Teligence (US), Inc.Download PDFTrademark Trial and Appeal BoardApr 7, 2010No. 78764988 (T.T.A.B. Apr. 7, 2010) Copy Citation Mailed: April 7, 2010 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Teligence (US), Inc.1 ________ Serial No. 78764988 _______ Dana B. Robinson of Dana Robinson & Associates for Teligence (US) Ltd. Priscilla Milton, Trademark Examining Attorney, Law Office 110 (Chris A.F. Pedersen, Managing Attorney) _______ Before Seeherman, Holtzman and Zervas, Administrative Trademark Judges. Opinion by Seeherman, Administrative Trademark Judge: Teligence (US), Inc. has appealed from the final refusal of the trademark examining attorney to register TANGO, in standard character format, for “telecommunications services, namely electronic voice 1 The application was originally filed by Boulevard Media, Inc., and a merger and change of name to Teligence (US), Inc. was recorded at the USPTO on December 1, 2006. In both its appeal brief and reply brief applicant has identified itself as Teligence (Canada) Ltd. However, no further merger or change of name has been recorded, and therefore Teligence (US) Ltd. is the applicant of record. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser No. 78764988 2 messaging services, namely, recording and subsequent transmission of voice messages by telephone and wireless communication devices.”2 Registration has been refused 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 following marks, that if used in connection with applicant’s services, it is likely to cause confusion or mistake or to deceive. Registration No. 2958546 for TANGOWIRE (typed drawing), owned by Tangowire Corporation (assignee) and registered on May 31, 2005 for, inter alia, “electronic transmission of data and documents via computer terminals; electronic mail services; electronic delivery of images and photographs via a global computer network; streaming of audio material on the Internet; streaming of video material on the Internet”;3 and Registration No. 3159257 for TANGO (typed drawing), registered by Siemens Subscriber Networks, Inc. on October 17, 2006, for “telecommunications software for providing broadband access to telecommunications subscribers; network management and service management software for communications and telecommunications networks that simplifies subscriber access, 2 Application Serial No. 78764988, filed December 1, 2005, based on Section 1(b) of the Trademark Act (intent-to-use). 3 The registration includes, in addition to these services in Class 38, goods and services in classes 9, 35 and 42. Because the examining attorney’s refusal is based on likelihood of confusion with the mark for the services in Class 38, we have not listed the goods and services in the other classes. Ser No. 78764988 3 subscriber support and enables provider differentiation.” The appeal has been fully briefed. In her brief, the examining attorney has requested that we take judicial notice of the definition of the word “telecommunications,” a request that we grant.4 With its reply brief applicant has submitted Internet printouts regarding the activities of the owners of both of the cited registrations. This material was never properly made of record and its submission with a reply brief is manifestly untimely. See Trademark Rule 2.142(d). Accordingly, we have given the printouts no consideration. As both applicant and the examining attorney recognize, 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 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). As applicant has pointed out, only the relevant factors need be considered; in its brief applicant has discussed the similarity of the marks, the similarity 4 The Board may take judicial notice of dictionary definitions. University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Ser No. 78764988 4 of the goods and services, the similarity of trade channels, the classes of customers, and the number and nature of similar marks in use in connection with similar goods and services. The examining attorney has indicated that the relevant factors in determining the issue of likelihood of confusion with respect to both of the cited registrations are the similarity of the marks, similarity of the goods or services, and similarity of the trade channels. Accordingly, and because no evidence regarding any other factors has been submitted, we will confine our analysis to these factors. To the extent that any other factors might be relevant, we treat them as neutral. We must first address an argument made by applicant with respect to both of the cited registrations. Applicant asserts that it filed applications for the marks TANGOPERSONALS and TANGO PERSONALS and design prior the issuance of the cited registrations.5 Its registration No. 2480708 for TANGOPERSONALS for “electronic voice messaging, namely, the recording, storage and subsequent transmission 5 Although not relevant to the issue before us, we clarify that the filing date of the application which issued into the registration for TANGO PERSONALS and design, March 3, 2004, was prior to the filing date of the application which matured into the cited registration for TANGO, but not the filing date of the application which matured into the registration for TANGOWIRE. The filing date for the application for the TANGOPERSONALS mark was September 7, 1999, and was prior to the filing dates of the applications which matured into both of the cited registrations. Ser No. 78764988 5 of messages for social purposes; telephone communication services; providing on-line chat rooms for transmission of messages among computer users concerning topics of general interest” and “social introduction agencies and computer dating services via a global computer network” issued in 2001, and its registration No. 3053190 for TANGO PERSONALS and design for “providing on-line chat rooms for transmission of messages among computer users concerning dating, relationships and topics of general interest, and electronic voice messaging, namely, the recording and subsequent transmission of voice messages for social purposes by telephone; telephone communication services” and “social introduction agencies and computer dating services via a global computer network” issued in 2006. Applicant argues that it is “inconsistent to allow a later entrant to block an earlier entrant when the earlier entrant should have blocked the later entrant on the same theory,” and that the allowance of these later registrations “indicates that the USPTO does not feel the new entrants were likely to be confused with the Applicant’s earlier registrations.” Brief, p. 1. We are not persuaded by these arguments. As