QPay, Inc.

Trademark Trial and Appeal Board

Nov 4, 2008

No. 78795221 (T.T.A.B. Nov. 4, 2008)

Hearing Mailed:
October 14, 2008 November 4, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re QPay, Inc.
________

Serial No. 78795221
_______

Michael I. Santucci of Santucci, Priore & Long LLP for QPay,
Inc.

Dominic J. Ferraiuolo, Trademark Examining Attorney, Law Office
102 (Karen M. Strzyz, Managing Attorney).
_______

Before Bucher, Bergsman and Ritchie de Larena, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

QPay, Inc. (“applicant”) filed a use-based application on
the Principal Register for the mark *123, in standard character
format, for “international telephone calling card services,” in
Class 36.
The Trademark Examining Attorney refused to register
applicant’s mark under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. §1052(d), on the ground that applicant’s mark is
likely to cause confusion with the following marks, owned by two
different entities:

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78795221
2
A. Americatel Corporation Registrations.
All of the Americatel Corporation registrations include,
inter alia, telecommunication services, namely, long distance
and international voice transmission, in Class 38.
1. Registration No. 2766392, for the mark shown below. 1
This registration also includes telecommunications services
provided via telephone calling cards, in Class 38.

2. Registration No. 2919773 for the mark 1-800-3030-123
AMERICATELCOLLECT, in typed drawing form. 2 This registration
also includes telecommunications services provided via telephone
calling cards, in Class 38.
3. Registration No. 2657805 for the mark 1010-123,
NUESTRO NUMERO DE LARGA DISTANCIA, in typed drawing form.3

1 Issued September 23, 2003. Americatel Corporation claimed that
“1010-123” has acquired distinctiveness, and it disclaimed the
exclusive right to use the word “international.”

2 Issued January 19, 2005, Americatel Corporation claimed that “123”
has acquired distinctiveness, and it disclaimed the exclusive right to
use “1-800-3030.”

3 Issued December 10, 2002; Sections 8 and 15 affidavits accepted and
acknowledged. Americatel Corporation claimed that “1010-123” has
acquired distinctiveness, and that the English translation of “Nuestro
Numero De Larga Distancia” is “Our Long Distance Number.”

Serial No. 78795221
3
4. Registration No. 2795092 for the mark DIAS 123 DEL
1010-123 DE AMERICATEL, in typed drawing form.4
5. Registration No. 2594747 for the mark shown below.5

B. Empressa Nacional de Telecomunicaciones S.A. Registrations.

All of the Empressa Nacional registrations are for inter
alia, telecommunication services, namely long distance and
international voice transmission, in Class 38.
1. Registration No. 2709768 for the mark 123.COM, in
typed drawing form.6 This registration also includes the sales
of prepaid long distance telephone cards, in Class 35.
2. Registration No. 2789138 for the mark MUNDO123, in
typed drawing form.7 This registration also includes the sales
of prepaid long distance telephone cards, in Class 35.

4 Issued December 16, 2003. Americatel Corporation claimed that “1010-
123” has acquired distinctiveness, and that the English translation of
the mark is “Days 123 of 1010-123 of Americatel.”

5 Issued July 16, 2002; Sections 8 and 15 affidavits accepted and
acknowledged. Americatel Corporation claimed that “1010-123” has
acquired distinctiveness.

6 Issued April 22, 2003.

7 Issued December 2, 2003.

Serial No. 78795221
4
3. Registration No. 2641810 for the mark 123.COM
WIRELESS, in typed drawing form.8
4. Registration No. 2641811 for the mark 123.COM
INALAMBRICO, in typed drawing form.9
5. Registration No. 2710483 for the mark 123.COM CELULAR,
in typed drawing form.10
6. Registration No. 2641812 for the mark 123.COM WAP, in
typed drawing form.11
7. Registration No. 2651210 for the mark 123.COM PCS, in
typed drawing form.12
8. Registration No. 2969694 for the mark 123.COM SIN
LIMITES, in typed drawing form.13

8 Issued October 29, 2002. To date, there is no record that registrant
has filed a Section 8 affidavit of continued use. The registrant
disclaimed the exclusive right to use the word “wireless.”

9 Issued October 29, 2002. To date, there is no record that registrant
has filed a Section 8 affidavit of continued use. The English
translation of the word “inalambrico” is “wireless,” and therefore the
registrant disclaimed the exclusive right to use “inalambrico.”

