TRACKER (or Opposer’s modified version thereof, TRAC). Thus, they each
convey the “tracking” (i.e. the following or monitoring) of phones or phone-related
information. While Opposer’s slightly modified spelling of these terms results in its
terms appearing slightly different than the correct spellings in Applicant’s mark,
Opposer’s modifications do nothing to change the sound or meaning of either term.
Nor does Opposer’s “telescoping” of the terms “trac” and “fone” by combining them
into a single word change the commercial impression of its mark. See e.g., Stockpot,
Inc. v. Stock Pot Rest., Inc., 220 USPQ 52, 54 (TTAB 1983), aff’d, 737 F.2d 1576, 222
USPQ 665 (Fed. Cir. 1984) (finding STOCKPOT and STOCK POT confusingly
Opposition No. 91218042
22
similar); In re Best Western Family Steak House, Inc., 222 USPQ 827, 827 (TTAB
1984) (BEEFMASTER and BEEF MASTER found “practically identical”).19
Moreover, the disclaimed word PRO in Applicant’s mark conveys that the app to be
offered thereunder is the “professional” version of Applicant’s PHONE TRACKER
app, which is already on offer. 16 TTABVUE 14-15 (Parisi Disc. Tr. 41-42) (PHONE
TRACKER PRO is intended “to basically be for [tracking] more than five users … It
was going to be the enhanced version.”). Given Mr. Parisi’s testimony that PHONE
TRACKER PRO will be “the enhanced version,” the disclaimed term “PRO” conveys
that the product has extra features, or is intended for a different class of users. It is
descriptive (or at best suggestive) and thus entitled to less weight in our analysis. See
e.g. Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351,
1354 (Fed. Cir. 2000) (“it is proper to give greater weight to the PACKARD portion of
the PACKARD TECHNOLOGIES mark on the ground that the word ‘technology’ is
highly suggestive/merely descriptive with respect to the services at issue”) and

19 Applicant’s reliance on Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98
USPQ2d 1253 (Fed. Cir. 2011) and Champagne Louis Roederer, S.A. v. Delicato Vineyards,
148 F.3d 1373, 47 USPQ2d 1459 (Fed. Cir. 1998) is misplaced. In Citigroup, there was
evidence of widespread third-party use of the terms CITY and BANK in combination,
whereas here, as indicated, there is no evidence of third-party use of variations of PHONE
and TRACK/TRACKER together, and in Citigroup, the applicant’s mark began with the term
CAPITAL, which was absent from the opposer’s marks, whereas here Applicant’s mark
begins with PHONE, one of only two components of Opposer’s mark. In Champagne Louis
Roederer, CRISTAL and CRYSTAL CREEK “evoked very different images in the minds of
relevant consumers: while the former suggested the clarity of the wine within the bottle or
the glass of which the bottle itself was made, the latter suggested a ‘very clear (and hence
probably remote from civilization) creek or stream.” Champagne Louis Roederer, 47 USPQ2d
at 1460.
Opposition No. 91218042
23
Pioneer Hi-Bred Corn Co. v. Welp, 280 F.2d 151, 126 USPQ 398, 399 (CCPA 1960)
(“‘Hy’ therefore has a suggestive significance, hence is not entitled to as great weight
in determining likelihood of confusion as an arbitrary word or syllable.”).20 In fact, it
merely highlights that there are multiple apps offered under the PHONE TRACKER
mark. See generally In re General Tire, 213 USPQ at 871 (“‘SPRING STEEL RADIAL’
and ‘RADIAL SPRINT’ convey the same meaning, that is, a steel radial tire called
‘SPRINT’ or a radial tire called ‘SPRINT’ both of which could emanate from the same
source.”).
While we have not ignored the differences in how the marks look and sound, those
differences are relatively minor compared to the virtual identity of the marks’
meanings and overall commercial impressions, especially because the marks look and
sound different mainly because the terms are merely reversed. The essential terms,
phone/fone and tracker/trac, remain the same and look and sound quite similar.
Furthermore, the differences resulting from a reversal of the terms in Applicant’s
mark become less significant when we consider that consumers generally do not
encounter competing marks side-by-side, where their differences become more
obvious. That is why the test is not whether marks can be distinguished side-by-side,
but rather whether the marks are sufficiently similar in terms of their overall

