Arris Enterprises LLCv.Hire U L.L.C.

Trademark Trial and Appeal Board

Jun 4, 2021

91241991 (T.T.A.B. Jun. 4, 2021)

Mailed: June 4, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board ARRIS Enterprises LLC v. HIRE U L.L.C. Opposition No. 91241991 Scott W. Johnston of Merchant & Gould P.C. for Opposer ARRIS Enterprises LLC. Jeffrey Sturman of Sturman Law, LLC for Applicant HIRE U L.L.C. _____ Before Zervas, Lynch, and Johnson, Administrative Trademark Judges. Opinion by Johnson, Administrative Trademark Judge: HIRE U L.L.C. (“Applicant”) seeks to register the mark SURFBOARD (in standard characters) (“Applicant’s Mark”) on the Principal Register for “computer application software for mobile phones, namely, software for the administration and management of employment recruiting and staffing,” in International Class 9.1 1 Application Serial No. 87704121 was filed on November 30, 2017, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C § 1051(b). Citations to the record or briefs are to the publicly available documents in TTABVUE, the Board’s electronic docketing system. See, e.g., Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 This Opinion is Not a Precedent of the TTAB - 2 - Opposition 91241991 ARRIS Enterprises LLC (“Opposer”) has opposed2 registration of Applicant’s mark on the ground of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), with the following of its registered marks: (1) Registration No. 2088180 for SURFBOARD, in standard character form, for “digital communications adapters, data and video modems for satellite, cable, wireless and fiber applications, in International Class 9;3 and (2) Registration No. 5010874 for , for “digital communication adapters, namely, powerline adapters and wireless adapters used to link to a telecommunications network; data and video modems for satellite, cable, wireless, and fiber applications; wireless routers and wireless networking products, namely, wireless gateways and extenders; wireless networking product, namely, wireless networking extenders for power line communications and coaxial cable transmission,” in International Class 9.4 Opposer also pleads common law rights in “a family of SURFBOARD cable modems”5 and “used the SURFBOARD trademark for many of the goods depicted in the registrations and related goods, including software and firmware, since at least as early as May 9, 1995.”6 (TTAB 2014). The number preceding “TTABVUE” corresponds to the docket entry number; the number(s) following “TTABVUE” refer to the page number(s) of that particular docket entry, if applicable. 2 1 TTABVUE. 3 Registration No. 2088180, registered Aug. 12, 1997. Combined declaration under Trademark Act Sections 8 and 9, 15 U.S.C. §§ 1058 and 1059, accepted and acknowledged Nov. 4, 2016. 4 Registration No. 5010874, registered Aug. 2, 2016. The description of the mark states: “Color is not claimed as a feature of the mark. The mark consists of the wording ‘SURFBOARD’ with a surfboard design incorporated into the letter ‘B’.” 5 Notice of Opposition, 1 TTABVUE 3 ¶ 2. 6 Id. at 4 ¶ 5. See also id. at 5 ¶¶ 13 & 14, 5-6 ¶ 17. Opposer referred to its common law rights - 3 - Opposition 91241991 In its Answer,7 Applicant denied the salient allegations of the Notice of Opposition. Applicant did not assert any affirmative defenses. The case is fully briefed. Opposer bears the burden of proving its Trademark Act Section 2(d) claim by a preponderance of the evidence. See Jansen Enters., Inc. v. Rind, 85 USPQ2d 1104, 1107 (TTAB 2007). Having considered the evidentiary record, the parties’ arguments and applicable authorities, we find that Opposer has not carried this burden, and dismiss the Opposition. I. The Evidentiary Record The record consists of the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the file of Applicant’s involved application. In addition, the parties introduced the following evidence: A. Opposer’s Evidence Opposer submitted a Notice of Reliance (“NoR”),8 introducing into the record: 1. TSDR Record for Opposer’s Registration No. 2088180 for SURFBOARD in International Class 9. 2. TSDR Record for Opposer’s Registration No. 5010874 for . in software products in the Notice of Opposition so as to state a plausible claim of relief and give fair notice of it. FED. R. CIV. P. 8(a); Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007); Hunt Control Sys. Inc. v. Koninklijke Philips Elecs. N.V., 98 USPQ2d 1558, 1562 (TTAB 2011). Both parties addressed Opposer’s common law rights in briefing. Opposer’s goods can be categorized in three basic categories: (1) peripheral computer hardware (covered by Opposer’s registrations), non-downloadable web-based software (common law use), and mobile (downloadable) software applications (common law use). Throughout its brief, Opposer refers to software in several ways: non-downloadable, downloadable, firmware, mobile application, or “app.” For simplification, we will use “software” as a general description, unless circumstances require that we make a distinction. For a definition of “peripheral,” see infra note 28. For a definition of “app,” see infra note 21. 7 4 TTABVUE. 8 19 TTABVUE. - 4 - Opposition 91241991 3. File history for Opposer’s Application Serial No. 88095763 for SURFBOARD. 4. Applicant’s Objections and Responses to Opposer’s First Set of Interrogatories (Nos. 1-27) dated November 1, 2018. 5. Applicant’s Objections and Responses to Opposer’s Document Requests dated November 1, 2018. 6. Applicant’s Supplemental Objections and Responses to Opposer’s First Set of Interrogatories (Nos. 1-27) dated March 21, 2019. 7. Applicant’s Supplemental Objections and Responses to Opposer’s Document Requests dated March 21, 2019. 8. Applicant’s Objections and Responses to Opposer’s First Set of Requests for Admission dated January 31, 2020. 9. Dictionary definitions of the word “surfboard.” 10. Third-party trademark registrations. 11. Third-party Internet evidence of use of allegedly similar trademarks for allegedly the same or similar goods. 12. Archived images from Applicant’s website, http://thesurfboardapp.com/, as archived on archive.org.9 13. A door hanger10 that includes Applicant’s mark. 9 We consider these webpage images from the Internet Archive’s Wayback Machine, located at archive.org, only for what the images show on their face and not how the webpages appeared on various dates in the past. See Spiritline Cruises LLC v. Tour Mgmt. Servs., Inc., 2020 USPQ2d 48324, at *3 (TTAB 2020); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 704.08(b) (2020); see also Safer, Inc. v. OMS Invs., Inc., 94 USPQ2d 1031 (TTAB 2010) (admissibility of documents obtained from the Internet generally); Trademark Rule 2.122(e)(2), 37 C.F.R. § 2.122(e)(2). 10 The door hanger featuring Applicant’s mark is not properly introduced into evidence by Notice of Reliance. See Trademark Rule 2.122(e), 37 C.F.R. § 2.122(e); TBMP 704.08(a). However, since - 5 - Opposition 91241991 14. August 7, 2020 screen shot of a 2009 YouTube review for a Motorola SURFBOARD modem.11 15. August 7, 2020 screen shot of a 2014 YouTube review of Opposer’s goods.12 Opposer also submitted the Declaration of John Giacobetti, Senior Director of Marketing for Opposer’s subsidiary, ARRIS Global Services, Inc., with Exhibits A-J attached.13 B. Applicant’s Evidence Applicant did not introduce any evidence into the record. II. Entitlement to a Statutory Cause of Action Opposer’s entitlement to a statutory cause of action, formerly referred to as “standing,”14 must be established in this inter partes proceeding before the Board. See Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *6-8 (Fed. Cir. 2020), cert. denied, __ S. Ct. __ (2021); Australian Therapeutic Supplies Pty. Applicant did not object to the door hanger, we have considered it for whatever probative value it may have. See Conde Nast Publ’ns Inc. v. Vogue Travel, Inc., 205 USPQ 579, 580 n.5 (TTAB 1979) (various documents constituting improper subject matter considered where no objection was raised and adverse party specifically addressed the materials in its brief). 