10 Issued April 29, 2003. The registrant disclaimed the exclusive
right to use the word “cellular.”

11 Issued October 29, 2002. To date, there is no record that
registrant has filed a Section 8 affidavit of continued use. The
registrant disclaimed the exclusive right to use the term “WAP.”

12 Issued November 19, 2002. To date, there is no record that
registrant has filed a Section 8 affidavit of continued use. The
registrant disclaimed the exclusive right to use the term “PCS.”

13 Issued July 19, 2005.
Serial No. 78795221
5
Our determination of likelihood of confusion 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 issue
of likelihood of confusion. In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between
the marks and the similarities between the services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated
by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in the
marks”).
A. The Americaltel Registrations.
We will focus our likelihood of confusion analysis of the
Americatel Corporation registrations on Registration No.
2766392, for the mark shown below, for inter alia,
telecommunication services, namely, long distance and
international voice transmission, and telecommunications
Serial No. 78795221
6
services provided via telephone calling cards, because it is
most similar to applicant’s mark.14

1. The similarity or dissimilarity and nature of the
services as described in the application and
registrations at issue.

Applicant is seeking to register its mark for
“international telephone calling card services,” and, as
indicated above, the cited mark has been registered for
telecommunication services, namely, long distance and
international voice transmission and telecommunications services
provided via telephone calling cards. “International telephone
calling card services” and “telecommunications services provided
via telephone calling cards” are essentially identical.
2. The similarity or dissimilarity of likely-to-continue
trade channels and classes of consumers.

Because the services identified in the application and the
cited registration are in part identical, we must presume that
the channels of trade and classes of purchasers are the same.
See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003)
(“Given the in-part identical and in-part related nature of the

14 By focusing our analysis on this registration, we are not suggesting
an absence of likelihood of confusion with the other Americatel
registrations.
Serial No. 78795221
7
parties’ goods, and the lack of any restrictions in the
identifications thereof as to trade channels and purchasers,
these clothing items could be offered and sold to the same
classes of purchasers through the same channels of trade”); In
re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994)
(“Because the goods are legally identical, they must be presumed
to travel in the same channels of trade, and be sold to the same
class of purchasers”).
3. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont likelihood of confusion factor
focusing on the similarity or dissimilarity of the marks in
their entireties as to appearance, sound, connotation and
commercial impression. In re E. I. du Pont De Nemours & Co.,
177 USPQ at 567. In a particular case, any one of these means
of comparison may be critical in finding the marks to be
similar. In re White Swan Ltd., 9 USPQ2d 1534, 1535 (TTAB
1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1988).
In comparing the marks, we are mindful that where, as here, the
services are in part identical, the degree of similarity
necessary to find likelihood of confusion need not be as great
as where there is a recognizable disparity between the goods.
Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Real Estate
Serial No. 78795221
8
One, Inc. v. Real Estate 100 Enterprises Corporation, 212 USPQ
957, 959 (TTAB 1981); ECI Division of E-Systems, Inc. v.
Environmental Communications Incorporated, 207 USPQ 443, 449
(TTAB 1980).
In addition, in comparing the marks, 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
impression so that confusion as to the source of the goods
offered under the respective marks is likely to result. San
Fernando Electric Mfg. Co. v. JFD Electronics Components Corp.,
565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc.
v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d
unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The proper
focus is on the recollection of the average customer, who
retains a general rather than a specific impression of the
marks. Winnebago Industries, Inc. v. Oliver & Winston, Inc.,
207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975). In this case, the relevant
public comprises consumers who use long distance calling cards.
Applicant contends that the marks are not similar because
when compared side-by-side the only common feature are the
numbers “123.” Specifically, the first feature of applicant’s
mark is the asterisk, or “distinctive ‘star’ symbol,” and the
Serial No. 78795221
9
Americatel marks include other matter.15 However, we are not
persuaded by applicant’s arguments because we find that the
number sequence “123” is the dominant part of both registrant’s
mark and applicant’s mark.
In analyzing the marks in their entireties, a particular
feature or portion of the mark may be given greater weight if it
makes an impression upon purchasers that would be remembered and
relied upon to identify the services. In re Appetito Provisions
Co., 3 USPQ2d 1553, 1554 (TTAB 1987). See also In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)
(“there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular
feature of the mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties”).
That applicant thinks the asterisk or star design is a
distinctive element is beside the point because applicant cannot
control with certainty how consumers will perceive the mark. Cf
Trak Inc. v. Traq Inc., 212 USPQ 846, 850 (TTAB 1981) (“It is
not possible for the trademark owner to control with certainty
how purchasers will vocalize their trademarks”). Indeed,
applicant has not submitted any evidence of its advertising or
marketing materials that show applicant emphasizing the “star
design” by directing consumers to focus on its “star 123” brand