20 The disclaimer of PRO is essentially an admission that the term is merely descriptive. In
re Carlson, 91 USPQ2d 1198, 1200 (TTAB 2009); Bass Pro Trademarks LLC v. Sportsman’s
Warehouse, Inc., 89 USPQ2d 1844, 1851 (TTAB 2008). See also Alcatraz Media Inc. v.
Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1762 (TTAB 2013), aff’d mem., 565 Fed.
Appx. 900 (Fed. Cir. 2014).
Opposition No. 91218042
24
commercial impression that confusion as to the source of the goods offered under the
respective marks is likely to result. San Fernando Elec. Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v.
Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991); Odom Sausage Co., Inc. v.
Doskocil Sausage, Inc., 169 USPQ 379, 382 (TTAB 1971). In fact, in this case, where,
as Applicant points out, the marks may not be encountered side-by-side, 35
TTABVUE 28-30, “the average person … may well transpose the elements of [the
marks] in his mind.” Bank of America, 201 USPQ at 845.
Finally, we must consider the marks “in relation to the goods for which
registration is sought.” In re Nationwide Industries, 6 USPQ2d at 1883-84. Here,
given that Applicant and Registrant both offer smart phone apps which access and
manipulate data on smart phones, the marks create similar overall commercial
impressions. Id.
Accordingly, the similarity of the marks weighs in favor of finding a likelihood of
confusion.
C. The Goods, Channels of Trade and Classes of Consumers, and the
Variety of Goods and Services for Which Opposer’s Mark is Used
In arguing that the parties’ goods are unrelated and travel in different channels
of trade to different consumers under the second, third and fourth du Pont factors,
Applicant points out that its PHONE TRACKER “parental monitoring” and “child
protection” app (and its planned PHONE TRACKER PRO app) perform different
functions and serve different purposes than Opposer’s TRACFONE “My Account”
Opposition No. 91218042
25
app. This is not the correct approach for considering the relationship between the
goods, however, for two primary reasons.
First, the parties’ goods need not be identical or even competitive in order to find
likelihood of confusion. Rather, the question is whether the goods are marketed in a
manner that “could give rise to the mistaken belief that [the] goods emanate from the
same source.” Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler,
83 USPQ2d 1715, 1724 (TTAB 2007)); see also Recot, 54 USPQ2d at 1898 (“even if the
goods in question are different from, and thus not related to, one another in kind, the
same goods can be related in the mind of the consuming public as to the origin of the
goods”); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1109 (2007).
Second, the question is not whether Applicant’s PHONE TRACKER apps in fact
perform the same functions or serve the same purposes as Opposer’s apps. The
question is instead whether the goods identified in the involved application are
related to those identified in Opposer’s ‘692 Registration, or whether consumers could
believe the identified goods emanate from the same source. Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir.
2014) (“It was proper, however, for the Board to focus on the application and
registrations rather than on real-world conditions, because “the question of
registrability of an applicant's mark must be decided on the basis of the identification
of goods set forth in the application.”) (quoting Octocom Sys., Inc. v. Houston Comp.
Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)); In re Jump Designs
LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (unrestricted and broad identifications are
Opposition No. 91218042
26
presumed to encompass all goods of the type described). In other words, we must focus
on the parties’ identifications of goods
regardless of what the record may reveal as to the
particular nature of [Applicant’s and Opposer’s goods], the
particular channels of trade or the class of purchasers to
which sales of the [goods] are directed. Even assuming
there is no overlap between [Applicant’s] and [Opposer’s]
current customers, the Board correctly declined to look
beyond the application and registered marks at issue. An
application with ‘no restriction on trade channels’ cannot
be ‘narrowed by testimony that the applicant’s use is, in
fact, restricted to a particular class of purchasers.

Stone Lion, 110 USPQ2d at 1162 (cleaned up) (quoting Octocom, 16 USPQ2d at 1787).
This principle is particularly relevant in this case, because Applicant is currently not
even offering the PHONE TRACKER PRO app, and, as made clear in Stone Lion, the
goods
recited in the application determine the scope of the post-
grant benefit of registration. “[R]egistration provides the
registrant with prima facie evidence of … the registrant's
‘exclusive right’ to use the mark on or in connection
with the goods and services specified in the certificate of
registration.” U.S. Search LLC v. U.S. Search.com Inc., 300
F.3d 517, 524 [63 USPQ2d 2013] (4th Cir. 2002) (emphasis
added); see also 15 U.S.C. § 1115(a) (the registration is
prima facie evidence of the registrant’s exclusive right to
use the mark “in connection with the goods or services
specified in the registration”) …. It would make little sense
for the Board to consider only the parties’ current activities
when the intent-to-use application, not current use,
determines the scope of this post-grant benefit. Parties
that choose to recite [goods] in their trademark application
that exceed their actual [goods] will be held to the broader
scope of the application. See Octocom Sys., 918 F.2d at 943
(stating that a broad application “is not narrowed by
testimony that the applicant’s use is, in fact, restricted”) ….

