Job Search Television Network, Inc.v.Digi.me Limited

Trademark Trial and Appeal Board

Sep 15, 2020

91238260 (T.T.A.B. Sep. 15, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 15, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Job Search Television Network, Inc.
v.
Digi.me Limited
_____

Opposition No. 91238260
_____

Alain Villeneuve of Duane Morris LLP,
for Job Search Television Network, Inc.
Austen Zuege, Z. Peter Sawicki and Amanda Prose of Westman, Champlin &
Koehler, P.A., for Digi.me Limited.
_____

Before Zervas, Bergsman and Greenbaum,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Applicant Digi.me Limited (“Digi.me”) seeks registration on the Principal Register
of the mark DIGITAL ME (in standard characters, DIGITAL disclaimed) for
Computer software for database integration, database
management software for use in archiving information
stored on computers; database management software for
use in the information stored on computers; computer
software for creation of an archive of a user’s social media,
on-line, off-line and life-logging information technology
activity; computer software for providing permission access
to user’s life data for convenience, service or reward, in
International Class 9; and
Opposition No. 91238260
- 2 -

Provision of access to computer databases; provision of
access to data or documents stored electronically in central
files for remote consultation; electronic exchange of data
stored in databases accessible via telecommunication
networks; provision of controlled internet access to data
provided by third parties for persons authorized by the
third party, in International Class 38.1
Job Search Television Network, Inc. (“JSTN”) opposes registration of Digi.me’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), asserting priority
and a likelihood of confusion with JSTN’s mark DIGI-ME (in standard characters),
registered on the Principal Register for
Providing a website featuring technology that enables
recruiters and hiring managers to manage hiring and
disseminate job opportunities and company information;
platform as a service (PAAS) featuring computer software
platforms for employee hiring and tracking in the field of
human resources management and recruitment, in
International Class 42.2
As a second ground for opposition, JSTN asserts that Digi.me’s mark DIGITAL
ME is merely descriptive of the identified goods and services under Section 2(e)(1) of
the Trademark Act, 15 U.S.C. § 1052(e)(1).

1 Application Serial No. 86913457 was filed on February 19, 2016 under Sections 1(b), 44(d)
and 44(e) of the Trademark Act, 15 U.S.C. §§ 1051(b), 1126(d) and 1126(e), based upon
Digi.me’s allegation of a bona fide intention to use the mark in commerce and its European
Community Registration No. 14493654, which was filed on August 24, 2015.
2 Registration No. 4934801 issued on April 12, 2016. JSTN bases its claim of priority and
likelihood of confusion solely on this pleaded registration, which was filed on February 27,
2014. 52 TTABVUE 141 (JSTN’s Supplemental Response to Digi.me’s Interrogatory No. 31).
References to the pleadings, the evidence of record and the parties’ Briefs refer to the Board’s
TTABVUE docket system. Coming before the designation TTABVUE is the docket entry
number; and coming after this designation are the page or paragraph references, if
applicable.
Opposition No. 91238260
- 3 -

In its Answer, Digi.me “admits that [JSTN] is the Registrant of Record” of the
pleaded registration for the identified services (4 TTABVUE 2-3 ¶ 1), and otherwise
denies the salient allegations of the Notice of Opposition.3
I. Preliminary Matters -- Separate Decisions in Previously Consolidated
Cases
The Board consolidated Opposition No. 91238260 and Cancellation No. 92066851
on February 22, 2018, deeming the Opposition the “parent” case in which all papers
should be filed. 5 TTABVUE. Although the parties rely on the same record for both
proceedings, the opposition and cancellation present different issues primarily due to
the differences in Digi.me’s two marks (DIGITAL ME and DIGI.ME) with attendant
different analyses and presumptions, and because there is only evidence of use of
Digi.me’s DIGI.ME mark. Indeed, the arguments vary sufficiently such that Digi.me
filed separate Briefs and JSTN filed separate Rebuttal Briefs in each proceeding.
Thus, while consolidation might have saved the parties time, effort and expense, it is
more efficient and straightforward to issue separate decisions in each proceeding.
II. Accelerated Case Resolution (“ACR”)
On February 17, 2020, after discovery closed, the parties filed a Joint Stipulation
to resolve this case by the ACR procedure described in Sections 528.05(a)(2), 702.04
and 705 of the TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
(“TBMP”) (2020). 47 TTABVUE. The stipulated ACR procedure approximates cross-