the examining attorney has pointed out, actions of other examining attorneys in registering different marks have Ser No. 78764988 6 little evidentiary value and are not binding upon the Office. Each case is decided on its own facts. Here, applicant’s previously registered marks are different from its current mark, and those registrations identify different services from those identified in the subject application. We turn first to the question of whether applicant’s mark, for “telecommunications services, namely electronic voice messaging services, namely, recording and subsequent transmission of voice messages by telephone and wireless communication devices,” is likely to cause confusion with Registration No. 2958546 for TANGOWIRE for “electronic transmission of data and documents via computer terminals; electronic mail services; electronic delivery of images and photographs via a global computer network; streaming of audio material on the Internet; streaming of video material on the Internet.” In support of her position that the services are related, the examining attorney has submitted a large number of third-party registrations showing that similarly identified services as those of applicant and the registrant have been registered under a single mark. See, in particular, the registrations highlighted in her brief Ser No. 78764988 7 at pages 13-15,6 including Registration No. 3008704 for, inter alia, electronic voice messaging, namely the recording, storage and subsequent transmission of voice messages, and electronic voice mail and e-mail services; Registration No. 3064231 for, inter alia, “electronic transmission of data and documents via computer terminals, electronic transmission of messages, electronic mail services, electronic voice messaging namely the recording and subsequent transmission of voice messages by telephone; and No. 3242429 for, inter alia, “electronic transmission of data and documents among users of computers, transmitting streamed sound and audio-visual recordings via the Internet, telephone voice messaging services, and electronic voice messaging namely the recording and subsequent transmission of voice messages by telephone.” 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. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). 6 As we stated in In re Max Capital Group Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010), the Board prefers that when a large amount of evidence is submitted, the most persuasive should be highlighted in the brief. Ser No. 78764988 8 Applicant asserts that “TANGOWIRE is for streaming of video material on the internet and other electronic transmissions of data,” and the “consumers at issue for TANGOWIRE are people seeking to transmit data through the internet, not people engaged in telephone dating.” Brief, p. 10. In effect, applicant is attempting to limit its services to “internet dating services,” but in determining the issue of likelihood of confusion we must consider the services as they are identified in applicant’s application and the cited registration. See In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Canadian Imperial Bank of Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Applicant’s services, as identified, are not limited to electronic voice messaging services for the purpose of dating or social networking. Moreover, the registrant’s electronic mail services, electronic delivery of photographs via a global computer network and streaming of audio and video material on the Internet are not limited as to content; they may be used in connection with dating or social networking. In fact, applicant states in its reply brief that the mark TANGOWIRE “is used as a dating website not unlike eHarmony or Match.com.” p. 2. Ser No. 78764988 9 Thus, the evidence shows that both applicant’s and the registrant’s services can be offered by a single entity under a single mark, and that, at the very least, these services are complementary. Even in the context of dating, consumers can use the computer delivery and audio and video streaming of data to post information and pictures of themselves, and use the recording and transmission of voice messages by telephone and wireless communication devices to make more personal connections. We find that applicant’s and the registrant’s services are related, and that this du Pont factor favors a finding of likelihood of confusion. We do not have any evidence as to the channels of trade in which the services are marketed, but because the services, as identified, can include electronic voice messaging services for the purposes of dating and social networking, and the registrant’s electronic mail services, electronic delivery of photographs via a global computer network, and streaming of audio and video material can also be used for such purposes, the classes of customers for both applicant’s and the registrant’s services must be considered to be the same. This du Pont factor also favors a finding of likelihood of confusion. This brings us to a consideration of the marks. Applicant’s mark is TANGO; the cited mark is TANGOWIRE. Ser No. 78764988 10 Applicant recognizes that “if two marks for related goods or services share the same dominant feature and the marks, when viewed in their entireties, create similar overall commercial impressions, then confusion is likely.” Brief, p. 7, citing In re J.M. Originals Inc., 6 USPQ2d 1391 (TTAB 1987). Applicant also acknowledges that “consumers would be more likely to perceive a fanciful or arbitrary term rather than a descriptive or generic term as the source- indicating feature of the mark,” brief, p. 7, and that “the word ‘wire’ is significant for Registrant’s mark in that it describes, or at least is suggestive of Registrant’s means of providing telecommunications software.” Brief, p. 8. Notwithstanding applicant’s own acknowledgement that the term WIRE in the registrant’s mark is descriptive or at least suggestive, and that descriptive terms in a mark are less likely to be perceived as the source-indicating feature, applicant asserts that the WIRE portion of TANGOWIRE is dominant in terms of creating the commercial impression of the mark. We cannot agree with applicant’s conclusion. On the contrary, it is TANGO, as the arbitrary part of the registrant’s mark, that has a greater source-indicating significance, and must be accorded greater weight as we consider both marks in their entireties. Although Ser No. 78764988 11 consumers may notice that applicant’s mark consists of just the word TANGO, while the registrant’s mark TANGOWIRE includes the word WIRE, because of the descriptiveness or suggestiveness of the word WIRE,7 