BrightPlanet Corporation II, Inc.

Trademark Trial and Appeal Board

Jun 5, 2014

No. 85561168 (T.T.A.B. Jun. 5, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
June 5, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re BrightPlanet Corporation II, Inc.
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Serial No. 85561168
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Tye Biasco of Patterson Thuente Pedersen, P.A. for BrightPlanet Corporation II,
Inc.

Jeffrey C. Coward, Trademark Examining Attorney, Law Office 106 (Mary I.
Sparrow, Managing Attorney).
_____

Before Cataldo, Adlin and Gorowitz, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
BrightPlanet Corporation II, Inc. (“Applicant”) seeks registration of DEEP
WEB INTELLIGENCE, in standard characters and with DEEP WEB disclaimed,
for
Computer software that provides automated search and
extraction, storage, and analytics of information
harvested from the Deep Web; computer software that
provides a web interface used in the harvesting of
information from the Deep Web in International Class 9;
and

computer services in the nature of a data mining and
harvesting high quality unstructured content from the
Serial No. 85561168
2

Deep Web for use in research, analysis, monitoring, and
tracking in International Class 42.1

The Examining Attorney refused registration of the mark under Section 2(d) of the
Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark,
when used in connection with Applicant’s goods and services, so resembles the
previously-registered mark WEB INTELLIGENCE, in typed form, for “computer
programs for use in allowing end-users to access, query and analyze via a global
computer network information stored in relational databases and for use in
allowing end-users to formulate queries and instruction manuals therefore sold as a
unit,”2 that use of Applicant’s mark in connection with Applicant’s goods and
services is likely to cause confusion or mistake or to deceive. After the refusal
became final, Applicant appealed and filed a request for reconsideration which was
denied. Applicant and the Examining Attorney filed briefs.
Likelihood of Confusion
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 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 services. See Federated Foods, Inc. v. Fort Howard Paper

1 Application Serial No. 85561168, filed March 6, 2012 alleging first use dates of February
21, 2012.
2 Registration No. 2285994, issued October 12, 1999; renewed.
Serial No. 85561168
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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.”).
Turning first to the marks, they both consist of the term WEB
INTELLIGENCE, with the only difference between them being that Applicant’s
mark also includes the modifying prefix “DEEP.” The “deep Web” is defined as
“computing the part of the World Wide Web not accessible through conventional
search engines.” Office Action of June 26, 2012
(“collinsdictionary.com/dictionary/English/deep-web”).3 In other words, the “deep
Web” referenced in Applicant’s mark is a subset of the World Wide Web referenced
in Registrant’s mark. In fact, with its Office Action Response of December 26, 2012,
Applicant introduced a Wikipedia entry for “Deep Web” which explains that
Applicant’s founder is “credited with coining the phrase [‘deep Web’],” that the deep
Web is also known as the “Invisible Web” and that it refers to “World Wide Web
content that is not part of the Surface Web, which is indexed by standard search
engines.” Therefore, the meaning conveyed by Applicant’s mark is similar to the
meaning conveyed by Registrant’s mark – Registrant’s mark will be understood as
referring to World Wide Web-related intelligence, while Applicant’s will be
understood as referring to deep Web-related intelligence, a subset of “WEB
INTELLIGENCE.” In fact, consumers familiar with Registrant’s goods may

3 While this definition appears to come from the United Kingdom version of the Collins
Dictionary, and it is generally preferable to access the American version of dictionaries, the
cited definition is entirely consistent with other information included with the same Office
Action, as well as materials submitted by Applicant.
Serial No. 85561168
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perceive Applicant’s mark as identifying a new or special-purpose version of
Registrant’s software.
Moreover, because Applicant’s mark contains the entirety of the cited mark,
the marks create similar overall commercial impressions. See, Bellbrook Dairies,
Inc. v. Hawthorn-Mellody Farms Dairy, Inc., 253 F.2d 431, 117 USPQ 213 (CCPA
1958) (recognizing and applying general rule “that one may not appropriate the
entire mark of another and avoid a likelihood of confusion by the addition thereto of
descriptive or otherwise subordinate matter”);4 see also, International Paper Co. v.
Valley Paper Co., 468 F.2d 937, 175 USPQ 704 (CCPA 1972) (DATA for “writing,
typewriter and printing paper” confusingly similar to DATA-SPEED for “paper sold
in bulk rolls or bulk reams for conversion only into business forms”); In re Fiesta
Palms LLC, 85 USPQ2d 1360 (TTAB 2007) (CLUB PALMS MVP for casino services
confusingly similar to MVP for casino services offered to preferred customers
identified by special identification cards); In re Rexel Inc., 223 USPQ 830, 832
(TTAB 1984) (“we are firmly of the opinion that purchasers who encounter
applicant’s ‘LITTLE GOLIATH’ stapler kits and registrant’s ‘GOLIATH’ large
diameter woodcased pencils are likely to believe … that both products emanate from
or are in some way associated with the same source”); Johnson Publishing Co. v.
International Development Ltd., 221 USPQ 155 (TTAB 1982) (EBONY for cosmetics
confusingly similar to EBONY DRUM for hairdressing and conditioner).

