AliphCom

Trademark Trial and Appeal Board

Aug 12, 2016

No. 86439811 (T.T.A.B. Aug. 12, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: August 12, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re AliphCom
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Serial No. 86439811
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Jennifer D. Arkowitz and Laura C. Miller of Kilpatrick Townsend & Stockton LLP,
for AliphCom.
Howard Smiga, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
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Before Lykos, Adlin and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Applicant AliphCom seeks registration on the Principal Register of the mark
DROP BY JAWBONE in standard characters for the following goods in International
Class 9:1
Computer hardware and software for streaming,
broadcasting, and transmitting music; computer hardware
and software used for organizing, transmitting, receiving,
and reviewing audio files; computer hardware and

1 Application Serial No. 86439811, filed October 30, 2014 under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention to use the
mark in commerce.
Serial No. 86439811
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software for wireless digital content delivery and
transmission; computer hardware and software for
transmitting, delivering, receiving, processing and
streaming digital media, data, music and audio files.
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark, as applied to the goods identified in the application, so resembles
the mark DROP as to be likely to cause confusion, to cause mistake, or to deceive.
The cited mark is registered in standard characters on the Principal Register for the
following goods and services:
“Computer software for wireless content delivery;
Downloadable software applications containing GPS
locator features for finding businesses and individuals;
Computer software for data and image transmission
including voice, text and picture messaging; Consumer
coupons downloaded from a global computer network,” in
International Class 9, and
“Telecommunication services, namely, providing electronic
message alerts via the internet; Electronic, electric, and
digital transmission of voice, data, images, signals, and
messages,” in International Class 38.2
After the Examining Attorney made the refusal final, Applicant appealed. We
affirm the refusal to register.
Our determination under Section 2(d) is based on an analysis of all 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 Co., 315 F.3d 1311, 65 USPQ2d 1201,

2 Registration No. 4543322, issued June 3, 2014.
Serial No. 86439811
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1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods. 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.”).
We first address the second du Pont factor, the similarity of the goods. Our
analysis is focused on the goods identified in the cited registration in International
Class 9, rather than the recited services. As shown in the table below, Applicant’s
goods overlap with certain of the goods identified in the cited registration:
Applicant’s Selected Goods Registrant’s Selected Goods
Computer hardware and software for
wireless digital content delivery and
transmission
Computer software for wireless
content delivery
Computer hardware and software used
for organizing, transmitting, receiving,
and reviewing audio files

Computer hardware and software for
transmitting, delivering, receiving,
processing and streaming digital
media, data, music and audio files
Computer software for data and
image transmission including
voice, text and picture messaging

Specifically, the application and the cited registration both identify computer
software for wireless content delivery, as well as computer software for transmitting
data and audio files/voice messaging. Therefore, the goods are legally identical in
part, as Applicant implicitly concedes by not addressing the similarity of the goods in
its appeal brief.
Serial No. 86439811
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Because there are no limitations as to channels of trade or classes of purchasers
in the descriptions, we presume that the identified goods move in all channels of trade
normal for such goods and are available to all potential classes of ordinary consumers.
See Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253,
1261 (Fed. Cir. 2011); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006);
In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Moreover, because the goods
described in the application and the cited registrations are overlapping and legally
identical in part, we must presume that the channels of trade and classes of
purchasers are the same, considerations under the third and fourth du Pont factors,
respectively. See American Lebanese Syrian Assoc. Charities Inc. v. Child Health
Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011); see also In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on
this legal presumption in determining likelihood of confusion).
In our likelihood of confusion analysis, these findings under the second, third, and
fourth du Pont factors strongly support a finding that confusion is likely.
We turn next to the du Pont likelihood of confusion factor focusing on “the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imports 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). “The proper test is not a side-by-side
comparison of the marks, but instead whether the marks are sufficiently similar in
terms of their commercial impression such that persons who encounter the marks
Serial No. 86439811
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would be likely to assume a connection between the parties.” Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(citation omitted).
Our analysis cannot be predicated on dissecting the marks into their various
components; that is, the decision must be based on the entire marks, not just part of
the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985);
see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234
(CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered
piecemeal; rather, it must be considered as a whole in determining likelihood of
confusion.”). On the other hand, there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular feature of a mark, provided
the ultimate conclusion rests on a consideration of the marks in their entireties. In re
Nat’l Data, 224 USPQ at 751. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks. Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430
(TTAB 2013).
When, as here, marks would appear on goods that are legally identical in part,
“the degree of similarity necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enters. Inc. v. Rind, 85 USPQ2d 1104,
1108 (TTAB 2007).
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Applicant’s mark incorporates and begins with the entirety of the cited mark
DROP, appending to it the phrase BY JAWBONE. Applicant argues that its well-
known house mark JAWBONE is dominant in creating commercial impression, and
the addition of BY JAWBONE serves to distinguish its mark from the cited mark.3
There is no per se rule that the addition of a house mark is insufficient to
differentiate confusingly similar marks. New England Fish Co. v. Hervin Co., 511
F.2d 562, 184 USPQ 817, 819 (CCPA 1975). Nonetheless, it has often been said that
likelihood of confusion will not be avoided when trade names and house marks are
added to otherwise identical terms. “Rather, such addition may actually be an
aggravation of the likelihood of confusion as opposed to an aid in distinguishing the
marks so as to avoid source confusion.” In re Christian Dior, S.A., 225 USPQ 533, 534
(TTAB 1985) (finding LE CACHET DE DIOR confusingly similar to CACHET); see
also In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558, 559 (CCPA 1972)
(stating that addition of a trade name is likely to make consumers assume that
products have a common origin or that the companies merged); Nike Inc. v. WNBA
Enters. LLC, 85 USPQ2d 1187, 1201-02 (TTAB 2007) (applying principle that “the
addition of a trade name or house mark or other such matter to one of two otherwise
similar marks will not serve to avoid a likelihood of confusion”).
In this case, we find that the addition of Applicant’s house mark does not serve to
distinguish the marks. On the contrary, the structure of Applicant’s mark DROP
BY JAWBONE may suggest that its goods are a variation of the goods offered under