3 The February 22, 2018 Board Order dismissed JSTN’s alternative claims of non-ownership
and abandonment, and both of Digi.me’s putative affirmative defenses (estoppel and that
JSTN’s pleaded mark is descriptive). 5 TTABVUE 6-10.
Opposition No. 91238260
- 4 -

motions for summary judgment and accompanying evidentiary submissions. The
Joint Stipulation provides for, inter alia: the admissibility of certain evidence,
including that the file histories of the involved application and registration “are
automatically made part of the record for the ACR proceeding without any action by
the parties” (47 TTABVUE 3 ¶ 6); evidentiary objections; page limitations and
schedules for submission of the parties’ Briefs and Rebuttal Briefs;4 and consent for
the Board to resolve all disputed issues of material fact and to render a final decision
based on the briefs and evidence.5 The Board approved the Joint Stipulation on
February 20, 2020. 48 TTABVUE. JSTN, as plaintiff in this proceeding, bears the
burden of establishing its claims by a preponderance of the evidence.6 Eastman
Kodak Co. v. Bell & Howell Document Mgmt. Prods. Co., 994 F.2d 1569, 26 USPQ2d
1912, 1918 (Fed. Cir. 1993) (“The challenger’s burden of proof in both opposition and
cancellation proceedings is a preponderance of the evidence.”).

4 The parties agreed that each would submit their ACR Brief 30 days from the date on which
the ACR proceeding was instituted, and each would submit their Rebuttal Brief 21 days
thereafter, i.e., 51 days from the date on which the ACR proceeding was instituted. 47
TTABVUE 4-5 ¶ 15.
5 After the Board approved the Joint Stipulation, which included a 20-page limit for each
party’s Rebuttal Brief, the parties agreed to six additional pages for each Rebuttal Brief. 57
TTABVUE 2 n.1. This is procedurally improper, as it is simply an agreement between the
parties to exceed the page limits without prior leave of the Board. See Trademark Rule
2.128(b), 37 C.F.R. § 2.128(b). The Board may not consider briefs exceeding the page limit.
See TBMP §§ 537 and 801.03. Nonetheless, we recognize that this is an unusual situation,
where we are issuing separate decisions in what was a previously consolidated ACR case. We
approve the parties’ informal addendum to the Joint Stipulation, and have considered each
party’s Rebuttal Brief to avoid any prejudice the parties may have imagined had we stricken
the Rebuttal Briefs.
6 The standards of proof in an ACR proceeding are the same as the standards of proof in a
traditional Board proceeding. Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016).
Opposition No. 91238260
- 5 -

III. Evidentiary Issues
JSTN submitted as Exhibit C to its Brief the Testimony Declaration of Roger
Stanton, JSTN’s Chief Executive Officer, with two exhibits (“Stanton Test. Dec.”).7 49
TTABVUE 86-146. Digi.me objects to the Stanton Test. Dec. “as being replete with
hearsay and lack of personal knowledge, as well as being directed to irrelevant
evidence,” 56 TTABVUE 49, and to statements in paragraphs 4, 8, 16 and 18 on
various grounds including relevance, lack of personal knowledge and hearsay.8 56
TTABVUE 49-51.
“[T]he Board generally does not strike testimony taken in accordance with the
applicable rules on the basis of substantive objections; rather, the Board considers
such objections when evaluating the probative value of the testimony at final
hearing.” Bd. of Regents v. S. Ill. Miners, LLC, 110 USPQ2d 1182, 1194 n.19 (TTAB
2014) (citations omitted). As a general matter, “the Board is capable of weighing the
relevance and strength or weakness of the objected-to testimony and evidence,

7 JSTN titles this document “Affidavit in Support of Petitioner/Plaintiff’s Motion for
Summary Judgment as to Confusion.” We follow the parties’ example, and treat this
document as testimony by declaration on behalf of JSTN.
8 Much of Mr. Stanton’s testimony focuses on purported instances of actual confusion between
JSTN’s mark DIGI-ME and Digi.me’s mark DIGI.ME. In essence, Mr. Stanton’s testimony is
that DIGI.ME and DIGITAL ME are “equivalent,” so any instances of purported actual
confusion pertain equally to both marks. 49 TTABVUE 16-17, 23. As we discuss below, we do
not agree that the marks are “equivalent.” Moreover, Digi.me’s application is not use-based,
and Digi.me’s Vice President of Marketing Josie Hirtenstein averred in her Testimony
Declaration (“Hirstenstein Test. Dec.”) that “Digi.me’s DIGITAL ME mark has not yet been
used in commerce in the United States or elsewhere.” 52 TTABVUE 148 ¶ 10. See also id. at
153 ¶ 33 (“I am not aware of any way that actual confusion between the DIGITAL ME and
DIGI-ME marks could occur because Digi.me’s DIGITAL ME mark has not been used in
commerce yet.”). Therefore, we do not consider any arguments in JSTN’s Briefs or testimony
by Mr. Stanton about purported instances of actual confusion between JSTN’s mark DIGI-
ME and Digi.me’s mark DIGITAL ME. Accordingly, Digi.me’s related objections are moot.
Opposition No. 91238260
- 6 -

