World Internet Inc.

Trademark Trial and Appeal Board

May 31, 2007

No. 78555483 (T.T.A.B. May. 31, 2007)

Mailed:
May 31, 2007
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re World Internet Inc.
________

Serial No. 78555483
_______

D. Robert Silber of D. Robert Silber, P.A. for World
Internet Inc.

Evelyn Bradley, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Bucher, Grendel and Taylor, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
World Internet Inc. seeks registration on the Principal
Register of the mark WORLD INTERNET SUMMIT (in standard
character format) for services recited in the application, as
amended, as follows:
“educational services, namely, conducting
seminars in the field of Internet marketing”
in International Class 41.1

This case is now before the Board on appeal from the
final refusals of the Trademark Examining Attorney to

1 Application Serial No. 78555483 was filed on January 27, 2005
based upon applicant’s allegation of first use anywhere at least
as early as December 1, 2002 and use in commerce at least as early
as May 2, 2003. No claim is made to the word “Summit” apart from
the mark as shown.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78555483
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register this designation based upon Sections 2(d) and
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(d) and
§ 1052(e)(1).
The Trademark Examining Attorney asserts that
applicant’s mark, when used in connection with the recited
services, so resembles the marks in the following three
registrations owned by the same party as to be likely to
cause confusion, to cause mistake or to deceive:
INTERNET
SUMMIT
for “arranging trade show exhibitions,
expositions and conferences in the field of
on-line information service” in International
Class 35;2
INTERNET
WEB SUMMIT
for “arranging and conducting trade show
exhibitions, expositions and conferences in
the field of on-line information services” in
International Class 35;3 and
GLOBAL
INTERNET
SUMMIT
for “arranging and conducting trade shows,
exhibitions, expositions and conferences in
the field of information technology” in
International Class 35; and
“providing a website on a global computer
network featuring information related to the
field of information technology” in
International Class 42.4

2 Registration No. 2373085 issued to International Data Group,
Inc. on August 1, 2000 based upon an application filed on April
26, 1995 claiming first use anywhere and first use in commerce at
least as early as April 28, 1999; Section 8 affidavit (six-year)
accepted. No claim is made to the word “Internet” apart from the
mark as shown.
3 Registration No. 2475979 issued to International Data Group,
Inc. on August 7, 2001 based upon an application filed on April
26, 1995 claiming first use anywhere and first use in commerce at
least as early as January 26, 2001. No claim is made to the term
“Internet Web” apart from the mark as shown.
4 Registration No. 2508817 issued to Standard Media
International on November 20, 2001 based upon an application filed
on January 7, 2000 based upon claims of first use anywhere and
Serial No. 78555483
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The Trademark Examining Attorney also asserts that
applicant’s mark is merely descriptive when considered in
relation to applicant’s recited services, i.e., that the
term “World Internet Summit” immediately informs potential
purchasers about the nature of applicant’s services.
Applicant and the Trademark Examining Attorney
submitted briefs.
Preliminary matters
We note that much of the material attached to
applicant’s appeal brief appears to have been submitted into
the record for the first time with the brief. The Trademark
Examining Attorney correctly objected to the tardy
submission of these materials inasmuch as the record in an
application must be complete prior to appeal. 37 C.F.R.
§ 2.142(d); TBMP §§ 1207.01 et seq. See Rexall Drug Co. v.
Manhattan Drug Co., 284 F.2d 391, 128 USPQ 114 (CCPA 1960);
and In re Psygnosis Ltd., 51 USPQ2d 1594 (TTAB 1999).
Accordingly, we have not considered these materials.5