Opposition No. 91218042
27
Id. at 1162-63 (some citations omitted). Therefore, in considering whether consumers
are likely to be confused about whether the parties’ goods emanate from the same
source, we must compare Applicant’s identified “computer application software for
mobile phones, namely, software for backup of data” to Opposer’s “computer programs
for use in controlling and monitoring prepaid airtime cellular telephone service.”
Not only do both parties offer cellular/mobile phone apps, but the apps, as
identified, could both be used to manage a customer’s cellular telephones or cellular
telephone service. Indeed, to the extent “backup of data” is not a form of controlling
cellular telephone service, it is closely related to that function, in that it is another
way customers can manage their cellular telephones, their cellular telephone
accounts and, in at least a general sense, their cellular telephone service. In other
words, as identified, the parties’ apps are both focused not on performing external
tasks, such as interacting with a service like Facebook, perusing a news site such as
CNN, playing a video game such as Candy Crush or obtaining assistance from a tool
such as Google Maps; rather, both parties’ apps are internally-focused on the user’s
mobile phone itself and the user’s cellular service account itself. Consumers could
very well believe that the source of an account management app might also offer a
data backup app.
Moreover, Opposer has also offered other apps, albeit under different marks,
which are more specifically related to Applicant’s PHONE TRACKER and PHONE
TRACKER PRO apps. Indeed, Opposer offers the Transfer Wizard app, which is
specifically for “backing up data” (like Applicant’s identified goods) by “storing it in
Opposition No. 91218042
28
the cloud” prior to transferring it to a customer’s new phone. Similarly, Opposer
recently offered the NQ Family Guardian app, which is specifically for performing
the same functions as Applicant’s PHONE TRACKER apps, such as tracking
locations via GPS, reviewing texts sent from or received by the phone, and monitoring
phone calls and web activities. Consumers familiar with Opposer’s practice of offering
other apps even more similar to Applicant’s apps may very well believe, upon
encountering Applicant’s app, that it emanates from Opposer, given the similarity of
the marks and the additional similarities between Applicant’s PHONE TRACKER
apps and Opposer’s Transfer Wizard and NQ Family Guardian apps. While neither
Transfer Wizard nor the NQ Family Guardian app are offered under the TRACFONE
mark, consumers would nevertheless understand that Opposer offers them, and some
could very well be aware that the source of the apps is “Tracfone Wireless, Inc.,”
Opposer’s trade name.
Even if consumers are not confused by Opposer’s offering of the Transfer Wizard
and NQ Family Guardian apps, consumers are nevertheless aware that Opposer’s
TRACFONE mark is used for a variety of goods and services in the cellular telephone
field (the ninth du Pont factor), including cellular phones, cellular phone accessories,
cellular phone services including airtime and at least one TRACFONE cellular phone
app. Under these circumstances, it would not be a stretch for them to believe that
Opposer is also offering another app for backing up data or monitoring family
members, especially given the strength of the TRACFONE mark and the variety of
goods and services already offered in connection with that mark. See e.g., Nike Inc. v.
Opposition No. 91218042
29
WNBA Enterprises LLC, 85 USPQ2d 1187, 1195 (TTAB 2007) (“The fact that opposer
applies its marks to a variety of sports products makes it more likely that purchasers,
aware of opposer’s use of the mark on a variety of sports products, when seeing a
similar mark used in connection with backpacks, duffel bags and other sports bags,
are likely to believe that these products are also being produced or sponsored by
opposer.”); Genesco Inc. v. Martz, 66 USPQ2d 1260, 1271 (TTAB 2003) (“this factor
may favor a finding that confusion is likely even if the goods are not obviously
related”); Uncle Ben’s Inc. v. Stubenberg Int’l Inc., 47 USPQ2d 1310, 1313 (TTAB
1998) (“Section 2(d) of the Trademark Act also covers situations where the public,
because of the similarity of the marks, is likely to believe that a recognizably different
product, because of the similarity of the marks, emanates from, or is authorized,
sponsored or licensed by the prior user or registrant.”).
As for the channels of trade and classes of consumers, Applicant’s currently
available PHONE TRACKER app is available on Google Play (and Applicant’s
website). 23 TTABVUE 10, 100 (Parisi Tr. 9 and Ex. 1). Opposer’s TRACFONE My
Account app is also available on Google Play (and the Apple Store). 18 TTABVUE 16-
17, 92, 95 (Lovera Tr. 15-16 and Exs. 16, 17). Applicant intends for its PHONE
TRACKER PRO app to also be available on Google Play (and Applicant’s website). 23
TTABVUE 59-60 (Parisi Tr. 58-59). It is clear from the record that Google Play is the
primary channel of trade for Android apps, and Opposer’s TRACFONE My Account
and Applicant’s PHONE TRACKER PRO app will both be offered for sale there. In
any event, neither party’s identification of goods contain any limitations regarding
Opposition No. 91218042
30
channels of trade or classes of consumers, and we therefore must presume that the
goods will travel through all normal channels of trade for mobile phone apps, which
include Google Play (and the Internet). In re Jump Designs, 80 USPQ2d at 1374; In
re Elbaum, 211 USPQ 639, 640 (TTAB 1981); see also Stone Lion, 110 USPQ2d at
1162 (“An application with ‘no restriction on trade channels’ cannot be ‘narrowed by
testimony that the applicant’s use is, in fact, restricted to a particular class of
purchasers.”); Citigroup Inc., 98 USPQ2d at 1261.
Because consumers would be likely to believe that the apps emanate from the
same source, and the channels of trade and classes of consumers for the parties’ apps
overlap, these factors also weigh in favor of finding a likelihood of confusion.
D. Absence of Actual Confusion
Applicant’s reliance on the lack of actual confusion is misplaced, because
Applicant has not used its involved mark, and while it has used PHONE TRACKER,
there is no evidence that would allow us to assess the extent to which there has been
a meaningful opportunity for confusion to occur if it were likely to occur. See Nina
Ricci S.A.R.L. v. E.T.F. Enters. Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1903 (Fed. Cir.
1989) (“The absence of any showing of actual confusion is of very little, if any,
probative value here because (1) no evidence was presented as to the extent of ETF’s
use of the VITTORIO RICCI mark on the merchandise in question in prior years ….”).
In any event, “it is unnecessary to show actual confusion in establishing likelihood of
Opposition No. 91218042
31
confusion.” Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ
390, 396 (Fed. Cir. 1983). This factor is neutral.21
V. Conclusion
We have considered all arguments and evidence of record, including those not
specifically discussed herein, and all relevant du Pont factors.22 Because we have
found that Opposer’s TRACFONE mark is strong; the marks at issue are similar; that
Applicant’s “computer application software for mobile phones, namely, software for
backup of data” is related to Opposer’s “computer programs for use in controlling and
monitoring prepaid airtime cellular telephone service;” that the goods would move in
the same or overlapping trade channels; and that they are offered to the same or
overlapping classes of purchasers, we conclude that Opposer has demonstrated by a
preponderance of the evidence that Applicant’s PHONE TRACKER PRO mark so