including any inherent limitations,” and keeping in mind “the various objections
raised by the parties” in determining the probative value of objected -to testimony and
evidence. Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1479
(TTAB 2017). We therefore overrule the objections but will weigh the relevance and
strength or weakness of the objected-to testimony, including any inherent limitations
therein. For example, we have disregarded any opinion testimony regarding the
conclusions of law in this case. Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc.,
107 USPQ2d 1750, 1755 (TTAB 2013), aff’d mem, 565 Fed. Appx. 900 (Fed. Cir. 2014).
We also discount Mr. Stanton’s use of hyperbolic language like “shocking” (¶ 8) and
“massive, ongoing confusion” that is “leading consumers of all types and sources
astray” (¶ 16), as well as the admittedly speculative “We can only imagine the
massive confusion which would destroy our brand and our name if the software
solutions sold by DIGI.ME began to truly sell or be used.” (¶ 16).
As for Digi.me’s objections to Mr. Stanton as a lay witness who provided expert
testimony, we do not treat Mr. Stanton as an expert, but as a fact witness with
experience in the employment industry. However, “[w]e have also weighed the
probative value of [the] testimony against any potential bias,” Alcatraz Media, 107
USPQ2d at 1755, including taking into account the witness’ potential bias based on
his position as JSTN’s CEO. See Tao Licensing, LLC, v. Bender Consulting Ltd., 125
USPQ2d 1043, 1047 (TTAB 2017).
Opposition No. 91238260
- 7 -

IV. Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Digi.me’s application file. The application file underlying JSTN’s
registration is automatically part of the record through the Joint Stipulation. 47
TTABVUE 3, ¶ 6.
Neither party included in its Brief a description of the record, JSTN did not
include in its Brief or Rebuttal Brief an index of cases or a table of contents, and
Digi.me did not include in its Rebuttal Brief an index of cases or a table of contents.
See Trademark Rule 2.128(b), 37 C.F.R. § 2.128(b). Given these procedural anomalies
and the nature and extent of the evidence submitted by both parties, we simply
summarize the record. We have considered all evidence submitted, including that
which is not detailed here, subject to any evidentiary objections, and have provided
record citations to the best of our ability.
Keeping the foregoing qualifications in mind, the record includes one testimony
declaration (with exhibits) from each party: the aforementioned Stanton Test. Dec.
(49 TTABVUE 86-147 (Exhibit C)) and Hirtenstein Test Dec. (52 TTABVUE 146-154
(Exhibit P)); and the Cross-Examination of Roger Stanton on Written Questions
(confidential) (56 TTABVUE 70-80 (Exhibit AM)).9 The record also includes discovery

9 While the Board is sensitive to the confidential nature of the agreements about Mr.
Stanton’s signature, his testimony on written question does not appear to contain confidential
information. It is the general policy of the Board that all papers in a proceeding be public.
Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1476 n.19 (TTAB 2017). Thus,
Trademark Rule 2.116(g), 37 C.F.R. § 2.116(g), provides “[t]he Board may treat as not
confidential that material which cannot reasonably be considered confidential,
notwithstanding as designation as such by a party.”
Opposition No. 91238260
- 8 -

requests, responses and supplemental responses; press releases and marketing
materials, including printouts from the parties’ websites and third -party websites
such as the Google Play store; third-party registrations and marketplace evidence of
DIGI and DIGI-formative marks; and definitions of “digi” and “digital.”
V. Entitlement to Statutory Cause of Action10
To establish entitlement to a statutory cause of action under Sections 13 or 14 of
the Trademark Act, a plaintiff must demonstrate a real interest in the proceeding
and a reasonable belief of damage. Australian Therapeutic Supplies Pty. Ltd. v.
Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837 at *3 (Fed. Cir. 2020); see also
Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058
(Fed. Cir. 2014); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1727 (Fed. Cir. 2012). A “real interest” is a “direct and personal stake”
in the outcome of the proceeding. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d
1023, 1025 (Fed. Cir. 1999).
As noted above, JSTN attached to the Notice of Opposition a USTPO database
printout of its pleaded registration, and Digi.me, in its Answer “admits that [JSTN]