consumers are likely to view the marks as variations of each other, and perhaps attribute the absence of “wire” in TANGO as reflecting that the services are for the transmission of messages by wireless communication devices. Applicant’s omission of the word WIRE from its mark does not serve to distinguish the marks; consumers are likely to view both marks as indicating services emanating from a single source. Thus, when we consider the marks in their entireties, and giving due weight to the dominant element TANGO in the cited mark, which forms the entirety of applicant’s mark, we find that the marks are very similar in appearance, pronunciation, connotation and commercial impression. This du Pont factor favors a finding of likelihood of confusion. Applicant has argued that the factor of “the number and nature of similar marks in use on similar goods” favors its position. The only marks that applicant points to, however, are the two registered marks that have been cited 7 For purposes of our analysis it is not necessary for us to determine whether WIRE is descriptive or suggestive; in either case it is entitled to less weight than the word TANGO. Ser No. 78764988 12 against its application. The presumed use of these two marks by different entities for their respective services is not a sufficient basis for us to conclude that the public has become so conditioned to TANGO marks in the field of telecommunications that, when the marks TANGO and TANGOWIRE are used for closely related services, as discussed supra, consumers will be able to distinguish the marks based on the presence or absence of the word WIRE. Accordingly, we find that applicant’s mark TANGO for its identified services is likely to cause confusion with the cited registration for TANGOWIRE. The second basis for the examining attorney’s refusal is likelihood of confusion with Registration No. 3159257 for TANGO. Obviously applicant’s mark TANGO is identical to this mark. This du Pont factor heavily favors a finding of likelihood of confusion since, where an applicant's mark is identical to the registrant's mark, there need be only a viable relationship between the respective goods or services in order to find that a likelihood of confusion exists. See In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001), and cases cited therein. However, as applicant points out, there still must be a viable relationship between the goods and the services. The mere fact that goods and services can both be described Ser No. 78764988 13 as being the telecommunications field is not necessarily sufficient to demonstrate such a relationship. See General Electric Company v. Graham Magnetics Incorporated, 197 USPQ 690 (TTAB 1977) (it is not enough to find one term that may generically describe the goods); In re Cotter and Company, 179 USPQ 828 (TTAB 1973) (the inquiry should be whether the products appeal to the same market and not whether a term can be found that describes the various products); Harvey Hubbell Incorporated v. Tokyo Seimitsu Co., Ltd., 188 USPQ 517 (TTAB 1975). In order to show that applicant’s services and the registrant’s goods are related, the examining attorney has submitted a large number of third- party registrations. We focus our discussion on the registrations highlighted by the examining attorney, as these are presumably the ones that she believes best support her position. Registration No. 2520900 (INSTANT ME) is for computer software for use in providing real-time telecommunications and providing on-line electronic bulletin boards for transmission of messages among computer users concerning a wide range of topics; Registration No. 2854201 (XO NOT JUST TALK) is for telecommunications software for Internet access, web hosting, networking, computer software for processing, storing, transmission, reception and/or Ser No. 78764988 14 retrieval of sound and/or data, and electronic mail and voice mail messaging services; Registration No. 2682507 (CEON) is for telecommunications software and telecommunications services for telecommunications service providers (emphasis added); Registration No. 2743529 (CURRENTLINK) is for communications software for transmitting information via power lines, radio frequencies, fiber and copper, and for providing access to power line servers, and electronic communications networks, namely transmission of audio and video via electronic communications networks; Registration No. 2942897 (VERSO) is for computer hardware and software for use in facilitating the transfer of data in integrated switching in telecommunications, and electronic transmissions of voice, data, graphs and web conferencing; and Registration No. 2702467 (VOXIVA) is for computer software for enabling electronic data exchange and electronic voice messaging, and communications and telecommunications services, namely providing electronic messaging and electronic voice messaging, and electronic transmission of messages and data. These registrations, while being generally for telecommunications software and telecommunications services, are for goods and services which are sufficiently Ser No. 78764988 15 different from the applicant’s and cited registrant’s identified goods and services that they do not show that applicant’s and registrant’s goods and services may emanate from a single source. Although some of the registrations identify services that would be considered legally the same as applicant’s services, those registrations do not list software that is the same as the software identified in the cited registration. Further, although we treat applicant’s identification as encompassing all services of “electronic voice messaging services, namely recording and subsequent transmission of voice messages by telephone and wireless communication devices,” and not merely such services used for the purpose of dating and social networking, there is no clear evidence that applicant’s identified services are sold through the same channels of trade to the same classes of consumers as the software identified in the cited registration. Accordingly, although the marks are identical, there is not sufficient evidence in this record for us to conclude that the goods and services are related, and therefore we find that the Office has not met its burden of proving that applicant’s mark is likely to cause confusion with Registration No. 3159257 for TANGO. Ser No. 78764988 16 Decision: The refusal on the basis of likelihood of confusion with Registration No. 3159257 for TANGO is reversed; the refusal on the basis of likelihood of confusion with Registration No. 2958546 for TANGOWIRE is affirmed. Copy with citationCopy as parenthetical citation