PayPal, Inc.v.ZT Holdings, LLC

Trademark Trial and Appeal Board

Mar 29, 2021

91208416 (T.T.A.B. Mar. 29, 2021)

Mailed: March 29, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

PayPal, Inc.1
v.
ZT Holdings, LLC2
_____

Opposition Nos. 91208416 and 912173743
_____

Rochelle D. Alpert and Sharon R. Smith of Morgan Lewis & Bockius LLP,
for PayPal, Inc.

Nathan B. Webb of Hahn Loeser & Parks LLP for ZT Holdings, LLC.
_____

Before Cataldo, Goodman and Larkin,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

1 In the Board’s September 1, 2017 order denying Opposer’s motion for summary judgment
in Opposition No. 91217374, PayPal, Inc. was substituted for the original opposer Xoom Corp.
on the basis of merger and assignment of its pleaded registrations, recorded on October 27,
2016 in the USPTO Assignment Recordation Branch at Reel/Frame 5910/0264. 80 TTABVUE
5.
2 Prior to commencement of these proceedings, the involved applications were assigned from
original Applicant Zoom Tan, LLC to ZT Holdings, LLC and the assignments were
respectively recorded with the USPTO Assignment Recordation Branch at Reel/Frame
5280/0223 and 5281/0421. 61 TTABVUE 1, fn. 1.
3 These proceedings were consolidated in a July 15, 2016 Board order. 61 TTABVUE 5-6.
Citations to the relevant pleadings, file history, evidentiary record and briefs are to the
docket for the parent case, Opposition No. 91217374, unless otherwise noted.
This Opinion Is Not a
Precedent of the TTAB
Precedent of the TTAB
PrePrecedent of the
TTAB
Opposition Nos. 91208416 and 91217374
- 2 -
Applicant, ZT Holdings, LLC, filed two applications seeking registration on the
Principal Register of the mark ZOOMPAY, in standard characters, identifying
“Financial transaction services, namely, providing secure commercial transactions
through the use of biometric technology; electronic payment services by which
customers may apply money from various sources through the use of biometric
technology,” in International Class 36;4 and “Computer operating software for point
of sale system,” in International Class 9.5
Opposer, PayPal, Inc., opposes registration under Trademark Act Section 2(d), 15
U.S.C. § 1052(d), asserting in its notices of opposition6 priority and a likelihood of
confusion with its XOOM and XOOM-formative marks, previously issued on the
Principal Register, including:
 XOOM in typed form,7 identifying “Providing business information,
namely on, money transfer services,” in International Class 35, and
“Money transfer services; electronic funds transfer services; bill
payment remittance services; electronic payment, namely, electronic
processing and transmission of bill payment data” in International Class
36;8

4 Application Serial No. 85578671, filed March 23, 2012 pursuant to Trademark Act Section
1(a), 15 U.S.C. § 1051(a), based upon Applicant’s assertion of January 15, 2012 as a date of
first use of the mark in commerce in connection with the services.
5 Application Serial No. 86192659, filed February 13, 2014 pursuant to Trademark Act
Section 1(b), 15 U.S.C. § 1051(b), based upon Applicant’s assertion of a bona fide intent to
use the mark in commerce in connection with the goods.
6 1 TTABVUE.
7 Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R. §2.52, was amended to replace
the term “typed” drawing with “standard character” drawing. A mark depicted as a typed
drawing is the legal equivalent of a standard character mark.
8 Registration No. 2909931, issued December 14, 2004. Section 8 affidavit accepted; Section
15 affidavit acknowledged. First Renewal.
Opposition Nos. 91208416 and 91217374
- 3 -
 XOOM in standard characters, identifying “Providing a web site
featuring temporary use of non-downloadable software for providing
information on money transfers, and for facilitating money transfers,
electronic funds transfers, bill payment remittances and electronic
processing and transmission of bill payment data,” in International
Class 42;9 and

 XOOM in standard characters, identifying “Computer software for
facilitating money transfer services, electronic funds transfer services,
bill payment remittance services, electronic processing and
transmission of payments and payment data,” in International Class
9.10

In addition, Opposer asserts that application Serial No. 86192659 is void ab initio
because, as of the application filing date, Applicant lacked the requisite bona fide
intent to use the ZOOMPAY mark in commerce in connection with the goods
identified therein.11
In its answers, Applicant denied the salient allegations in the notices of
opposition.12 In addition, Applicant asserted a counterclaim to cancel five of Opposer’s
pleaded Registrations, i.e., Reg. Nos. 2909931, 4012377, 4226418, 4232742 and
4232741, on the ground that each of the registrations was procured by fraud.13

9 Registration No. 4012377, issued August 16, 2011. Section 8 affidavit accepted.
10 Registration No. 4226418, issued October 16, 2012. Section 8 affidavit accepted.
11 16 TTABVUE 73-75 (in Opposition No. 91217374).
12 4 TTABVUE; (9 TTABVUE in 91217374). Applicant also asserted as affirmative defenses
various matters that it did not pursue by motion or at trial. Accordingly, they are deemed
forfeited. See Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1422
(TTAB 2014) (pleaded affirmative defenses not pursued in the brief considered waived);
Research in Motion Ltd. v. Defining Presence Marketing Group Inc., 102 USPQ2d 1187, 1189-
90 (TTAB 2012) (affirmative defenses not pursued at trial considered waived). Applicant
further asserted as “affirmative defenses” matters that are more in the nature of
amplifications of its denials and have been so construed.
13 9 TTABVUE (in 91217374).
Opposition Nos. 91208416 and 91217374
- 4 -
I. Record14
The record comprises the pleadings and, without any action by the parties, the
files of the involved applications.15 Trademark Rule 2.122(b)(1), 37 C.F.R.
§ 2.122(b)(1).
Opposer submitted the following evidence by notice of reliance:
Status and title copies of its pleaded registrations and copies of the specimens
of use from the file histories thereof; (35 TTABVUE 21-43; 86 TTABVUE 49-
71, 131-203)

Third-party registrations; (35 TTABVUE 44-72; 86 TTABVUE 72-130)

Printouts from Opposer’s website; (35 TTABVUE 73-174; 86 TTABVUE 204-
366, 403-421)

Printouts from the parties’ social media; (35 TTABVUE 175-855, 940-941; 36
TTABVUE 2-12, 55-57, 70-71, 283-289; 86 TTABVUE 367-402; 87 TTABVUE
157-162, 172-173, 385-391)

Printouts from Opposer’s channel on youtube.com and Opposer’s pages on
itunes.apple.com, google.com, amazon.com, wikipedia.org. finance.yahoo.com;
(35 TTABVUE 856-939; 36 TTABVUE 41-49, 58-60; 86 TTABVUE 458-1102;
87 TTABVUE 3-90, 143-151, 174-182; 91 TTABVUE 5-9)

In Opposition No. 91217374, Opposer pleaded an additional registration (Reg. No. 4407099)
that is not subject to Applicant’s counterclaim.
14 Both parties presented arguments in their briefs directed toward the merits of the case in
their respective descriptions of the record. While not prohibited by the Trademark Rules of
Practice, we find these arguments to be redundant and unnecessary. See 37 C.F.R. § 2.126;
see also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 801.03
(2020) and authorities cited therein.
Citations in this opinion will be to the TTABVUE docket entry number and the electronic
page number where the document or testimony appears. Because the Board primarily uses
TTABVUE in reviewing evidence, the Board prefers that citations to non-confidential parts
of the record include the TTABVUE docket entry number and the TTABVUE page number.
Cf. TBMP § 801.01 (parties should cite to the record by referring to the TTABVUE entry and
page number). We note that neither party cited to TTABVUE in its briefs.
15 The parties’ submission during trial of portions of the records of the involved applications
thus was duplicative and unnecessary.
Opposition Nos. 91208416 and 91217374
- 5 -
Articles from third-party websites concerning Opposer; (36 TTABVUE 61-69,
72-128, 131-282, 290-293, 311-322; 86 TTABVUE 422-433; 87 TTABVUE 163-
171, 183-384, 413-424, 431-448; 88 TTABVUE 3-42, 91-462)

Articles from third-party websites concerning Applicant; (36 TTABVUE 323-
328; 86 TTABVUE 434-457, 392-395; 87 TTABVUE 425-430)

Articles from Lexis-Nexis concerning Opposer; (36 TTABVUE 294-310; 87
TTABVUE 396-412)

Reviews of Applicant’s activities under its involved mark on bbb.org; (36
TTABVUE 50-54; 87 TTABVUE 150-156)

Portions of the file history of Applicant’s involved application Serial No.
85578671; (87 TTABVUE 91-99)

Printouts from Applicant’s website; (87 TTABVUE 100-116)

Documents from Opposition No. 91206548 involving Opposer and a third
party; (36 TTABVUE 13-40; 87 TTABVUE 117-142)

Opposer’s business records; (36 TTABVUE 384-599)

Government records; (88 TTABVUE 480-483)

A copy of Applicant’s testimony deposition of its President, Mr. Anthony
Toepfer, with exhibits; (88 TTABVUE 503-588)

Applicant’s responses to Opposer’s discovery requests; (88 TTABVUE 589-601)

Portions of the pleadings and file history of these oppositions; (36 TTABVUE
329-374; 88 TTABVUE 43-89) and

Dictionary definitions. (36 TTABVUE 375-382; 88 TTABVUE 463-479, 484-
502)

Opposer also submitted the following testimony:

The declaration of Mr. Julian King, Opposer’s General Manager of Xoom, a
service of Opposer, and exhibits thereto (85 TTABVUE 2-605; 89 TTABVUE 2-
605; 91 TTABVUE 11-14; 93 TTABVUE 2-486; 94 TTABVUE 2-126).