In addition, Digi.me did not file a redacted copy of its 56 TTABVUE submission, in
noncompliance with Trademark Rule 2.126(c), 37 C.F.R. § 2.126(c). That rule requires parties
which submit confidential material to concurrently file a copy of the submission for public
viewing with the confidential portions redacted. At the end of this decision, we allow Digi.me
time to submit a redacted version of 56 TTABVUE, failing which it will be made public.
10 Our decisions previously have analyzed the requirements of Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Mindful of the Supreme
Court’s direction in Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 125-
26 (2014), 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 Federal Circuit interpreting
Sections 13 and 14 remain equally applicable.
Opposition No. 91238260
- 9 -

is the Registrant of Record” of the pleaded registration for the identified services.11 4
TTABVUE 2 ¶ 1. In addition, in his Testimony Declaration, JSTN’s CEO Roger
Stanton avers:
As part of my functions, in conjunction with help from my
trademark counsels, I secured U.S. Registration No.
4,934,801 for the mark DIGI-ME with the U.S. Patent and
Trademark Office. Our date of first use in commerce was
at least January 13, 2014, and we applied diligently for the
mark on February 27, 2014. Since that time, we have used
openly and continuously DIGI-ME® for all our goods and
services and have never rebranded. 49 TTABVUE 87 ¶ 2.
We have given no licenses to any third party or any
collaborator to use DIGI-ME®. We remain exclusive and
sole owners with the right to enforce. 49 TTABVUE 91
¶ 19.
On this record, JSTN has demonstrated (and Digi.me has not challenged) that
JSTN has a real interest in this opposition proceeding and a reasonable belief of
damage, thereby establishing a statutory cause of action under Section 13 of the
Trademark Act. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1844 (Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982).
Having established its statutory entitlement to a cause of action with respect to
its likelihood of confusion claim, JSTN need not separately show its statutory
entitlement to a cause of action to assert its merely descriptive claim. Corporacion
Habanos SA v. Rodriguez, 99 USPQ2d 1873, 1877 (TTAB 2011); Liberty Trouser Co.,
Inc. v. Liberty & Co., Ltd., 222 USPQ 357, 358 (TTAB 1983).

11 JSTN resubmitted this printout as Exhibit D to its Brief, 49 TTABVUE.
Opposition No. 91238260
- 10 -

VI. Priority
Because JSTN properly made its pleaded registration of record and Digi.me did
not file a counterclaim to cancel it, priority is not an issue as to the mark and services
covered by the registration.12 See King Candy Co., Inc. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108 (CCPA 1974); see also Massey Junior Coll., Inc. v.
Fashion Inst. of Tech., 492 F.2d 1399, 181 USPQ 272, 275 n.6 (CCPA 1974) (“prior
use need not be shown by a plaintiff relying on a registered mark unless the defendant
counterclaims for cancellation”); Itell Corp. v. Ainslie, 8 USPQ2d 1168, 1169 (TTAB
1988) (“because of the existence of opposer’s valid and subsisting registration, it need
not prove prior use as to the services recited therein”).
VII. Likelihood of Confusion
The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. DuPont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, hereinafter referred to as “DuPont factors”); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). We must consider
each DuPont factor for which there is evidence and argument. See In re Guild Mortg.
Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). 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

12 Digi.me does not dispute JSTN’s priority.
Opposition No. 91238260
- 11 -

Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (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.”). These factors and others
are discussed below.
JSTN may establish likelihood of confusion as to a class of goods or services in an
opposed application by showing the relatedness of its own goods or services to any
item within that class of goods or services. Tuxedo Monopoly, Inc. v. Gen. Mills Fun
Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). If it does so, the entire class
of goods or services is denied registration. As noted above, JSTN limits its likelihood
of confusion claim to its pleaded Reg. No. 4934801, and the services identified therein.
A. Similarity or Dissimilarity of the Marks
We consider first whether JSTN’s mark DIGI-ME and Digi.me’s mark DIGITAL
ME, both in standard characters, are similar or dissimilar in their entireties as to
appearance, sound, connotation and commercial impression. Palm Bay, Imps., Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689,
1691 (Fed. Cir. 2005). JSTN asserts, without support, that the marks are “legal
equivalent[s],” and that “[i]f AIR NZ is legal equivalent to AIR NEW ZEALAND, the
DIGI and DIGITAL are also equivalent.”13 49 TTABVUE 16-17. Although the marks

