Twitpic, Inc.

Trademark Trial and Appeal Board

Sep 12, 2013

No. 77842554 (T.T.A.B. Sep. 12, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
September 12, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Twitpic, Inc.
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Serial No. 77842554
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Neil C. Magnuson of Williams Mullen PC for Twitpic, Inc.

Matt Einstein, Trademark Examining Attorney, Law Office 115 (John Lincoski,
Managing Attorney).
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Before Seeherman, Taylor and Wellington, Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Twitpic, Inc. (“applicant”) filed an application to register on the Principal
Register the mark TWITPIC (in standard characters) for services ultimately recited
as “Computer services, namely, providing websites and providing temporary use of
non-downloadable mobile application software that give users the ability to upload,
download, exchange, and share pictures and text” in International Class 42.1

1 Application Serial No. 77842554 was filed on October 6, 2006, and asserts January 31,
2008 as the date of first use of the mark anywhere and February 5, 2008 as the date of first
use of the mark in commerce.
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The trademark examining attorney finally refused registration on the ground
that the mark so resembles the mark in Registration No. 3823777, TWITVID (in
standard characters), for “providing a web site that allows users to upload, share
and search videos” in International Class 42,2 as to create a likelihood of confusion
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d).
Applicant appealed. Both applicant and the examining attorney filed briefs
and applicant filed a reply brief. We affirm.
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 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 and/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”). These
factors, and any other relevant du Pont factors in the proceeding now before us, will
be considered in this decision.