Applicant submitted the following evidence by notice of reliance:

Opposition Nos. 91208416 and 91217374
- 6 -
Status and title copies of five of its registrations as well as an application not
subject to this proceeding; (41 TTABVUE 20-39, 44-47; 98 TTABVUE 50-89)

A status and title copy of its involved application Serial No. 86192659 and
portions of the file history of its involved application Serial No. 85578671; (41
TTABVUE 40-43, 48-56; 98 TTABVUE 90-101)

Copies of third-party registrations and applications; (41 TTABVUE 57-80; 98
TTABVUE 102-106)

Printouts from Opposer’s website; (41 TTABVUE 81-149; 98 TTABVUE 459-
950)

USPTO records and printouts from websites regarding third-party ZOOM and
XOOM formative marks; (41 TTABVUE 150-215; 98 TTABVUE 107-450; 100
TTABVUE 154-157, 167-255)

Printouts from third-party websites regarding third-party use of the terms
ZOOM and XOOM; (41 TTABVUE 168-215; 98 TTABVUE 107-112, 117-129,
133-134, 145-158, 166-171, 176-177, 181-183,188-195)

Printouts from a third-party website regarding business names beginning with
the letter X; (41 TTABVUE 216-219)

Printouts from a third-party website regarding biometrics; (41 TTABVUE 221-
232)

Opposer’s responses to Applicant’s discovery requests; (100 TTABVUE 6-139)

A copy of the testimony deposition of Mr. King, with exhibits; (100 TTABVUE
601-1211)

Portions of the file histories of these proceedings and communications between
the parties; (41 TTABVUE 233-280; 98 TTABVUE 451-458; 100 TTABVUE
140-153) and

Dictionary definitions. (41 TTABVUE 281-287; 98 TTABVUE 951-986; 99
TTABVUE 2-5; 100 TTABVUE 2-5, 158-166, 256-260)

Applicant also submitted the following testimony:

Testimony deposition of Mr. Toepfer, with exhibits. (45 TTABVUE 2-345; 97
TTABVUE 2-88; 100 TTABVUE 261-600)

Opposer submitted the following evidence in rebuttal:
Opposition Nos. 91208416 and 91217374
- 7 -

Printouts from Opposer’s website; (47 TTABVUE 6-42, 74-76, 85-91; 56
TTABVUE 5-14)

Printouts from Applicant’s website; (56 TTABVUE 24-35)

Printouts from the parties’ social media pages; (47 TTABVUE 43-62; 56
TTABVUE 15-22) and

Printouts from third-party websites. (47 TTABVUE 63-73, 77-84, 92-105; 56
TTABVUE 36-53; 105 TTABVUE 6-17)

Portions of the record have been designated confidential pursuant to the Board’s
Standard Protective Order automatically in place for all inter partes proceedings. The
majority of citations to the record refer to the redacted, publicly available versions of
each submission on TTABVUE, the Board’s online docketing system. The number
preceding “TTABVUE” corresponds to the docket entry number; the number(s)
following “TTABVUE” refer to the page number(s) of that particular docket entry. See
Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Only the docket
entry number is provided for portions of the record designated confidential. In this
decision we will reference confidential testimony and evidence as needed in general
terms.
Opposition Nos. 91208416 and 91217374
- 8 -
II. Objections16
Both parties raised numerous objections to their adversary’s testimony and
evidence.17 Many of the objections go to the weight to be accorded the testimony and
evidence under consideration, rather than its admissibility. The Board is “capable of
weighing the relevance and strength or weakness of the objected-to testimony and
evidence, including any inherent limitations,” Hanscomb Consulting, Inc. v.
Hanscomb Ltd., 2020 USPQ2d 10085, at *3 (TTAB 2020), and this precludes the need
to strike the objected-to testimony and evidence. See Real Foods Pty Ltd. v. Frito-Lay
N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1378 (Fed. Cir. 2018) (“The TTAB is
entitled to weigh the evidence …”) (citing Inwood Labs., Inc. v. Ives Labs., Inc., 456
U.S. 844, 856, 214 USPQ 1, 7 (1982) (“Determining the weight and credibility of the
evidence is the special province of the trier of fact.”)).
Given the circumstances herein, we exercise our discretion not to make specific
rulings on each and every objection. As necessary and appropriate, we will point out
in this decision any limitations applied to the evidence or otherwise note that the
evidence cannot be relied upon in the manner sought. See, e.g., Spiritline Cruises LLC
v. Tour Mgmt. Servs., Inc., 2020 USPQ2d 48324, at *2 (TTAB 2020) (“Board

16 We observe that the parties, Applicant in particular, presented arguments directed toward
the merits of the case in the appendices to their briefs asserting objections to their adversary’s
testimony and evidence. While we do not view these arguments as a subterfuge to circumvent
the page limits on briefs, see Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107
USPQ2d 1750, 1753-54 (TTAB 2013) (appendices may not be used as a subterfuge to avoid
the page limitation), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.); Harjo v. Pro-Football
Inc., 45 USPQ2d 1789, 1792 (TTAB 1998) (same), we nonetheless find such arguments to be
an unnecessary distraction from the evidentiary issues argued in the appendices.
17 107 TTABVUE 56-94, Opposer’s brief; 109 TTABVUE 55-83, Applicant’s brief; 110
TTABVUE 55-70, Opposer’s rebuttal brief.
Opposition Nos. 91208416 and 91217374
- 9 -
proceedings are heard by Administrative Trademark Judges, not lay jurors who
might easily be misled, confused, or prejudiced by irrelevant evidence”); Pierce-Arrow
Soc’y v. Spintek Filtration, Inc., 2019 USPQ2d 471774, at *3 (TTAB 2019) (Board saw
no compelling reason to individually address the objections of hearsay, lack of
personal knowledge, lack of authentication, irrelevance, and lack of foundation but
kept the objections in mind when considering the testimony and evidence, and
according appropriate value to the testimony and evidence according to its merits).
We have considered the entire record in making our decision, keeping in mind the
parties’ various objections, and have accorded whatever probative value the subject
testimony and evidence merit. See Krause v. Krause Publ’ns Inc., 76 USPQ2d 1904,
1907 (TTAB 2005) (“[w]here we have relied on testimony to which respondent
objected, it should be apparent to the parties that we have deemed the material both
admissible and probative to the extent indicated in the opinion.”).
III. Entitlement to a Statutory Cause of Action18
“To establish entitlement to a statutory cause of action, a plaintiff must
demonstrate: (i) an interest falling within the zone of interests protected by the
statute and (ii) a reasonable belief in damage proximately caused by registration of
the mark.” Corcamore, LLC v. SFM, LLC, 2020 USPQ2d 11277, *4-6 (Fed. Cir. 2020);
15 U.S.C. Sections 1063-64. See also Australian Therapeutic Supplies Pty. Ltd. v.

18 Our decisions have previously 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 Nos. 91208416 and 91217374
- 10 -
Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837, *3 (Fed. Cir. 2020); 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); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023,
1025 (Fed. Cir. 1999).
Here, Opposer’s entitlement to a statutory cause of action to oppose registration
of the marks in Applicant’s involved applications is supported by its pleaded
registrations, which the record shows are valid, subsisting and owned by Opposer.19
See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed.
Cir. 2000); N.Y. Yankees P’ship v. IET Prods. & Servs., Inc., 114 USPQ2d 1497, 1501
(TTAB 2015). Its entitlement to a statutory cause of action is further supported by its
assertion of a claim of likelihood of confusion that is plausible on its face.20 As such,
Opposer has established that it has a direct and personal stake in this proceeding
and a reasonable basis for its belief of damage stemming from registration of a
confusingly similar mark for assertedly related goods services. See Luxco, Inc. v.
Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1480-81 (TTAB 2017).
Having established its entitlement to a statutory cause of action with respect to
the pleaded ground of likelihood of confusion, Opposer has the right to assert any
other ground as well, that also has a reasonable basis in fact, in this case, that
application Serial No. 86192659 is void ab initio because, as of the application filing

19 35 TTABVUE 21-43.
20 1 TTABVUE 32-34.
Opposition Nos. 91208416 and 91217374
- 11 -
date, Applicant lacked the requisite bona fide intent to use the ZOOMPAY mark in
commerce in connection with the goods identified therein.21 See Lipton Indus., Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 188 (CCPA 1982).
Applicant’s entitlement to a statutory cause of action as counterclaim plaintiff is
inherent in its position as defendant in the underlying opposition. Finanz St. Honore
B.V. v. Johnson & Johnson, 85 USPQ2d 1478, 1479 (TTAB 2007). See also, e.g.,
Carefirst of Md., Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492, 1502
(TTAB 2005) (“Applicant, by virtue of its position as defendant in the opposition, has
standing to seek cancellation of the pleaded registrations”, citing Ohio State Univ. v.
Ohio Univ., 51 USPQ2d 1289, 1293 (TTAB 1999).
IV. Fraud Counterclaim
Although Opposer’s registrations are of record,22 Applicant has filed a
counterclaim to cancel five of them, so priority is an issue in the opposition as to those
registrations. See 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”).
For this reason, we turn first to Applicant’s counterclaim to cancel five of Opposer’s
pleaded registrations based on fraud.
Fraud in procuring a trademark registration occurs when an applicant for
registration knowingly makes a false, material representation of fact in connection

