Planet E-Shop, Inc.

Trademark Trial and Appeal Board

Sep 30, 2003

No. 76113552 (T.T.A.B. Sep. 30, 2003)

Mailed: September 30, 2003
Paper No. 15
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
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In re Planet E-Shop, Inc.
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Serial No. 76113552
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Dennis T. Griggs of Griggs, Bergen & Johnston for Planet E-
Shop, Inc.
Angela M. Micheli, Trademark Examining Attorney, Law Office
108 (David E. Shallant, Managing Attorney).
____________
Before Walters, Bottorff and Drost, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Planet E-Shop, Inc. has filed an application to
register the mark PLANET E SHOP on the Principal Register
for “promoting and marketing the goods and services of
others through on-line ordering and cataloging those goods
and services, namely, home shopping, business-to-consumer
and business-to-business marketplace services featuring a
variety of goods and services of others offered via
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 76113552
2
broadcast television, cable television, satellite
television, interactive electronic communications networks
and a worldwide global computer network.”1
In an amendment submitted before its appeal brief, but
after the examining attorney denied applicant’s request for
reconsideration, applicant disclaimed “E SHOP” apart from
its mark as a whole. The examining attorney has not
expressly accepted this disclaimer, but because it complies
with the requirement made by the examining attorney and she
did not object to it in her brief, we consider the
disclaimer to be part of the record.2
The examining attorney has issued a final refusal to
register under Section 2(d) of the Trademark Act, 15 U.S.C.
1052(d), on the ground that applicant’s mark so resembles
the mark ESHOP, previously registered for “interactive
electronic retailing and on-line ordering services, namely,
shop-at-home services and virtual retail store services
accessed through computers, personal digital assistants, and
interactive televisions, featuring products and services for
consumer and business use,”3 that, if used on or in

1 Serial No. 76/113,552, in International Class 35, filed August 21,
2000, based on an allegation of a bona fide intention to use the mark in
commerce.
2 We note, however, that disclaimer of E SHOP does not obviate the
refusal on the ground of likelihood of confusion.
3 Registration No. 1,995,850 issued August 20, 1996, to EShop, Inc., in
International Class 42. The registration has been assigned to Microsoft
Corporation. Sections 8 and 15 affidavits accepted and acknowledged,
respectively.
Serial No. 76113552
3
connection with applicant’s services, it would be likely to
cause confusion or mistake or to deceive.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E. I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003). In considering the evidence
of record on these factors, we keep in mind that “[t]he
fundamental inquiry mandated by Section 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976); and In re Azteca
Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999) and
the cases cited therein.
We consider, first, the services involved in this case.
We note that the question of likelihood of confusion must be
determined based on an analysis of the goods or services
recited in applicant’s application vis-à-vis the goods or
services recited in the registration, rather than what the
Serial No. 76113552
4
evidence shows the goods or services actually are. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987). See also, Octocom Systems,
Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North
American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
Further, it is a general rule that goods or services need
not be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is enough
that goods or services are related in some manner or that
some circumstances surrounding their marketing are such that
they would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks
used therewith, to a mistaken belief that they originate
from or are in some way associated with the same producer or
that there is an association between the producers of each
parties’ goods or services. In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991), and cases cited therein.
The examining attorney contends that that the
respective services are essentially identical. She notes
that both recitations of services are broadly written and,
therefore, that the scope of the goods and services
available through the respective services is identical.
Applicant acknowledges that the recited services “appear to
be closely related.” Applicant submitted an excerpt from
Serial No. 76113552
5
its Internet web site and a list of the goods and services
it offers in connection with its identified services.
Applicant noted that its recited services are classified in
a different class from the services in the cited
registration; and applicant argued that “it is not possible
to make a meaningful comparison of the respective services”
because the recitation of services in the registration
provides “no specifics or details.” [Brief p. 8.]
Applicant argued, further, that customers of either
applicant or registrant must be sophisticated because they
must be computer literate and have access to a computer in
order to use either applicant’s or registrant’s services,
and that such consumers will exercise care in on-line
transactions.
We agree with the examining attorney that the services
as recited in the application and registration are
essentially the same. Both parties are offering goods and
services for sale electronically through various media;
neither party has restricted the nature of the goods and
services it offers; and both parties’ services offer goods
and services to both businesses and consumers. Further,
both parties’ services are defined broadly so as to
reasonably include as prospective purchasers all general
consumers, whether for business or personal use. We are not
persuaded by applicant that these are “sophisticated”
Serial No. 76113552
6
consumers; or that access to the Internet is limited, as it
is common knowledge that computers are now available to all
members of the public through public libraries. Thus, we
conclude that applicant’s recited services are the same as,
or at least substantially similar to, those services in the
cited registration.
Turning to consider the marks, we note that “[w]hen
marks would appear on virtually 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). The question before us is whether
applicant’s mark and the registered mark, when viewed in
their entireties, are similar in terms of appearance, sound,
connotation and commercial impression. The test is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impressions that confusion as to the source of the goods or
services offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Serial No. 76113552
7
The examining attorney contends that the marks are
substantially similar in sound, appearance, connotation and
commercial impression because they share the common elements
E and SHOP in that order, as ESHOP or E SHOP; and that the
addition of the term PLANET to applicant’s mark does not
distinguish the marks.
Applicant contends that “the respective marks are not
identical in appearance or sound” [Brief, p. 4] and “have
different connotations” [Brief p. 6]; that “the registered
mark is the merged conjunction ESHOP, the simple combination
of two generic terms” [Brief p. 5] and these terms “are in
widespread use as generic descriptors of electronic commerce
business operations”4 [Brief p. 6]; that the examining
attorney has improperly dissected applicant’s mark; and that
the term PLANET easily distinguishes its mark from the
registered mark. Acknowledging that foreign registrations
have no precedential value in this proceeding, applicant
submitted copies of its foreign registrations to show “the
worldwide, universal recognition and acceptance of the
meaning of the letter “E” and “SHOP” in the context of
electronic commerce or e-commerce….” [Brief, p. 7.]
Additionally, applicant submitted copies of several third-
party registrations that include the term SHOP and several