4 The evidence of record, and Applicant’s identification of goods and services and disclaimer
all reveal that DEEP is descriptive of Applicant’s goods and services. See Bass Pro
Trademarks LLC v. Sportsman’s Warehouse Inc., 89 USPQ2d 1844, 1851 (TTAB 2008).
Serial No. 85561168
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In short, in addition to conveying similar meanings, Applicant’s and
Registrant’s marks both include the identical phrase WEB INTELLIGENCE, and
therefore also look and sound quite similar. “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
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). This factor weighs in favor of finding a likelihood of confusion.
Applicant argues, however, that the cited mark is “not distinctive,” relying on
the results of a Trademark Electronic Search System (“TESS”) search for registered
marks in International Class 9 which include the term “web.” The search generated
724 “hits.” As the Examining Attorney pointed out in denying Applicant’s request
for reconsideration, however, the search results do not support Applicant’s
argument because Applicant provided only a list of registration numbers. In re
Hoefflin, 97 USPQ2d 1174, 1177 (TTAB 2010); TBMP § 1208.02 (3d ed. rev.2 2013).
Moreover, the only two registrations which Applicant properly introduced into the
record – Registration No. 4303507 for WEB BROWSER & Design and Registration
No. 3642023 for THE SOCIAL WEB BROWSER – also fail to support the argument,
because these marks are much more different from Registrant’s mark than is
Applicant’s mark, and both are registered for goods and services entirely distinct
from those at issue here (television receivers in Registration No. 4303507 and
Serial No. 85561168
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browser and communications software and online journals in Registration No.
3642023).
Turning to the goods and services, they need not be identical or even
competitive in order to support a finding of likelihood of confusion. It is enough that
the goods and services are related in some manner or that the circumstances
surrounding their marketing are such that they would be likely to be seen by the
same persons under circumstances which could give rise, because of the marks
used, to a mistaken belief that Applicant’s goods and services and Registrant’s
goods originate from or are in some way associated with the same source or that
there is an association between the sources of the goods and services. Hilson
Research, Inc. v. Society for Human Resource Management, 27 USPQ2d 1423, 1432
(TTAB 1993); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); Schering
Corp. v. Alza Corp., 207 USPQ 504, 507 (TTAB 1980); Oxford Pendaflex Corp. v.
Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978); In re International Telephone
& Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The issue is not whether
purchasers would confuse the goods and services, but rather whether there is a
likelihood of confusion as to the source of the goods and services. In re Rexel Inc.,
223 USPQ 830, 832 (TTAB 1984).
Here, there is a relationship between the goods and services. The
identifications themselves make this clear, as the cited mark is used for software to
“access, query and analyze via a global computer network information stored in
relational databases,” using the World Wide Web. Applicant concedes that the
Serial No. 85561168
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reference to “relational databases” in Registrant’s identification of goods means
“structured content or the same as the ‘surface web,’” and the “surface Web” is part
of the World Wide Web. Applicant’s Appeal Brief at 5 (emphasis in original); See
also, Office Action Response of December 26, 2012 (SAP BusinessObjects brochure
for Registrant’s WEB INTELLIGENCE software which indicates that Registrant’s
product provides a “web-based interface” and “access to heterogeneous sources of
data” including from “multidimensional or relational databases”). Applicant’s mark
is used for software to search and analyze information from the “deep Web,” which
is a portion or subset of the Internet, and more specifically the World Wide Web.5
Applicant also provides related services in Class 42. Applicant’s Class 42 specimen
indicates that Applicant’s services “simplify web research and analytics” and
“harvest relevant data from any source on the Web” (emphasis supplied).
Applicant argues that its goods and services and Registrant’s goods are
“mutually exclusive,” in that “[t]here is a significant difference between searching
relational databases versus searching unstructured data of the Deep Web.”
Applicant’s Appeal Brief at 5. We disagree. Even assuming that Applicant’s
assertion is correct as a factual matter, there is still a relationship between the
goods and services because customers may use Registrant’s software to search the
surface Web, and Applicant’s to search the deep Web, both of which are components
of the World Wide Web, and customers and prospective customers may even believe,

