Kricket Internet Service Co.

Trademark Trial and Appeal Board

Mar 12, 2003

No. 75608537 (T.T.A.B. Mar. 12, 2003)

Mailed: 12 MAR 2003
Paper No. 13
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Kricket Internet Service Company
________
Serial No. 75/608,537
_______
Mark A. Watson of Stafford, Stewart & Potter for Kricket
Internet Service Company.
Ronald L. Fairbanks, Trademark Examining Attorney, Law
Office 112 (Janice O’Lear, Managing Attorney).
_______
Before Quinn, Hairston and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On December 18, 1998, Kricket Internet Service Company
(applicant) applied to register the mark KRICKET INTERNET
SERVICE and design shown below on the Principal Register
for “providing multiple-user access to a global
communication information network” in International Class
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 75/608,537
2
38.1 Applicant has also disclaimed the words “Internet
Service.”
The examining attorney ultimately refused to register
the mark under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), because of two registrations for the mark
CRICKET2 and CRICKET COMMUNICATIONS.3 Both registrations
are owned by the same entity (Cricket Communications, Inc),
in typed form, and for the same services:
“Telecommunications services, namely, offering personal
communications services via wireless networks; and
providing cellular telephone services and personal
communication network (PCN) services” in International
Class 38.
After the examining attorney made the refusal final,
this appeal followed.
1 Serial No. 75/608,537. The application contained an assertion
of a date of first use and a date of first use in commerce of
May 1, 1998.
2 Registration No. 2,359,369 issued June 20, 2000.
3 Registration No. 2,359,368 issued June 20, 2000. The
registration contains a disclaimer of the term “Communications.”
Ser No. 75/608,537
3
The examining attorney’s position is that while the
marks are not identical, “the applicant’s mark comprises
the phonetic equivalent of the dominant, unique and
arbitrary wording of the registrant’s marks, and has either
added or replaced generic wording with other wording as
well as provided a pictorial representation of that same
wording.” Brief at 5. Regarding the relatedness of the
services, the examining attorney “provided a representative
sampling of seven (7) U.S. registrations each showing … the
services of both the applicant and the registrant.” Brief
at 10.4 The examining attorney also determined that
because “[p]resent-day cellular telephone services provide
wireless web/Internet and emailing services and
capabilities,” the services are related. Brief at 9.
Applicant, on the other hand, maintains that potential
customers “can easily distinguish the stylized mark of
applicant from the mundane, block-letter marks of the prior
4 Five of the seven registrations are based on ownership of a
foreign registration (15 U.S.C. § 1126) with no allegation of use
in commerce. See Registration Nos. 2,356,952; 2,308,192;
2,367,890; 2,242,357; and 2,297,550. While applicant has not
objected to these registrations, they have little, if any,
persuasive value. Also, the examining attorney’s brief
inexplicably contains a reference to the content of applicant’s
website. Inasmuch as this reference has been presented for the
first time on appeal, it is not properly of record and we will
not consider it. 37 CFR § 2.142(d). The examining attorney is
reminded that if he would like to introduce additional evidence
after an appeal is filed, a request for remand is the appropriate
vehicle. Id.
Ser No. 75/608,537
4
registrants.” Brief at 8. Regarding the services,
applicant argues that “an internet provider, would not be
advertising, marketing, or pursuing business in the same
markets where personal communications, wireless networks
and cellular telephones are marketed.” Brief at 12.
Applicant then concludes by arguing that “each Dupont [In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973)] factor of which evidence can be found in
the record, weighs in favor of registration of applicant’s
proposed mark.” Brief at 17.
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also du Pont, 177
USPQ at 567; Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000).
We begin by comparing applicant’s and registrant’s
marks. Applicant’s mark consists of the words KRICKET
INTERNET SERVICE and the design of a cricket; registrant’s
marks are CRICKET and CRICKET COMMUNICATIONS in typed form.
The marks are dominated by the same word, “cricket” or
“kricket.” There is no evidence that “cricket” is anything
other than an arbitrary term in relationship to applicant’s
and registrant’s services. The words “cricket” and
Ser No. 75/608,537
5
“kricket” are also phonetic equivalents. In addition,
applicant uses the design of a cricket in its mark, which
emphasizes the term “cricket.” Inasmuch as the design is a
pictorial representation of the word found in the marks, it
would not serve to distinguish the marks in meaning or
appearance.