15 Applicant’s Brief, p. 16.
Serial No. 78795221
10
international telephone calling card services. Thus, consumers
may or may not use the asterisk, or star design, to refer to
applicant’s services. Contrary to applicant’s position, it is
clear to us that the number sequence “123” is the dominant
element of applicant’s mark because the asterisk is displayed as
a superscript character appearing before the larger numbers.
Accordingly, consumers are as likely to refer to applicant’s
mark as “123” as they are to refer to it as “star 123.” See
Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321,
1333 (TTAB 1992) (“companies are frequently called by shortened
names”). See also In re Abcor Development Corp., 588 F.2d 811,
200 USPQ2d 215, 219 (CCPA 1978) (Rich, J., concurring) (“the
users of language a universal habit of shortening full names -
from haste or laziness or just economy of words”).
With respect to the registered mark , the
numbers “123” are a significant, if not dominant, element of the
mark because they are displayed in large, prominent print. The
numbers “123” grab the attention of the viewer. Moreover, “The
International Code for Huge Savings” at the bottom of the mark
is analogous to “look for advertising” because it directs the
viewers’ attention to the numbers.
Even if upon close examination of the marks, consumers
could differentiate between them, that would not be sufficient
Serial No. 78795221
11
to dispel the initial similarity between the marks. As stated
above, it is well-settled that the similarity or dissimilarity
of the marks is not determined by a side-by-side comparison;
rather, the issue is based on the overall commercial impression
engendered by the marks. In this case, we believe that the
consumers will remember and/or refer to the services of both the
applicant and the registrant as “123.”
In reaching this conclusion, we are cognizant of the fact
that the registrant claimed that “1010-123” has acquired
distinctiveness presumably because that number sequence
originally was not inherently distinctive. Also, we note that
during the prosecution of its application, applicant argued that
*123 is not merely descriptive, and it did not assert that the
numbers “123” without the asterisk were, in fact, descriptive or
highly suggestive, thereby entitling applicant to register its
mark.16 Even if the numbers “123” were descriptive, marks with
shared descriptive terms can be similar for purposes of
determining likelihood of confusion especially where a
descriptive term is prominently displayed. In re Hal Leonard
Publishing Corp., 15 USPQ2d 1574, 1575-1576 (TTAB 1990). See
also Bose Corp. v. QSC Audio Products, 293 F.3d 1367, 63 USPQ2d

16 Applicant did argue that the numbers “123” are commonly used and
therefore weigh against a finding that there is a likelihood of
confusion. See the discussion infra.
Serial No. 78795221
12
1303, 1305 (Fed. Cir. 2002) (POWERWAVE for amplifiers is likely
to cause confusion with ACOUSTIC WAVE and WAVE for loudspeaker
systems because the use of the word “wave” gives the marks a
similar “sound wave” meaning); TBC Corp. v. Holsa Inc., 126 F.3d
1470, 44 USPQ2d 1315, 1317-1318 (Fed. Cir. 1997) (GRAND AM and
GRAND SLAM both used to identify tires are similar even though
the word “grand” is laudatory); Specialty Brands, Inc. v Coffee
Bean Distributors, inc., 748 F.2d 669, 223 USPQ 1281, 1283 (Fed.
Cir. 1984) (“Arguments to the effect that one portion of a mark
possesses no trademark significance leading to a direct
comparison between only what remains is an erroneous approach”).
In this case, “1010-123” in the registered mark has acquired
distinctiveness pointing uniquely and exclusively to registrant
as the source of its services and those numbers, especially the
numerical sequence “123,” are displayed as the dominant feature
of registrant’s mark.
In view of the foregoing, we find that the similarities of
the marks outweigh the dissimilarities, and therefore the
similarity of the marks is a factor that favors finding that
there is a likelihood of confusion.
B. The Empressa Nacional Registrations.
We will focus our likelihood of confusion analysis of the
Empressa Nacional registrations on Registration No. 2709768 for
the mark 123.COM for sales of prepaid long distance telephone
Serial No. 78795221
13
cards and telecommunication services, namely long distance and
international voice transmission because it is most similar to
applicant’s mark.17
1. The similarity or dissimilarity and nature of the
services as described in the application and
registrations at issue.