2 Issued July 27, 2010. The examining attorney had also refused registration on the basis
of Registration No. 3746229 for the mark TWITC (in standard character form) for on-line,
non-downloadable computer application software for various applications including the
storage and sharing of data and information. The owner of this registration is different
from the owner of Registration No. 3823777. The examining attorney withdrew the refusal
based on this registration after considering applicant’s request for reconsideration.
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We first consider the du Pont factor of relatedness of the services and
compare applicant’s “computer services, namely, providing websites and providing
temporary use of non-downloadable mobile application software that give users the
ability to upload, download, exchange, and share pictures and text” with the
services of “providing a web site that allows users to upload, share and search
videos,” as recited in the cited registration. In making our comparison, it is well
settled that the question of likelihood of confusion must be determined based on an
analysis of the services recited in applicant’s application vis-à-vis the services
recited in the cited registration. Canadian Imperial Bank v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992); The Chicago Corp. v. North American
Chicago Corp., 20 USPQ 2d 1715 (TTAB 1991). Further, it is a general rule that
the services do not have to be identical or directly competitive to support a finding
that there is a likelihood of confusion. It is sufficient if the respective services are
related in some manner and/or that the conditions surrounding their marketing are
such that they would be encountered by the same persons under circumstances that
could, because of the similarity of the marks used in connection therewith, give rise
to the mistaken belief that they emanate from or are associated with a single
source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993); In re
International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
Based on the identifications themselves, we find that applicant’s services are
very similar to and complementary in purpose to the registrant’s services, both
providing websites that allow a user to upload and share images. Indeed, applicant
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acknowledges that both applicant’s mark and the cited mark are used in connection
with file uploading and sharing services. Even so, applicant maintains that
confusion is not likely because the services are not competitive: applicant’s services
allow users to upload and share pictures whereas registrant’s services allow users
to upload and share video. We find this argument unpersuasive. As just stated, the
services need only be related in a manner that would give rise to the mistaken belief
that they emanate from a common source.
The evidence of record indicates that applicant’s services are likely to be
perceived as originating from the same source as registrant’s services. Applicant
made of record four use-based, third-party registrations for the marks TWITPUMP,
TWITX, TWIT PRO QUO and TWITWHO which show that services of the type
identified in both the application and the cited registration, i.e., websites for
uploading and sharing both pictures and video, are registered by a single entity
under the same mark. Third-party registrations which individually cover a number
of different items and which are based on use in commerce serve to suggest that the
listed goods and/or services are of a type which may emanate from a single source.
In re Albert Trostel & Sons Co., supra.
In addition, the examining attorney made of record the following Internet
evidence:
1. A screenshot of the website for TWITC (http://twitc.com),
showing that services of the type identified by both applicant and
registrant emanate under a single mark. The website states, in
pertinent part: “Upload and manage your photos, videos and
documents, and share them on your favorite social networks from
one location.”
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2. A screenshot from the registrant’s TWITVID website
(www.twitvid.com retrieved December 8, 2011). The website
states, in pertinent part: “Easily Post Videos or Photos on Twitter
& Facebook.”
3. A screenshot from applicant’s TWITPIC website
(www.twitpic.com retrieved December 8, 2011). The website
states, in pertinent part: “You can post photos or videos to TwitPic
from your phone, from the site, or through email.”
Based on the nature of the services as identified in applicant’s application
and the cited registration and the third-party evidence of record, we conclude that
applicant’s and the registrant’s respective services are closely related web-based
services that facilitate the uploading and sharing of images, and that the services of
uploading and sharing both photos and video are often offered under a single mark
by various entities. Although applicant is correct that we are constrained to
compare the services as they are identified in applicant’s application and the cited
registration, and that applicant’s identified services do not refer to the uploading of
videos, while the registrant’s identified services do not refer to the uploading of
pictures, the internet evidence showing that both applicant and registrant allow
users to upload both photos and videos supports the evidence that these are services
that may emanate from a single source under a single mark.
Further, in the absence of any limitations in the identifications in the
application and the cited registration as to channels of trade and classes of
purchasers, we must presume that the respective services will be offered in the
usual channels of trade and to the usual classes of purchasers, including ordinary
users of computers or similar devices seeking to upload and share images on the
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web. Thus, at a minimum, the channels of trade and classes of purchasers
overlap. In re Elbaum, 211 USPQ 639 (TTAB 1981).
We consider next the marks. In determining their similarity or dissimilarity,
we must consider the marks in their entireties in terms of sound, appearance,
meaning and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test 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 impressions that confusion as to the source of the 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. Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106 (TTAB 1975). That is, the purchaser’s fallibility of memory over a period of
time must be kept in mind. Grandpa Pidgeon’s of Missouri, Inc. v. Borgsmiller, 477
F.2d 586, 177 USPQ 573 (CCPA 1973); Spoons Restaurant Inc. v. Morrison Inc., 23
USPQ2d 1735 (TTAB 1991); aff’d unpub’d (Fed. Cir., June 5, 1992).
With these principles in mind, we compare applicant’s applied-for mark
TWITPIC with the cited registered mark TWITVID. The examining attorney
contends that the marks share the “identical, dominant, first, distinctive term,
TWIT, coupled with generic wording,” and argues that consumers are likely to
believe that the services provided under both marks share a common source because
of the shared term, TWIT. June 29, 2012 Office Action at unnumbered p. 5.
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As support for his position, the examining attorney made of record the
following definitions of “pic” and “vid” taken from the online edition of Merriam-
Webster (www.merriam-webster.com retrieved June 29, 2012):
PIC (noun) 1 : PHOTOGRAPH
2: MOTION PICTURE
VID (noun) VIDEO
In addition, we take judicial notice of the following definition of “picture”
from the online version of The American Heritage Dictionary, and definition of
“video” from the online version of Webster’s New World Telecom Dictionary (both
retrieved at www.yourdictionary.com):
Picture [noun]
1. A visual representation or image painted, drawn,
photographed, or otherwise rendered on a flat surface.
2. A visible image, especially one on a flat surface or
screen … focused the picture on the movie screen.
Video – Computer Definition
2. Relating to the display of image data on a television set,
computer monitor, cellular telephone, or other display
device.
Applicant, in traversing the refusal, maintains that the examining attorney’s
characterization of the TWIT-component as “dominant” is in error, as it is found in
many other registered marks and is commonly used to signal compatibility with the
social media service Twitter and that, accordingly, the consuming public is trained
to look at other aspects of marks incorporating TWIT in order to differentiate
between such marks. Applicant further argues that because the “suffixes” are
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sufficiently different in appearance, sound, and overall commercial impression,
there is no likelihood of confusion between its mark and the cited registered mark.
We find applicant’s mark confusingly similar to the cited mark. With
particular regard to the marks in terms of appearance, they look similar to the
extent that they have the same format and structure: both are comprised of a two-
syllable, seven-letter single term which begins with the letters T, W, I and T and
ends with a recognized abbreviation for words that are descriptive of an element of
the respective services, respectively “pic” (picture) and “vid” (video).
As regards connotation, since applicant’s and registrant’s services include
providing a website to allow users to upload and share images, which is something
that could be used with the Twitter social media service, the term “twit” would
mean the same thing in both marks, namely, it suggests that the services are
Twitter compatible. In addition, both “pic” and “vid” are defined as imagery, albeit
one is for still pictures and the other moving ones. As such, both marks as a whole
have similar connotations.
In terms of commercial impression, we find the marks are very similar. They
are single word marks which are constructed in the same way. They both begin
with the identical “prefix” TWIT and end with slang terms that evoke visual
imagery. They also suggest that the services can be used in connection with the
Twitter social media service.
While admittedly there are differences between the marks when viewed on a
side-by-side basis, we nonetheless conclude that the marks, when considered in
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their entireties, are substantially similar in appearance, sound, connotation and
commercial impression. The significant similarity in structure and meaning simply
outweighs the differences in the last three letters of the marks which, in each case,
merely describe the type of image that may be uploaded and shared via the
respective services.
In coming to this determination, we have considered applicant’s argument
that the TWIT portion of the two marks indicates compatibility with the social
media service Twitter, and therefore fails to serve any source-identifying function
such that the terms “pic” and “vid” distinguish the marks. In support of its position,
applicant made of record the following:
1. A screen shot of trademark policy for the social networking site
Twitter.3
2. Copies of four third-party registrations for marks that include
the term TWIT, namely, Registration No. 4002202 (TWITPUMP),
Registration No. 4074366 (TWITX), Registration No. 3760250
(TWIT PRO QUO), and Registration No. 3871233 (TWITWHO),
all of which include services similar to those provided by applicant
and registrant.4
3. Screenshots of the specimens of record from the underlying
applications for the TWITPUMP, TWITX, TWIT PRO QUO and
TWITWHO marks which consist of copies of web pages that
reference a tie-in to Twitter social networking.