Regarding the additional wording “internet service” in
applicant’s mark, this disclaimed term would not
significantly distinguish the marks. In a similar case,
the Federal Circuit held that the addition of the word
“Swing” to registrant’s mark “Laser” did not result in the
marks being dissimilar. “[B]ecause both marks begin with
‘laser,’ they have consequent similarities in appearance
and pronunciation. Second, the term ‘swing’ is both common
and descriptive… Regarding descriptive terms this court has
noted that the descriptive component of a mark may be given
little weight in reaching a conclusion on likelihood of
confusion.” Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1845-45 (Fed. Cir. 2000) (citations and
quotation marks omitted). See also In re Dixie
Restaurants, 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir.
1997) (Court held that the addition of “The,” “Cafe” and a
diamond-shaped design to registrant’s DELTA mark still
resulted in a likelihood of confusion); Wella Corp. v.
Ser No. 75/608,537
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California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422
(CCPA 1977) (CALIFORNIA CONCEPT and surfer design likely to
be confused with CONCEPT for hair care products). Even
when the registered mark CRICKET COMMUNICATIONS is compared
to applicant’s mark, since the terms “Communications” and
“Internet Service” would be highly descriptive of the
services offered under the marks, the public would likely
assume that the additional wording in the marks identifies
a different service offered by the registrant under the
CRICKET mark. In addition, applicant’s argument about the
“mundane, block-letter marks of the prior registrants”
(Brief at 8) is not accurate. Registrant has depicted its
mark in a typed drawing. Therefore, it is not limited to
any special form. Squirtco v. Tomy Corp., 697 F.2d 1038,
216 USPQ 937, 939 (Fed. Cir. 1983); Cunningham, 55 USPQ2d
at 1847-48.
When we view the marks, it is clear that they are not
identical. However, “[s]ide-by-side comparison is not the
test. The focus must be on the ‘general recollection’
reasonably produced by appellant’s mark and a comparison of
appellee’s mark therewith.” Johann Maria Farina Gegenuber
Dem Julichs-Platz v. Chesebrough-Pond, Inc., 470 F.2d 1385,
176 USPQ 199, 200 (CCPA 1972) (citation omitted). Here,
when we compare the marks in their entireties, we find that
Ser No. 75/608,537
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they are dominated by the phonetically identical term
“cricket.” Applicant’s design emphasizes the “cricket”
portion of the mark, and the words are very similar in
sound, appearance, meaning, and commercial impression.
We now move on to discuss whether the services of
applicant and registrant are related. “In order to find
that there is a likelihood of confusion, it is not
necessary that the goods or services on or in connection
with which the marks are used be identical or even
competitive. It is enough if there is a relationship
between them such that persons encountering them under
their respective marks are likely to assume that they
originate at the same source or that there is some
association between their sources.” McDonald's Corp. v.
McKinley, 13 USPQ2d 1895, 1898 (TTAB 1989). See also In re
Opus One Inc., 60 USPQ2d 1812, 1814-15 (TTAB 2001). We
must consider the services as they are identified in the
application and registration. Paula Payne Products v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973) (“Trademark cases involving the issue of likelihood
of confusion must be decided on the basis of the respective
descriptions of goods”); Dixie Restaurants, 41 USPQ2d at
1534 (punctuation in original), quoting, Canadian Imperial
Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1
Ser No. 75/608,537
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USPQ2d 1813, 1816 (Fed. Cir. 1987) (“’Likelihood of
confusion must be determined based on an analysis of the
mark applied to the … services recited in applicant’s
application vis-à-vis the … services recited in [a] …
registration, rather than what the evidence shows the …
services to be’”).
Applicant’s services are identified as “providing
multiple-user access to a global computer information
network.” In effect, applicant is “an internet provider.”
Applicant’s Brief at 12. Registrant provides
“telecommunications services, namely, offering personal
communications services via wireless networks; and
providing cellular telephone services and personal
communication network (PCN)services.” “Personal
communications services” are defined as the “second
generation cellular telephone services, with the following
advantages over the traditional analog cellular telephone
services … Digital services, such as Internet access, stock
quotes and paging can be made part of the service.”
M. Shnier, Computer Dictionary (1998), p. 486.5 Therefore,
inasmuch as registrant’s personal communications services
5 We take judicial notice of this definition. University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594,
596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
Ser No. 75/608,537
9
can include providing Internet access, applicant’s argument
that the services are distinct is not viable.
We also look to the examining attorney’s use-based
registrations, which provide some suggestion that
applicant’s and registrant’s services may originate from
the same source. See Registration No. 2,181,197 (multiple-
user access to a global computer information network and
telecommunications services) and No. 2,232,684 (personal
communications services including wireless communications
and wireless global communications access). These
registrations suggest that the same source may provide both
telecommunications and internet services. See In re Mucky
Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)
(Although third-party registrations “are not evidence that
the marks shown therein are in use on a commercial scale or
that the public is familiar with them, [they] may have some
probative value to the extent that they may serve to
suggest that such goods or services are the type which may
emanate from a single source”). See also In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993). In
the balance, we find that applicant’s internet services and
registrant’s personal communications services are related
to the extent that when very similar marks are used in
connection with the services, potential customers are
Ser No. 75/608,537
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likely to believe that there is at least some association
between the source of the services.