13 For the latter proposition, JSTN cites a decision in which the Examining Attorney refused
registration of the mark AIR NZ on the ground that it is primarily geographically descriptive
of the applicant’s identified airline/travel services under Section 2(e)(2) of the Trademark
Act, where the record established that the primary significance of “NZ” is New Zealand, a
generally known geographic location. The decision did not issue as a precedent of the Board
and involved different issues and a different record than that presented here. See In re Nett
Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“The Board must decide
Opposition No. 91238260
- 12 -

share the terms “DIGI” and “ME,” which appear in the same order in each mark, and
there is some evidence suggesting that the term “digi” is a short form of the word
“digital” (49 TTABVUE 204-209), we do not agree that DIGI.ME and DIGITAL ME
are legally equivalent. Cf. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57
USPQ2d 1807, 1812 (Fed. Cir. 2001) (“A mark is the legal equivalent of another if it
creates the same, continuing commercial impression such that the consumer would
consider them both the same mark.”). Nonetheless, when viewed in their entireties,
we find the marks DIGI-ME and DIGITAL ME more similar than they are different.
In making this finding, we have considered Digi.me’s evidence of third -party
registrations and uses of DIGI-formative marks. 52 TTABVUE 234-329 (Exhibit AC)
and 57 TTABVUE 76-110 (Exhibit AO). This evidence demonstrates that DIGI-
formatives are suggestive of, rather than arbitrary for, goods and services that are
digital in nature or have a digital component, a conclusion we would have reached
without the evidence. But it does not show that JSTN’s mark DIGI-ME is
conceptually weak or diluted for services that are the same as or similar to those
identified in the registration, as it does not appear that any of the third-party
registrations cover such services or that any of the third parties who use DIGI-
formative marks offer such services.14 Cf. Juice Generation, Inc. v. GS Enters LLC,

each case on its own merits.”); In re Soc’y of Health and Physical Educ., 127 USPQ2d 1584,
1587 n.7 (TTAB 2018) (“Board decisions which are not designated as precedent are not
binding on the Board, but may be cited and considered for whatever persuasive value they
may hold.”).
14 This is unsurprising, as JSTN claims that the services identified in the DIGI-ME
registration are the subject of its patent-pending technology that “it alone offers.” 52
TTABVUE 100-113 (Exhibit M, JSTN’s Responses to Digi.me’s Requests for Admission, Nos.
36, 39, 42 and 45). See also 52 TTABVUE 352-375 (Exhibit AG, JSTN’s Response to Digi.me’s
Opposition No. 91238260
- 13 -

794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015); Jack Wolfskin Ausrustung
Fur Draussen GmbH v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d
1129, 1136 (Fed. Cir. 2015).
The similarity of the marks weighs in favor of a finding of likelihood of confusion.
B. Similarity or Dissimilarity of the Goods and Services and Channels of
Trade
We next consider the DuPont factors involving the relatedness of the goods and
services and the similarity of established, likely to continue channels of trade. We
base our evaluation on the goods and services as they are identified in Digi.me’s
application, and the services as they are identified in JSTN’s registration. See Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937,
16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Hewlett-Packard Co. v. Packard Press Inc.,
281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
1. Goods and Services
It is not necessary that the goods and services be identical or competitive, or even
that they move in the same channels of trade, to support a finding of likelihood of
confusion. Rather, it is sufficient that they are related in some manner, or that the
circumstances surrounding their marketing are such that they would or could be
encountered by the same persons in situations that would give rise, because of the

Interrogatory No. 35); Stanton Test. Dec., 49 TTABVUE 88 ¶ 4, referencing Digi.me’s
involved application (“Because we offer a new service and the novelty of our patent pending
technology, we believe the U.S. Trademark Examiner did not fully understand our business
model and in error … allow[ed] U.S. Serial No. 86/913,457 for the mark DIGITAL ME ….”).
Opposition No. 91238260
- 14 -

similarity of the marks, to a mistaken belief that they originate from the same source
or that there is an association or connection between the sources of the goods and
services. Coach Servs., 101 USPQ2d at 1721.
To recap, Digi.me’s identified goods and services are
Computer software for database integration, database
management software for use in archiving information
stored on computers; database management software for
use in the information stored on computers; computer
software for creation of an archive of a user’s social media,
on-line, off-line and life-logging information technology
activity; computer software for providing permission access
to user’s life data for convenience, service or reward, in
Class 9, and
Provision of access to computer databases; provision of
access to data or documents stored electronically in central
files for remote consultation; electronic exchange of data
stored in databases accessible via telecommunication
networks; provision of controlled internet access to data
provided by third parties for persons authorized by the
third party, in Class 38.
JSTN’s identified services are
Providing a website featuring technology that enables
recruiters and hiring managers to manage hiring and
disseminate job opportunities and company information;
platform as a service (PAAS) featuring computer software
platforms for employee hiring and tracking in the field of
human resources management and recruitment, in Class
42.
In its Brief, JSTN focuses on the identified “computer software for creation of an
archive of a user’s social media, on-line, off-line and life-logging information
technology activity; computer software for providing permission access to user’s life
data for convenience, service or reward” in Class 9. And JSTN mentions, in passing,
that Digi.me’s identified “provision of access to computer databases” in Class 38
Opposition No. 91238260
- 15 -

