Tele-Town Hall, LLC

Trademark Trial and Appeal Board

Sep 27, 2007

No. 78897251 (T.T.A.B. Sep. 27, 2007)

Hearing: Mailed:
August 21, 2007 September 27, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Tele-Town Hall, LLC.
________

Serial No. 78897251
_______

Jeffrey D. Harty of McKee, Voorhees & Sease, P.L.C. for
Tele-Town Hall, LLC.

Renee McCray, Trademark Examining Attorney, Law Office 111
(Craig D. Taylor, Managing Attorney).
_______

Before Quinn, Holtzman and Zervas, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

Tele-Town Hall, LLC has appealed from the final
refusal of the trademark examining attorney to register
TELE TOWN HALL (in standard character form) as a trademark
on the Principal Register for “Internet telephony services;
THIS OPINION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Serial No. 78897251
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telephone conferencing services”1 in International Class 38.
Applicant has disclaimed the term TELE.
The examining attorney has refused registration of
applicant's mark pursuant to Section 2(d) of the Trademark
Act, 15 U.S.C. 1052(d), on the ground that applicant’s mark
so resembles the previously registered mark

for “telecommunications services, namely audio, video, web
and streaming teleconferencing,”2 in International Class 38,
that, as used on applicant’s identified services,
applicant's mark is likely to cause confusion or mistake or
to deceive.
An oral hearing was conducted on August 21, 2007. We
affirm the refusal to register applicant's mark.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set

1 Application Serial No. 78897251, filed May 31, 2006.
Applicant has claimed a bona fide intention to use the mark in
commerce under Trademark Act Section 1(b), 15 U.S.C. § 1051(b).
2 Registration No. 2800397, issued December 30, 2003.
Registrant has disclaimed the term TELECONFERENCING.

Serial No. 78897251
3
forth in 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 any likelihood of confusion analysis,
however, two key, although not exclusive, considerations
are the similarities between the marks and the similarities
between the goods and/or services. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976). See also, In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
We first consider the similarity or dissimilarity of
applicant’s and registrant’s services. Because applicant's
“telephone conferencing services” are encompassed within
registrant’s “audio teleconferencing” services, we find
that the services are identical in part.
With respect to the remaining services, i.e.,
applicant's “Internet telephony services,” the examining
attorney has established that they are closely related to
registrant’s teleconferencing services by submitting
evidence that the conditions and activities surrounding the
marketing of the services are such that they would or could
be encountered by the same persons under circumstances that
could, because of the similarity of the marks, give rise to
the mistaken belief that they originate from the same
Serial No. 78897251
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producer. See Hilson Research, Inc. v. Society for Human
Resource Management, 27 USPQ2d 1423 (TTAB 1993); In re
International Telephone & Telegraph Corp., 197 USPQ 910
(TTAB 1978). The examining attorney has made of record
three use-based third-party registrations in which one
entity has adopted a single mark for services that include
Internet telephony services and teleconferencing services.
Third-party registrations which individually cover a number
of different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
See:
Registration No. 3039368 for the mark PACKET8
for, inter alia, “Internet telephony services”
and “telephone conferencing services”;

Registration No. 3053932 for SIGHT SPEED and
design for, inter alia, “providing facilities and
equipment for video conferencing” and “Internet
telephony services”; and

Registration No. 3117056 for NETZERO for, inter
alia, “Internet telephony services” and
“providing telephone conference services.”

The examining attorney has submitted with her final Office
action additional registrations, including the following
registrations, which claim both local and/or long distance
telephone services and teleconferencing services:
Serial No. 78897251
5

Registration No. 3020708 for a design for, inter
alia, “telecommunication services, namely, local
and long distance transmission of voice, data,
graphics by means of telephone …” and “video
teleconferencing [and] web conferencing
services”;

Registration No. 3100113 for a design for, inter
alia, “telecommunication services, namely, local
and long distance transmission of voice, data,
graphics by means of telephone …” and “video
teleconferencing [and] web conferencing
services”;

Registration No. 3168122 for YOUR PARTNER FOR
PROFITABILITY for, inter alia, “local, long
distance and international voice, data and
facsimile telephone services,” “video
conferencing transmission services” and
“providing telephone conferencing services”;

Registration No. 3168144 for METVOIP for, inter
alia, “local, long distance and international
voice, data and facsimile telephone services,”
“video conferencing transmission services” and
“providing telephone conferencing services”; and

Registration No. 3168460 for DIALSPHERE for,
inter alia, “local and long distance telephone
services” and “providing telephone conferencing
services.”