5 Applicant essentially concedes the point. Office Action Response of December 26, 2012
(“The WEB is known by those that utilize data mining and harvesting of data as consisting
of two distinct and separate parts – the Surface Web and the Deep Web.”).
Serial No. 85561168
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given the similarity of the marks, that Applicant’s product is the deep Web version
of Registrant’s surface Web product. In fact, Applicant conceded during prosecution
that “Applicant’s goods and Registrant’s goods may be complementary or related.”
Applicant’s Request for Reconsideration August 26, 2013. Where, as here, products
are complementary, they may be found to be related. In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984); General Mills,
Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1597-98 (TTAB
2011), judgment set aside on other grounds, 2014 WL 343267 (TTAB 2014); In re
Toshiba Medical Systems Corp., 91 USPQ2d 1266, 1272 (TTAB 2009).
Moreover, the evidence establishes that Applicant’s claim that there is a
“significant difference” between searching the deep Web and the surface Web is
overstated. The Wikipedia entry for the Deep Web which Applicant made of record
indicates that in fact some search engines, including Yahoo! Subscriptions,
DeepPeep, Intute, Deep Web Technologies and Scirus have made at least parts of
the deep Web searchable or accessible. Office Action Response of December 26,
2012. Furthermore, “[c]ommercial search engines have begun exploring alternative
methods to crawl the deep Web.” Id.; see also, printout from “clark.edu” website
attached to Office Action of February 26, 2013 (stating that “what’s deep today may
surface tomorrow”). Perhaps most importantly, under the heading “Future,” the
Wikipedia entry states that “[t]he lines between search engine content and the deep
Web have begun to blur … An increasing amount of deep Web content is opening up
to free search as publishers and libraries make agreements with large search
Serial No. 85561168
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engines.” Id. And Applicant, in a “whitepaper” which bears the DEEP WEB
INTELLIGENCE mark, states that “Surface Web search engines
(Google/Bing/Yahoo) can lead you to websites that have unstructured Deep Web
content.” Request for Reconsideration August 26, 2013 (Steve Pederson, applicant’s
CEO, “Understanding the Deep Web in 10 Minutes,” March 2013). Similarly,
Applicant’s Class 42 specimen indicates that Applicant can help “find and harvest
relevant data from any source on the Web” (emphasis supplied).
In short, because Applicant’s goods and services and Registrant’s goods
enable users to search parts of the Web, and may be complementary, they are at
least related. This factor therefore also weighs in favor of finding a likelihood of
confusion.
As for the channels of trade, Applicant and Registrant both offer computer
software for searching the Web, with no limitations as to channels of trade or
classes of consumers, and their goods are therefore presumed to move in all normal
channels of trade for those goods and be available to all classes of consumers.
Citigroup Inc. v. Capital City Bank Grp., 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); see also, Stone Lion Capital,
110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (“Even assuming there is no overlap
between Stone Lion’s and Lion’s current customers, the Board correctly declined to
look beyond the application and registered marks at issue. An application with ‘no
restriction on trade channels’ cannot be ‘narrowed by testimony that the applicant’s
Serial No. 85561168
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use is, in fact, restricted to a particular class of purchasers.’”).6 Moreover, the
evidence indicates that there may be increasing overlap between deep Web
searching and surface Web searching, and between the customers for deep Web and
surface Web search products and services. In short, the channels of trade also
weigh in favor of finding a likelihood of confusion.
Finally, Applicant argues that consumers are “sophisticated enough to
distinguish between Applicant’s mark and Registrant’s mark.” Applicant’s Appeal
Brief at 7. Even if we assume that consumers may exercise at least some care in
purchasing Applicant’s and Registrant’s products and services, even careful
purchasers can be confused as to source when presented with highly similar marks
used on related and/or complementary goods and services. See In re Research
Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) citing Carlisle
Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110,
112 (CCPA 1970) (“Human memories even of discriminating purchasers … are not
infallible.”). This factor therefore does not outweigh the similarity of the marks,
related goods and similar channels of trade.
There is no relevant evidence or argument concerning the remaining
likelihood of confusion factors, and we therefore treat them as neutral.

6 Applicant’s claim that its goods and services are intended for military, intelligence and
law enforcement agencies is not reflected in its identification of goods and services. In any
event, Registrant’s software could be offered to the same types of agencies.
Serial No. 85561168
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Conclusion
After considering all of the evidence of record as it pertains to the relevant du
Pont factors, including all of Applicant’s arguments and evidence, even if not
specifically discussed herein, we find that confusion is likely because the marks are
quite similar, the goods and services related and the channels of trade overlapping.

Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.