Novak Jody Limited Liability Company

Trademark Trial and Appeal Board

Mar 28, 2005

No. 78277280 (T.T.A.B. Mar. 28, 2005)

Mailed: March 28, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Novak Jody Limited Liability Company
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Serial No. 78277280
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David Leit of Lowenstein Sandler PC for Novak Jody Limited
Liability Company.1

Brian J. Pino, Trademark Examining Attorney, Law Office 114
(Margaret Le, Managing Attorney).
_______

Before Hohein, Chapman, and Holtzman, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:
Novak Jody Limited Liability Company filed on July 22,
2003, an application to register on the Principal Register
the mark POD for “advertising services, namely,
dissemination of advertising for others via an electronic
communication network” in International Class 35. The

1 From the filing of the application through briefing, applicant
was represented by J. Mark Pohl, Esq. Of Pharmaceutical Patent
Attorneys, LLC. In November 2004, applicant filed a revocation
of all previous powers of attorney and appointed the attorney
listed above.
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 78277280
2
application is based on applicant’s assertion of a bona
fide intention to use the mark in commerce.
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), in view of
the previously registered mark THE POD for “online shopping
services, featuring a wide variety of consumer goods;
advertising and promotional services for others in the
nature of dissemination of advertisements and promotions
via online electronic communications and multi-user global
communications networks; providing comparative shopping
information via online electronic communications and multi-
user global computer networks; market research and analysis
services for others” in International Class 35.2
The Examining Attorney also made final his requirement
for full compliance with his request for information under
Trademark Rule 2.61(b), by which he specifically asked the
following three questions of applicant: (1) “Does POD have
any significance as applied to the goods or services other
than trademark significance?”; (2) “Does POD have any
significance in the relevant trade or industry other than
trademark significance?”; and (3) “Does the applicant