21 16 TTABVUE 73-75 (in Opposition No. 91217374).
22 86 TTABVUE 49-71.
Opposition Nos. 91208416 and 91217374
- 12 -
with an application to register with the intent of obtaining a registration to which it
is otherwise not entitled. In re Bose Corp., 580 F.3d 1240, 1245, 91 USPQ2d 1938,
1939-40 (Fed. Cir. 2009); Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d
1483, 1484 (Fed. Cir. 1986); Embarcadero Techs., Inc. v. Delphix Corp, 117 USPQ2d
1518 (TTAB 2016); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036, 1044 (TTAB
2012).
A party alleging fraud in the procurement of a registration bears the heavy burden
of proving fraud with clear and convincing evidence. Bose, 91 USPQ2d at 1943
(quoting Smith Int’l, Inc. v. Olin Corp., 209 USPQ 1033, 1044 (TTAB 1981)). The
Board will not find fraud if the evidence shows that a false statement was made with
a reasonable and honest belief that it was true, rather than an intent to mislead the
USPTO into issuing a registration to which the applicant was not otherwise entitled.
See id.; see also Woodstock’s Enters. Inc. (Cal.) v. Woodstock’s Enters. Inc. (Or.), 43
USPQ2d 1440, 1443 (TTAB 1997), aff’d (unpub’d), Appeal No. 97-1580 (Fed. Cir. Mar.
5, 1998). The standard for finding intent to deceive is stricter than the standard for
negligence or gross negligence, and evidence of deceptive intent must be clear and
convincing. Id.
To carry its burden, the party alleging fraud must prove that: (1) the applicant
made a false representation to the USPTO; (2) the false representation was material
to the registrability of the mark; (3) the applicant had knowledge of the falsity of the
representation; and (4) the applicant made the representation with the intent to
deceive the USPTO. Bose, 91 USPQ2d at 1941, cited in ShutEmDown Sports, 102
USPQ2d at 1044. With regard to intent, the Board has stated:
Opposition Nos. 91208416 and 91217374
- 13 -
Fraud implies some intentional deceitful practice or act designed to
obtain something to which the person practicing such deceit would not
otherwise be entitled. Specifically, it involves a willful withholding from
the Patent and Trademark Office by an applicant or registrant of
material information or fact, which, if disclosed to the Office, would have
resulted in the disallowance of the registration sought or to be
maintained. Intent to deceive must be “willful”. If it can be shown that
the statement was a “false misrepresentation” (sic) occasioned by an
“honest” misunderstanding, inadvertence, negligent omission or the like
rather than one made with a willful intent to deceive, fraud will not be
found. Fraud, moreover, will not lie if it can be proven that the
statement, though false, was made with a reasonable and honest belief
that it was true or that the false statement is not material to the
issuance or maintenance of the registration. It thus appears that the
very nature of the charge of fraud requires that it be proven “to the hilt”
with clear and convincing evidence. There is no room for speculation,
inference or surmise and, obviously, any doubt must be resolved against
the charging party.

First Int’l Svcs. Corp. v. Chuckles Inc., 5 USPQ2d 1628, 1634 (TTAB 1988), citing
Smith v. Olin, 209 USPQ at 1043-44; see also Bose, 91 USPQ2d at 1940 (emphasizing
that fraud requires the intent to mislead the PTO).
Applicant’s fraud claim rests on allegations that Opposer intentionally
represented to the USPTO, for purposes of securing its challenged registrations, that
it used its marks in connection with electronic payment and bill payment remittance
services when it was engaged exclusively in international money transfers prior to
2014. Averments and evidence of use of a mark for the goods or services identified in
a use-based application are critical to its approval, and if it had been disclosed to the
examining attorney that the mark was not in use for the identified services (or that
the specimen of use was fabricated), registration would have been refused. Nationstar
Mortg. LLC v. Ahmad, 112 USPQ2d 1361, 1365 (TTAB 2014). Thus, any
misrepresentations in this regard are considered material. Id.
Opposition Nos. 91208416 and 91217374
- 14 -
A. Commercial Transactions
Applicant argues that Opposer’s terms of service prohibit rendition of the services
under the XOOM – formative marks for commercial transactions and, therefore,
prohibit their use for bill payment.
Although the oldest of Xoom’s trademark registrations claim use of
electronic and bill payment remittance services since May of 2003, the
earliest Terms of Service document in the record was effective October
1, 2004. [98 TTABVUE 459-468]. This Xoom customer contract describes
a service wherein the customer initiates a transaction that includes
transfer of money from the customer’s authorized credit or debit card to
a designated recipient, but also clarifies that “Xoom is not a bank and
neither holds nor transfers Sender’s funds of its own accord,” that “use
of the Service for Commercial Transactions is at your own risk,” and still
further that customers agree that the Service is not to be “exploit[ed] for
any commercial purposes.” [98 TTABVUE 460-462, 464]. Xoom’s next
Terms of Service contract, effective, May 19, 2005, contained the same
relevant language and conditions. [98 TTABVUE 483-501].23

Xoom’s February 2006 Terms of Service contract truncated its
“Overview of Service” section and included claims that “the Service
enables you to send money and make payments to designated
recipients,” but continued to dissuade customers from use of the Service
to pay for goods and services, which occurred at the customer’s “own
risk,” and included a customer provision wherein they “agree to hold
Providers harmless for any loss or expense they incur as a result of a
Commercial Transaction.” [98 TTABVUE 503, 505, 511]. The Xoom
Website Frequently Asked Questions” section explains, perhaps, the
addition of payment language by asserting, in response to the question
“Can I use Xoom to pay for goods and services?”, that “[y]ou may only
use Xoom to pay for commercial transactions in the Philippines…[y]ou
can pay utility bills directly in Jamaica.” [98 TTABVUE 521]. The
problem is that Xoom didn’t launch its Jamaican bill pay service until
August 28, 2003, nor expand its money transfer services into the
Philippines until April 2, 2014—both dates coming well after Xoom’s
claimed date of first use for electronic and bill payment remittance
services of May 2003. [98 TTABVUE 476, 479].24

23 109 TTABVUE 20-21.
24 109 TTABVUE 21.
Opposition Nos. 91208416 and 91217374
- 15 -
The next Xoom customer contract of record is the October 2011 User
Agreement, and it tellingly removed the claim from the 2006 Terms of
Service overview section asserting that payments could be made,
instead replacing that language with a simple description that “[t]he
Service was created to help our customers send money transfers to
family and friends.” [98 TTABVUE 543]. The User Agreement makes no
mention of electronic payments or bill payment remittance services and,
in fact, includes a “Restrictions” sub-section on “Commercial
Transactions” that appears to preclude such use by admonishing
customers that “[y]ou should not use the Service to send money except
to people that you know personally…[i]f Xoom discovers you are using
the Service to purchase goods or services, we reserve the right to cancel
your transactions.” [98 TTABVUE 544].25

Opposer, on the other hand, presents the testimony declaration of its General
Manager, Julian King, with accompanying exhibits, and additional evidence
demonstrating that consumers could always, from its inception in 2003 to the present,
use XOOM to pay bills in several ways.26
A customer engages with Xoom and requests that Xoom move money on
their behalf. Xoom debits money electronically from a payment
instrument and makes it available for disbursement in many ways.

[W]e allow customers to send monies to multiple endpoints. Those could
be cash, to pay bills, to bank accounts. We offer delivery of money to
people’s homes. We enable and facilitate charitable transactions and
donations. The payments of mortgages and other directed – we call them
“directed payments.” [89 TTABVUE 18, 141; 100 TTABVUE 602-803]

Q. In your position at Xoom, have you been aware of various types of
ways that Xoom’s customers can facilitate or pay bills?

A. Yes.

25 109 TTABVUE 21-22.
26 We find that Mr. King has established a proper foundation for his testimony regarding his
knowledge of events at Opposer and its predecessor prior to his hiring in 2005 as a result of
his review of business records and familiarity with all aspects of Opposer’s operations in his
various executive positions with Opposer. 85 TTABVUE 2-4. See, e.g., Ava Ruha Corp. v.
Mother’s Nutritional Ctr., Inc., 113 USPQ2d 1575, 1579 (TTAB 2015).
Opposition Nos. 91208416 and 91217374
- 16 -
Q. Would you describe all of those different ways for us, that you’re
aware of, that have been offered by Xoom?

**

THE WITNESS: As of 2003, consumers could pay bills in multiple
countries using the Xoom service as a product type for the entire -- from
the same time consumers could pay bills directly into bank accounts,
and they could pay bills in other countries using our delivery and cash
pick up services. I personally witnessed these occur.

**

A. In addition to that, we launched a productized version of our Bill Pay
service, a revised productized version of our Bill Pay service in 2014 that
allowed customers to retrieve the balance of bill, have that presented to
them on a continuous basis, and pay the bills on behalf of their loved
ones and for themselves.

Q. Can Xoom’s services be used at any time to pay, for example, an
individual in another country that you might owe a bill to?

A. Yes. I personally have used the Xoom services to do that.

Q. Tell us about that.

A. I have paid for accommodations, a bill for accommodations on
multiple accommodations. I have also witnessed bills being paid in
Vietnam, for example, and other countries.