11 Since Opposer did not introduce multimedia files of the YouTube video into the record, only the screen shots are of record. A link to a website does not suffice to enter information in the record. See In re Fantasia Distribution, Inc., 120 USPQ2d 1137, 1143 n.13 (TTAB 2016) (“we consider the still frame from the video and [the] declaration describing a certain portion of the YouTube video, both of which were included in the record, but we cannot consider the video itself, which we do not have.”) (citing In re Planalytics, 70 USPQ2d 1453, 1458 (TTAB 2004) (providing a link to a website does not suffice to enter information in the record because of the transitory nature of the information available through the link)). 12 See supra note 11. 13 20 TTABVUE (“Giacobetti Decl.”). 14 Our decisions have previously analyzed the requirements of Sections 13 and 14 of the Trademark Act, 15 U.S.C. §§ 1063 and 1064, under the rubric of “standing.” We now refer to this inquiry as “entitlement to a statutory cause of action.” Despite the change in nomenclature, our prior decisions and those of the U.S. Court of Appeals for the Federal Circuit interpreting “standing” under Sections 13 and 14 of the Trademark Act remain applicable. See Spanishtown Enters., Inc. v. Transcend Res., Inc., 2020 USPQ2d 11388, at *2 (TTAB 2020). - 6 - Opposition 91241991 Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020); Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014). To establish entitlement to a statutory cause of action, a plaintiff must demonstrate: (i) an interest falling within the zone of interests protected by the statute and (ii) proximate causation. Corcamore, 2020 USPQ2d 11277, at *4. See also Empresa Cubana, 111 USPQ2d at 1062; Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (TTAB 1982). Demonstrating a real interest in opposing the registration of a mark satisfies the zone-of-interests requirement, and demonstrating a reasonable belief in damage by the registration of a mark demonstrates damage proximately caused by the proposed registration of the mark. Corcamore, 2020 USPQ2d 11277, at *7-8. Opposer proffered a July 2, 2019 Office Action in Opposer’s application Serial No. 88095763 in which the assigned examining attorney suspended Opposer’s application in view of application Serial No. 87704121, the application involved in this proceeding.15 See Australian Therapeutic, 2020 USPQ2d 10837, at *4 (“A petitioner may demonstrate a real interest and reasonable belief of damage where the petitioner has filed a trademark application that is refused registration based on a likelihood of confusion with the mark subject to cancellation.”). Therefore, Opposer has proven its entitlement to a 15 NoR, 19 TTABVUE 37-39, Ex. C. The United States Patent and Trademark Office (USPTO) Trademark Status and Document Retrieval (TSDR) database record shows that Opposer is the owner of record for SURFBOARD (Serial Number 88095763), an intent-to-use based application for a variety of goods in International Class 9, including “computer application software for mobile phones, namely, software for creating, operating and managing wireless, mobile, local area (LAN), and wide area (WAN) networks.” See id. at 35-36. Opposer filed its application on August 28, 2018, nearly nine months after the filing of Applicant’s application to register SURFBOARD (Serial No. 87704121). - 7 - Opposition 91241991 statutory cause of action under Trademark Act Section 2(d). III. Priority Section 2(d) of the Trademark Act permits an opposer to file an opposition on the basis of ownership of “a mark or trade name previously used in the United States ... and not abandoned.” 15 U.S.C. § 1052(d). Because Opposer established ownership and validity of its pleaded registrations,16 priority is not at issue with respect to the registered marks and the goods identified in Opposer’s registrations. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). Opposer’s priority of use of the SURFBOARD mark for software is somewhat anfractuous. In 2009, Motorola, Inc. (“Motorola”), Opposer’s predecessor-in-interest, introduced new models of its SURFBOARD cable modem for retail sale.17 In order to use the new models of the SURFBOARD modems, users were required to accept a software license and configure their modems using non-downloadable web-based SURFBOARD “Configuration Manager Software.”18 In 2013, Opposer ARRIS acquired the Motorola Home Division (“MHD”) from Motorola, which included the SURFBOARD non- downloadable web-based “Configuration Manager Software.”19 Two years later, in 2015, Opposer introduced the “ARRIS SURFBOARD Manager,” a downloadable software application for configuration and management of ARRIS SURFBOARD cable modems and associated goods.20 In April 2016, Opposer publicly released a free SURFBOARD 16 Id. at 9-34. 17 Giacobetti Decl., 20 TTABVUE 4 ¶ 8. 18 Id. 19 Id. at ¶ 10. 20 Id. at 9 ¶ 19. - 8 - Opposition 91241991 Manager application (“app”)21 for Apple iOS and Android mobile devices, also for configuration and management of ARRIS SURFBOARD products.22 Furthermore, according to the Declaration of John Giacobetti, upon which Opposer relies:  “ARRIS and its predecessors have been using the SURFBOARD marks in connection with web-based software programs to help customers configure their SURFBOARD cable modems since before 2010, and continuously to the present date”;23  As of 2015, “Customers can get access to the SURFBOARD software application through the Internet and software application stores, and download them onto their phones, tablets, and other mobile devices. As with the non-downloadable SURFBOARD software, the SURFBOARD application software helps customers configure, update, and troubleshoot their SURFBOARD branded modems and routers.”24 His declaration also included the following images depicting the app: 21 We take judicial notice of the definition of the word “app” as “an application designed for a mobile device (such as a smartphone).” MERRIAM-WEBSTER DICTIONARY (2021) (https://www.merriam-webster.com/dictionary/app) (last visited Apr. 28, 2021). 22 Id. 23 20 TTABVUE 4. 24 20 TTABVUE 10. - 9 - Opposition 91241991 25 26 25 20 TTABVUE 10. 26 20 TTABVUE 144. - 10 - Opposition 91241991 Based on the evidence and the declaration testimony of Mr. Giacobetti, we find that Opposer has priority of use of the SURFBOARD mark in conjunction with software for the configuration and management of modems prior to Applicant’s November 30, 2017 filing date. IV. Likelihood of Confusion A. Applicable Law We base our determination of likelihood of confusion under Trademark Act Section 2(d) on an analysis of all of the probative facts in evidence that are relevant to the factors enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”) (cited in B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 113 USPQ2d 2045, 2049 (2015)); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). “While we have considered each factor for which we have evidence, we focus our analysis on those factors we find to be relevant.” ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015). “Each case must be decided on its own facts and the differences are often subtle ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387 (CCPA 1973). In applying the DuPont factors, we bear in mind the fundamental purposes underlying Trademark Act Section 2(d), which are to prevent confusion as to source and to protect registrants from damage caused by registration of confusingly similar marks. Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 224 USPQ 327, 331 (1985); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161, 1163 (1995); DuPont, 177 USPQ at 566. - 11 - Opposition 91241991 Varying weights may be assigned to the various DuPont factors depending on the evidence presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“[T]he various evidentiary factors may play more or less weighty roles in any particular determination.”). Two key considerations are the similarities between the marks and the relatedness of the goods. See In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002) (“The likelihood of confusion analysis considers all DuPont factors for which there is record evidence but ‘may focus … on dispositive factors, such as similarity of the marks and relatedness of the goods.’”)). B. Analysis 1. The Strength of Opposer’s Mark.27 “A mark’s strength is measured both by its conceptual strength (distinctiveness) and its marketplace strength.” In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010); see also Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1345 (TTAB 2017); Top Tobacco, L.P. v. North Atl. Operating Co., Inc., 101 USPQ2d 1163, 1171-72 (TTAB 2011) (the strength of a mark is determined by assessing its inherent strength and its commercial strength); Tea Bd. of India v. 27 In this section, we focus on Opposer’s standard character mark (as opposed to both of Opposer’s marks) since throughout its brief, Opposer generally discusses its peripheral hardware goods without offering specific arguments or evidence about particular goods found in one registration or another. See, e.g., Opposer’s Trial Brief, 21 TTABVUE 27; see also id. at 25-26, 28. In addition, the appearance of the design element in Opposer’s composite mark merely reinforces the word “surfboard.” Furthermore, Opposer has not pointed to any evidence of record showing use of Opposer’s composite mark on or in conjunction with software. - 12 - Opposition 91241991 Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006) (market strength is the extent to which the relevant public recognizes a mark as denoting a single source); 2 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:80 (5th ed. Mar. 2021 update) (“The first enquiry is for conceptual strength and focuses on the inherent potential of the term at the time of its first use. The second evaluates the actual customer recognition value of the mark at the time registration is sought or at the time the mark is asserted in litigation to prevent another’s use.”). Under the fifth DuPont factor, Opposer may prove that its pleaded mark is entitled to an expanded scope of protection by adducing evidence of “[t]he fame of the prior mark (sales, advertising, length of use).” DuPont, 177 USPQ at 567. When measuring likelihood of confusion, fame “varies along a spectrum from very strong to very weak.” Jos. Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (citation and internal citation omitted). The sixth DuPont factor allows Applicant to contract that scope of protection by offering evidence of “[t]he number and nature of similar marks in use on similar goods.” Id. First, we turn to the inherent, or conceptual, strength of SURFBOARD when used in connection with peripheral28 computer hardware and software. Opposer claims that the 28 We take judicial notice of the definition of the word “peripheral” as “any of various devices (including sensors) used to enter information and instructions into a computer for storage or processing and to deliver the processed data to a human operator or, in some cases, a machine controlled by the computer.” ENCYC. BRITTANICA (2021) (https://www.britannica.com/technology/ENIAC) (last visited Apr. 28, 2021). The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format or have regular fixed editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). - 13 - Opposition 91241991 SURFBOARD marks are arbitrary, strong, and entitled to “great protection,” because SURFBOARD has “no readily apparent descriptive or even suggestive meaning when used in connection with cable modem hardware and software products and related digital communications accessory goods and services.”29 A “surfboard” is defined as “a long narrow buoyant board (as of lightweight wood or fiberglass-covered foam) used in the sport of surfing.”30 Beyond sports, however, the word “surf” has several meanings. One meaning of “surf,” as a verb, is defined as “to scan the offerings of (such as television or the Internet) for something of interest.”31 Likewise, the word “board” has several meanings; here, the most relevant definition is “a sheet of insulating material carrying circuit elements and terminals so that it can be inserted in an electronic apparatus (such as a computer).”32 Given this dual significance, we find that the standard character mark, SURFBOARD, as well as the composite mark, , are double entendres when applied to Opposer’s goods, as consumers would readily associate Opposer’s marks with the equipment used in the sport of surfing, but given Opposer’s computer-oriented goods, consumers would also associate Opposer’s marks with circuit boards and surfing the Internet. See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382, 384-85 (CCPA 1968) (finding SUGAR & SPICE a double entendre; mark evokes lyrics of the nursery rhyme “sugar and spice and everything nice”). Therefore, we find that the commercial impression engendered by 29 Opposer’s Trial Brief, 21 TTABVUE 13. 30 NoR, 19 TTABVUE 162 (quoting the MERRIAM-WEBSTER ONLINE DICTIONARY, https://www.merriam-webster.com/dictionary/surfboard). 31 We take judicial notice of the definitions of “surf.” MERRIAM-WEBSTER DICTIONARY (2021) (https://www.merriam-webster.com/dictionary/surf) (last visited May 6, 2021). 32 We take judicial notice of the definition of “board.” MERRIAM-WEBSTER DICTIONARY (2021) (https://www.merriam-webster.com/dictionary/board) (last visited May 6, 2021). - 14 - Opposition 91241991 Opposer’s SURFBOARD marks, when used in connection with peripheral computer hardware and computer software, includes not only the surfboard used for the sport of surfing, but also a reference to the act of “surfing,” or “the activity of looking for information or interesting things on the Internet.”33 We agree with Opposer that SURFBOARD is not descriptive of its goods, and find SURFBOARD to be an inherently distinctive mark. Turning to the commercial strength, or fame, of Opposer’s SURFBOARD standard character mark,34 we may measure such strength indirectly by the volume of sales and advertising expenditures in connection with the goods sold under the mark, as well as by other factors such as length of time of use of the mark, widespread critical assessments, notice by independent sources of the goods identified by the mark, and the general reputation of the goods. Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1354 (TTAB 2014); see also Bose Corp. v. QVC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1308 (Fed. Cir. 2002) (recognizing indirect evidence as appropriate proof of strength); Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1694 (Fed. Cir. 2018) (delineating all types of evidence that can be considered when assessing commercial strength of a mark). Opposer argues that the SURFBOARD mark is “commercially strong as measured by the length of time the mark has been in use and the volume of sales and advertising 33 We take judicial notice of the definition of “surfing.” MERRIAM-WEBSTER DICTIONARY (2021) https://www.merriam-webster.com/dictionary/surfing (last visited May 6, 2021). 34 The record lacks evidence directed specifically to the commercial strength, or fame, of Opposer’s composite mark. - 15 - Opposition 91241991 expenditures of the products and services sold under the mark.”35 In support, Opposer presented the following testimony of Mr. John Giacobetti:  “Between 2012 and the present, ARRIS has sold in excess of 16 million SURFBOARD products, and generated nearly $1 billion in revenue from the sale of SURFBOARD products.”36  “Since first introducing its SURFBOARD goods in 1995, ARRIS and its predecessors in interest have engaged in extensive, widespread marketing, promotion, and advertising efforts in support of the SURFBOARD mark and products. For example, in the past four years, ARRIS has spent in excess of $10,000,000 marketing and promoting the SURFBOARD mark, products, and services.”37  “One way in which ARRIS has promoted its line of SURFBOARD hardware and software is through the placement of video advertisements online on a variety of platforms, including on YouTube, Amazon, and Hulu. In addition, SURFBOARD ads have been served across a wide range of channels via connected TV and webpages via programmatic video.”38 Some of the channels and sites that have featured SURFBOARD advertisements are TechCrunch, CNET, Yahoo, ESPN, FS1, NBA Sports, WeTV, and Adult Swim.39  “ARRIS also partners with numerous Internet service providers and retailers to advertise and promote its SURFBOARD products, including Comcast Cable 35 Opposer’s Trial Brief, 21 TTABVUE 20. 