Applicant is seeking to register its mark for
“international telephone calling card services,” and, as
indicated above the cited mark has been registered for sales of
prepaid long distance telephone cards and telecommunication
services, namely long distance and international voice
transmission. The registrant’s combination of selling long
distance telephone cards and providing long distance and
international voice transmission services encompasses
applicant’s international telephone calling card services.
2. The similarity or dissimilarity of likely-to-continue
trade channels and classes of consumers.

Because there are no restrictions in the description of
services in the application or cited registration, we may
presume that registrant’s sales of prepaid long distance
telephone cards and long distance and international voice
transmission services and applicant’s international telephone
calling card services move in all channels of trade normal for

17 Again, by focusing on this registration, we are not suggesting that
there is an absence of a likelihood of confusion with the other
Empressa registrations.
Serial No. 78795221
14
those services and are sold to all classes of prospective
purchasers for those services. In re Linkvest S.A., 24 USPQ2d
1716, 1716 (TTAB 1992). In fact, the sales of prepaid long
distance telephone cards and international telephone calling
card services would be sold in the same channels of trade and to
the same classes of consumers. Likewise, long distance and
international voice transmission services and international
telephone calling card services would also move in the same
channels of trade and be sold to the same classes of consumers.
Moreover, as we discussed in the analysis of Americatel’s
channels of trade and classes of consumers, because applicant’s
services and registrant’s services are so closely related, if
not identical, we must presume that the services move in the
same channels of trade and are sold to the same classes of
consumers.
3. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

The registered mark 123.COM is substantially similar to
applicant’s mark *123. The “.com” portion of the registered has
no trademark significance. In re Microsoft Corp., 68 USPQ2d
1195, 1203 (TTAB 2003) (“The combination of the specific term
and TLD at issue, i.e., OFFICE and .NET, does not create any
double entendre, incongruity, or any other basis upon which we
can find the composite any more registrable than its separate
Serial No. 78795221
15
elements. The combination immediately informs prospective
purchasers that the software includes ‘office suite’ type
software and is from an Internet business, i.e., a ‘.net’ type
business”); In re CyberFinancial.Net, Inc., 65 USPQ2d 1789, 1792
(TTAB 2002) (“Applicant seeks to register the generic term
‘bonds,’ which has no source-identifying significance in
connection with applicant’s services, in combination with the
top level domain indicator “.com,” which also has no source-
identifying significance. And combining the two terms does not
create a term capable of identifying and distinguishing
applicant’s services”); In re Martin Container, Inc., 65 USPQ2d
1058, 1061 (TTAB 2002) (“[N]either the generic term nor the
domain indicator has the capability of functioning as an
indication of source, and combining the two does not result in a
compound term that has somehow acquired this capability”).
Accordingly, the number sequence “123” is the dominant part of
the registered mark.
Likewise, as indicated in the Americatel discussion, the
number sequence “123” in applicant’s mark *123 is also the
dominant portion of applicant’s mark. Accordingly, we find that
applicant’s mark and the registered mark are very similar in
terms or appearance, sound, meaning, and commercial impression.
Serial No. 78795221
16
C. General Arguments By Applicant.
1. Cancelled Registration No. 1972069 for the mark *123.
Applicant contends that Registration No. 1972069 for the
mark *123, shown below, registered by Southwestern Bell Mobile
Systems, Inc. for “telecommunication services, namely
interactive cellular telephone service by which customers can
access information on sports, traffic conditions, weather,
entertainment, and other subjects,” in Class 38, is evidence
that the marks at issue are not likely to cause confusion.18

According to applicant, while the above-noted registration
was valid and subsisting, 123.COM WAP, MUNDO123, 123.COM PSC,
123.COM INALAMBRICO, 123.COM WIRELESS were registered by
Empressa Nacional, and 1010-123 NUESTRO NUMERO DE LARGA
DISTANCIA and 1010-123 A AMERICATEL were registered by
Americatel. In addition, the Empressa mark DIAS 123 DEL 1010-
123 DE AMERICATEL and the Americatel marks 123.COM and 123.COM
CELULAR were published for opposition before the registration
was canceled. Applicant asserts that the registration of the
Empressa and Americatel marks shows that the number sequence
“123” is commonly used in connection with telecommunications