Q. And when you used Xoom to pay a bill for accommodations, how did
you do that?

A. I asked the merchant for his bank account number, and I sent money
directly to his bank account. [100 TTABVUE 602-803]

B. SEC Filings

Opposition Nos. 91208416 and 91217374
- 17 -
Applicant argues that Opposer’s claim of use of the XOOM marks directly
contradicts its filings before the Securities and Exchange Commission.27
Moreover, Xoom’s sworn statements to U.S. government agencies
confirm that Xoom was, at all times relevant to the fraud counterclaims,
solely a money transfer business. When Xoom became a publicly traded
company in 2013, it was obligated to file a Form 10-K Annual Report,
sworn and attested to under penalty of perjury, with the SEC. Xoom’s
Form 10-K Annual Report, for the year ending 2013, contained a number
of admissions that conclusively demonstrate that the business was
solely a money transfer company:

 “Xoom is a leader in the digital consumer-to-consumer
international money transfer industry. Our customers use Xoom
to send money to family and friends in 31 countries”; [98
TTABVUE 576]

 “Since our inception we have provided digital consumer-to-
consumer money transfers. From 2003 to 2005, we also offered
other services within the money transfer business. In 2006, we
chose to focus solely on our current business model, providing
digital consumer-to consumer international money transfers”; [98
TTABVUE 584]

 “In January 2014, we acquired all of the outstanding equity of
BlueKite, LTD, a BVI business company, which is a Guatemala-
based developer of solutions and applications for cross-border bill
pay and cell phone top up services…[w]e believe that expanding
our products and features to include bill pay and cell phone top
up services in the same convenient, fast and cost-effective manner
in which we provide our money transfer services will broaden our
relationship with our customers and increase customer loyalty.”
[98 TTABVUE 578] and

 The “Industry Overview” section was devoted exclusively to
describing global money transfer; the “Competition” section says
“person-to-person money transfer service providers” are its

27 Because the TTAB is an administrative tribunal authorized solely to determine questions
of trademark registrability, we consider Applicant’s assertions solely as they apply to its
claim of fraud, and do not otherwise opine on any of Opposer’s asserted misrepresentations
before the SEC.
Opposition Nos. 91208416 and 91217374
- 18 -
competitors; no mention of electronic payments or bill payment
remittance services are to be found. [98 TTABVUE 578, 583].28

The Form 10-K Annual Report Xoom filed in 2015 further supports the
conclusion that bill pay was a new service offered starting in 2014,
stating, inter alia, that:

 “From 2006 to 2014, we chose to focus solely on providing digital
consumer-to-consumer international money transfers. In 2014,
we introduced our cross-border bill payment service.”; [98
TTAVUE 744]

 “During 2014, we enhanced our customer experience and
expanded our reach in the communities we serve, including with
the following initiatives: New Product Expansion—We introduced
Xoom Bill Pay”; [98 TTABVEU 737] and

 “As we launch new products and services, such as Xoom Bill
Pay…”; [98 TTABVUE 738]

In short, these sworn statements do nothing but reinforce the
conclusion—based on Xoom’s Terms of Service and User Agreements—
that Xoom had made materially false misrepresentations to the USPTO
about its claimed bill and electronic payment services in conjunction
with its Xoom trademark registrations.29

Opposer argues that notwithstanding its determination to “focus solely” on
consumer to consumer money transfers, XOOM users have always been able to use
XOOM to make electronic payments and bill payments of the types discussed above,
and that such payments consistently accounted for 10% of its business. [110 TABVUE
33-34; 89 TTABVUE 7, 11-12] Opposer further argues that Form 10-K requires the
filer to disclose material information to investors, focusing on the filer’s dominant
segment, the principal products produced and services rendered and the principal

28 109 TTABVUE 23-24.
29 109 TTABVUE 24.
Opposition Nos. 91208416 and 91217374
- 19 -
markets therefor. [110 TTABVUE 33] 17 C.F.R. §229.101, applicable to such filings,
provides as follows:
(c) Description of business.

(1) Describe the business done and intended to be done by the registrant
and its subsidiaries, focusing upon the registrant’s dominant segment
or each reportable segment about which financial information is
presented in the financial statements. When describing each segment,
only information material to an understanding of the business taken
as a whole is required.

Opposer argues that its statements to the SEC are accurate inasmuch as 90% of its
business involved person to person money transfers, but do not preclude use of XOOM
for bill payments or electronic remittance, which accounts for the remaining 10%.
C. Statements to Consumers
Applicant argues that Opposer’s representations to its consumers indicate that
Opposer did not provide bill payment or electronic remittance services prior to 2014.
Xoom’s own Vice President of Bill Pay, Bobby Aitkenhead, was quoted
in a November 2014 article from Globe Newswire—announcing that
Xoom “a leading digital money transfer provider, has officially launched
Xoom Bill Pay”—saying:

“We believe Xoom Bill Pay is revolutionary for paying bills
in developing countries…[i]n the past, money transfer
recipients had to spend hours out of their day travelling to
a bill pay retailer, just to stand in line, fill out forms and
hand cash over the counter to pay for telephone usage or
electricity. This is now a thing of the past as we have
transformed the process by allowing customers to pay the
bills cross-border on behalf of their family in an easy and
efficient way.” [98 TTABVUE 909]

A November 24, 2014 Xoom press release entitled “Xoom Launches
Cross Border Bill Pay—Pay Bills Online, in Your Home Country, From
U.S.,” explained that “Xoom, a leading digital money transfer provider,
has officially launched Xoom Bill Pay” which “allows customers to pay
electricity, telephone, internet, cable, water and gas bills, from their
Opposition Nos. 91208416 and 91217374
- 20 -
mobile phone or tablet,” and that “[i]n 2015, Xoom plans to roll out bill
pay services to other Xoom countries, including the Philippines.” [98
TTABVUE 892] An October 2014 article from Seeking Alpha, entitled
“Xoom and PayPal Out To Disrupt Payments Industry,” observed that
“Xoom’s new cross border bill pay service will take customers from wire
transfer companies.” [98 TTABVUE 905]30

The claimed addition of bill payment capabilities to the Xoom mobile
software application was closely followed by changes to Opposer’s User
Agreement, which by June of 2015 had added language about the ability
to pay bills and softened its “Commercial Transactions” provision to
restrict transfers to only “[b]eneficiaries that you know personally and
for personal reasons” and further that use of the Service for commercial
purposes must be limited to “payments made to Service Companies
specifically provided for by the Service.” [98 TABVUE 694, 696, 701]31

Opposer argues that the 2014 launch of XOOM Bill Pay introduced a new and
enhanced way to use XOOM to make electronic remittances and bill payments, to
complement the previously available methods.
Q. Is it your position that Xoom was offering bill payment services prior
to 2014?

A. Absolutely.

Q. Okay. Help me to understand that, because you’re saying it’s a new
service in 2015. You just told me that your own user agreement prohibits
the use of the service for anything other than a consumer-to-consumer
transfer; that it prohibits the use of the service for payment of goods or
services of any kind.

**

THE WITNESS: As I tried to state, the user agreement gives us
discretion to cancel transactions.

Today, for example, we allow payments for goods and services in China.
But if we see a merchant we don’t like, we are able to cite our user
agreement and restrict transactions that we don’t like. It’s a very

30 109 TTABVUE 25.
31 109 TTABVUE 26.
Opposition Nos. 91208416 and 91217374
- 21 -
powerful tool, which is why we use it, because we’re in a business where
we have to be able to stop traffic through our service that we deem risky.

As I’ve said multiple times in the past, people can and do pay and have
always, prior to today’s date and prior to 2014, paid bills using the Xoom
service. I described exactly how they did them. [100 TTABVUE 602-803]

According to Opposer, the “evidence shows that as of 2003 and continuing to the
present, the XOOM Platform has allowed consumers to pay bills or make electronic
payments to a recipient who is owed payment on a bill or on behalf of a recipient
whose bills need to be paid.” [110 TTABVUE 38]
D. Applicant’s Inspection of Opposer’s Website and App

Finally, based on Mr. Toepfer’s Applicant’s Manager and Managing
Member] personal inspection of the Xoom Website and Xoom App (and
the software functionality associated therewith), further informed by his
30 years of experience as a software engineer and business owner in the
commercial transactions software industry, Opposer Xoom Corporation
did not offer point-of-sale commercial transaction services, or “bill
payment remittance services,” “electronic payments,” or “electronic
payment, namely, electronic processing and transmission of bill
payment data” services during, at least, the summer and fall of 2014.
[97 TTABVUE 19; 100 TTABVUE 320-325]. More specifically, Mr.
Toepfer’s informed opinion is that Xoom Website and Xoom App were
incapable of effectuating “bill payment remittance services” (defined as
“payment of an obligation associated with a written instrument
presented to the Xoom customer by the third-party provider of the goods
or services rendered”) an electronic payment for a commercial
transaction (defined as “electronic payment for goods or services
rendered”). [Id.].32

Opposer counters that it has introduced evidence in the form of, inter alia,
customer reviews for bill payment remittances from 2007 through the date of trial,
including summer and autumn of 2014. [89 TTABVUE 150-442]

32 109 TTABVUE 26.
Opposition Nos. 91208416 and 91217374
- 22 -
E. Analysis
“[A]bsent the requisite intent to mislead the PTO, even a material
misrepresentation would not qualify as fraud under the Lanham Act warranting
cancellation.”33 Bose, 91 USPQ2d at 1940. Applicant argues that Opposer’s testimony
and evidence “simply lack credibility in the face of three facts:
1) Xoom represented itself to the SEC as “solely” a money transfer
company during the time period where the XOOM Marks were
applied for, maintained, and renewed (and still further stated that
its bill pay service was new in 2014);

2) Xoom’s User Agreement and Terms of Service prove the truthfulness
of this SEC statement because they explicitly forbid use of the service
for payments for goods or services of any kind; and

3) Xoom has failed to provide a single page of admissible financial
transactions evidence—in the face of clear and repeated discovery
requests—that would conclusively prove that electronic payment and
bill remittance services were actually rendered, instead of just
advertised, before 2015.” [109 TTABVUE 36]

According to the U.S. Court of Appeals for the Federal Circuit, subjective intent
to deceive, however difficult it may be to prove, is an indispensable element in the
fraud analysis. In most cases, “because direct evidence of deceptive intent is rarely
available, such intent can be inferred from indirect and circumstantial evidence. But
such evidence must still be clear and convincing, and inferences drawn from lesser
evidence cannot satisfy the deceptive intent requirement.” Bose, 91 USPQ2d at 1941
(citation omitted). When drawing an inference of intent, “the involved conduct,

