Elena Potoupa

Trademark Trial and Appeal Board

Aug 6, 2009

No. 78770813 (T.T.A.B. Aug. 6, 2009)

Mailed: August 6, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Elena Potoupa
___________

Serial No. 78770813
___________

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
standard character mark WOW PRINTABLE COUPONS on the
Principal Register for the services shown below.1
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

1 Serial No. 78770813, filed December 10, 2005, based on use of the mark
in commerce, alleging first use and use in commerce as of November 16,
2005.

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 78770813

2
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.

The application includes a disclaimer of PRINTABLE COUPONS
apart from the mark as a whole.
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, the subject mark
of two registrations 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
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

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. 78770813

3

Applicant has appealed. Both applicant and the
examining attorney have filed briefs. We affirm the refusal
to register.3
As a preliminary matter, applicant submitted evidence
with her request for reconsideration, which was filed along
with her notice of appeal. In the denial of the request for
reconsideration and in her brief, the examining attorney
objected to this evidence as untimely because it was filed
“after the filing of an appeal.” The rule to which the
examining attorney refers, 37 CFR §2.142(d), states the
following:
(d) The record in the application should be
complete prior to the filing of an appeal. The
Trademark Trial and Appeal Board will ordinarily
not consider additional evidence filed with the
Board by the appellant or by the examiner after
the appeal is filed. After an appeal is filed, if
the appellant or the examiner desires to introduce
additional evidence, the appellant or the examiner
may request the Board to suspend the appeal and to
remand the application for further examination.

See also In re Smith and Mehaffey, 31 USPQ2d 1531, 1532
(TTAB 1994). However, the examining attorney apparently
either failed to read the final sentence in this rule, which
permits introduction of evidence upon suspension of the
appeal and remand, or misunderstood the section to permit
submission of evidence only by the examining attorney. In

3 Applicant’s co-pending application for the design mark WOW COUPONS,
Serial No. 78772938, was similarly refused registration under Section
2(d) and the refusal was affirmed by the Board on September 3, 2008.
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4
this case, the Board suspended the application and remanded
the request for reconsideration to the examining attorney
for examination. Thus, the evidence submitted with the
request for reconsideration is proper, and the examining
attorney could have responded with additional evidence
before returning the case to the Board to resume the appeal.
The examining attorney’s objection is overruled and the
evidence has been considered.
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
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5
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
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
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Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB
2002).
The examining attorney contends the services are
identical to the extent that applicant’s identified services
are encompassed by registrant’s identified services; 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 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 the services are different
because applicant’s focus “is on offering and promoting
discount and rebate coupons of others on the Internet,
namely, of printable coupons of other parties on applicant’s
website [www.wowprintablecoupons.com], while the WOW!
MARKETING marks are registered in respect of advertising and
marketing services mainly.” (Brief, p. 5.)
Applicant also contends that she can find no use of the
registered marks on the Internet and, thus, there will be no
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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 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
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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. 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; that both marks have
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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 marks are visually and
phonetically different, noting the specific differences in
the marks, such as the exclamation mark in the registered
mark and the different numbers of words and letters in the
marks. Applicant argues that, while WOW may be the dominant
portion in the cited registration, the examining attorney
improperly dissected applicant’s mark and the term PRINTABLE
COUPONS is the dominant portion in its mark, noting that the
disclaimer of this term indicates that that it is “somewhat
suggestive.”
The mark in the cited registrations, WOW! MARKETING,
consists of two words, the first word is an exclamation,
“WOW,” that appears to be arbitrary in 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
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first word, WOW, followed by a merely descriptive term,
PRINTABLE COUPONS. Contrary to applicant’s contentions, we
find that the term PRINTABLE COUPONS is merely descriptive
of the primary object of applicant’s services, i.e., to make
available to consumers third-party “printable coupons.” 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. Applicant’s arguments
about the differences in the specific details of the
respective marks are of no significance because, as
previously stated, our analysis is not a side-by-side
comparison of the marks; rather, the focus is on the
recollection of the average 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). Therefore, we find that the marks are substantially
similar.
The third-party registrations submitted by applicant do
not compel a different result in this case. The
registrations are not evidence that the marks shown therein
are in use or that the public is familiar with them, and
cannot aid applicant in its effort to register another mark
which so resembles a registered mark as to be likely to
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cause confusion. AMF Inc. v. American Leisure Products,
Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973); and
Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153
USPQ 406 (CCPA 1967). Further, 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 had found that the cited registered mark is weak, which
we have not, even weak marks are entitled to protection.
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.