18 Issued May 7, 1996; cancelled under Section 8.
Serial No. 78795221
17
services, and that, in essence, the Office is now estopped from
refusing registration under Section 2(d).19
We are not persuaded that the registration of the number
sequence “123” by Empressa Nacional and Americatel demonstrates
that “123” has been so commonly used in connection with
telecommunication services that consumers will look to the other
elements of the marks for purposes of identifying the source of
the services. While we may draw some inferences from the third-
party registration (e.g., the mark has some well-understood
meaning, a third-party has adopted the mark to express that
meaning, and that consumers would be likely to attribute that
meaning to the mark),20 a third-party registration is not
evidence that the mark has been used. Smith Bros. Mfg. Co. v.
Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973)
(without any evidence of use, a third-party registration
provides no basis for asserting that the mark has any effect on
consumers). See also Olde Tyme Foods, Inc. v. Roundy’s, Inc.,
961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992) (third-party
registrations are not evidence of what happens in the
marketplace). Applicant did not submit any evidence regarding

19 Applicant’s Brief, p. 11.
20 For purposes of determining likelihood of confusion, neither the
examining attorney, nor the applicant, presented any evidence or
argument regarding any meaning for the numerical sequence “123” when
used in connection with telephone calling card services.
Serial No. 78795221
18
the nature or extent of the use of the canceled, registered
mark.
Moreover, the listed services in the canceled, third-party
registration (“telecommunication services, namely interactive
cellular telephone service by which customers can access
information on sports, traffic conditions, weather,
entertainment, and other subjects”) are different than the
services in the application at issue (“international telephone
calling card services”). The Office should not be barred from
examining the registrability of applicant’s mark when the
applicant seeks to register a mark for services that are
different than the services identified in the third-party
registration. See In re Sunmarks Inc., 32 USPQ2d 1470, 1472
(TTAB 1994).
Finally, each case must be decided on its own merits based
on the evidence of record. We are not privy to the record in
the files of the registered mark, and we are not bound by the
results of another case. This Board has the authority and duty
to decide an appeal from a final refusal to register, and this
duty may not be delegated by adopting the conclusion reached by
another examining attorney on a different record. In re
Sunmarks Inc., 32 USPQ2d at 1472, quoting In re BankAmerica
Corp., 231 USPQ 873, 876 (TTAB 1986). Accordingly, the
Serial No. 78795221
19
canceled, third-party registration for a similar mark for
different services has no bearing on our analysis.
2. Evidence of actual confusion.
Applicant argues that “it has been using its *123 mark in
commerce since as early as 2005 and there have been no reported
incidents of consumer confusion with the marks of record, no
demands to ‘cease-and-desist,’ and no actions filed for
infringement or unfair competition relative to either the
Americatel Marks or the Empressa Marks. Therefore, this factor
weighs against a likelihood of confusion in the future.”21
However, in the context of an ex parte appeal, applicant’s
reliance on the lack of any reported instances of actual
confusion carries little, if any, weight. See In re Majestic
Drilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed.
Cir. 2003) (“The lack of evidence of actual confusion carries
little weight”). First, the registrants are not parties to the
appeal, and therefore they have not had the opportunity to
present any evidence of confusion that may have occurred.
Second, because there is no evidence regarding the nature and
extent of either applicant’s use of its mark or the registrants’
use of their marks, we cannot determine whether there has been
an opportunity for confusion to have occurred. In re Kangaroos,
223 USPQ 1025, 1026-1027 (TTAB 1984).
Serial No. 78795221
20
3. Strength of the registered marks.
Applicant argues that “[t]he use of the numerical sequence
“123” is exceedingly common and weighs heavily against a finding
of likelihood of confusion.” Applicant identified Registration
No. 3122485 for the mark RING-123 NEW YORK PHONE CARD for
“prepaid telephone calling cards, not magnetically encoded,” as
well as the cited registrations, as evidence that the numerical
sequence “123” is a weak term entitled to only a narrow scope of
protection.22
Applicant’s contention that the registered marks are weak
because of the third-party registrations is not persuasive.
Absent evidence of actual use of those marks, the third-party
registrations are entitled to little weight in our likelihood of
confusion analysis. In re Hub Distributing, Inc., 218 USPQ 284,
285 (TTAB 1983).
[I]t would be sheer speculation to draw any
inferences about which, if any of the marks
subject of the third party (sic)