33 In its brief, [109 TTABVUE 42 n.19] Applicant opines that “Xoom’s goods and services
related to electronic payments and bill payment remittance services may be cancelled merely
for nonuse rather than deceptive intent.” Applicant is mistaken. Deceptive intent is a crucial
element of any fraud determination, and non-use is not before us as a separate ground for
cancellation.
Opposition Nos. 91208416 and 91217374
- 23 -
viewed in light of all the evidence ... must indicate sufficient culpability to require a
finding of intent to deceive.” Id.
Testimony and evidence reflect that Applicant construes the language used to
recite the services at issue in a way that differs from the meanings advocated by
Opposer. The parties appear to agree that the term “commercial transaction” involves
making payment for goods and services. [109 TTABVUE 21; 110 TTABVUE 34] The
parties’ dispute largely centers on differing characterizations of what is encompassed
by the term “commercial transaction.” The parties have introduced the following
definitions into the record:
“pay” – “to give money in return for goods or services rendered,” “to discharge an
indebtedness,” or “to discharge or settle (a debt or an obligation);” [36 TTABVUE 376-
382; 88 TTABVUE 464-470]
“payment” – “the act of paying, something that is paid” [100 TTABVUE 257]
“remittance” – “a sum of money or (formerly) a quantity of an item transferred
from one place or person to another. Also: the action of transferring money, etc., to
another place or person, transmittal of money (as to a distant place);” [41 TTABVUE
286-287; 100 TTABVUE 258] and
“bill” – “documents evidencing a debtor’s obligation to a creditor, an invoice for
charges for goods or services.” [98 TTABVUE 983-986; 99 TTABVUE 3-5; 100
TTABVUE 3-5]
Based upon these definitions, a payment may be made in return for goods or
services rendered, i.e., in a commercial transaction, or may be made to discharge or
settle a debt or obligation. Applicant takes the position that Opposer’s various terms
Opposition Nos. 91208416 and 91217374
- 24 -
of service either dissuade or prohibit users from making commercial transactions,
thus precluding use of XOOM for bill payment remittance services. However, there is
no evidence of record that bill payment remittance is necessarily a commercial
transaction. To the contrary, Opposer asserts that its services provide electronic
payment and bill payment for, inter alia, personal loans, mortgages, utilities, rent,
credit cards, caretakers and contractors. [89 TTABVUE 6-13, 147-8] The evidence of
record does not support a finding that these types of payments are all commercial
transactions or otherwise restricted by Opposer’s terms of service. Opposer further
asserts that notwithstanding periodic changes to the language of its terms of service
and user agreements, users of its XOOM services have always been able to pay bills
and make payments, with Opposer reserving the right to cancel transactions found
to be in violation of applicable laws or that place Opposer at risk for certain types of
disputed transactions. [89 TTABVUE 7-8]
While Applicant argues that Opposer represented to the SEC that it is “solely”
engaged in money transfers, Opposer argues that it is, and has always been,
primarily engaged in money transfers – accounting for 90% of its business – and that
its SEC filings accurately reflect this. Opposer further argues that its terms of service
and customer agreements discourage use of XOOM for commercial transactions, but
do not prohibit or discourage users from paying bills or making electronic payments.
Opposer argues in addition that since 2003, it has provided two different methods for
using XOOM to make various payments, and added a third, “productized” and
dedicated method for doing so in 2014.
Considering all the testimony and evidence, particularly the testimony and
Opposition Nos. 91208416 and 91217374
- 25 -
evidence discussed above, even if we assume that Opposer’s allegations as to its bill
payment remittance and electronic payment services were false, we find no direct
evidence of an intent to deceive the USPTO, and no clear and convincing evidence to
warrant the inference of an intent to deceive. Mr. King testified that at all relevant
times he believed, and still believes, the truth of the statements about ongoing use of
the marks in the pleaded registrations for all the listed services. He explained the
basis of his belief, as described above. See Bose, 91 USPQ2d at 1942 (“Sullivan
testified under oath that he believed the statement was true at the time he signed
the renewal application. Unless the challenger can point to evidence to support an
inference of deceptive intent, it has failed to satisfy the clear and convincing evidence
standard required to establish a fraud claim.”). In the context of the record as a whole,
neither Opposer’s statements to the SEC or its customers regarding Opposer’s use of
its XOOM marks, Mr. Toepfer’s observations regarding the asserted unavailability of
Opposer’s bill and electronic payment services during the summer and fall of 2014,
nor the evidence in support thereof create or support an inference of Opposer’s intent
to deceive.
With regard to the bill payment and electronic payment services at issue, Opposer
has articulated a belief that it has used the mark in connection with such services,
based on its interpretation of what the services encompass and the manner in which
its consumers have used its services. “We do not need to resolve the issue of the
reasonableness [of this belief] as it is not part of the analysis.” Id. at 1942. In any
event, none of Opposer’s interpretations are so insupportable as to give rise to an
inference of deceptive intent. Even assuming that that these interpretations were
Opposition Nos. 91208416 and 91217374
- 26 -
incorrect, based on the totality of the record, we cannot infer that any
misrepresentations were made knowingly and with an intent to deceive. The evidence
does not “indicate sufficient culpability.” Id. at 1941; Maids to Order of Ohio Inc. v.
Maid-to-Order Inc., 78 USPQ2d 1899. 1907 (TTAB 2006) (not unreasonable for the
applicant’s principal to believe applicant’s activities constituted use of its mark in
interstate commerce). Cf. Nationstar Mortg., 112 USPQ2d at 1375 (applicant made
false statements regarding his activities, knowing what he was allowed to do and
prohibited from doing in the absence of the proper licenses).
While false statements regarding use of a mark are material, see Nationstar, 112
USPQ2d at 1365 (citing Hachette Filipacchi Presse v. Elle Belle LLC, 85 USPQ2d
1090, 1093 (TTAB 2007)), “[t]here is no fraud if a false misrepresentation is
occasioned by an honest misunderstanding or inadvertence without a willful intent
to deceive.” Bose, 91 USPQ2d at 1942; Knorr-Nahrmittel Akg. v. Havland Int’l, Inc.,
206 USPQ 827, 834 (TTAB 1980) (“The claim of fraud will not be sustained if it can
be proven that the statement, though false, was made with a reasonable and honest
belief that it was true.”). “[A]bsent the requisite intent to mislead the PTO, even a
material misrepresentation would not qualify as fraud under the Lanham Act . . . .”
Bose, 91 USPQ2d at 1940 (citing King Auto., Inc. v. Speedy Muffler King, Inc., 667
F.2d 1008, 212 USPQ 801, 803 n.4 (CCPA 1981)). Considering the testimony and
evidence in its entirety, we do not find that it supports an inference of deceptive intent
regarding Opposer’s use of its marks.
Because Applicant has failed to establish fraud with clear and convincing
evidence, we deny the counterclaim petition to cancel Opposer’s pleaded Reg. Nos.
Opposition Nos. 91208416 and 91217374
- 27 -
2909931, 4012377, 4226418, 4232742 and 4232741.
V. Priority
Applicant’s counterclaim to cancel five of Opposer’s pleaded registrations is denied
and the registrations survive. Opposer introduced into the record copies of its six
pleaded registrations,34 thus establishing Opposer’s priority as to the marks and the
goods and services covered by the registrations.35 See Contour Chair-Lounge Co. v.
Englander Co., 324 F.2d 186, 139 USPQ 285, 286 (CCPA 1963) (as long as a
registration relied on by an opposer remains uncancelled, it will be treated as valid
and entitled to all statutory presumptions; having dismissed petition to cancel
pleaded registrations, Board was obligated to treat opposer’s registrations as valid
and as though no such petition had been filed); see also King Candy, Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 82 USPQ 108 (CCPA 1974); Top Tobacco LP v. N.
Atl. Op. Co., 101 USPQ2d 1163, 1169 (TTAB 2011).
VI. 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.36 In re E.I. DuPont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be

34 86 TTABVUE 49-71.
35 As a result, we need not consider the parties’ arguments regarding Opposer’s assertion of
common law rights in its XOOM formative marks.
36 In its brief, Applicant asserts that it owns a “family of federal trademark registrations.”
[109 TTABVUE 14] However, Applicant has failed to establish, beyond mere assertion of
ownership of a number of trademark registrations, existence of a family of ZOOM-formative
marks. Cf., e.g., Nike, Inc. v. WNBA Enterprises, LLC, 85 USPQ2d 1187 (TTAB 2007).
Applicant’s assertions in this regard have otherwise been given no consideration.
Opposition Nos. 91208416 and 91217374
- 28 -
considered, hereinafter referred to as “DuPont factors”); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). “‘Not all of the
DuPont factors are relevant to every case, and only factors of significance to the
particular mark need be considered.”’ See Cai v. Diamond Hong, Inc., 901 F.3d 1367,
127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (quoting In re Mighty Leaf Tea, 601 F.3d
1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)); M2 Software, Inc. v. M2 Commc’ns,
Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (even within DuPont list,
only factors that are “relevant and of record” need be considered). Two key
considerations are the similarities between the marks and the similarities between
the goods and/or services. See In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d
1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d
1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); In re FabFitFun, Inc., 127
USPQ2d 1670, 1672 (TTAB 2018).
A. Our Focus on Opposer’s XOOM Mark
For purposes of the DuPont factors that are relevant to this opposition we will
consider Applicant’s involved mark and identified goods and services and Opposer’s
XOOM mark in its pleaded Reg. Nos. 2909931 and 4226418. If likelihood of confusion
is found as to this mark, and the identified goods and services, it is unnecessary to
consider Opposer’s other pleaded registrations. Conversely, if likelihood of confusion
is not found as to this mark and the identified goods and services, we would not find
likelihood of confusion as to the marks and goods or services in the remaining pleaded
Opposition Nos. 91208416 and 91217374
- 29 -
registrations. See, e.g., In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB
2010).
B. Relatedness of the Goods and Services
This DuPont factor concerns the “similarity or dissimilarity and nature of the
goods or services as described in an application or registration . . . .” Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1159
(Fed. Cir. 2014). The analysis of this factor is premised on the identifications of goods
and services in Applicant’s involved applications and Opposer’s pleaded registrations.
Id. at 1161-63; Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). Relatedness may be shown on the basis of those
identifications alone, without resort to extrinsic evidence. Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002). It is
further established that “likelihood of confusion can be found ‘if the respective
products [or services] are related in some manner and/or if the circumstances
surrounding their marketing are such that they could give rise to the mistaken belief
that they emanate from the same source.”’ Coach Servs., 101 USPQ2d at 1722
(quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).
Applicant’s services are identified as “Financial transaction services, namely,
providing secure commercial transactions through the use of biometric technology;
electronic payment services by which customers may apply money from various
sources through the use of biometric technology.” Opposer’s services include “Money
transfer services; electronic funds transfer services; bill payment remittance services;
electronic payment, namely, electronic processing and transmission of bill payment
Opposition Nos. 91208416 and 91217374
- 30 -
data.” As identified, the parties’ services overlap to the extent that both provide
“electronic payment” services, with Applicant’s services more specifically utilizing
biometric technology to process and transmit payments. In addition, Opposer
introduced into the record copies of sixteen use-based third-party registrations
showing the same marks used to identify services of the type recited in the involved
application Serial No. 85578671 and pleaded Reg. No. 2909931,37 of which the
following are illustrative: [35 TTABVUE 45-72; 86 TTABVUE 73-130]
Reg. No. 4570568 for “providing secure commercial transactions and payment
options using a mobile device at a point of sale; electronic money transfer;”

