Elena Potoupa

Trademark Trial and Appeal Board

Sep 3, 2008

No. 78772938 (T.T.A.B. Sep. 3, 2008)

Mailed: September 3, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Elena Potoupa
___________

Serial No. 78772938
___________

Sergei Orel of Law Office of Sergei Orel for Elena Potoupa.

Marcie R Frum Milone, Trademark Examining Attorney, Law
Office 116 (Michael W Baird, Managing Attorney).
____________

Before Walters, Zervas and Taylor, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

Elena Potoupa has filed an application to register the
mark shown below on the Principal Register for the services,
also shown below.1
Mark:

1 Serial No. 78772938, filed December 14, 2005, based on use of the mark
in commerce, alleging first use and use in commerce as of November 2004.

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 78772938

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Services: “Promoting the goods and services of others
by dissemination of printable discount and rebate
coupons over the Internet and distributing and
offering discount and rebate coupons of others for use
by the public in the purchase of various consumer
products, retail items, groceries, food items, dining
and restaurant services, travel services, over the
Internet; advertising and publicity services, namely,
promoting the goods, services, brand identity and
commercial information of third parties by offering
such parties' printable discount and rebate coupons
through the Internet and by providing hypertext links
to the web sites of third parties; advertising,
including promotion relating to the sale of articles
and services for third parties by the transmission of
advertising material and the dissemination of
advertising messages and advertising banners on the
Internet, computer networks and on a website,” in
International Class 35.
Disclaimer: COUPONS
Description of Mark: "The mark consists of the wording
WOW Coupons with the dollar sign inside the O in the
word WOW. The color green appears in the circle
forming the O in WOW and the color dark green appears
in the letters W and W and the dollar sign in the
first word and in the entire second word, COUPONS."
Color claim: "The color(s) green and dark green is/are
claimed as a feature of the mark."

The examining attorney has issued a final refusal to
register under Section 2(d) of the Trademark Act, 15 U.S.C.
1052(d), on the ground that applicant’s mark so resembles
the standard character mark WOW! MARKETING, previously
registered for the services shown below, that, if used on or
in connection with applicant’s services,2 it would be likely
to cause confusion or mistake or to deceive.
Registration No. 3072360 [registered March 28, 2006]
Services: “Preparing advertisements for others;
dissemination of advertising for others via an online

2 Both cited registrations include a disclaimer of MARKETING apart from
the mark as a whole, and both registrations are owned by Freedom
Colorado Information, Inc.
Serial No. 78772938

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electronic communications network; dissemination of
advertising matter; promoting the goods and services of
others via an online electronic communications network;
and business marketing consulting services,” in
International Class 35; and “Computer services, namely,
creating, designing and maintaining web sites for
others; and hosting web sites of others,” in
International Class 42.

Registration No. 3095057 [registered May 23, 2006]
Services: “Advertising and marketing services,” in
International Class 35

Applicant has appealed. Both applicant and the
examining attorney have filed briefs. We affirm the refusal
to register.
As a preliminary matter, applicant submitted evidence
with her brief and the examining attorney has objected
thereto. We agree that this evidence is untimely, as all
evidence must be submitted prior to appeal, and, therefore,
we have not considered this evidence. See, 37 CFR 2.142(d);
and In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB
1994). Moreover, even if we were to consider this evidence,
it would not change our decision in this case because the
services in the third-party registrations submitted with the
brief vary widely, even within International Class 35; the
marks include additional matter different from the case
before us; and each case must be decided on its merits.
Finally, even if we were to consider this evidence and find
that the cited registered mark is weak, even weak marks are
entitled to protection.
Serial No. 78772938

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Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E. I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
In considering the evidence of record on these factors,
we keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re
Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein.
We consider, first, the services involved in this case,
and we note that the question of likelihood of confusion
must be determined based on an analysis of the goods or
services recited in applicant’s application vis-à-vis the
goods or services recited in the registration, rather than
what the evidence shows the goods or services actually are.
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1
Serial No. 78772938

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USPQ2d 1813, 1815 (Fed. Cir. 1987). See also, Octocom
Systems, Inc. v. Houston Computer Services, Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp.
v. North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
Further, it is a general rule that goods or services need
not be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is enough
that goods or services are related in some manner or that
some 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 therewith, to a mistaken belief that they originate
from or are in some way associated with the same producer or
that there is an association between the producers of each
parties’ goods or services. In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991), and cases cited therein; and Time Warner
Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB
2002).
The examining attorney contends the services are
identical; and that the trade channels and classes of
purchasers are the same. She contends that the cited
registrations encompass all advertising and marketing
services and “dissemination of advertising matter”; that the
services recited in the cited registrations encompass the
services specifically identified by applicant; that, even if
Serial No. 78772938