36 Giacobetti Decl., 20 TTABVUE 11 ¶ 20. 37 Id. at 11 ¶ 22. 38 Id. at 12 ¶ 23. 39 Id. - 16 - Opposition 91241991 Communications, (Xfinity), Cox Communications, and Charter Communications (Spectrum), many of whom act or have acted as third party retailers of numerous generations of its SURFBOARD products.”40  “In addition to targeted web advertising, for many years, ARRIS has actively maintained its own website dedicated to its SURFBOARD goods and services located at www.arris.com/surfboard. The arris.com/surfboard website received approximately 1.474 million unique users, 1.795 sessions, and over 3 million page views in 2019.”41  “ARRIS also utilizes social media to promote the SURFBOARD brand and maintains a Facebook account with nearly 1,500 followers, a Twitter page with nearly 20,000 followers, and a YouTube channel with over 5,000 subscribers. ARRIS uses these social media platforms to engage with consumers, promote its SURFBOARD goods and services, and build excitement surrounding its products and services, thereby creating increased customer awareness.”42 Here, due to the conclusory nature of the declaration, which lacks a precise definition of the “products” being discussed, and the deficiencies in Opposer’s evidence, which lacks specificity in sales, marketing, and advertising figures for the specific goods Opposer offers under its SURFBOARD mark, we find that Opposer has shown only that its SURFBOARD standard character mark is of moderate strength when used for the goods claimed in Opposer’s SURFBOARD registration, which the record reflects are Opposer’s primary products. 40 Id. at 12 ¶ 24. 41 Id. at 12-13 ¶ 26. 42 Id. at 13 ¶ 27. - 17 - Opposition 91241991 We are unable, however, to extend such a finding to Opposer’s use of the SURFBOARD standard character mark for any computer software on this record, in part because we do not have any specific data for the acquisition,43 marketing, or advertising of the software itself. Opposer’s SURFBOARD software appears to be complementary to Opposer’s SURFBOARD peripheral hardware products; the software runs, or manages, Opposer’s modems, routers, and mesh Wi-Fi systems. Opposer’s software does not appear to be sold, marketed, or advertised separately. See Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1837-39 (TTAB 2013) (opposer’s common law software products were integrated with opposer’s software identified in its pleaded registration, and not related to applicant’s computer software, as amended). Applicant does not contest the strength of Opposer’s SURFBOARD marks for the goods in the registration. And the record does not include any third-party SURFBOARD marks for the same or similar goods, which could diminish the strength of the registered mark and narrow its scope of protection. See Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005) (“Evidence of third-party use of similar marks on similar goods is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.”). Considering the record as a whole (i.e., dictionary definitions; general marketing, sales, and advertising evidence discussed above; the lack of third-party use, the 43 Mr. Giacobetti stated that Applicant offers its SURFBOARD computer application for free. Giacobetti Decl., 20 TTABVUE 14 ¶ 34. - 18 - Opposition 91241991 inherently distinctive nature and moderate commercial strength of Opposer’s SURFBOARD standard character mark), we find that Opposer’s mark is entitled to a slightly broader than normal scope of protection for the goods in its registrations. See Palm Bay Imps., 73 USPQ2d at 1694. For Opposer’s software, due to a lack of evidence, we find Opposer’s mark is entitled to a normal scope of protection for a suggestive mark. 2. The Similarity or Dissimilarity of the Marks. Next we address the DuPont factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression. DuPont, 177 USPQ at 567. Applicant does not dispute that the standard character marks are identical in appearance, sound, connotation, and commercial impression. Applicant’s standard character mark, which covers all font sizes and types, also would be legally equivalent to Opposer’s common law use of SURFBOARD, which appears to have been used as a word mark without a design component. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011) (owner was “entitled to depictions of the standard character mark regardless of font style, size, or color”). Regarding Opposer’s composite mark, , we find that the stylized “B” is a pictorial representation of a surfboard used in the sport of surfing, and that the design element of the stylized “B” is minimal, so it does not create much of a distinction in appearance. See SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ 2d 937, 939 (Fed. Cir. 1983) (where opposer owned and pleaded registrations for the typed word mark SQUIRT and a composite design mark for SQUIRT, court held that applicant could not - 19 - Opposition 91241991 legally assert a difference between applicant’s and opposer’s marks, so the marks must be considered the same). Accordingly, this DuPont factor weighs in favor of a finding of likelihood of confusion with both of Opposer’s marks. 3. The Relatedness of the Goods. When analyzing the second DuPont factor on the relatedness of the goods, we look to the identifications in the application and registration. Stone Lion Capital Partners v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014). See also Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that 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 regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which sales of the goods are directed.”). Where the marks of the respective parties are identical or virtually identical, the relationship between the goods and/or services need not be as close, or even competitive, to support a finding of likelihood of confusion as would be required if there were differences between the marks. In re Shell Oil, 26 USPQ2d at 1689; In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010). The issue is not whether the goods will be confused with each other, but rather whether the public will be confused as to their source. See Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven 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. It is this sense - 20 - Opposition 91241991 of relatedness that matters in the likelihood of confusion analysis.”). It is sufficient that the goods of the applicant and the registrant are related in some manner or that the conditions surrounding their marketing are such that they are likely to be encountered by the same persons under circumstances that, because of the marks used in connection therewith, would lead to the mistaken belief that they originate from the same source. See Coach Servs., Inc. v. Triumph Learning, LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000). Opposer argues that Applicant’s “computer application software for mobile phones, namely, software for the administration and management of employment recruiting and staffing” is related to, and overlaps with, Opposer’s goods.44 Specifically, Opposer claims that the goods are complementary inasmuch as “[t]he evidence shows that the computer application software goods offered by Applicant are commonly offered by purveyors of telecommunications equipment, like [Opposer], who offer cable modem and router devices.”45 Opposer further asserts that a zone of natural expansion should apply because “[t]he evidence also demonstrates that the offering of mobile application software is well within the natural zone of expansion of products and services of offerors of telecommunications products.”46 Conversely, Applicant argues “[t]he fact that Applicant and Registrant both provide computer goods, by itself, does not establish a relationship between the goods such that 44 Opposer’s Trial Brief, 21 TTABVUE 24-28; Opposer’s Reply Brief, 23 TTABVUE 6-7. 