Reg. No. 3869379 for “financial transaction services, namely, providing secure
commercial transactions and payment options via mobile devices, electronic
networks, or at a point of sale; electronic funds transfers;” and

Reg. No. 3610959 for “financial transaction services, namely, providing secure
commercial transactions and payment options using a mobile device at a point
of sale; financial transaction processing and information management services,
namely, electronic payment processing; money transfer services and electronic
transfers of money.”

Applicant’s goods are identified as “Computer operating software for point of sale
system.” Opposer’s goods are identified as “Computer software for facilitating money
transfer services, electronic funds transfer services, bill payment remittance services,
electronic processing and transmission of payments and payment data.” As identified,

37 Because we find that Applicant’s “electronic payment services by which customers may
apply money from various sources through the use of biometric technology” at least overlaps,
and may be legally identical to, the “electronic payment, namely, electronic processing and
transmission of bill payment data” identified in Opposer’s pleaded registration, we need not
also determine the similarity or dissimilarity of the parties’ remaining services. Similarity as
to any of the goods or services identified in the application and registration will suffice as a
basis for finding the respective goods to be similar for purposes of the second DuPont factor.
See Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006). Nonetheless, we
consider the parties’ evidence on the remaining services for the sake of completeness.
Opposition Nos. 91208416 and 91217374
- 31 -
the parties’ goods are related inasmuch as both are software used to facilitate various
types of payments. In addition, Opposer introduced into the record copies of six use-
based third-party registrations showing the same marks used to identify goods of the
type recited in the involved application Serial No. 86192659 and pleaded Reg. No.
4226418, of which the following are illustrative: [35 TTABVUE 45-72; 86 TTABVUE
73-130]
Reg. No. 5138011 for “electronic equipment for point-of-sale systems,
namely…computer hardware and computer operating software; computer
software, namely, electronic financial platform that accommodates multiple
types of payment and debt transactions in an integrated mobile phone, PDA,
and web based environment;”

Reg. No. 4597599 for “hardware and software for making and processing
payment transactions with credit cards, debit cards, gift cards, cash, and other
payment forms; financial software and accessories, namely, card readers, point
of sale terminals, hardware and software, all for accepting, effecting, enabling,
facilitating, processing, operating and managing payment transactions on
mobile devices, cash registers, and other point of sale systems;” and

Reg. No. 5207874 for “downloadable software in the nature of a mobile
application for users to store and retrieve customer account information at
retail or wholesale locations or virtual points of sale; downloadable computer
software allowing for merchants to process customer payment transactions via
a mobile telecommunications device by means of a one-time electronic security
token as a substitute for the customer’s credit, payment or debit card
information.”

These registrations suggest, in general, that point of sale software and software
for money transfers and bill payment are related and that the services of providing
secure commercial transactions and money transfer and bill payment services are
also related. See In re Infinity Broad. Corp. of Dall., 60 USPQ2d 1214, 1217-18 (TTAB
2001) (“The registrations show that entities have registered their marks for both
television and radio broadcasting services. Although these registrations are not
Opposition Nos. 91208416 and 91217374
- 32 -
evidence that the marks shown therein are in use or that the public is familiar with
them, they nevertheless have probative value to the extent that they serve to suggest
that the [goods and] services listed therein … are of a kind which may emanate from
a single source”); see also, e.g., Mighty Leaf Tea, 94 USPQ2d at 1259; In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467, 1470 at n. 6 (TTAB 1988).38
Based upon the identification of the respective goods and services, both parties
provide overlapping electronic payment services, and both also provide software used
to facilitate various types of payments, including point-of-sale payments and
electronic processing and transmission of payments. Further, the evidence discussed
above suggests that third parties have registered marks identifying the parties’ goods
and remaining services. Accordingly, this DuPont factor weighs in favor of finding
that there is a likelihood of confusion.
C. Channels of Trade
There are no restrictions in either party’s identification of goods or services as to
their channels of trade. See Hewlett-Packard, 62 USPQ2d at 1005 (“[A]bsent
restrictions in the application and registration, goods and services are presumed to
travel in the same channels of trade to the same class of purchasers.”); Octocom, 16
USPQ2d at 1787 (“The authority is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the identification of goods set forth

38 In light of the cited decisional law, Applicant is incorrect in its assertion that these third-
party registrations have no probative value in the absence of “supporting evidence actually
showing use of these marks in commerce.” [109 TTABVUE 44]
Opposition Nos. 91208416 and 91217374
- 33 -
in the application regardless of what the record may reveal as to the particular nature
of an applicant’s goods, the particular channels of trade or the class of purchasers to
which the sales of goods are directed.”) (citations omitted). As a result, the parties’
goods and services are presumed to move in all trade channels customary therefor,
and to be available to all classes of consumers. We thus presume that the parties’
overlapping services will be offered in overlapping trade channels to overlapping
classes of consumers.
With regard to the remaining goods and services, the parties present arguments,
but relatively little evidence, regarding the channels of trade in which they may be
encountered and by whom. [107 TTABVUE; 109 TTABVUE 47-48] Applicant has
submitted testimony that the goods and services under its ZOOMPAY mark are
available only to customers of its Zoom Tan tanning salons. [100 TTABVUE 309]
However, Applicant’s identification of goods and services contain no such restrictions,
and we may not impose any grounded upon arguments or extrinsic evidence. Octocom,
16 USPQ2d at 1787. Further, based upon our findings above with regard to
Applicant’s fraud counterclaim, we find that Opposer’s channels of trade are not
restricted to exclude commercial transactions in a manner that would create a trade
channel distinction between the parties’ goods and services. [109 TTABVUE 47-48]
As identified, Applicant’s software may be used by anyone seeking a point-of-sale
transaction, and Opposer’s software may be used by anyone seeking to transfer funds,
pay bills and transmit payment data. Similarly, Applicant’s services may be used by
anyone seeking to make a secure commercial transaction and Opposer’s services may
be used by anyone seeking to transfer funds, pay bills or make electronic payments.
Opposition Nos. 91208416 and 91217374
- 34 -
Given the relatedness of the goods and the overlapping or otherwise related nature
of the services, we find, in the absence of any trade channel limitations, that these
goods and services may be offered in the same trade channels to the same classes of
purchasers, namely, ordinary consumers. This DuPont factor also weighs in favor of
finding that there is a likelihood of confusion.
D. Strength of Opposer’s XOOM Mark
We next evaluate the strength of Opposer’s XOOM mark and the scope of
protection to which it is entitled. The fifth DuPont factor is the fame of the prior mark,
and the sixth factor is the number and nature of similar marks in use for similar
goods or services. DuPont, 177 USPQ at 567. In determining strength of a mark, we
consider both inherent strength, based on the nature of the mark itself, and
commercial strength or recognition. Bell’s Brewery, Inc. v. Innovation Brewing, 125
USPQ2d 1340, 1345 (TTAB 2017); see also In re Chippendales USA Inc., 622 F.3d
1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both
by its conceptual strength (distinctiveness) and its marketplace strength (secondary
meaning).”); Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB
2006) (same). Commercial strength may be measured indirectly, by volume of sales
and advertising expenditures and factors such as length of use of the mark,
widespread critical assessments, notice by independent sources of the goods or
services identified by the mark, and general reputation of the goods or services.
Weider Publ’ns, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1354 (TTAB 2014).
Turning first to conceptual strength, we begin by noting that Opposer’s XOOM
marks were registered on the Principal Register without a showing of acquired
Opposition Nos. 91208416 and 91217374
- 35 -
distinctiveness. Further, there is no evidence that XOOM possesses any significance
in relation to the identified goods or services. The mark thus is inherently distinctive.
Tea Bd. of India, 80 USPQ2d at 1899.
With regard to commercial strength, Opposer argues that its XOOM marks have
been in use for over 15 years at the time of trial. Opposer has introduced testimony
and evidence establishing: since 2003, it has spent over $250 million advertising
goods and services under the XOOM marks, including $40 million in 2017; [100
TTABVUE 794-796] in 2017 XOOM products and services had 1.562 million unique
users in the United States; [Id.] and that in 2017 users of XOOM products and
services sent or paid more than $7.1 billion, an increase from $ 6 billion in 2016. [Id.]
Opposer has also introduced testimony and evidence of recognition from such
publications as the Wall Street Journal and Consumer Reports, along with customer
testimonials regarding the goods and services under the XOOM mark. [100
TTABVUE 796-798; 88 TTABVUE 17-42; 91-462]
We note that Opposer has not placed its sales and marketing figures and
advertising efforts in a context that would establish the strength of its mark relative
to other marks for the same goods. See Bose Corp. v. QSC Audio Prods., 63 USPQ2d
1303, 1309 (Fed. Cir. 2002). However and as noted above, Opposer does not rely upon
raw numbers alone, but has provided additional contextual evidence of the consumer
and media recognition of the goods and services under its XOOM mark. See Omaha
Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686,
1690 (Fed. Cir. 2018). These raw numbers of product sales and advertising
expenditures, consumer reviews and assertions of media exposure demonstrate that
Opposition Nos. 91208416 and 91217374
- 36 -
Opposer has enjoyed substantial sales of goods and services under its XOOM mark,
and further suggest that such sales and media exposure translate into widespread
recognition of the XOOM mark among consumers of its involved goods and services,
which appear to be the general public. Joseph Phelps Vineyards, LLC v. Fairmont
Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017).
Applicant argues that Opposer’s XOOM mark is weak as a result of extensive
third-party use and registration of similar terms. In support of this position,
applicant has submitted approximately thirty third-party registrations for various
forms of the mark XOOM. [98 TTABVUE 103-450] The most probative of these
registrations are reproduced below. (All marks appear in typed or standard
characters unless otherwise noted.)
No. 1861688 QUICKZOOM for computer software for use in the field of
personal and business finance and accounting and user manuals for use
therewith sold as a unit;