21 Applicant’s evidence that searching Google Play for Opposer’s mark TRACFONE does not
yield results which include Applicant’s goods, and that searching Google Play for Applicant’s
mark PHONE TRACKER PRO does not lead to results which include Opposer’s goods is
essentially irrelevant. There is no evidence of how consumers generally search for or find
apps, and Applicant’s search evidence does not account for the effects of the parties’
advertising for their apps, word of mouth or other methods of finding or shopping for apps.
22 Opposer has not established that Applicant intentionally sought to trade upon Opposer’s
goodwill or reputation. See Big Blue Products Inc. v. International Business Machines Corp.,
19 USPQ2d 1072, 1075-76 (TTAB 1991). Cf. J & J Snack Foods Corp. v. McDonald’s Corp.,
932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991) (“Whether there is evidence of intent
to trade on the goodwill of another is a factor to be considered, but the absence of such
evidence does not avoid a ruling of likelihood of confusion.”).

Opposition No. 91218042
32
resembles Opposer’s TRACFONE mark as to be likely to cause confusion or mistake,
or to deceive under Section 2(d) of the Trademark Act.
Decision: The opposition is sustained on Opposer’s likelihood of confusion claim and
registration of Applicant’s mark is refused.23

23 Because we have sustained the opposition on the Opposer’s Section 2(d) claim, we need not
reach Opposer’s dilution claim. Multisorb Tech., Inc. v. Pactiv Corp., 109 USPQ2d 1170, 1171
(TTAB 2013) (“Like the federal courts, the Board has generally used its discretion to decide
only those claims necessary to enter judgment and dispose of the case. . . . [T]he Board’s
determination of registrability does not require, in every instance, decision on every pleaded
claim.”)