45 Opposer’s Trial Brief, 21 TTABVUE 27. 46 Id. - 21 - Opposition 91241991 consumers would believe that all computer software programs and devices originate from the same source simply because they are sold under similar trademarks,”47 and that the record does not support a finding that the consuming public could be confused regarding the origin of Applicant’s and Opposer’s goods.48 Applicant dismisses Opposer’s zone of natural expansion argument as inapplicable.49 a. Case Law: Computer Software, Hardware, and Relatedness. Applicant cites several cases for the proposition that there is no per se rule that computer-related goods (and services) are related. See generally In re Iolo Techs., 95 USPQ2d at 1498; Octocom Sys., 16 USPQ2d at 1783; In re The Total Quality Grp. Inc., 51 USPQ2d 1474, 1476-77 (TTAB 1999); Electronic Data Sys. Corp. v. Edsa Micro Corp., 23 USPQ2d 1460, 1463 (TTAB 1992); Info. Res. Inc. v. X*press Info. Servs., 6 USPQ2d 1034, 1038 (TTAB 1988); Reynolds and Reynolds Co. v. I.E. Sys. Inc., 5 USPQ2d 1749, 1751 (TTAB 1987); M2 Software, Inc. v. M2 Commc’ns., Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1948-49 (Fed. Cir. 2006). Indeed, we have long held that there is no “per se” rule mandating that a likelihood of confusion is to be found in all cases where the goods or services in question involve computer software and/or hardware. Over thirty-five years ago, well before our current technological era - and the existence of smartphones - we specifically rejected such an approach: As a result of the veritable explosion of technology in the computer field over the last several years and the almost limitless number of specialized products and specialized uses in this industry, we think that a per se rule relating to source confusion vis-a-vis computer hardware and software is simply too rigid and restrictive an approach and fails to 47 Applicant’s Trial Brief, 22 TTABVUE 9-10. 48 Id. at 11. 49 Id. - 22 - Opposition 91241991 consider the realities of the marketplace. In re Quadram Corp., 228 USPQ 863, 865 (TTAB 1985). On its face, the peripheral hardware identified in Opposer’s registration is not inherently related to Applicant’s software for the administration and management of employment recruiting and staffing.50 As Quadram Corp. notes, merely being in the broad field of computer technology is not enough. Here, Opposer’s software for which it has priority, i.e., software for the configuration and management of modems and routers, falls short of an inherent relatedness to Applicant’s software for the administration and management of employment recruiting and staffing. We find that the types of software offered by the parties today are distinct; they are used for fundamentally different purposes. The facts here are analogous to those of Embarcadero Techs. There, the opposer pleaded and attempted to rely on common law rights in the mark ER/STUDIO for software products (i.e., database “design and architectural tools”) that complemented the opposer’s variety of computer software and related goods, including “computer software for statistical computing; computer software for software applications development,” registered in International Class 9, and “application service provider (ASP) featuring software for statistical computing and software applications development,” in International Class 42. Id. at 1827, 1832. The applicant, which had filed three applications for RSTUDIO with broadly-worded identifications claiming computer software (and related products and services), 50 As noted above, although Opposer’s pleaded composite mark registration, Registration No. 5010874, includes some additional hardware not identified in Registration No. 2088180, neither Opposer’s evidence nor arguments indicate that these additional goods would be considered more related to employment-related software such as Applicant’s software. - 23 - Opposition 91241991 petitioned to narrow the scope of the identifications of goods and services in its applications, pursuant to Section 18 of the Trademark Act, 15 U.S.C. § 1068. Id. at 1828. After considering the applicant’s proposed amendments, the Board “did not find any significant relationship between the respective software products of the parties other than falling under the very broad product category of ‘software.’” Id. at 1839. Taking into consideration the proposed amendments to the applicant’s marks, the Board opined that the “[a]pplicant’s services are even one step further removed [from opposer’s goods and services] inasmuch as they involve a service, e.g., consulting, training, technical support, etc., in the field of the R computing language software.” Id. Overall, after granting the petition which narrowed the scope of the applicant’s pending applications, the Board dismissed the opposition, reasoning that “[t]he respective software products possess very different functions and purposes and it is unlikely they will be used in conjunction with one another in a meaningful manner whereby consumers would mistakenly believe they emanate from a common source.” Id. at 1840. Thus, the mere fact that Opposer’s software for use in connection with its hardware products can be generally labeled as “software” does not suffice to render it related to software for the administration and management of employment recruiting and staffing. So, while Applicant and Opposer’s hardware and software are used in the computing field generally, our case law and the “realities of the marketplace” do not support a finding of relatedness here. - 24 - Opposition 91241991 b. Third-Party Evidence i. Third-Party Registration Evidence As to the evidence, Opposer introduced seven third-party registrations purportedly offered to show that goods that are the same or similar to Applicant’s and Opposer’s goods tend to emanate from the same source under the same registered mark:51 MARK RELEVANT GOODS Reg. No. 5975134 RDIcam52 Registration for a wide variety of peripheral computer hardware and for computer software goods. (Int. Class 9) Reg. No. 5000065 53 Registration for a wide variety of computer hardware, peripheral computer hardware, and computer software goods, including “Computer application software for computers, mobile phones, PDAs, PC tablets, televisions, set-up boxes, radios, cars, portable media players, handheld computers, namely, software for game, education, e-commerce, online retail, image processing, sound processing, video processing, data processing, music, movie, entertainment, computer program management, app management, sports, film, database management and use in electronic storage of data; Computer chips; Computer hardware and peripheral devices; Computer memory hardware.” (Int. Class 9) 51 NoR, 19 TTABVUE 171-364 (Ex. J). Opposer included one third-party application for MOTOROLA, Ser. No. 87536096. An application is only evidence that it was filed on a particular date. In re Inn at St. John’s, 126 USPQ2d at 1745 (citations omitted). Opposer also included ten third-party registrations that were registered under Section 66(a) of the Trademark Act, 15 U.S.C. § 1141f(a), for which no Section 71 affidavits were filed; and ten third-party registrations that were registered under Section 44(e) of the Trademark Act, 15 U.S.C. §1126(e), for which no Section 8 declarations were filed. A third-party registration that is not based on use in commerce, such as one registered under Section 66(a), or one registered solely under Section 44 of the Trademark Act, and for which no Section 8 or 71 affidavit or declaration of continuing use has been filed, has very little, if any, persuasive value. See Calypso Tech., Inc. v. Calypso Capital Mgmt., LP, 100 USPQ2d 1213, 1221 n.15 (TTAB 2011); In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1583 (TTAB 2007); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993). So we have not considered those 20 registrations. 52 Id. at 181-82. Partial listing of goods. 