No. 3922346 ZOOM for mobile computer hardware and software development
platform comprised of a software application framework and software
development tools;

No. 2675838 ZOOM for computer hardware, peripherals and software for
transmitting and receiving data over a wireless network, creating local area
networks and networks of electronic devices, and connecting with peripherals;

Nos. 3489836 and 3941742 MAZOOMA and , both for
financial information provided by electronic means; electronic funds transfer;
electronic funds transfer by telecommunication; (same owner)
No. 5344426 for providing an internet website portal
featuring technology for conducting business transactions that allows users to
allocate tasks, track time and expenses, invoice, manage human resources,
record financial transactions, and establish terms of dealing between business
entities;

Opposition Nos. 91208416 and 91217374
- 37 -
No. 5071226 ZOOM CREDIT for financing services for retail merchants,
namely, submitting customer applications for financing purchases of consumer
goods and consumer services to multiple financial institutions, expressly
excluding software and services relating to money transfers, bill payment
remittances, electronic processing and transmission of payments and
payments data, and electronic funds transfer services; financial services,
namely, arranging in store sales finance services for merchants; and
No. 5071227 for financing services for retail merchants, namely,
submitting customer applications for financing purchases of consumer goods
and consumer services to multiple financial institutions, expressly excluding
software and services relating to money transfers, bill payment remittances,
electronic processing and transmission of payments and payments data, and
electronic funds transfer services; (same owner) and

No. 5071256 ZOOM LOANS for “electronic loan origination services.”

We note that the “existence of [third party] registrations is not evidence of what
happens in the market place or that customers are familiar with them.” AMF Inc. v.
Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973). The two
third-party registrations for marks closest to Opposer’s XOOM mark, i.e., ZOOM
alone, recite computer software applications used for purposes unrelated to Opposer’s
goods and services. The mark QUICK ZOOM similarly identifies computer software
that is only tangentially related to Opposer’s goods and services under its XOOM
mark. Similarly, the MAZOOMA marks are less similar to Opposer’s marks than
Applicant’s marks. The ZOOM CREDIT marks identify services that specifically
exclude Opposer’s services. That leaves the marks and ZOOM
LOANS that identify services related to Opposer’s services.
In addition, even if the goods or services in the remaining registrations were closer
to the goods and services in Opposer’s pleaded registrations, these third-party
Opposition Nos. 91208416 and 91217374
- 38 -
registrations may be used to demonstrate that a mark or a portion of a mark is
suggestive or descriptive, but they cannot be used to justify the registration of another
confusingly similar mark. Plus Prods. v. Star-Kist Foods, Inc., 220 USPQ 541, 544
(TTAB 1983).
The vast majority of the registrations that Applicant has made of record recite
goods or services that are unrelated to those at issue and, therefore, they do not
support Applicant’s argument that Opposer’s XOOM mark is entitled to a narrow
scope of protection. See Nat’l Cable Television Ass’n, Inc. v. Am. Cinema Editors, Inc.,
937 F.2d 1572, 1579-80 (Fed. Cir. 1991) (third party marks for unrelated goods and
services are not probative to determination of the strength of a mark); SBS Prods.
Inc. v. Sterling Plastic & Rubber Prods. Inc., 8 USPQ2d 1147, 1149 n.6 (TTAB 1988)
(“[E]ven if evidence of such third-party use were submitted, it would be of no aid to
respondent herein where the third-party usage was for goods unrelated to either
petitioner’s skin care products or respondent's stuffing box sealant”); Anderson,
Clayton & Co. v. Christie Food Prods. Inc., 4 USPQ2d 1555, 1557 n.7 (TTAB 1987)
(“The other third-party registrations relating to marks in unrelated fields are of no
probative value”).
These registrations39 include:

39 Applicant has included several pending applications for marks that have not registered.
These applications are irrelevant. In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1049
n.4 (TTAB 2002) (“While applicant also submitted a copy of a third-party application …, such
has no probative value other than as evidence that the application was filed”); Olin Corp. v.
Hydrotreat, Inc., 210 USPQ 62, 65 n.5 (TTAB 1981) (“Introduction of the record of a pending
application is competent to prove only the filing thereof”).
Similarly, a cancelled registration “is evidence only of the fact that it previously existed.”
UMG Recordings Inc. v. Mattel Inc., 100 USPQ2d 1868, 1872 n.2 (TTAB 2011). Any benefits
Opposition Nos. 91208416 and 91217374
- 39 -
No. 4524196 DATAXOOM (connecting wireless service providers with wireless
data consumers);

No. 4676780 FOCUS ZOOM (cameras);

No. 3969055 GAZOOM (non-metallic building materials);

No. 4974740 SOFTZOOM (computer software consulting; programming of
computer software for others);

No. 4680102 TOUCH ZOOM (mobile phones and computer application
software for mobile phones);

No. 4736857 TRACKING ZOOM (mobile phones and computer application
software for mobile phones);

No. 4860258 VELOCITY ZOOM (business data analysis; application service
provider and related computer services);

No. 5196123 XOME ZOOM (downloadable mobile application feature for
locating real estate information, specifically excluding software for money
transfers, bill payment, mortgage payment and electronic transmission of
payments);

No. 4754651 XZOOM PRO (various cell phone accessories);

No. 4325920 BLOOM ZOOM and book design (software for use in literacy
games and entertainment in the nature of stories, games, puzzles and reading
activities);

Nos. 3149281 and 3139651 ZOOM INFORMATION and ZOOM INFO
(software for accessing, extracting and organizing information from various

conferred by the registration, including the evidentiary presumptions afforded by Section 7(b)
of the Trademark Act, were lost when the registration expired; see also, e.g., In re Inn at St.
John’s, LLC, 126 USPQ2d 1742, 1745 (TTAB 2018) (“The existence of a cancelled
registration—particularly one cancelled for failure to provide a declaration of continued use—
does not tend to show that the cited mark is weak due to third-party use.”). Finally, Applicant
introduced a listing of live and dead registrations and pending applications from the
Trademark Electronic Search System (TESS). [41 TTABVUE 151-167] In addition to the
deficiencies discussed above, mere listings of or references to registrations are not sufficient
to make the registrations of record. In re Compania de Licores Internacionales S.A., 102
USPQ2d 1841, 1843 (TTAB 2012); In re Hoefflin, 97 USPQ2d 1174, 1177 (TTAB 2010). As a
result, the list has no probative value.

Opposition Nos. 91208416 and 91217374
- 40 -
sources regarding people, companies, products, markets and industries to
develop databases and enable search thereof);

No. 5347151 ZOOM LISTING (database software to facilitate residential,
commercial and investment real estate purchases);

No. 5283345 ZOOM MEDIA (various advertising and marketing services);

No. 5330360 ZOOM NOTIFY (computer network maintenance, integration,
managing and security services);

No. 4736856 ZOOM TO TRACK (mobile phones and software therefor);

No. 4554891 ZOOMDATA (business information management, consulting,
business and market research analysis);

No. 4792136 AREA ZOOM (mobile phones, software therefor, various
cameras);

No. 4833849 ZOOMIN (electronic message management software);

No. 2672446 ZOOMTOWN (electronic mail and messaging services);

No. 4243967 ZOOMUMBA (computers, game software);

No. 4522439 ZOOMWARE (medical software);

No. 2675171 ZOOM-ZOOM (automobile dealerships, automobile financing and
warranty services);

No. 2037278 ZZOOM and design (financial services, namely, bonding services);
and

No. 4441873 ZOOMLOOKER (stock and commodity brokerage, among
numerous services in several classes unrelated to the goods and services at
issue).