While the registrations do not specify that the telephone
services are provided by means of the Internet, there is
nothing in the identifications of services that precludes
such telephone services from being provided by means of the
Internet. We hence find these registrations probative of a
relationship between applicant’s and registrant’s
identified services.
Serial No. 78897251
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Applicant argues that the respective services are
“distinctly different” and that “the Examining Attorney
places the … services into the broad category of
‘teleconferencing’ services.” Applicant adds that the
question of likelihood of confusion must be determined
based on an analysis of the relatedness of the goods or
services rather than how the goods or services can be
described, citing to Elec. Data Sys. Corp. v. EDSA Micro
Corp., 23 USPQ2d 1460, 1463 (TTAB 1992) for the proposition
that “[t]he issue of whether or not two products are
related does not revolve around the question of whether a
term can be used that describes them both, or whether both
can be classified under the same general category.” Brief
at p. 5. The examining attorney responds:
While it is true that it is not enough to find
one term that may generally describe the
services, and that a commercial or technological
relationship must exist between the services, the
Examining Attorney maintains that the
aforementioned evidence of record overwhelmingly
demonstrates the commercial and technological
nexus between the services such that the
contemporaneous use of the marks is likely to
result in confusion as to their source or
sponsorship.

Brief at unnumbered pp. 5 – 6. For support, the examining
attorney cites to General Electric Co. v. Graham Magnetics
Corp., 197 USPQ 690, 694 (TTAB 1997), in which the Board
stated “It is argued that both parties’ goods are the
Serial No. 78897251
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products of powder metallurgy technology. It is, however,
not enough to find one term that may generically describe
the goods. More must be shown: that is, a commercial or
technological relationship must exist between the goods
such that the use of the trademark in commercial
transactions on the goods is likely to produce
opportunities for purchasers or users of the goods to be
misled about their source or sponsorship.” (Emphasis in
the original.)
Contrary to applicant's argument, the examining
attorney has not simply relied on placement of the services
in the broad category of teleconferencing services.
Rather, the examining attorney has provided evidence of a
commercial relationship between the services. She has
introduced evidence that the conditions and activities
surrounding the marketing of the services are such that
they would or could be encountered by the same persons
under circumstances that could, because of the similarity
of the marks, give rise to the mistaken belief that they
originate from the same producer. Evidence of this kind is
sufficient to establish a relationship between the
services.
In view of the foregoing, we find that the examining
attorney has established prima facie a relationship between
Serial No. 78897251
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applicant's and registrant’s services and we resolve the du
Pont factors regarding the similarity of the services
against applicant.
With respect to the similarity of trade channels,
inasmuch as applicant's services are in part encompassed
with registrant’s services and otherwise concern
teleconferencing services without any trade channel or
purchaser restrictions, we must assume that the services
move in the same channels of trade to the same customers.
Schieffelin & Co. v. Molson Companies Ltd., 9 USPQ2d 2069,
2073 (TTAB 1989) (“[S]ince there are no restrictions with
respect to channels of trade in either applicant's
application or opposer's registrations, we must assume that
the respective products travel in all normal channels of
trade for those alcoholic beverages”). Indeed, the webpage
made of record with the final Office action from phone-
bill-busters.com for Polycom Audio Video Conferencing shows
an advertisement for both audio and video conferencing and
is not directed to any specific purchasers but is directed
to the general public.3 The du Pont factor regarding the