53 Id. at 227-29. Partial listing of goods. - 25 - Opposition 91241991 MARK RELEVANT GOODS Reg. No. 5172275 54 Registration for a wide variety of computer hardware, peripheral computer hardware, and computer software goods, including “Computer software, namely, software development tools for the creation of mobile internet applications and client interfaces.” (Int. Class 9) Reg. No. 5117699 55 Registration for a wide variety of computer hardware, peripheral computer hardware, and computer software goods, including “Software, downloadable software and mobile application software for streaming audiovisual and multimedia content via the internet and global communications networks; computer software, namely, software development tools for creating software and mobile applications.” (Int. Class 9) Reg. No. 5088127 IPUIS56 Registration for a wide variety of computer hardware, peripheral computer hardware, and computer software goods. (Int. Class 9) Reg. No. 3741470 57 Registration for a wide variety of computer hardware, peripheral computer hardware, and computer software goods, including “Computer software for use in organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio, and video files on portable and handheld digital electronic devices; a full line of computer software for portable and handheld digital electronic devices for recording, organizing, transmitting, receiving, manipulating, playing and reviewing text, data, audio, image, and video files; computer software and firmware for operating system programs.” (Int. Class 9). Reg. No. 4287318 58 Registration for a wide variety of computer hardware, peripheral computer hardware, and computer software goods, including “Computing devices containing embedded software to process sensor data and transmit sensor data in the fields of monitoring, security, defense, aviation, electric utility applications, oil and gas applications, water utility applications, 54 Id. at 232-56. Partial listing of goods. 55 Id. at 257-59. Partial listing of goods. 56 Id. at 260-64. Partial listing of goods. 57 Id. at 355-57. Partial listing of goods. Registered under Section 44(e) of the Trademark Act, 15 U.S.C. §1126(e), on Jan. 26, 2010. Combined Declaration of Continued Use and Incontestability Under Sections 8 and 15, 15 U.S.C. §§ 1058 and 1065, accepted Mar. 29, 2017. 58 Id. at 307-10. Partial listing of goods. Registered under Section 66(a) of the Trademark Act, - 26 - Opposition 91241991 MARK RELEVANT GOODS communications, information processing, and information technology; computer software for the management of infrastructure, facilities, assets, land information, outages and mobile workforces.” (Int. Class 9) (emphasis added) “Although such registrations are not evidence that the marks shown therein are in use or that the public is familiar with them, they nonetheless have probative value to the extent that they serve to suggest that the goods listed therein are of a kind which may emanate from a single source under a single mark.” In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009) (citing In re Albert Trostel & Sons Co., 29 USPQ2d 1783, and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988)). Of the seven, all offer a vast combination of computer hardware, peripheral hardware, or software specialized for use with particular varieties of goods. “While third-party registrations can play an important role in establishing that the types of goods at issue are related, [parties] must review the registrations carefully to ensure that each registration presented is probative and that the number of registrations is sufficient, along with other types of evidence, to establish that the types of goods at issue are related.” In re Princeton Tectonics, Inc., 95 USPQ2d 1509, 1511 (TTAB 2010). None of the registrations lists software for the administration and management of employment recruiting and staffing, as identified by Applicant. Thus, because they do 15 U.S.C. § 1141f(a), on Feb. 12, 2013. Combined Declaration of Continued Use and Incontestability Under Sections 71 and 15, 15 U.S.C. §§ 1141k and 1065, accepted Mar. 13, 2019. - 27 - Opposition 91241991 not include the relevant goods, their probative value is minimal. Moreover, a wide variety of goods are claimed in the identifications of all of the third-party registrations proffered by Opposer. “The diversity of the goods identified in [the] registration[s] diminishes the probative value in establishing that any two items identified in the registration are related.” In re Princeton Tectonics, 95 USPQ2d at 1511 (citing In re Davey Prods., 92 USPQ2d at 1203). Consequently, we find Opposer’s third- party registrations only minimally probative of relatedness. ii. Third-Party Internet Evidence Opposer also proffered third-party Internet evidence, purportedly to show that it is common for a single entity to offer, under the same mark, both peripheral computer hardware, such as modems and routers, as well as WiFi and software apps that can be used to manage the modem, router, or WiFi. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (relatedness supported by evidence that third parties sell both types of goods under same mark, showing that “consumers are accustomed to seeing a single mark associated with a source that sells both.”). For example: A four-page data sheet59 for the Netgear Orbi Whole Home AC2200 Tri-Band WiFi System for creation of a whole home mesh WiFi system. 59NoR, 9 TTABVUE 367-70 (Ex. K), located at https://www.netgear.com/images/datasheet/orbi/CBK40.pdf (last visited April 21, 2021). We note that Opposer did not identify the date this data sheet was accessed or its source, nor was it authenticated by an affidavit or declaration pursuant to Fed. R. Civ. P. 56(c)(4). See Trademark Rule 2.122(e), 37 C.F.R. § 2.122(e); see also TBMP § 528.05(e). However, since Applicant did not object to the data sheet, we have considered it for whatever probative value it may have. - 28 - Opposition 91241991 - 29 - Opposition 91241991 - 30 - Opposition 91241991 - 31 - Opposition 91241991 - 32 - Opposition 91241991  https://motorolanetwork.com/catalog/product/view/id/1062/s/md1600/category /111/ 60 A screen shot of a web page for the Motorola MD1600 VDSL2/ADSL2+ Modem plus AC1600 WiFi Gigabit Router for high-speed connection to the Internet for WiFi and Ethernet devices. The screen shot does not show that any software is offered with the product. 60 Id. at 371 (Ex. K). - 33 - Opposition 91241991  https://play.google.com/store/apps/details?id=com.zoom.motorola.mobilemana ger&hl=en_US 61 A screen shot of a web page for the Google Play store, offering the Motorola MR1900 downloadable app which enables consumers, from their smartphones, to manage Motorola routers and networks of connected devices, see devices connected to a consumer’s network via Ethernet or WiFi, add a guest network, check and monitor WiFi speed and data usage, reboot routers, and receive immediate notice if the Internet connection stops working. 61 Id. - 34 - Opposition 91241991  https://www.amazon.com/Google-WiFi-system-3-Pack- replacement/dp/B01MAW229462 A screen shot of an Amazon.com web page for the Google WiFi system, a connected system for seamless WiFi coverage, helping eliminate dead zones and buffering. The system can replace a router, and works with consumers’ existing modem and Internet service. The system can be controlled by an Internet app. 62 Id. at 372 (Ex. K). - 35 - Opposition 91241991  https://play.google.com/store/apps/details?id=com.google.android.apps.access. wifi.consumer&hl=en_US 63 A screen shot of an Amazon.com web page for the Google WiFi system app, which allows users to set up and control Google WiFi points or OnHub right from a mobile device, prioritize a device for faster speeds, pause the Wi-Fi on other devices, see what is connected to the user’s network and how much bandwidth is being used, create a separate network for guests, run a network check to test connection speed, make changes to settings (Wi-Fi network names and passwords), and add a network manager. 