Certainly, even if there were evidence that third parties were using the term
XOOM on such items and services as computer games, automobile dealerships and
cell phone accessories, it would not affect the scope of protection that we would give
to Opposer’s XOOM mark for the identified goods and services. Considering the
Opposition Nos. 91208416 and 91217374
- 41 -
record as a whole, we find that Opposer’s XOOM mark is inherently distinctive and
enjoys a degree of commercial strength. Further, the record does not establish that
the XOOM mark is entitled to only a narrowed scope of protection due to third-party
use or registration of confusingly similar marks for similar or related goods or
services. We therefore accord Opposer’s XOOM mark the stronger scope of protection
to which inherently distinctive marks with a certain degree of commercial strength
are entitled. See Joseph Phelps Vineyards, 122 USPQ2d at 1734 (stating that
likelihood of confusion fame varies along a spectrum from very strong to very weak).
E. Similarity of the Marks
The first DuPont factor is the similarity or dissimilarity of the parties’ marks. In
a likelihood of confusion analysis, we compare the marks in their entireties for
similarities and dissimilarities in appearance, sound, connotation and commercial
impression. Stone Lion, 110 USPQ2d at 1160. “Similarity in any one of these elements
may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d
1810, 1812 (TTAB 2014); accord Krim-Ko Corp. v. Coca-Cola Co., 390 F.2d 728, 156
USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling
or sound alone is likely to cause confusion.”) (citation omitted). “The proper test is not
a side-by-side comparison of the marks, but instead ‘whether the marks are
sufficiently similar in terms of their commercial impression’ such that persons who
encounter the marks would be likely to assume a connection between the parties.”
Cai, 127 USPQ2d at 1801 (quoting Coach Servs., 101 USPQ2d at 1721).
Applicant’s mark ZOOMPAY in standard characters, consists of the recognized
terms “ZOOM” and “PAY.” Applicant acknowledges that “PAY” “describes the pay
Opposition Nos. 91208416 and 91217374
- 42 -
method” for Applicant’s services. [100 TTABVUE 335] The marks are similar in
appearance to the extent that the first syllable of Applicant’s ZOOMPAY mark and
Opposer’s XOOM mark both are “-OOM” formatives following a single letter. They
differ in their first letter and the addition of “PAY” to Applicant’s mark.
Inasmuch as Applicant’s mark consists of two recognized terms, ZOOMPAY would
likely be pronounced by consumers as “zoom pay.” Neither party disputes this
pronunciation. In addition, Opposer has introduced copies of printed advertisements
in which it instructs consumers on the pronunciation of its mark: “Xoom (pronounced
“zoom”) enables its customers to send money internationally online, anytime.” [89
TTABVUE 133] Further, in written consumer reviews, Opposer’s customers refer to
Opposer’s goods and services under its XOOM mark as “zoom.” [88 TTABVUE 385-
462].
Applicant points to an acknowledgment by Opposer’s Manager Julian King that
many of Opposer’s consumers do not speak English as a first language, and that
Spanish speakers using Opposer’s goods and services under its XOOM mark may not
pronounce XOOM as “zoom.” [100 TTABVUE 690-713] Mr. King further testified that
Opposer’s customers speak more than 20 different languages and that XOOM may be
pronounced differently by different consumers. [Id.] Applicant further introduced
Spanish-language dictionaries indicating that the letter “Z” is pronounced in Spanish
as the letters “H,” “S,” “SH,” or “KS.” [98 TTABVUE 951-981]
“[I]t is well-settled that there is no single ‘correct’ pronunciation of a trademark
that is not a common English word because it is impossible to predict how the public
will pronounce a particular mark.” Edwards Lifesciences Corp., 94 U.S.P.Q.2d 1399,
Opposition Nos. 91208416 and 91217374
- 43 -
1401-1402 (TTAB 2010). However, as the Federal Circuit held in Stoncor Grp., Inc. v.
Specialty Coatings, Inc., 759 F.3d 1327, 1331-32, 111 USPQ2d 1649, 1651 (Fed. Cir.
2014):
The Board erred by failing to credit StonCor’s evidence that consumers
would pronounce “STON” as “stone.” There is no correct pronunciation
of a trademark that is not a recognized word. See In re Belgrade Shoe
Co., 56 C.C.P.A. 1298, 411 F.2d 1352, 1353 (1969). “STON” is not a word
in English. Neither party argues that “STON” is a word in any other
language. Where a trademark is not a recognized word and the weight
of the evidence suggests that potential consumers would pronounce the
mark in a particular way, it is error for the Board to ignore this evidence
entirely and supply its own pronunciation.

In this case, Opposer has introduced evidence that it promotes the pronunciation
of XOOM as “zoom”. Applicant, while arguing that XOOM would not normally be
pronounced “zoom” by a Spanish speaker, has not introduced any evidence of different
pronunciations aside from theoretical ones derived from dictionaries. Opposer, on the
other hand, has introduced evidence that its consumers refer to its products and
services as “zoom” in writing and when spoken. We thus find, on this record, that
ZOOMPAY and XOOM would be pronounced highly similarly as to the first syllable
of Applicant’s mark.
Opposer’s mark XOOM is a coined term having no known meaning. Applicant’s
mark suggests a quick or speedy method of payment. As a result, the marks differ in
connotation except to the extent that Opposer’s mark is perceived as indicating the
term “zoom,” in which case it also connotes speed.
We acknowledge that the presence of PAY as the trailing term in Applicant’s mark
distinguishes it somewhat visually and aurally from Opposer’s mark. This point of
distinction, however, does not significantly diminish the similarities in appearance,
Opposition Nos. 91208416 and 91217374
- 44 -
sound and overall commercial impression engendered by these two marks. As stated,
similarity in any one of the elements of sound, appearance, meaning, or commercial
impression is sufficient to support a determination of likelihood of confusion. Krim-
Ko, 156 USPQ at 526 (“It is sufficient if the similarity in either form, spelling or sound
alone is likely to cause confusion”); In re White Swan Ltd., 8 USPQ2d 1534, 1535
(TTAB 1988) (“In appropriate cases, a finding of similarity as to any one factor (sight,
sound or meaning) alone ‘may be sufficient to support a holding that the marks are
confusingly similar’”) (citations omitted)). Therefore, even if the marks had different
meanings, it would not necessarily mean there was no likelihood of confusion.
We find that the marks are more similar than dissimilar, and that the first DuPont
factor weighs in favor of a finding that confusion is likely.
F. Actual Confusion
Applicant argues that after at least six years of concurrent use there have been no
reported instances of actual confusion. [97 TTABVUE 15-16; 109 TTABVUE 48]
Opposer argues that due to very limited evidence of use by Applicant of the
ZOOMPAY marks since 2012 there has been very little opportunity for actual
confusion to have occurred. [87 TTABVUE 100 TTABVUE 515; 107 TTABVUE 45-
46]
The absence of any reported instances of confusion is meaningful only if the record
indicates appreciable and continuous use by Opposer of its XOOM mark for a
significant period of time in the same markets as those served by Applicant under its
ZOOMPAY mark. Citigroup Inc. v. Capital City Bank Grp., Inc., 94 USPQ2d 1645,
1660 (TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Gillette
Opposition Nos. 91208416 and 91217374
- 45 -
Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). In other words, for
the absence of actual confusion to be probative, there must have been a reasonable
opportunity for confusion to occur. Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d
1283, 1287 (TTAB 2007) (the probative value of the absence of actual confusion
depends upon there being a significant opportunity for actual confusion to have
occurred); Red Carpet Corp. v. Johnstown Am. Enters. Inc., 7 USPQ2d 1404, 1406-
1407 (TTAB 1988) (same); Central Soya Co., Inc. v. N. Am. Plant Breeders, 212 USPQ
37, 48 (TTAB 1981) (“the absence of actual confusion over a reasonable period of time
might well suggest that the likelihood of confusion is only a remote possibility with
little probability of occurring”).
Given the very limited evidence regarding the extent of Applicant’s use of its
ZOOMPAY mark, we find this DuPont factor to be neutral.
G. Applicant’s Intent in Adopting Its Mark
Opposer asserts that Applicant had actual notice of Opposer prior to filing the
involved application Serial No. 86192659 inasmuch as the parties were engaged in
settlement negotiations at the time with regard to Applicant’s earlier-filed
application Serial No. 85578671, and that Applicant proceeded with these
applications after authorizing a proposed settlement agreement. [107 TTABVUE 46]
Applicant counters that it had no knowledge of Opposer when filing the first of its
involved applications, had no intention of copying Opposer’s marks or suggesting any
affiliation with Opposer, and filed its second involved application when negotiations
broke down. [109 TTABVUE 49-50] The record in this case, viewed as a whole, falls
Opposition Nos. 91208416 and 91217374
- 46 -
short of establishing that Applicant intended to create confusion with Opposer and
its marks.
We will not infer bad faith under circumstances in which the party asserting it
has submitted insufficient evidence thereof. Cf. L.C. Licensing Inc. v. Berman, 86
USPQ2d 183, 1891 (TTAB 2008) (bad faith adoption of a mark is strong evidence that
confusion is likely because an inference may be drawn from the imitator’s expectation
of confusion); Broadway Catering Corp. v. Carla Inc., 215 USPQ 462, 465 (TTAB
1982) (“One’s wrongful intent to trade on the trademark or trade name of another is
strong evidence that confusion is likely. Such inference is drawn from the imitator’s
own expectation of confusion as to the source of his product”).
This DuPont factor is neutral.
H. Conclusion on Likelihood of Confusion
We have carefully considered all arguments and evidence of record. Based
thereupon, we find that Applicant’s mark is similar to Opposer’s strong and
distinctive mark; that Applicant’s goods are related to those of Opposer; and that
Applicant’s services are overlapping and otherwise related to those of Opposer and
may be encountered in the same channels of trade by common classes of consumers.
The rest of the DuPont factors are neutral. Accordingly, we find that Opposer has
carried its burden to establish by a preponderance of the evidence priority and
likelihood of confusion, and that Applicant’s mark is likely to cause consumer
confusion when used in association with the identified goods and services.
Opposition Nos. 91208416 and 91217374
- 47 -
Decision: The opposition to registration of application Serial Nos. 85578671 and
85192659 is sustained on the ground of priority and likelihood of confusion.40
Applicant’s counterclaim for cancellation of Opposer’s pleaded registrations on the
ground of fraud is denied.

40 We do not reach the other ground for opposition, namely, that application Serial No.
86192659 is void ab initio because, as of the application filing date, Applicant lacked the
requisite bona fide intent to use the ZOOMPAY mark in commerce in connection with the
goods identified therein. “Like the federal courts, the Board has generally used its discretion
to decide only those claims necessary to enter judgment and dispose of the case. . . [T]he
Board’s determination of registrability does not require, in every instance, decision on every
pleaded claim.” Multisorb Tech., Inc. v. Pactiv Corp., 109 USPQ2d 1170, 1171 (TTAB 2013).