Softel Communi-cations, Inc.v.Isoftel, Inc.

Trademark Trial and Appeal Board

Dec 5, 2005

No. 91152350 (T.T.A.B. Dec. 5, 2005)

Mailed:
December 5, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Softel Communications, Inc.

v.

Isoftel, Inc.
_____

Opposition No. 91152350 to application Serial No. 76017963
filed on April 5, 2000

Jane Osborne McKnight of Jane Osborne McKnight, PLC, for
Softel Communications, Inc.

Joseph T. Leone of Dewitt Ross & Stevens, S.C. for Isoftel,
Inc.
______

Before Holtzman, Drost and Zervas, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

Applicant, Isoftel, Inc., seeks registration on the
Principal Register of the mark ISOFTEL1 (in standard
character form) for the following services, as amended:
“telecommunication billing, sales volume tracking,
and bill settlement services for telecommunication
companies; computerized tracking and tracing of
packages in transit” in International Class 35;

1 Application Serial No. 76017963, filed April 5, 2000.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91152350
2
“telecommunications pre-pay and post-pay calling
card services” in International Class 36;

“telecommunication dial-around access services,
interstate telephone communications services;
telecommunication tandem switching services,
cellular telephone services; telephone
communication services; international call-back
services; cellular telephone voice messaging
services” in International Class 38; and

“computer programming for others; settlement
negotiation services for telecommunication
companies; computer programming services for
others in the field of telecommunication
applications” in International Class 42.

The application contains an allegation of a date of first
use and first use in commerce of April 1, 2000.
Opposer, Softel Communications, Inc., filed a timely
notice of opposition to registration of applicant's mark.
In the notice of opposition, opposer pleads that it is the
owner of a registration for the mark SOFTEL for
“installation of telecommunication speech recognition and
computer networking products” in International Class 37, and
“product development and consultation in the field of
telecommunications” in International Class 42, i.e.,
Registration No. 2424860.2 Further, opposer alleges that
applicant's mark, as applied to the services identified in
the application, so resembles opposer's previously-used and
registered mark and trade name SOFTEL as to be likely to

2 Registration No. 2424860 issued January 30, 2001.
Opposition No. 91152350
3
cause confusion, to cause mistake, or to deceive. Trademark
Act Section 2(d), 15 U.S.C. §1052(d).
Applicant answered the notice of opposition by denying
the salient allegations thereof.3
Applicant did not take any testimony or submit any
evidence in this proceeding, and did not file a main brief.
Neither party requested an oral hearing.
The Record
The record consists of the pleadings; the file of the
involved application; the trial testimony, with related
exhibits, taken by opposer, of Devi Momot, Chief Operating
Officer of Twinstate Voice Data Video, Inc. (“Twinstate”)
and John Cognata, President of Softel Communications, Inc.4
Also, pursuant to opposer's notices of reliance, opposer has
introduced the following into evidence: a status and title
copy of opposer's Registration No. 2424860 showing opposer
as the owner of record for Registration No. 2424860 and that
the registration is subsisting; a copy of applicant's
response to opposer's first set of interrogatories; and