2 Registration No. 2359019, issued June 20, 2000. The
registration also includes services in International Class 42,
but those services were not referenced by the Examining Attorney
as a basis for the refusal to register applicant’s mark.
Ser. No. 78277280
3
manufacture or offer any of the goods and/or services that
appear in the registrant’s identification of goods and/or
services?”
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested.
Turning first to the Examining Attorney’s requirement
for information under Trademark Rule 2.61(b), applicant in
response thereto provided a declaration from Jody L. Novak-
Torre, the managing member of applicant company,
specifically responding to the three questions posed by the
Examining Attorney. In the Final Office action dated May
3, 2004 (p. 3), the Examining Attorney, without explanation
or any reference to the statements made in applicant’s
declaration addressing the questions, simply stated that
“the applicant failed to provide the information
requested….”
Applicant argues that the Examining Attorney’s refusal
to consider the declaration is impermissible and the
requirement for further information must fail.
In his brief on the case, the Examining Attorney
argues that applicant failed to “fully comply” with the
requirement for information. He explains that in answering
the first question, applicant referred to the services in
Ser. No. 78277280
4
the “registration application” rather than clearly
referring to applicant’s services as the question
requested; and asserts that as to the third question, when
asked if applicant offered any of the registrant’s
services, applicant answered only that it is offering those
identified in its application.
It is unclear why the Examining Attorney made no
explanation of the asserted deficiency of applicant’s
response to the Trademark Rule 2.61(b) requests in the
Final Office action. Certainly, the better practice is for
the Examining Attorney to be clear as to why the response
is insufficient. In any event, his assertion that the
information in response to question one did not clearly
refer to applicant’s services is not well taken.
Immediately after the words “registration application” in
applicant’s declaration, applicant recites the exact
identification of services in this pending application for
registration of its mark. With regard to the third
question, the Examining Attorney argues that this question
was “to allow the examining attorney to have a better
understanding of whether the respective goods and/or
services commonly emanate from the same source.” (Brief,
p. 4.) While applicant responded that it was using the
mark for its own services, it is reasonable to interpret
Ser. No. 78277280
5
that, by negative implication, applicant answered the
question.
We find that the Examining Attorney’s requirement
under Trademark Rule 2.61(b) for additional information
about the goods was appropriate, but that applicant made a
reasonable attempt to respond to the Examining Attorney’s
requirement for further information, and that there is
sufficient compliance with the Examining Attorney’s request
for information under Trademark Rule 2.61(b).
The cases cited by the Examining Attorney -- In re DTI
Partnership LLP, 67 USPQ2d 1699 (TTAB 2003); In re SPX
Corporation, 63 USPQ2d 1592 (TTAB 2002); and In re Babies
Beat Inc., 13 USPQ2d 1729 (TTAB 1990) -- are readily
distinguishable from the facts regarding the Trademark Rule
2.61(b) requirement in this case. Here, applicant
adequately responded to the requests for information,
rather than ignoring such or being evasive.
We turn next to the Examining Attorney’s refusal to
register the mark on the Principal Register under Section
2(d) of the Trademark Act. Our determination under Section
2(d) is based on an analysis of all of the 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 & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
Ser. No. 78277280
6
See also, In re Majestic Distilling Company, Inc., 315 F.3d
1311, 65 USPQ2d 1201 (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/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976). See also, In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
We consider first the marks. Applicant’s mark POD is
highly similar to the cited mark, THE POD. The only
difference is that applicant did not include in its mark
the word “THE.” The word “the” is generally devoid of
trademark or source indicating significance. See e.g., In
re Dixie Restaurants, supra (the Court affirmed the Board’s
finding of likelihood of confusion between THE DELTA CAFE
and design for restaurant services and DELTA for, inter
alia, restaurant services). See also, In re Armour and
Company, 220 USPQ 76 (TTAB 1983); and The Conde Nast
Publications Inc. v. The Redbook Publishing Company, 217
USPQ 356 (TTAB 1983). (Both of these cases involved a
finding that the involved mark was generic.) This minor
difference (absence of the word “the”) would not obviate
any likelihood of confusion. See Spoons Restaurants Inc.
v. Morrison, Inc., 23 USPQ2d 1735 (TTAB 1991), aff’d
Ser. No. 78277280
7
unpub’d (Fed. Cir., June 5, 1992). Instead, we find that
the marks POD and THE POD are virtually identical in sound,
appearance, connotation and commercial impression. See In
re Dixie Restaurants, supra; and Weiss Associates Inc. v.
HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed.
Cir. 1990).
Turning to the similarities/dissimilarities in and the
nature of the involved services, we must determine the
issue of likelihood of confusion on the basis of the goods
and/or services as identified in the application and the
registration, and in the absence of any specific
limitations therein, on the basis of all normal and usual
channels of trade and methods of distribution for such
goods. See Octocom Systems Inc. v. Houston Computer
Services, Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1990); Canadian Imperial Bank of Commerce, National
Association v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987); CBS Inc. v. Morrow, 708 F.2d 1579,
218 USPQ 198 (Fed. Cir. 1983); Squirtco v. Tomy Corp., 697
F.2d 1034, 216 USPQ 937 (Fed. Cir. 1983); and Paula Payne
Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901,
177 USPQ 76 (CCPA 1973).
It is well settled that goods or services need not be
identical or even competitive to support a finding of
Ser. No. 78277280
8
likelihood of confusion, it being sufficient instead that
the goods or services are related in some manner or that
the circumstances surrounding their marketing are such that
they would likely be encountered by the same persons under
circumstances that could give rise to the mistaken belief
that they emanate from or are associated with the same
source. See In re Martin’s Famous Pastry Shoppe, Inc., 748
F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); and In re Opus
One Inc., 60 USPQ2d 1812 (TTAB 2001).
It is not necessary that a likelihood of confusion be
found as to each item included within one class in the
cited registrant’s registration vis-a-vis an applicant’s
identification of goods or services. See Squirtco v. Tomy
Corporation, supra; Tuxedo Monopoly, Inc. v. General Mills
Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981); and
Alabama Board of Trustees v. BAMA-Werke Curt Baumann, 231
USPQ 408, n. 7 (TTAB 1986).
We thus focus on the most relevant identified services
in the cited registration, specifically, “advertising and
promotional services for others in the nature of
dissemination of advertisements and promotions via online
electronic communications and multi-user global
communications networks” vis-a-vis applicant’s identified
services of “advertising services, namely, dissemination of
Ser. No. 78277280
9
advertising for others via an electronic communication
network.”
The portion of the cited registrant’s services
relating to advertising services for others in the nature
of disseminating advertisements and promotions via online
electronic communications and applicant’s advertising
services, namely, disseminating advertising for others via
an electronic communication network, are highly similar as
identified. In fact, we find that these are legally
identical services, as identified. Applicant has not
argued that the services are unrelated.3
Likewise, we do not find any differences in the
channels of trade or purchasers for such services. We must
presume, given the identifications (neither of which is
limited), that the services are offered through the same
channels of trade, and are purchased by the same classes of
purchasers. See Canadian Imperial Bank v. Wells Fargo
Bank, supra.
Applicant strongly contends (devoting most of its
brief to this position) that the refusal to register based
on likelihood of confusion is “impermissible as a matter of