4 Applicant’s allegation that the elements “E” and “SHOP” are generic
constitutes an attack on the validity of the cited registration that is
inappropriate in this ex parte appeal. Rather, such a claim should be
made in the context of a petition to cancel the cited registration.
Serial No. 76113552
8
excerpts from third-party Internet web pages that use the
term ESHOP or E SHOP.
Applicant asks us to give little weight to the fact
that both marks involved herein include the terms “E” and
“SHOP,” and to focus on the additional word PLANET in its
mark to reach a conclusion that the marks are not likely to
cause confusion. As previously noted, applicant’s assertion
that registrant’s mark ESHOP is generic is not appropriate
in this ex parte appeal and the Board has not considered
this argument.
“E” is a prefix that is generally recognized as meaning
“electronic” in connection with computers and the Internet.
In re Styleclick.com Inc., 57 USPQ2d 1445 (TTAB 2000). We
take judicial notice of the definition of “shop” as “n. 4.a.
a commercial or industrial establishment, b. a business
establishment” and “v. 1. to visit stores for the purpose of
inspecting and buying merchandise.”5 These definitions and
applicant’s evidence of several apparent third-party uses of
the term E SHOP or ESHOP in connection with retail internet
sites, lead us to conclude that the registered mark, ESHOP,
is suggestive in connection with the identified services.
This suggestiveness diminishes the scope of protection
accorded to the cited registration. See, In re Dayco
Products-Eaglemotive Inc., 9 USPQ2d 1910 (TTAB 1988).

5 The American Heritage Dictionary, 2nd College Edition, 1985.
Serial No. 76113552
9
Nonetheless, weak marks are entitled to protection and, in
this case, applicant has usurped registrant’s mark in its
entirety6 and simply prefaced it with the word PLANET, which
may be considered suggestive of the scope of applicant’s
services.
Therefore, we conclude that the commercial impressions
of applicant’s mark, PLANET E SHOP, and registrant’s mark,
ESHOP, are sufficiently similar that their contemporaneous
use on the same services involved in this case is likely to
cause confusion as to the source or sponsorship of such
services.
In view of the weakness of the registered mark, we
admit that our conclusion that confusion is likely is not
without doubt. However, we are obligated to resolve such
doubt in favor of the registrant. See J & J Snack Foods
Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889
(Fed. Cir. 1991); and In re Hyper Shoppes (Ohio), Inc., 837
F.2d 463, 6 USPQ2d 1025 (Fed Cir. 1988).
Decision: The refusal under Section 2(d) of the Act is
affirmed.

6 While the registered mark merges the terms E and SHOP into ESHOP and
applicant separates the two terms, we find this difference negligible
and find the commercial impression of ESHOP and E SHOP to be the same.