3 Twitter’s trademark policy has little relevance to our determination of whether
applicant’s TWITPIC mark is likely to be confused with the cited TWITVID mark.
4 Applicant also made of record copies of third-party registrations that do not use the
“TWIT-prefix” as it appears in the marks at issue, but include “something close thereto.”
Because the subject marks do not include the term “twit,” the registrations have little to no
probative value in showing that the term “twit” has a recognized meaning.
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Applicant also made of record copies of notices of allowance and office actions
noting no conflicting marks for third-party applications for several additional
“TWIT” marks. However, these applications have all been abandoned, and
therefore have no probative value other than to show that they were filed. See
Glamorene Products Corp. v. Earl Grissmer Co., Inc., 203 USPQ 1090, 1092 n.5
(TTAB 1979) (evidence only of the filing of the application). Similarly, of little
value are copies of specimens from three additional third-party applications. Again,
applications have no value other than to show that they had been filed.
With regard to the third-party registrations, while they are not evidence that
the registered marks are actually in use, they may be given some weight to show
the meaning of a mark, or the meaning of a term in the mark, in the same way that
dictionaries are used. In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB
2006) (“[T]hird-party registrations can be used in the manner of a dictionary
definition to illustrate how a term is perceived in the trade or industry”). See also
In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987) (“[T]hird party
registrations are of use only if they tend to demonstrate that a mark or a portion
thereof is suggestive or descriptive of certain goods and hence is entitled to a
narrow scope of protection”).
Although we are not persuaded that the TWIT portion of both applicant’s and
the registrant’s marks is descriptive, and that we should therefore concentrate of
the different ending portions, as applicant argues, the evidence does, however,
demonstrate a degree of suggestiveness of TWIT; that is, that TWIT signals a
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compatibility with the Twitter social media service. Accordingly, registrant’s mark
is not entitled to the broadest scope of protection. However, even weak marks are
entitled to protection to prevent the registration of a confusingly similar mark. See
Matsushita Electric Company v. National Steel Co., 442 F.2d 1383, 170 USPQ 98, 99
(CCPA 1971) (“Even though a mark may be ‘weak’ in the sense of being a common
word in common use as a trademark, it is entitled to be protected sufficiently to
prevent confusion from source arising”). Here, registrant is at least entitled to
protection from registration of applicant’s highly similar mark for closely related
services. Moreover, applicant fails to acknowledge that the differing matter in each
mark, “pic” and “vid,” respectively, describes a feature of each of the respective
services. “Regarding descriptive terms, this court has noted that ‘the descriptive
component of a mark may be given little weight in reaching a conclusion on the
likelihood of confusion.’” Cunningham v. Laser Golf Corp., 55 USPQ2d at 1846,
quoting, In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir.
1985). In this case, “pic” and “vid” are entitled to less weight than the suggestive
element TWIT, inasmuch as both applicant’s and registrant’s services feature
websites designed to facilitate the uploading and sharing of pictures and videos.
Thus the terms “pic” and “vid” would not be viewed as source indicating and
therefore do not distinguish the two marks.
Accordingly, the du Pont factor of similarity of the marks favors a finding of
likelihood of confusion.
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With regard to the du Pont factor relating to the number and nature of
similar marks in use on similar goods or services, of record are screenshots of web
pages showing use by third-parties of five TWIT-formative marks, i.e., TWITPUMP,
TWITX, TWIT PRO QUO, TWITWHO and TWITC, in connection with services
similar to those of applicant and registrant.5 While these materials show some
third-party use of TWIT-formative marks, the probative value of this evidence is
limited because it is not clear to what extent these third-party designations have
been exposed to the public. See Sports Authority Michigan, Inc. v. PC Authority Inc,
63 USPQ2d 1782 (TTAB 2001). While the Board has given weight to evidence of
widespread and significant use by third parties of marks containing elements in
common with the involved marks to demonstrate that confusion is not likely to
occur simply because of the inclusion of the common element,6 the record does not
establish that “TWIT” is so commonly used in the field of providing websites for the
uploading, downloading, exchanging and sharing of information, pictures and video
that consumers would look only to the final element in the marks as the source-
indicating portion. In any event, although TWIT has a suggestive significance for
the services at issue, this is not the only similarity between applicant’s and the
registrant’s marks. As we have already stated, the marks also show a similar
format, with both having the first syllable TWIT and a final syllable that represents