21 Applicant’s Brief, p. 12.
22 Applicant’s Brief, pp. 13-14 and 15. The market strength of a mark
is determined by analyzing “the number and nature of similar marks in
use on similar goods.” In re E. I. du Pont De Nemours & Co., 177 USPQ
at 567. See also NCTA v. American Cinema Editors, 937 F.2d 1572, 19
USPQ2d 1424, 1430 (Fed. Cir. 1991) (use of term by unrelated companies
on numerous goods and services does not require a finding that the
term is a weak mark because even in a common word may stand alone in
the relevant market); In re Vroman Foods, Inc., 224 USPQ 242, 244
(TTAB 1984) (third-party registrations not persuasive because none
them were as close to the registrant’s products as applicant’s
description of goods). Accordingly, we did not consider the other
third-party registrations that were unrelated to telecommunications or
telephone calling card services.
Serial No. 78795221
21
registrations are still in use. Because of
this doubt, third party (sic) registration
evidence proves nothing about the impact of
the third-party marks on purchasers in terms
of dilution of the mark in question or
conditioning of the purchasers as their
weakness in distinguishing source.

Id. at 286.
Moreover, one third-party registration and the cited
registrations owned by two different entities (essentially three
other purported users of the numerical sequence “123”) does not
prove that the numerical sequence “123” is so commonly used in
connection with telephone calling card services that consumers
have become conditioned to look other elements of the marks as a
means of distinguishing source. Cabot Corp. v. Titan Tool,
Inc., 209 USPQ 338, 344 (TTAB 1980). See also In re Denisi, 225
USPQ 624, 625 (TTAB 1985) (the existence of one other
registration is insufficient to support an inference that
“Perry’s” is non-distinctive); Tony Lama Co., Inc. v. Di
Stefano, 206 USPQ 176, 185 (TTAB 1980) (two third-party
registrations insufficient to prove that the mark is weak).
Finally, even if we were to consider applicant’s weakness
of the mark argument, third-party registrations will not aid an
applicant to register its mark if it is likely to cause
confusion with the cited registrations. Independent Grocers’
Alliance v. Potter-McCune Co., 404 F.2d 622, 160 USPQ 46, 46
(CCPA 1968) (if applicant’s mark is likely to cause confusion
Serial No. 78795221
22
with a previously registered mark, third-party registrations are
not controlling); In re Hamilton Bank, 222 USPQ 174, 177 (TTAB
1984) (third-party registrations cannot assist an applicant in
registering a mark that is likely to cause confusion with a
registered mark).23
4. The degree of consumer care.

Applicant contends that the degree of consumer care is a
factor that favors finding no likelihood of confusion24 because
“[t]he goods and services involved here are not impulse
purchases. Rather, they involve the purchase of international
long distance telecommunications service, which can be a
significance expense. Thus, the relevant consumers are likely
to approach these services with a greater degree of care,
research, and discrimination. Therefore, these types of
sophisticated buyers are not as likely to be confused as to
source and will be able to distinguish between the Applicant’s
and Registrant’s products.”25
Even though we can make certain suppositions about the
degree of care consumers exercise when selecting international

23 While we are not persuaded by applicant’s argument that the
numerical sequence “123” is a weak term entitled only entitled to a
narrow scope of protection or exclusivity of use, nevertheless, we
note that in his brief and at the oral hearing the examining attorney
was unprepared and unable to explain why multiple registrations for
the same term by different entities did not diminish consumers’
attribution of source to a single entity.
24 Applicant’s Brief, p. 14.
25 Applicant’s January 22, 2007 Response.
Serial No. 78795221
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telephone calling card services, as with the other du Pont
factors, the degree of care cannot be “supposed,” it must be
supported by evidence. The issue of care includes the degree to
which consumers consider the marks, the process by which
consumers select international calling card services and the
manner in which such services are marketed. Unfortunately,
there is no such evidence in the record, and consequently, there
is no evidence regarding the degree of care exercised by
relevant consumers.
Moreover, because applicant’s services and the registrants’
services are rendered in all channels of trade and to all
classes of consumers normally expected of international
telephone calling card services, such services would be sold to
discriminating purchasers and purchasers who are not so
discriminating (e.g., consumers interested only in the lowest
price). Therefore, not all of applicant’s purchasers can be
expected to be as highly discriminating as applicant contends.
In re Pierce Foods Corp., 230 USPQ 307, 309 (TTAB 1986).
D. Balancing the factors.
In view of the facts that the marks are similar and that
the applicant’s services are essentially identical to the
registrants’ services, and because we must presume that the
services move in the same channels of trade and are sold to the
same classes of consumers, we find that applicant’s registration
Serial No. 78795221
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of the mark *123 for ““international telephone calling card
services” is likely to cause confusion with both the Americatel
registrations and the Empressa Nacional registrations.
Decision: The refusal to register is affirmed.