Applicant argues that the trade channels are different
because “the holder of the previous registrations is based
in California while applicant is based in Louisiana.”
Brief at 15. First, we note that there is no evidence of
where registrant uses its mark. The mere fact that
registrant has a California address does not limit its
activities to California or even the western part of the
Untied States. Second, since registrant has obtained a
geographically unrestricted registration, there is no basis
to distinguish the trade channels based on geography.
Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d
1565, 218 USPQ 390, 393 (Fed. Cir. 1983) (“Section 7(b) of
the Trademark Act of 1946, 15 U.S.C. §1057(b), creates a
presumption that the registrant has the exclusive right to
use its mark throughout the United States. Therefore, the
geographical distance between the present locations of the
respective businesses of the two parties has little
relevance in this case”); Amcor, Inc. v. Amcor Industries,
Inc., 210 USPQ 70, 73 (TTAB 1981) (“[T]he possible
geographical separation between the parties, although the
evidence does show an overlap on occasion, is of no
significance in this proceeding because applicant is
Ser No. 75/608,537
11
seeking territorially unrestricted registrations for its
marks and, if granted, the presumptions afforded the
registrations under Section 7(b) include a presumption of
use or the right to use the registered marks throughout the
United States”).
Applicant also argues that “the conditions under which
sales are made and the buyers to whom sales are made, also
weighs in favor of registration.” Brief at 15. The mere
fact the potential customers are purchasing computer-
related services does not make them sophisticated
purchasers. Almost twenty years ago, the Board held that
computer purchasers were not necessarily sophisticated
purchasers. In re Graphics Technology Corp., 222 USPQ 179,
181 (TTAB 1984) (“[W]hatever the situation may have been a
decade or a generation ago, today’s computer buyers cannot
be uniformly classified as a technically adept or highly
discriminating purchaser group”). Similarly, there is no
evidence that applicant’s and registrant’s services would
be marketed almost exclusively to sophisticated purchasers.
While applicant argues that there is no evidence of
fame, the absence of this evidence is of no consequence.
This type of evidence would not normally be of record in an
ex parte case and the lack of such evidence does not
indicate that there is no likelihood of confusion. See
Ser No. 75/608,537
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Majestic Distilling, 65 USPQ2d at 1205 (citation omitted)
(“Although we have previously held that the fame of a
registered mark is relevant to likelihood of confusion, we
decline to establish the converse rule that likelihood of
confusion is precluded by a registered mark’s not being
famous”). Another point applicant makes is that applicant
has alleged a date of use earlier than registrant’s filing
date. However, this is not relevant since we do not
determine priority in an ex parte proceeding. In re Calgon
Corp., 435 F.2d 596, 168 USPQ 278, 280 (CCPA 1971) (“As the
board correctly pointed out, ‘the question of priority of
use is not germane to applicant’s right to register’ in
this ex parte proceeding”). See also In re Kent-Gamebore
Corp., 59 USPQ2d 1373, 1374 n. 3 (TTAB 2001).
Applicant maintains that “[s]uffice it to say there
are voluminous trademarks with the word “Cricket.”
However, applicant has not made any third-party
registrations of record. Indeed, there is no evidence to
suggest that “cricket” is anything other than an arbitrary
term when applied to the services in this case. We do not
hesitate to add that even if third-party registrations had
been made of record, they cannot be used to justify the
registration of another confusingly similar mark. In re
J.M. Originals, 6 USPQ2d 1393, 1394 (TTAB 1988).
Ser No. 75/608,537
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Finally, applicant observes that there is no evidence
of actual confusion. Again, this fact does not demonstrate
that there is no likelihood of confusion. Majestic
Distilling, 65 USPQ2d at 1205 (“The lack of evidence of
actual confusion carries little weight”).
Our analysis of all the factors leads us to conclude
that when applicant’s and registrant’s marks are used on
the identified services, there would be a likelihood of
confusion. If we had any doubts concerning this issue,
which we do not, “this is a proceeding in which registrant
has no opportunity to be heard on this question and it is
the practice to resolve doubt under Section 2(d) with the
registrant.” In re Mayco Mfg., 192 USPQ 573, 576 (TTAB
1976).
Decision: The refusal to register applicant’s mark
under Section 2(d) is affirmed.