5 The web pages from each of the listed entities reference a possible use of the services with
the Twitter social media services.
6 See e.g., Miles Laboratories Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445,
1462 (TTAB 1987).

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a term for an image. Thus, even consumers who take note of the differences in the
final syllables would still view these marks as very similar, and are likely, because
of their familiarity with registrant’s mark and substantially related services, view
them as variants of each other, indicating source in a single entity.
Applicant also has cited a number of cases involving different marks and
different goods or services in support of its contention that confusion is not likely
between its mark and the cited mark. However, as is often noted by the Board and
the Courts, each case must be decided on its own merits. See In re Nett Designs
Inc., 236 F.3d 1339, 51 USPQ2d 1564, 1566 (Fed.Cir. 2001). See also, In re Kent-
Gamebore Corp., 59 USPQ2d 1373 (TTAB 2001); and In re Wilson, 57 USPQ2d 1863
(TTAB 2001). These cases are not persuasive that there is no likelihood of
confusion in the current situation. For that same reason, applicant’s reliance on
Office treatment of other marks such as TWITC, and the marks PICS.XXX and
VID.XXX, is misplaced.7 As explained, the marks in this case are confusingly
similar.
Finally, applicant, citing In re Morton-Norwich Prods., Inc., 209 USPQ 791
(TTAB 1981) and In re Atavio Inc., 25 USPQ2d 1361 (TTAB 1992), maintains that
“it is commonly accepted practice to resolve any doubt in Applicant’s favor and
publish the mark for opposition.” Applicant’s br. p. 14. However, the cases that
applicant has relied on involve the issue of mere descriptiveness. In deciding the
issue of likelihood of confusion, the issue before us in this case, doubt is resolved in

7 Notably, while PIC.XXX is registered on the Supplemental Register, the mark VID.XXX
is the subject of an application that has since abandoned.
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favor of the prior registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6
USPQ2d 1025 (Fed. Cir. 1988); In re Martin’s Famous Pastry Shoppe, Inc., 221
USPQ 364 (TTAB 1984).
After carefully reviewing the arguments and evidence of record, even if not
specifically discussed above, we conclude that purchasers familiar with registrant’s
services of providing a web site that allows users to upload, share and search videos
under the mark TWITVID would be likely to believe, upon encountering applicant’s
mark TWITPIC for computer services, namely, providing websites and providing
temporary use of non-downloadable mobile application software that give users the
ability to upload, download, exchange, and share pictures and text, that the services
originate from or are associated with or sponsored by the same source.
Decision: The refusal to register under Section 2(d) of the Trademark Act is
affirmed.