3 See Appeal Brief at 4, 6 TTABVUE 10.
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Registrant’s DROP mark, or, alternatively, that Applicant’s mark designates a sub-
brand developed by Registrant. See, e.g., In re Chica Inc., 84 USPQ2d 1845, 1848-49
(TTAB 2007) (holding CORAZON BY CHICA with design and CORAZON with
design, both for jewelry, likely to cause confusion, noting that, “to many consumers,
applicant’s mark for the identical word ‘Corazon’ followed by the phrase ‘BY CHICA’
will simply be viewed as the identification of the previously anonymous source of the
goods sold under the mark CORAZON”); Saks & Co. v. TFM Indus. Inc., 5 USPQ2d
1762, 1764 (TTAB 1987) (stating that use of the phrase “By Fire Islander” in FOLIO
BY FIRE ISLANDER “may only tend to increase and not decrease the likelihood of
confusion” with FOLIO); In re Apparel Ventures, Inc., 229 USPQ 225, 226 (TTAB
1986) (finding SPARKS BY SASSAFRAS for women’s clothing likely to cause
confusion with SPARKS for shoes, boots and slippers). The fact that DROP is the first
term in Applicant’s mark further enhances its similarity to the cited mark. See, e.g.,
Century 21, 23 USPQ2d at 1700 (stating that consumers will first notice the identical
lead word on encountering the marks); Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9
USPQ2d 1895, 1897 (TTAB 1988) (stating that “it is often the first part of a mark
which is most likely to be impressed upon the mind of a purchaser and remembered”).
We find Applicant’s mark DROP BY JAWBONE, considered in its entirety, to be
similar to the cited mark, DROP. The first du Pont factor thus supports a finding that
confusion is likely.
Finally, Applicant argues that the cited mark coexists with other “drop”-formative
marks for computer software-related goods in Class 9. As a result, Applicant
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contends, the cited mark is relatively weak, and consumers have been conditioned to
distinguish among similar marks for such goods.4 This argument pertains to the sixth
du Pont factor, the number and nature of similar marks in use on similar goods.
Applicant submitted printouts from the Trademark Status & Document Retrieval
database (TSDR) of nine use-based registrations, registered by eight different third
parties for a variety of goods in Class 9, for the marks THEDROP, DropPoint,
DropShots, DropSend, DropSync, DROP7, DROPBOX, and DROPOFF.5
Because third-party registrations of marks are not evidence that the registered
marks are in use, they are of limited probative value for demonstrating weakness of
the marks. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed.
Cir. 2010). That being said, third-party registrations may be used to show that a term
has a meaning or significance in the same way that dictionaries are used. Tektronix,
Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694 (CCPA 1976).
None of the third-party registrations has a structure similar to Applicant’s mark,
and none is for the word “drop” alone. Moreover, the goods identified in some of the
registrations are distinguishable from the goods at issue here, including
“downloadable mobile applications and software for booking courier services”
(DROPOFF) and “computer game software; video game programs; interactive video
game programs” (DROP7).

4 See Appeal Brief at 14, 6 TTABVUE 20.
5 May 20, 2015 Response to Office Action at 15-56, Exhibit A. Applicant also submitted some
registrations issued based only on foreign use as well as printouts of pending applications,
which are evidence only that the applications were filed on a certain date. See, e.g., In re
Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016); Nike, 85 USPQ2d at 1193 n.8, 1201.
Serial No. 86439811
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It has been stated many times that we must decide each case on its own facts. See
In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even
if some prior registrations had some characteristics similar to [Applicant’s]
application, the PTO’s allowance of such prior registrations does not bind the Board
or this court.”); In re Max Capital Group Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010)
(noting that third-party registrations “cannot justify the registration of another
confusingly similar mark”) (citations omitted). Even were we to accept Applicant’s
argument that these third-party marks limit the scope of protection afforded to the
cited registration, marks considered “weak” are nonetheless entitled to protection
from registration by a subsequent user of a confusingly similar mark for goods that
are legally identical in part. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108, 109 (CCPA 1974).
We have considered all of the arguments and evidence of record as they pertain to
the du Pont likelihood of confusion factors. To the extent that any other du Pont
factors for which no evidence was presented by Applicant or the Trademark
Examining Attorney may nonetheless be applicable, we treat them as neutral.
In view of our findings that the marks in their entireties are similar and the goods
are identical in part, moving in the same channels of trade to the same customers, we
find that Applicant’s mark is likely to cause confusion with the mark in cited
Registration No. 4543322 when used in association with the goods identified in the
application.
Decision: The refusal to register Applicant’s mark is affirmed.