PageMart Wireless, Inc.

Trademark Trial and Appeal Board

Mar 7, 2001

No. 75404110 (T.T.A.B. Mar. 7, 2001)

03/07/01
Paper No. 13
EJS
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________
In re PageMart Wireless, Inc.
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Serial No. 75/404,110
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William A. Munck of Novakov & Davis, PC for PageMart
Wireless, Inc.
Michael W. Baird, Trademark Examining Attorney, Law Office
109 (Ronald R. Sussman, Managing Attorney).
_______
Before Seeherman, Quinn and Hairston, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
PageMart Wireless, Inc. has appealed from the final
refusal of the Trademark Examining Attorney to register
KEEPING YOU IN TOUCH as a mark for “data and voice
communication services, namely, providing paging and voice
messaging services.”1 Registration has been refused
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C.

1 Application Serial No. 75/404,110, filed December 11, 1997 and
asserting a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/404,110
2
1052(d), on the ground that applicant’s mark so resembles
the mark KEEPING YOU CONNECTED, previously registered for,
inter alia, “telecommunications services, namely local and
long distance telephone communications services, voice mail
message services, caller identification services, and
paging services,”2 that, if used in connection with
applicant’s identified services, it is likely to cause
confusion or mistake or to deceive.
Applicant and the Examining Attorney have filed
briefs; an oral hearing was not requested.
Preliminarily, we must discuss an evidentiary matter.
With its appeal brief applicant has submitted printouts
taken from the U.S. Patent and Trademark Office website of
certain third-party applications and registrations. The
Examining Attorney has objected to these documents, stating
that their submission is untimely. The Examining Attorney
also points out that when applicant timely submitted,
during the prosecution of the application, a listing of
just the registration or application serial numbers and
marks, the Examining Attorney advised applicant that such a
listing was insufficient to make the
registrations/applications of record. The Examining
Attorney is correct as to both of these points. However,

2 Registration No. 1,958,279, issued February 27, 1996.
Ser. No. 75/404,110
3
we note that in its response to the first Office action
applicant submitted a listing of registration/application
serial numbers and marks, and the Examining Attorney made
no objection at that time. Instead, in the second Office
action, the Examining Attorney merely stated that third-
party registrations are entitled to little weight on the
issue of likelihood of confusion. By treating the
registrations and applications listed in applicant’s first
response to be of record, the Examining Attorney has waived
any objections to their consideration. Further, although
the actual copies of the documents were untimely filed,
because they essentially elaborate the listings, we have
considered them as well.
In determining whether there is a likelihood of
confusion between two marks, we must consider all relevant
factors as set forth in In re E.I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any
likelihood of confusion analysis under Section 2(d), two of
the most important considerations are the similarities or
dissimilarities between the marks and the similarities or
dissimilarities between the goods or services. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976).
Ser. No. 75/404,110
4
Turning first to the services, we find that
applicant’s services are identical to certain of the
services recited in the cited registration. Specifically,
both the application and the registration are for paging
services and voice messaging services. As such, we must
deem them to be offered in the same channels of trade to
the same classes of consumers. See In re Elbaum, 211 USPQ
639 (TTAB 1981).
We turn next to a consideration of the marks, keeping
in mind the well-established principle that when marks
appear on identical goods or services, the degree of
similarity necessary to support a conclusion of likely
confusion declines. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992).
Although applicant recognizes that marks must be
compared in their entireties, it asks us to give little
weight to the fact that both of the marks involved herein
begin with the words KEEPING YOU, and to focus on the third
word in each mark to reach a conclusion that they are not
likely to cause confusion. Applicant asserts that KEEPING
YOU is a weak term which has been used in many marks.
However, a closer examination of the third-party
registrations on which applicant bases its position reveals
Ser. No. 75/404,110
5
that they do not support such a conclusion. First, there
are only 13 third-party registrations for KEEPING YOU
marks,3 and of these, three are for the mark, KEEPING YOU IN
STICHES, two are for the mark THREE BAGS FULL KEEPING YOU
WARM IN SAN FRANCISCO, and two are for KEEPING YOU
ORGANIZED. Thus, in effect, there are only nine third-
party KEEPING YOU marks. Moreover, these third-party
registrations are for services or goods which are different
from the paging and voice messaging services at issue
herein. For example, KEEPING YOU GOING WHEREVER YOU GO is
for automobile repair services; KEEPING YOU ORGANIZED is
for office requisites such as paper files, folders, and
envelopes; KEEPING YOU IN COLOR is for arts and craft
paints; THREE BAGS FULL KEEPING YOU WARM IN SAN FRANCISCO
is for sweaters and clothing store services; and KEEPING
YOU IN STITCHES relates to sewing. Similarly, the third-
party registrations for marks containing the phrase KEEP IN
(as opposed to KEEPING IN), are for marks and/or goods or
services which are different from those at issue herein.

3 Applicant also submitted third-party applications, but such
applications are evidence of only the fact that the applications
were filed, and cannot be used, as can third-party registrations,
to show that a particular word or phrase has a particular
significance. However, we have treated as third-party
registrations those applications listed in applicant’s response
to the first Office action which, according to the copies
submitted by applicant with its brief, have now issued as
registrations.
Ser. No. 75/404,110
6
Thus, they do not persuade us that the term KEEPING YOU in
the cited mark should be treated as a weak phrase.
As a result, we cannot agree with applicant that the
IN TOUCH and CONNECTED portions of applicant’s and
registrant’s marks are the dominant parts of each, nor can
we agree that our decision should be based on the
differences between these portions. On the contrary, the
words KEEPING YOU in both marks make a strong impression
because they are the beginning of each mark. Further, it
need hardly be said that as these words are identical the
marks share a strong similarity in appearance and
pronunciation. Moreover, the fact that the final word is
different is not sufficient to avoid likelihood of
confusion. When the marks are viewed in their entireties,
they have, in addition to the similarities in appearance
and pronunciation, a strong similarity in connotation. In
saying this, we have noted applicant’s argument that
KEEPING YOU CONNECTED means a steady contact, while KEEPING
YOU IN TOUCH implies intermittent contact. Although there
may be subtle differences in the meanings of the marks when
they are subjected to close analysis, we do not believe
that consumers will undertake such an analysis. As
applicant itself has recognized, the test for likelihood of
confusion is not whether the marks can be distinguished
Ser. No. 75/404,110
7
when subjected to a side-by-side comparison, and that in
evaluating similarities between marks the emphasis must be
on the recollection of the average purchaser who normally
retains a general rather than a specific impression of
trademarks. Applicant’s brief, p. 8.
Applicant asserts that applicant’s services are
purchased only after careful inspection and not on impulse.
However, it is common knowledge that voice mail and paging
services are purchased by the public at large and, as the
Examining Attorney points out, they are available on a
monthly basis and are relatively inexpensive. Even if we
were to assume that consumers did note the differences in
the last words of the marks, in view of their strong
similarities stemming from the identical beginning words
and their connotation, and in view of the fact that they
are used on identical services, consumers are likely to
believe that the marks are variants of each other, and that
they identify services emanating from the same source.
Finally, to the extent that there may be any doubt on
the issue of likelihood of confusion, we must resolve such
doubt in favor of the registrant and prior user. See In re
Pneumatiques, Caoutchouc Manufacture et Plastiques Kleber-
Colombes, 487 F.2d 918, 179 USPQ 729 (CCPA 1973).
Decision: The refusal of registration is affirmed.