3 Most of the excerpts from the Nexis evidence submitted by the
examining attorney with her final Office action in support of her
contention that the trade channels are related have little or no
probative value because of their brevity or because they are
simply irrelevant to the issue before us.
Serial No. 78897251
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similarity or dissimilarity of trade channels hence is also
resolved against applicant.
We next consider the similarity or dissimilarity of
the marks in their entireties. Our focus is on whether the
marks are similar in sound, appearance, meaning, 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). We do not consider whether
the marks can be distinguished when subjected to a side-by-
side comparison, but rather whether the marks are
sufficiently similar that confusion as to the source of the
goods 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). Also, we are
guided by the well-established principle that although the
marks must be considered in their entireties, there is
nothing improper, under appropriate circumstances, in
giving more or less weight to a particular portion of a
mark. See In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985).
Serial No. 78897251
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We find that TOWN HALL is the dominant portion of
applicant's mark. TELE is a merely descriptive term that
has been disclaimed by applicant. See definition of
“tele-” as a prefix meaning “telephone” from the online
version of The American Heritage Dictionary of the English
Language, 4th ed. (2000), submitted with the first Office
action. Descriptive matter is generally viewed as a less
dominant or significant feature of a mark. See National
Data Corp., 224 USPQ at 752.
With respect to registrant’s mark, applicant maintains
that the design element with “the fanciful T-H-T with the
clock tower” is the dominant portion of the mark, and that
in a composite mark in which a design element is more
conspicuous, the design element is likely to be dominant.
We disagree. The term TOWNHALL, with the “T” and the “H”
capitalized, is in thick lettering, is an actual English
word and is of substantial size. In contrast, the design,
which is composed of the letters THT is such that the two
“T”s appear as lateral supports for the towering “H” which
has a clock at its top. With the initialism embedded
within the design, the large wording under the design would
be more impressive to the purchaser and hence would be the
term the purchaser first reads in the mark, and would
likely be the term by which applicant's services would be
Serial No. 78897251
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referred to by purchasers. TELECONFERENCING, of course is
a generic term which registrant has disclaimed and which is
in smaller lettering than TOWNHALL and functions more as an
upper boundary in the mark. We hence conclude that
TOWNHALL, and not the design, is the dominant component of
the mark. We do not ignore the other elements of
applicant's mark, but we give more weight to TOWNHALL in
our comparison of applicant's mark and the cited registered
mark. See National Data Corp., supra.
Thus, in comparing the marks in terms of sound, we
find that the marks are similar in that both marks include
the term TOWN HALL (or TOWNHALL), and that this term is the
dominant term in each mark. The differences in sound
caused by the other wording and the initialism in
registrant's mark are outweighed by the similarity caused
by the common term TOWN HALL.
In terms of connotation, we find that the overall
connotation of both applicant's and registrant’s marks is
“town hall” in view of the dominant wording in the marks.
The design element in registrant’s mark which resembles a
building adds to the connotation of registrant’s mark as
“town hall” and does not distinguish the meaning of
registrant’s mark.
Serial No. 78897251
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Applicant has commented on the “font style” of the
lettering in registrant’s mark. This stylization is not
dispositive, given the fact that applicant's mark is in
standard character form and thus could be displayed in a
“font style” similar to registrant’s lettering. See, e.g.,
In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In re
Pollio Dairy Products Corp., 8 USPQ2d 2012 (TTAB 1988).
In terms of overall commercial impression, we find
that the marks are similar rather than dissimilar because
they both prominently include TOWN HALL. “THT” in
registrant’s design, once viewed, would be considered
simply as an initialism for “Town Hall Teleconferencing”
and it therefore does not suffice to distinguish the marks.
Purchasers familiar with registrant's mark, which so
prominently features the wording TOWN HALL, upon
encountering applicant's services marketed under
applicant's mark, are likely to assume that there is a
source or other connection between the respective services.
That is, purchasers are more likely to assume, based on the
presence in both marks of the wording TOWN HALL that a
source connection exists, than they are likely to assume,
based on the presence in registrant’s mark of the generic
wording and design element, that no such source connection
exists.
Serial No. 78897251
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On balance, and considering the marks in their
entireties, we find them to be similar rather than
dissimilar, and that the du Pont factor regarding the
similarity of the marks weighs in favor of a finding of
likelihood of confusion.
Weighing all of the evidence of record as it pertains
to the relevant du Pont factors, we find that a likelihood
of confusion exists.
Decision: The refusal to register is affirmed.