3 We disagree with applicant’s argument that the “likelihood of
confusion rejection is premised on judicially-noticed facts [the
similarities of the marks and the services are closely related].”
(Brief, p. 8.)
Ser. No. 78277280
10
law” (brief, p. 3) because examination by the USPTO of a
third-party application for the same mark and identical
services resulted in allowance of the application despite
the existence of the cited registration;4 and that refusing
registration to applicant when the USPTO did not refuse
registration to the prior third-party applicant violates
“Federal law, Federal Constitutional law, and Federal
common law.” (Brief, p. 3.) Specifically, applicant
contends that the Administrative Procedure Act requires the
USPTO to treat the prior third-party applicant and the
current applicant equally; that the common law of estoppel
precludes the Examining Attorney from contradicting the
USPTO’s prior factual finding; and that when “different
litigants share identical factual circumstances,
inconsistent judgments may violate Seventh Amendment due
process guarantees.” (Brief, p. 5.)5

4 Application Serial No. 76068421, filed June 13, 2000 by
Omnipod, was published for opposition on November 13, 2001, and a
notice of allowance was mailed February 2, 2002. The application
was held abandoned in 2003.
5 Applicant states that the “closest case addressing this point
appears to be dicta in Parklane Hosiery Co., Inc. v. Shore, 439
U.S. 322 (1979).” (Brief, p. 5.) We note that the Parklane case
involved, inter alia, whether the use of collateral estoppel
would violate petitioners’ right to a jury trial under the
Seventh Amendment. It is the Fifth Amendment to the Constitution
which refers to due process. (See also, the Fourteenth Amendment
regarding due process.)
Ser. No. 78277280
11
We do not disagree with many of applicant’s general
statements of law. However, in the context of the
registrability of trademarks as determined at the USPTO, we
disagree that the USPTO must take a similar or identical
action in a current case as it did in an action from the
past even if either the past action or the current action
was and/or is erroneous under the law. As stated by the
Commissioner in In re Stenographic Machines, Inc., 199 USPQ
313, 317 (Comm. 1979): “Consistency of Office practice
must be secondary to correctness of Office practice. The
present case must be determined on the basis of the facts
presented.” While uniform treatment under the Trademark
Act is highly desirable, the Board’s statutory duty under
Sections 17 and 20 of the Trademark Act, 15 U.S.C. §§1067
and 1070, is to determine, based upon the record before us,
whether applicant’s mark is registrable. The determination
of registrability of that particular mark by a prior
Trademark Examining Attorney cannot control the merits in
the case now before us. See McDonald’s Corp. v. McClain,
37 USPQ2d 1274 (TTAB 1995); and In re Sunmarks Inc., 32
USPQ2d 1470 (TTAB 1994). Neither the Board nor any court
is bound by prior decisions of Trademark Examining
Attorneys, and each case must be decided on its own merits,
on the basis of the record therein. See In re Nett Designs
Ser. No. 78277280
12
Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001). See
also, In re Kent-Gamebore Corp., 59 USPQ2d 1373 (TTAB
2001).
With specific regard to the Administrative Procedure
Act and the requirement that federal agencies treat like
cases alike, see the Board’s thorough analysis of this
argument in In re Wilson, 57 USPQ2d 1863, 1870-1871 (TTAB
2001). See also, In re International Flavors & Fragrances
Inc., 181 F.3d 1361, 51 USPQ2d 1513, 1518 (Fed. Cir. 1999).
The Board, furthermore, is an administrative tribunal
and accordingly has no authority to make findings regarding
constitutional claims. See TBMP §102.01 (2d ed. rev.
2004), and the authorities cited therein.
Considering all of the relevant du Pont factors, we
conclude that consumers familiar with registrant’s
advertising services for others offered under the mark THE
POD would be likely to believe, upon encountering
applicant’s mark POD for advertising services for others,
that both originate with or are somehow associated with or
sponsored by the same entity.
Decision: The refusal to register based on the
requirement for further compliance with the request for
information under Trademark Rule 2.61(b) is reversed. The
Ser. No. 78277280
13
refusal to register under Section 2(d) of the Trademark Act
is affirmed.