“easily overlaps in recitation with the database of Petitioner shown at Exhibit A[,]”
49 TTABVUE 7, and “DIGITAL ME includes database services such as what the
Petitioner owns. Mark [sic] are legally identical, the recitations clearly overlap.” 49
TTABVUE 26. We therefore limit our analysis of the goods and services and their
channels of trade to the services identified in JSTN’s registration, and the
aforementioned computer software and “provision of access to computer databases”
services identified in Digi.me’s application.
The computer software identified in Digi.me’s application and the services
identified in JSTN’s registration are each narrowly identified, and as written, are
unrelated on their face. More specifically, Digi.me’s software allows an individual to
create his or her own archive of personal social media, on-line, offline and life-logging
technology information, and to invite others to access such life data, while JSTN’s
services allow employers and recruiters to engage in employer-side activities, e.g.,
hiring, disseminating information about the employer, and tracking employees. As
such, the goods and services serve different purposes. Indeed, as Digi.me points out,
“user life data permissioned access is something contrary to the ‘tracking’ explicitly
recited in JSTN’s asserted registration.” 52 TTABVUE 21 (referencing, as examples,
Exhibits H and I, 52 TTABVUE 77-83).
There is no testimony or evidence that the parties or any third parties have offered
goods of the type identified in Digi.me’s application and services of the type identified
in JSTN’s registration, let alone offered both of those goods and services under the
same mark. Nor has JSTN shown that the customers for Digi.me’s identified software
Opposition No. 91238260
- 16 -

and JSTN’s identified services overlap – and in view of their different purposes, we
see no reason why they would overlap. Rather, JSTN simply asserts that “nothing in
[Digi.me’s] recitation prevents the user’s life data from being employment/hiring
related and the user’s on-line, off-line and life logging information to be related to
employment/hiring.” 49 TTABVUE 19. The record does not support a finding that a
“user’s life data” and “on-line, off-line and life logging information” is worded broadly
enough to encompass or be related to employment or hiring, nor does it demonstrate
any commercial relationship between Digi.me’s identified goods and the employer-
side activities identified in JSTN’s registration. Nor do we find that the language in
Digi.me’s description of goods is ambiguous. Nevertheless, to the extent that JSTN
contends otherwise, it was JSTN’s responsibility, as plaintiff in this proceeding, to
submit evidence that consumers would understand the wording in the manner JSTN
posits.
As for Digi.me’s “provision of access to computer databases” services, the
identification is broadly worded. Each identification of goods or services must be
given its broadest possible interpretation. In re Solid State Design Inc., 125 USPQ2d
1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007,
1025 (TTAB 2015); Venture Out Props. LLC v. Wynn Resorts Holdings, LLC, 81
USPQ2d 1887, 1893 (TTAB 2007). But there is no evidence that “provision of access
to computer databases” includes or is associated with any of the services identified in
JSTN’s registration, much less that “the recitations clearly overlap,” 49 TTABVUE
26, and we do not find such services to be facially related. Cf., e.g., In re Hughes
Opposition No. 91238260
- 17 -

Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly
worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly
identified ‘residential and commercial furniture.’”).
In short, the record does not demonstrate that it is common for a single entity to
offer under the same mark the types of goods and services identified in Digi.me’s
application and the services identified in JSTN’s registration. JSTN’s unsupported
arguments to the contrary are no substitute for evidence. Enzo Biochem, Inc. v. Gen-
Probe, Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005). We find that
JSTN has not established a viable commercial relationship among such goods and
services.
2. Channels of Trade and Classes of Purchasers
Turning to the channels of trade and classes of purchasers, the identification of
goods in Digi.me’s application is limited to personal use by individuals, while the
identification of services in JSTN’s registration is limited to employer-side
purchasers, namely recruiters and hiring managers. In light of these limitations in
the identifications, the potential purchasers for Digi.me’s goods and JSTN’s services
are different. And the record does not support a finding that such goods and services
are marketed in the same way or that their channels of trade overlap.
Turning to the parties’ identified services, JSTN offered no evidence about the
normal channels of trade for Digi.me’s identified services, which are unrestricted.
Because such services are not commercially related, let alone identical, to JSTN’s
identified services, we do not presume, as JSTN would have us do (49 TTABVUE 21),
that they move in the same channels of trade or that they are offered to the same
Opposition No. 91238260
- 18 -