63 Id. - 36 - Opposition 91241991  https://www.amazon.com/NETGEAR-Nighthawk-C7000-Compatible- Providers-including/dp/B0781Z5PCL 64 A screen shot of an Amazon.com web page for the NETGEAR Nighthawk Cable Modem Wi-Fi Router Combo C7000, a high-speed cable modem with a built-in high performance WiFi router. The screen shot does not show that any software is offered with the product. 64 Id. at 373 (Ex. K). - 37 - Opposition 91241991  https://www.netgear.com/home/services/nighthawk-app/ 65 A screen shot of a web page for the Netgear Nighthawk app, which allows users to install a router and get access to their network information (such as Internet speed), pause their Internet service, enable parental controls, monitor Internet traffic, update firmware, and share WiFi with guests, all from one management dashboard. Opposer’s additional third-party Internet evidence consists of screen shots of product review video and tutorial video homepages on YouTube. Applicant’s identification of goods, however, is limited to “mobile application software for the administration and 65 Id. - 38 - Opposition 91241991 management of employment recruiting and staffing.” As with the third-party registration evidence, Opposer’s third-party Internet evidence relates to other types of software apps that are distinct from, and do not involve, “the administration and management of employment recruiting and staffing.” So we find that Opposer’s third- party Internet evidence is also minimally probative as to relatedness, at best. c. Conclusion: Relatedness We find that Opposer’s non-downloadable web-based software and its mobile app software is essentially complementary to Opposer’s peripheral hardware, specifically, its modems, routers, and Wi-Fi systems. Opposer’s software appears to be the necessary tool to manage the peripheral hardware; the software is so inextricably tied to and associated with the peripheral hardware that the software does not appear to have a viable existence alone. See Embarcadero Techs., 105 USPQ2d at 1832. And, as we found in Embarcadero Techs., the parties’ respective software has distinctly different functions and purposes. Thus, similar to our holding in that case, here, the parties’ software is unrelated. Moreover, we find Opposer’s peripheral hardware goods, as claimed in its registrations, are unrelated to Applicant’s software for the “administration and management of employment recruiting and staffing.” Finally, there is no evidentiary support for the suggestion that Applicant’s goods are within a zone of natural expansion of Opposer’s goods. Overall, on this record, the DuPont factor as to relatedness weighs against a finding of likelihood of confusion. - 39 - Opposition 91241991 4. The Channels of Trade. The third DuPont factor concerns the “similarity or dissimilarity of established, likely-to-continue trade channels.” DuPont, 177 USPQ at 567; Stone Lion, 110 USPQ2d at 1161. For any goods in an application or in a registration, in the absence of limitations as to channels of trade or classes of purchasers of the goods, the presumption is that the goods move in all trade channels normal for such goods and are available to all potential classes of ordinary consumers of such goods. See In re I-Coat, 126 USPQ2d 1730, 1737 (TTAB 2018); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). There are no limitations or restrictions set forth in Applicant’s application or Opposer’s registration, so it is presumed that the parties’ goods flow through all normal channels of trade for such goods; for Opposer’s common law goods, we consider Opposer’s actual trade channels. See Barbara’s Bakery, Inc. v. Barbara Landesman, 82 USPQ3d 1283, 1287 (TTAB 2007). The purchasers for Applicant’s and Opposer’s goods include members of the general public who use peripheral computer hardware, non-downloadable web-based computer software, and mobile application software. Opposer argues that the trade channels are the same because both parties offer their SURFBOARD mobile app software in the Apple App Store, which Opposer characterizes as a “closed marketplace,” and that confusion is likely because a search for “surfboard” at the Apple App Store generates results showing the parties’ SURFBOARD marks as two of the first three search “hits.”66 Opposer further argues that likely confusion will only increase when Applicant finalizes its plans to offer its SURFBOARD app in the 66 Opposer’s Trial Brief, 21 TTABVUE 28-29. - 40 - Opposition 91241991 Android App Store and the Google Play Store, where Opposer already offers its mobile apps.67 Applicant argues that the trade channels do not overlap, making an analogy between the handful of software app stores today and the modern supermarket, where an enormous variety of food, cleaning, paper products, and other unrelated items are sold.68 Turning to the evidence, Opposer proffered documents showing that its SURFBOARD non-downloadable web-based software is offered “through the Internet,”69 that its SURFBOARD modems are offered at retailers such as Amazon.com, Best Buy, Target, and Walmart,70 and that Applicant’s SURFBOARD app is offered free of charge through the Apple App Store.71 67 Id. 68 Applicant’s Trial Brief, 22 TTABVUE 12. Notably, in its discovery responses, Applicant stated that its goods have not been available for download at the Apple App Store since before September 1, 2019, see NoR, 9 TTABVUE 153 (Ex. H) (from “Applicant’s Objections and Responses to Opposer’s First Set of Requests for Admission,” Nos. 42, 43, 46, 47), and equivocated in its responses about its plans to offer its goods for download at the Google Play Store. See NoR, 9 TTABVUE at 154 (Ex. H) (from “Applicant’s Objections and Responses to Opposer’s First Set of Requests for Admission,” Nos. 49, 50). We consider these responses to be self-serving, though, in the absence of a Section 18 petition to change the scope of the identification of goods. Still, we must analyze the channels of trade using the goods as identified in Applicant’s application. 69 Giacobetti Decl., 20 TTABVUE 9 ¶ 18, 104 (Ex. F) (web-based configuration software). 70 Id. at 188 (Ex. I). 71 Id. at 190-91 (Ex. J) (Apple App Store Preview page). - 41 - Opposition 91241991 - 42 - Opposition 91241991 Opposer also proffered evidence showing that Applicant has marketed its goods through “in person face to face marketing” and door hangers, like the one shown below.72 72 NoR, 9 TTABVUE 114 (Ex. F) (from “Applicant’s Objections and Responses to Opposer’s First Set of Interrogatories (Nos. 1-27),” Response to Interrogatory No. 9); NoR, 19 TTABVUE 388 (Ex. M) (door hanger). - 43 - Opposition 91241991 Upon consideration of the evidence, we find that Opposer has not proven that the trade channels for Opposer’s peripheral hardware and Applicant’s mobile app overlap, since Opposer focused its trade channels argument only on its mobile application software vis-à-vis Applicant’s mobile application software. The record reflects that Opposer offers its mobile application software free of charge at the Apple App, Android App, and Google Play stores.73 The parties’ mobile applications are both offered at the Apple App Store, which is restricted to users of Apple’s iOS and iPadOS operating systems. Since we do not have any evidence in the record supporting the contention that the trade channels for all mobile apps are, by definition, related by virtue of being offered at “app stores,” we base our determination of relatedness of trade channels in the fields for which the goods are created, rather than the format on which the goods are offered, or how the goods are delivered. M2 Software, 78 USPQ2d at 1947-48 (court affirmed Board’s holding that the parties’ marks were not related where the trade channel for applicant’s goods was limited to multimedia CD-ROMs in the fields of pharmacy and medicine, and the trade channel for registrant’s goods was limited to interactive multimedia CD-ROMs for the film and music industries; the fact that the goods were offered on a CD-ROM format was not sufficient to find overlapping trade channels). See also Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (where the parties’ goods were offered at supermarkets, court reversed the Board’s decision sustaining