3 Applicant also counterclaimed for cancellation of the
International Class 42 services in their entirety in Registration
No. 2424860, alleging priority and likelihood of confusion, or,
in the alternative, that a restriction of the International Class
42 services was in order. On January 24, 2005, the Board granted
opposer’s motion for judgment on the counterclaim under Trademark
Rule 2.132(a) in view of applicant's failure to take any
testimony or offer any evidence on its counterclaim, and denied
the counterclaim with prejudice.
4 Although he had been informed of Mr. Cognata’s testimonial
deposition, applicant's attorney did not appear at Mr. Cognata’s
deposition. (Cognata Dep. at p. 6.)
Opposition No. 91152350
4
documents evidencing the formation and merger of applicant's
predecessors.
Factual Findings
Opposer Softel Communications, Inc. is a Canadian
corporation which offers consulting services, “systems
integration services” and application development services
in the telecommunications field. “Systems integration”
involves taking telecommunications software and hardware and
customizing them to meet a specific requirement for a
specific customer. The telecommunications solutions offered
by opposer depends on the customer’s business, but would
include receiving calls, transferring calls, integrating
calls to data, transferring voice communications over data
networks and integrating data to billing systems. Opposer
has installed Interactive Voice Recognition (“IVR”) systems
and modified existing IVR systems. For example, opposer may
assist an airline that seeks a voice application system
which allows its customers to make reservations using the
telephone and to speak to an automated system to book a
reservation.
Opposer takes the position that its first use of its
mark was in 1994 in connection with the installation of an
interactive voicemail system that opposer had installed for
one of its customers, i.e., Twinstate (in New York).
According to its trial witnesses, Twinstate had an agreement
Opposition No. 91152350
5
to provide, inter alia, an interactive voicemail system for
one of its customers, an insurance company in Montpelier,
Vermont. “Twinstate won the business with Opposer's
proposal … and Opposer was given a contract.” (Cognata Dep.
at pp. 20 – 22.)
Opposer has advertised under its SOFTEL mark in
telecommunications magazines, industry directories, and on
various web sites, and has engaged in direct marketing by
email. Opposer has participated in various trade shows and
has spent about twenty percent of its revenues for
marketing.
Opposer is aware of instances of actual confusion
between opposer’s and applicant’s marks, and has introduced
documentary evidence into the record of actual confusion.
Mr. Cognata testified that opposer has received misdirected
phone calls, and occasionally emails, from bill collectors
regarding expenses incurred at trade shows by applicant
which opposer had not attended or for recruiting
advertisements which opposer had not placed; that he feared
that the unpaid bill for a trade show by applicant would
affect opposer's ability to attend that trade show the
following year; and that various persons responding to
applicant's advertisements for employment have contacted
opposer rather than applicant.
Opposition No. 91152350
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Additionally, opposer introduced into the record a copy
of a misdirected email received by Mr. Cognata from SBS, a
supplier of software and equipment in the telecommunications
area. (Exhibit 18 to Cognata Dep.) The email threatened
litigation against applicant due to applicant's failure to
pay for certain equipment acquired from SBS. According to
Mr. Cognata, the source confusion has impacted opposer’s
potential for “establishing a relationship with this
supplier … and the ability to generate any revenue from them
[by] utilizing them as a channel.” (Cognata Dep. at p. 82.)
Standing/Priority

As noted, opposer has submitted at trial a status and
title copy of Registration No. 2424860. The registration is
extant and is owned by opposer. Because of opposer's proof
of ownership of its registration, and also because of the
evidence of record regarding opposer's use of its registered
mark, we find that opposer has established its standing to
oppose registration of applicant’s mark. See, e.g.,
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
(Fed. Cir. 2000); and Lipton Industries, Inc. v. Ralston
Purina Company, 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Also, because opposer’s pleaded registration is of record,
Section 2(d) priority of use is not an issue in this case as
to the mark and services covered by opposer's registration.
Opposition No. 91152350
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See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
Likelihood of Confusion

Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., 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 §2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
[and/or services] and differences in the marks." Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976).
The salient question to be determined is not whether
the involved services of the parties are likely to be
confused, but rather whether there is a likelihood that the
relevant purchasing public will be misled to believe that
the services offered under the involved marks originate from
a common source. See J.C. Hall Company v. Hallmark Cards,
Incorporated, 340 F.2d 960, 144 USPQ 435 (CCPA 1965); and
The State Historical Society of Wisconsin v. Ringling Bros.-
Opposition No. 91152350
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Barnum & Bailey Combined Shows, Inc., 190 USPQ 25 (TTAB
1976).
The Marks
When we compare marks, we must examine "the similarity
or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression."
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005) (internal quotation marks omitted).
Applicant's mark consists of opposer's mark with the
addition of the letter “I” as the first letter of the mark.
Applicant's mark may be pronounced as “eye sof tel,” which
we find is highly similar to the pronunciation of
applicant's mark, i.e., “sof tel.” Further, as noted above,
applicant's mark is in typed form, thus, in actual use, it
may be depicted in any number of formats or fonts,
including, of course, the format shown in the specimen of
use duplicated below, with the letter “I” in lowercase
letters and smaller than the remaining letters in the mark,
thus playing a subordinate role in the appearance of the
mark:

See Phillips Petroleum Co. v. C.J. Webb, Inc., 442 F.2d
1376, 170 USPQ 35 (CCPA 1971); and INB National Bank v.
Opposition No. 91152350
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Metrohost Inc., 22 USPQ2d 1585 (TTAB 1992) (when an
applicant seeks a typed registration of its word mark, then
the Board must consider all reasonable manners in which
those words could be depicted, and in particular, the Board
should give special consideration to the manners in which
the applicant has actually depicted its mark). Thus, when
considering the marks in their entireties, we find that the
marks are highly similar, differing only by one letter at
the beginning of the applicant's mark. Overall, we find the
marks to be more similar than dissimilar in their
appearance.
The connotations of the marks are also similar.
Opposer's mark, SOFTEL, appears to consist of two words
“soft” and “tel” telescoped into a single term SOFTEL, with
“tel” as an abbreviation of “telephone.” The addition of
the letter “I” in applicant's mark does not change the
connotation of the mark as including a combination of these
two words. This is particularly true when the “I” appears
in a different font and smaller letter size than the
remaining letters in applicant's mark, as is the case in
applicant’s specimen.
Also, Mr. Cognata testified that the letter “I” “could
be utilized as a term of art, but it could also stand for
interactive” or “could be information”; and that it could be
“blended with other words.” (Cognata Dep. at pp. 52 – 53.)
Opposition No. 91152350
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He also added that “we have seen the I utilized elsewhere
before and there are many organizations that have a name and
– say ABC and they have changed their name to IABC. During
a period of time it was common practice for companies to do
that.” (Cognata Dep. at p. 53.)
The commercial impressions of the marks are also highly
similar for the reasons set forth above regarding the
similarity of the marks in sound, connotation and meaning.
In view of the foregoing, and because the minor
differences between applicant's mark and opposer's mark are
not likely to be recalled by purchasers seeing the marks at
separate times, we find that the parties’ marks are highly
similar in sound, appearance, connotation and commercial
impressions. This du Pont factor hence is resolved in
opposer's favor.
The Services
Of course, the identifications of services of opposer's
registration are limited to the telecommunications field.
Several, if not all, of applicant's services set forth in
its identification of services are also expressly limited to
the telecommunication field.
Further, the services in applicant's identification of
services are highly related to opposer's International Class
42 services, i.e., “product development and consultation in
the field of telecommunications.” This broadly worded
Opposition No. 91152350
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identification is presumed to encompass product development
and consultation in connection with a whole host of areas,
including telecommunication billing and sales volume
tracking for telecommunications companies in International
Class 35; pre-pay and post-pay calling cards in
International Class 36; dial-around access, interstate
telephone communications, telecommunication tandem
switching, cellular telephone services, telephone
communications services, international telephone call-back
services and cellular telephone voice messaging in
International Class 38; and computer programming in the
field of telecommunications applications and services in the
nature of settlement negotiations for telecommunication
companies in International Class 42. Additionally, Mr.
Cognata has testified that opposer provides each of the
services identified in applicant's identification of
services.5 (Cognata Dep. pp. 34 - 41.)
It is not necessary that the respective services be
identical or even competitive in order to support a finding
of likelihood of confusion. Rather, it is sufficient that
the services are related in some manner, or that the