class of consumers. Compare Cunningham, 55 USPQ2d at 1846 (affirming Board
finding that where the identification is unrestricted, “we must deem the goods to
travel in all appropriate trade channels to all potential purchasers of such goods”)
and Am. Lebanese Syrian Assoc. Charities Inc. v. Child Health Research Inst., 101
USPQ2d 1022, 1028 (TTAB 2011) (where the services were legally identical, “the
marketing channels of trade and targeted classes of consumers and donors are the
same”); see also In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)
(finding Board entitled to rely on this legal presumption in determining likelihood of
confusion). These factors weigh heavily against a finding of a likelihood of confusion,
for “[i]t is difficult to establish likelihood of confusion in the absence of overlap as to
either factor.” M2 Software Inc. v. M2 Commc’ns Inc., 450 F.3d 1378, 78 USPQ2d
1944, 1948 (Fed. Cir. 2006).
In sum, we find that JSTN has not established that its identified services and
Digi.me’s identified goods or services are related, or that they are offered in the same
channels of trade or sold to the same classes of consumers.
C. Purchasing Conditions
Next, we consider “[t]he conditions under which and buyers to whom sales are
made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.” DuPont, 177 USPQ at 567.
The record demonstrates that JSTN’s identified services are expensive (e.g., a “3-
month Promo” includes “10 Job Videos,” “30 Days of Hosting” and “1 Candidate
Expectation Video” for $2,750, and a “5 Job Videos” version of the promo costs $499),
Opposition No. 91238260
- 19 -

and generally involve direct contact with a JSTN sales representative. 52 TTABVUE
191-195 (Exhibits T and U).
There is no evidence or testimony about potential customers or the anticipated
cost of Digi.me’s DIGITAL ME identified goods or services. Ms. Hirtenstein avers that
such customers generally are concerned about data and privacy breaches, and they
want to maintain control over their personal data. Consequently, they are very
careful when choosing software to which they will provide their personal data, and
where they send their personal information for archiving. Hirtenstein Test. Dec., 52
TTABVUE 150 ¶¶ 21-22.
On this record, we cannot find that Digi.me’s DIGITAL ME identified goods and
services are of the type that are subject to impulse buying such that purchasers are
held to a lesser standard of purchasing care. Cf. Recot Inc. v. Becton, 214 F.3d 1322,
54 USPQ2d 1894, 1899 (Fed. Cir. 2000). Rather, we find that purchasers of JSTN’s
identified services and Digi.me’s identified goods and services likely will exercise
more than an average degree of care when making their purchasing decisions. This
also weighs in favor of a finding of no likelihood of confusion.
D. Conclusion
Even though the marks are more similar then they are different, JSTN has not
established that the identified goods and services are related, or that they move
through the same channels of trade to the same classes of purchasers. We also find
“the conditions under which and buyers to whom sales are made, i.e., ‘impulse’ vs.
Opposition No. 91238260
- 20 -

careful, sophisticated purchasing,” DuPont, 177 USPQ at 567 favors a finding of no
likelihood of confusion. Confusion therefore is unlikely.
VIII. Merely Descriptive
In the absence of acquired distinctiveness, Section 2(e)(1) of the Trademark Act
prohibits registration of a term on the Principal Register that, when used in
connection with the goods or services identified in the application or registration, is
merely descriptive of them.15 “A term is merely descriptive if it immediately conveys
knowledge of a quality, feature, function, or characteristic of the goods or services
with which it is used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102
USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer AG, 488 F.3d 960, 82
USPQ2d 1828, 1831 (Fed. Cir. 2007)). See also In re TriVita, Inc., 783 F.3d 872, 114
USPQ2d 1574, 1575 (Fed. Cir. 2015). A mark is suggestive, and not merely
descriptive, if it requires imagination, thought, and perception on the part of someone
who knows what the goods or services are to reach a conclusion about their nature
from the mark. See, e.g., In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1513
(TTAB 2016). Suggestive marks, unlike merely descriptive terms, are registrable on
the Principal Register without proof of acquired distinctiveness. See Nautilus Grp.,
Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330, 71 USPQ2d 1173, 1180 (Fed. Cir.
2004).