an opposition in three classes, finding that the “fundamental inquiry mandated by § 2(d) goes to the cumulative effect of 73 Giacobetti Decl., 20 TTABVUE 191-94 (Ex. J) (Apple App Store page); see also id. at 9 ¶ 19 (screen shot of Android App Store page). - 44 - Opposition 91241991 differences in the essential characteristics of the goods and differences in the marks”; the “means of distribution and sale, although certainly relevant, are areas of peripheral inquiry”). We have carefully considered Opposer’s arguments. In support, Opposer cites Treemo, Inc. v. Flipboard, Inc., 53 F.Supp.3d 1342 (W.D. Wash. 2014), wherein the court found that the trade channels for the parties’ mobile app software were the same because both parties only offered their mobile apps in the same app stores. Critical to this finding was substantial trial testimony from plaintiff’s co-owner that “app categorization has little influence on how apps are purchased by consumers, as most users will shop the app store by using the search bar rather than scrolling through hundreds of apps by category.” Id. at 1357. Currently, there appears to be a paucity of case law analyzing whether overlapping trade channels are established by simply offering goods (or services) through mobile app stores; specifically, cases that analyze how consumers shop at mobile app stores. So although the Treemo decision is not binding on the Board,74 we consider its finding pertaining to mobile app stores as trade channels to be relevant. However, we distinguish Treemo from the facts here, since on this record, we have no evidence of how consumers shop at app stores. Opposer’s sole witness, Mr. Giacobetti, made only a cursory statement about this in his declaration.75 And, argument from Opposer’s 74 “While parties may cite relevant cases from any jurisdiction, the Board relies primarily on precedent from the U.S. Court of Appeals for the Federal Circuit (‘Federal Circuit’), not only because the Federal Circuit is the Board’s primary reviewing court, but also because its cases address registration issues more specifically.” TBMP § 801.03. 75 Mr. Giacobetti stated, “[n]ote that both parties’ SURFBOARD software applications are retrieved by a consumer searching the Apple App Store for an application called ‘SURFBOARD.’ As previously noted in the Notice of Opposition, at the time of commencement of this Proceeding, - 45 - Opposition 91241991 attorney is no substitute for evidence. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) (quoting Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005)). In sum, Applicant’s mobile app is limited to the “administration and management of employment recruiting and staffing,” or temporary job matching, whereas Opposer’s mobile app is actually complementary to its peripheral hardware, and is only used to configure and manage that peripheral hardware. Although consumers may encounter the parties’ mobile apps in a list of search results of the Apple App Store (depending on how the search query is formulated), the fact that both apps are offered at the Apple App store with millions of other apps for myriad goods and services does not, ipso facto, compel us to conclude that the trade channels overlap. Thus, this DuPont factor weighs against a finding of likelihood of confusion. 5. The Degree of Consumer Care. Finally, Opposer focuses its arguments regarding the DuPont factor concerning purchasing conditions on comparisons of its free SURFBOARD mobile phone app76 and Applicant’s free SURFBOARD mobile phone app.77 However, considering the “sales sheets,”78 marketing materials,79 and technical specifications80 for Opposer’s various routers, cable modems, cable gateways, and two of the first three hits from a search for ‘surfboard’ on the Apple App Store generated results showing the parties’ SURFBOARD software applications.” 20 TTABVUE 14 ¶ 33. 76 Id. at 191-94 (Ex. J) (Apple App Store page). 77 Id. at 14 ¶¶ 33, 34; see also id. at 190-91 (Ex. J) (Apple App Store page). 78 Id. at 48-62 (Ex. C) (“sales sheets” generally). 79 Id. at 64-70 (Ex. D) (marketing materials generally). 80 Id. at 104 (Ex. F) (web-based configuration software), 109-80 (Ex. H) (Surfboard SBR-AC1200P WiFi Router User Guide, Apr. 2017). - 46 - Opposition 91241991 network extenders, we find that consumers will engage in some study before acquiring such goods; in other words, such goods require ordinary consumers, who may not be familiar with terms such as “DOCSIS 3.1,”81 “Ethernet,”82 “backwards compatible,”83 “IPv6,”84 “MIMO,”85 and “MU-MIMO,”86 to exercise some care when making purchasing decisions, but would not necessarily use a high degree of care in purchasing. 87 We otherwise do not have evidence regarding purchasing habits, and the applicable standard of care is that of the least sophisticated consumer. Alfacell Corp. v. Anticancer, Inc., 71 USPQ2d 1301, 1306 (TTAB 2004). The least sophisticated consumer is a member of the general public, who would not have any particular sophistication in the relevant field, and may make infrequent purchases of the goods involved herein. Opposer has not proffered enough evidence to support a finding of a low degree of care. Therefore, on this record, we find the degree of care consumers would exercise when making decisions to purchase Opposer’s peripheral hardware (coupled with Opposer’s complementary non-downloadable web-based software)88 is ordinary, so we find that this DuPont factor is neutral. 81 From sample sales sheet, id. at 49. 82 Id. 83 Id. 84 Id. 85 From sample marketing material, id. at 66. 86 Id. 87 In addition, the prices for Opposer’s peripheral hardware start at $105.00, see Giacobetti Decl., 20 TTABVUE 5 ¶ 11, which suggests neither a low degree of care nor a very high one. 88 Access to Opposer’s non-downloadable web-based configuration software is provided as part of the peripheral hardware purchase; no separate purchasing decisions need to be made for such software. - 47 - Opposition 91241991 V. Conclusion: Balancing the Factors. The Federal Circuit reminds us that “[w]e are not concerned with mere theoretical possibilities of confusion, deception, or mistake or with de minimis situations but with the practicalities of the commercial world, with which the trademark laws deal.” Electronic Design & Sales Inc. v. Electronic Data Sys. Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992) (citing Witco Chem. Co. v. Whitfield Chem. Co., Inc., 418 F.2d 1403, 164 USPQ 43, 44-45 (CCPA 1969)). Here, the parties’ goods are split in disparate industries: Opposer’s non-downloadable web-based software and mobile app software, which complements the operation of Opposer’s peripheral hardware, is unrelated to Applicant’s mobile app software for administration and management of employment recruiting and staffing. Likewise, Opposer’s modems, routers, WiFi systems, and other peripheral hardware are unrelated to Applicant’s employment- related mobile app software. For these reasons, despite the identical nature of the parties’ SURFBOARD marks, we are unpersuaded consumers would be likely to confuse the source of Applicant’s SURFBOARD mobile app software with the source of Opposer’s SURFBOARD software - whether non-downloadable and web-based, or in the form of a mobile app. Nor are we persuaded that consumers would be likely to confuse the source of Applicant’s SURFBOARD mobile app software with the source of Opposer’s SURFBOARD peripheral hardware. And while we have borne in mind the moderate commercial strength of the mark, such strength is not an automatic entitlement to appropriate a mark for all products and services. See Burns Philp Food Inc. v. Modern Prods. Inc., 24 USPQ2d 1157, 1160 (TTAB 1992), aff’d, 28 USPQ2d 1687 (Fed. Cir. 1993) (while the - 48 - Opposition 91241991 fame or strength of a mark is entitled to substantial weight in the likelihood of confusion analysis, there may be countervailing factors). In short, on this record, the unrelatedness of the goods at issue and their different trade channels render confusion unlikely between the parties’ SURFBOARD marks. Decision: The opposition is dismissed.