5 Opposer has not introduced evidence as to when opposer
commenced each of the services it maintains it provides or has
provided which are listed in applicant's identification of
services. Mr. Cognata only testified that opposer has provided
or does provide such services. Thus, we focus on the services
specified in the identification of services in opposer's
registration for purposes of our analysis of any relationship
between the parties’ services.
Opposition No. 91152350
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circumstances surrounding their marketing are such, that
they would be likely to be encountered by the same persons
in situations that would give rise, because of the marks
used thereon, to a mistaken belief that they originate from
or are in some way associated with the same source or that
there is an association or connection between the sources of
the respective services. See In re Martin's Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984);
In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); and In re
International Telephone & Telegraph Corp., 197 USPQ2d 910
(TTAB 1978).
In view of the foregoing, and based on the evidence of
record and identifications of services of the parties, we
find that the parties’ services are related and resolve this
factor, too, in opposer's favor.
Trade Channels

Inasmuch as the identifications of services in both the
registration and the application do not include any
limitations with respect to trade channels, and because the
respective services are at least in part highly related, we
assume that both parties’ services move through the same
and/or similar trade channels, namely all trade channels
normal for services of this type in the telecommunications
field. In re Elbaum, 211 USPQ 639 (TTAB 1981). These trade
channels include, at a minimum, trade shows and the
Opposition No. 91152350
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Internet. Further, as noted above, opposer first learned of
applicant at a telecommunications trade show in Los Angeles,
where both applicant and opposer were participating and
where applicant was demonstrating interactive voice response
applications. (Cognata Dep. at pp. 42 - 43.) Also,
applicant stated that it uses its mark “extensively in trade
shows.” (Applicant's response to Interrogatory No. 9.)
Thus, we resolve this factor in opposer’s favor.
Actual Confusion

According to opposer, there have been instances of
actual confusion between SOFTEL and ISOFTEL, namely, opposer
“has received employment applications intended for
Applicant, one approach by a potential customer of telephone
solutions, and … a ‘barrage’ of dunning communications from
Applicant's vendors.” (Brief at p. 28.)
Certainly, actual confusion among purchasers and
potential purchasers of opposer's goods is relevant to the
likelihood of confusion analysis. However, the “approach by
a potential customer of telephone solutions,” is the only
instance of actual confusion by a potential customer cited
by applicant. Thus, opposer's showing of actual confusion,
even if considered in conjunction with its showing of non-
purchaser confusion, is not sufficiently persuasive for us
to resolve this factor in opposer's favor. Accordingly, the
du Pont factor regarding actual confusion is neutral.
Opposition No. 91152350
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Intent
Opposer argues that applicant adopted its mark in bad
faith. According to opposer, applicant had been using the
mark SOFTEL; had agreed to cease and desist using SOFTEL
“after several exchanges of formal correspondence between
trademark attorneys”; and then “chose merely to add the
letter ‘i’ to the mark [and] brazenly sought registration of
the iSOFTEL mark, despite Opposer's priority, the identity
of their goods and services, the actual confusion
experienced, and that they marketed in the same channels of
distribution ….” (Brief at p. 23.)
Exhibit 15 to Mr. Cognata’s testimonial deposition is a
letter from applicant's counsel responding to opposer's
allegations of infringement and demands to cease and desist
using the mark “iSoftel.” Therein, applicant's counsel
contends that “its actions in the relevant market niches
where it operates do not present any likelihood of
confusion”; that there are “large number[s] of pre-existing
companies operating under the name ‘Softel’” and there is a
“dearth of companies doing business under iSoftel.”
Opposer’s proofs fall short of proving bad faith
adoption and, thus, this factor is neutral in our analysis.
However, we hasten to add that in view of the manner in
which we have resolved the du Pont factors listed above,
opposer hardly needs to rely on bad faith adoption in
Opposition No. 91152350
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support of its allegation that there is a likelihood of
confusion between the two marks.
Conclusion
We conclude, based on a preponderance of the evidence,
and particularly in view of the similarities between the
marks and the services recited in the identifications of
services, that there is a likelihood of confusion when the
marks SOFTEL and ISOFTEL are contemporaneously used on the
parties' respective services.
DECISION: The opposition is sustained and registration
to applicant of its mark in International Classes 35, 36, 38
and 42 is refused.