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the services are not identical, they are closely related
because they promote the goods and services of third-
parties; and that, as such, applicant’s and registrant’s
services are directed to the same purchasers, especially
those purchasers seeking to reach online consumers.
Applicant contends that she can find no use of the
registered marks on the Internet and, thus, there will be no
confusion between applicant’s and registrant’s marks in the
marketplace.
We agree with the examining attorney that the services
involved herein are essentially the same. Cited
registration no. 3095057 recites “advertising and marketing
services,” which is very broad and clearly encompasses the
type of advertising and promotional services recited in the
application. Additionally, advertising services for third
parties via the Internet, the services described in cited
registration no. 3072360, also encompass applicant’s
promotional services for others via the Internet using
discount and rebate coupons. Therefore, applicant’s and
registrant’s services are, in part, identical. Applicant’s
argument that it is unaware of any use of the registered
marks on the Internet is unavailing because this allegation
is essentially a collateral attack on the validity of the
cited registrations, which is permissible only in the
Serial No. 78772938

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context of a cancellation proceeding, not in an ex parte
appeal.
Applicant’s services are rendered primarily via the
Internet and some of the services recited in registration
no. 3072360 are similarly limited. However, the remaining
services recited in registration no. 3072360 and all of the
services recited in registration no. 3095057 are not so
limited and, thus, we presume these services would be
rendered in all ordinary trade channels for such services.
The application and the registrations are not limited as to
classes of purchasers, so we presume that these services are
offered to all normal classes of purchasers. See In re
Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992). In other words,
applicant’s and registrant’s channels of trade and classes
of purchasers are overlapping, if not identical.
We turn, next, to a determination of whether
applicant’s mark and the registered marks, when viewed in
their entireties, are similar in terms of appearance, sound,
connotation and commercial impression. The test is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impressions that confusion as to the source of the goods or
services offered under the respective marks is likely to
result. The focus is on the recollection of the average
Serial No. 78772938

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purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore,
although the marks at issue must be considered in their
entireties, it is well settled that one feature of a mark
may be more significant than another, and it is not improper
to give more weight to this dominant feature in determining
the commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
The examining attorney contends that the marks have
highly similar commercial impressions and are not
distinguished by the design element in applicant’s mark.
Both marks have the same first term WOW, which she argues is
the dominant portion of each mark, stating that applicant
“simply deletes the generic material from the registered
marks, MARKETING, and adds the descriptive wording,
COUPONS.” (Brief, unnumbered p. 12.)
Applicant contends that the stylized lettering, design
element, different wording and the color in its mark, as
well as the exclamation mark in the registered mark,
distinguish these marks.
The mark in both of the cited registrations, WOW!
MARKETING, consists of two words, the first word is an
exclamation, “WOW,” that appears to be arbitrary in
Serial No. 78772938

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connection with the recited services or, at least, it is not
merely descriptive thereof. The second word in the mark is
the merely descriptive word MARKETING. Clearly, the word
WOW is the dominant portion of this mark and its dominance
is emphasized by the exclamation mark following it.
Applicant’s mark also consists of two words in the same
format as the registered mark, i.e., it has the identical
first word, WOW, followed by a merely descriptive word,
COUPONS. The design element in applicant’s mark consists of
the phrase WOW COUPONS shown in a simple green font, with a
“$” appearing in the “O” in WOW. We likewise find that WOW
is the dominant portion of applicant’s mark because, as with
the registered mark, it appears to be arbitrary in
connection with the recited services or, at least, it is not
merely descriptive thereof, and it is the first word in the
mark. Moreover, the word WOW is emphasized in applicant’s
mark because it appears in all capital letters and contains
the “$” design element.
We also do not find the stylization of applicant’s mark
a distinguishing factor. The registered mark is in standard
character format and, thus, registrant could conceivably
display its mark in any lettering style, including that of
the words WOW COUPONS in applicant’s mark. 37 C.F.R. §
2.52(a); In re Pollio Dairy Products Corp., 8 USPQ2d 2012,
2015 (TTAB 1988) (when registering mark in block letters,
Serial No. 78772938

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registrant remains free to change the display of its mark at
any time). See e.g., Sunnen Products Co. v. Sunex Int’l
Inc., 1 USPQ2d 1744 (TTAB 1987) (styling of letters is
irrelevant to the issue of confusion where applicant seeks
to register mark without any special form of lettering or
design). When we consider the marks as a whole, we consider
them to be more similar than dissimilar.
Therefore, we conclude that in view of the similarity
in the commercial impressions of applicant’s mark and
registrant’s mark, their contemporaneous use on the same or
overlapping services involved in this case is likely to
cause confusion as to the source or sponsorship of such
services.
Decision: The refusal under Section 2(d) of the Act is
affirmed.