15 “No trademark by which the goods of the applicant may be distinguished from the goods of
others shall be refused registration on the principal register on account of its nature unless
it . . . (e) Consists of a mark which, (1) when used on or in connection with the goods of the
applicant is merely descriptive ….” 15 U.S.C. § 1052(e)(1).
Opposition No. 91238260
- 21 -

The determination of whether a mark is merely descriptive must be made in
relation to the goods or services identified in the application or registration, not in
the abstract. Chamber of Commerce, 102 USPQ2d at 1219; Bayer, 82 USPQ2d at
1831. This requires consideration of the context in which the mark is used or intended
to be used in connection with those goods or services, and the possible significance
that the mark would have to the average purchaser of the goods or services in the
marketplace. Chamber of Commerce, 102 USPQ2d at 1219; Bayer, 82 USPQ2d at
1831; In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859, 1861 (Fed. Cir. 1987).
In other words, the question is not whether someone presented only with the mark
could guess the goods or services listed in the identification. Rather, the question is
whether someone who knows what the goods or services are will understand the mark
to convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices,
Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower
Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)).
It is not necessary, in order to find a term merely descriptive, that the term
describe each feature of the goods or services, only that it describe a single, significant
ingredient, quality, characteristic, function, feature, purpose or use of the goods or
services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
“Evidence of the public’s understanding of [a] term … may be obtained from any
competent source, such as purchaser testimony, consumer surveys, listing in
dictionaries, trade journals, newspapers and other publications,” Real Foods Pty Ltd.
v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1374 (Fed. Cir. 2018)
Opposition No. 91238260
- 22 -

(quoting Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1046
(Fed. Cir. 2018)), as well as “labels, packages, or in advertising material directed to
the goods [or services].” In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218
(CCPA 1978). It may also be obtained from websites and, in the case of a use-based
application or registration, an applicant’s or registrant’s own specimen of use and any
explanatory text included therein. In re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d
1707, 1710 (Fed. Cir. 2017); Nett Designs, 57 USPQ2d at 1565.
As noted above, Digi.me filed its application for the mark DIGITAL ME under
Sections 1(b) and 44 of the Trademark Act, meaning that Digi.me has yet to claim
use in the United States, and Ms. Hirtenstein averred that Digi.me has not yet used
the DIGITAL ME mark. Hirtenstein Test Dec., 52 TTABVUE 148 ¶ 10, 52 TTABVUE
153 ¶ 33.
In its Brief, JSTN focuses its arguments on the purported descriptiveness of
Digi.me’s registered mark DIGI.ME, which is the subject of the co-pending
cancellation, and barely mentions the opposed mark DIGITAL ME. None of the
arguments in JSTN’s Rebuttal Brief refer to the opposed mark DIGITAL ME. As best
we can discern, JSTN is arguing that Digi.me’s marks DIGI.ME and DIGITAL ME
are equivalent,16 and because DIGI.ME is merely descriptive of the computer
software identified in both Digi.me’s registration and the involved application,
DIGITAL ME is equally descriptive. Even if, as JSTN contends, “digi” is a diminutive

16 As discussed above in connection with the similarity or dissimilarity of the marks, we
disagree with this assertion.
Opposition No. 91238260
- 23 -

or of or acronym for the word “digital,” and Digi.me’s DIGI.ME software “creates a
digital copy of you,” 49 TTABVUE 29, there is no evidence that DIGITAL ME is
“equivalent” to DIGI.ME, and no evidence that DIGITAL ME is merely descriptive of
the identified goods or services.17 As noted above, JSTN’s unsupported arguments are
no substitute for evidence. Enzo Biochem, 76 USPQ2d at 1622. In addition, JSTN’s
arguments do not address any of the services identified in the application that is the
subject of this opposition.
On this record, JSTN has not established that Digi.me’s DIGITAL ME mark is
merely descriptive of the identified goods or services.
Decision: The opposition is dismissed on the grounds of likelihood of confusion
and mere descriptiveness in each Class.18

17 JSTN’s arguments about the purported descriptiveness of Digi.me’s other marks for some
of the same goods and services identified here have no bearing on whether the mark DIGITAL
ME is merely descriptive of the identified goods or services, and constitute impermissible
collateral attacks. 49 TTABVUE 7-8.
18 Digi.me is allowed until thirty (30) days from the mailing date of this decision to comply
with Trademark Rule 2.126(c) by filing in this Opposition a redacted version of 56 TTABVUE,
failing which 56 TTABVUE will be treated as part of the public record. Kohler Co., 125
USPQ2d at 1476 n.19 (TTAB 2017). See discussion supra. The parties are reminded that the
Board may treat as not confidential that material which cannot reasonably be considered
confidential, notwithstanding a designation as such by a party. Trademark Rule 2.116(g), 37
C.F.R. § 2.116(g).