first use in commerce in both classes at least as early as October
1999. No claim is made to the term “Global Internet” apart from
the mark as shown. This registration has since been assigned to
International Data Group, Inc.
5 We hasten to add that even if we had considered the contents
of this website, it would not have changed the result herein.
Serial No. 78555483
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Likelihood of Confusion
We turn first to the issue of likelihood of confusion.
Applicant contends that the cited service marks “are weak
marks.” (Applicant’s appeal brief, p. 3), that the
respective services are quite different, as are the
customers and channels of trade (Id. p. 5), that given the
level of applicant’s fees for its services, they will be
purchased with the requisite “amount of care and thought” by
sophisticated purchasers (Id. p. 6), and that its mark is
well-known but that there have been no incidents of actual
confusion during an extensive period of contemporaneous use
of the marks (Id. p. 7).
By contrast, the Trademark Examining Attorney contends
that the respective marks project substantially similar
connotations and convey the same commercial impressions, and
that the services are related.
Our determination of likelihood of confusion is based
upon our analysis of all of the probative facts in evidence
that are relevant to the factors bearing on the issue of
likelihood of confusion. See 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,
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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).
The services
Although the three cited registrations contain slightly
different recitals in International Class 35, they are
essentially the same – arranging (and conducting) trade show
exhibitions, expositions and conferences in the field of
online information services (or in the field of IT), and one
registration that includes providing an Internet website
featuring information related to the field of IT.
Applicant’s recitation focuses on educational services,
specifically conducting seminars on Internet marketing.
In its appeal brief, applicant cites to In re
Trackmobile Inc., 15 USPQ2d 1152 (TTAB 1990),6 arguing that
in the current case, it has shown by a submission of

6 In Trackmobile, a Section 2(d) refusal had been issued based
on a registration in which the goods were identified as “light
railway motor tractors.” The applicant, in attempting to overcome
the Section 2(d) refusal by demonstrating that its goods were
unrelated to the goods identified in the cited registration,
offered extrinsic evidence as to the nature of the registrant’s
goods – evidence that the Board considered.

Serial No. 78555483
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extrinsic evidence that the recited services are quite
different. (Applicant’s appeal brief, p. 5).
However, the Board considered the applicant’s extrinsic
evidence regarding the registrant’s goods in Trackmobile
because the Board was uncertain as to what the goods
identified in the registration entailed. That is, the Board
did not consider the extrinsic evidence in order to
determine the exact nature of the registrant’s particular
“light railway motor tractors.” Rather, given that this
term was subject to very different alternative meanings, the
Board considered the extrinsic evidence to determine
generally what type of vehicles “light railway motor
tractors” comprised.
In the present case, by contrast, no extrinsic evidence
is necessary in order to educate the Board as to what, for
example, is meant by the expression arranging conferences in
the IT field. The cited recitations are neither vague nor
uncertain. Accordingly, applicant’s reliance on Trackmobile
is misplaced, and applicant’s proffered extrinsic evidence
regarding the nature and scope of the services actually
provided by the registrant is not probative of a different
result herein.
We can assume from these recitations that registrant is
involved in an array of services, such as:
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• arranging conferences and events (e.g., trade shows,
exhibitions and expositions) focused on the Internet,
e-business and IT;
• exploring new e-business models, opportunities in the
digital marketplace, and lead generation initiatives
for entrepreneurs;
• offering expertise on technology and industry
opportunities and trends internationally, changing
patterns of profitability, and specific national IT
trends;
• providing web services and subscription research
services; and
• consulting with investors about technology purchases
and helping clients with business strategies,
including sales and marketing.
Similarly, from the web pages that applicant has placed
into the record, it is clear that applicant arranges for
large public seminars touting the secrets of how to get-
rich-quick using the Internet. The training involves advice
on affiliate marketing, how to become involved in promoting
digital products, and other Internet marketing ideas
targeted to entrepreneurs.
While it does not seem that applicant has become a
competitor to registrant, there are certainly similarities
Serial No. 78555483
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in the services they offer. Educational seminars are not
that dissimilar from conferences. The field of Internet
marketing is a subset of the larger fields of online
information services and IT. Registrant’s recitation of
services includes its providing web services, something
touted in applicant’s online ads. Accordingly, on this
record, we find that applicant’s services are related to
registrant’s recited services.
Channels of Trade
As to a related du Pont factor, applicant argues that
“ … there is little, or no, overlap between applicant’s and
registrant’s … customers, or channels of trade as identified
in the application.” However, we agree with the Trademark
Examining Attorney that the cited registrations describe the
services broadly without limitations as to their nature,
type, channels of trade or classes of purchasers. Hence, it
is presumed that the registrations encompass all services of
the type described, that they move in all normal channels of
trade, and that they are available to all potential
customers. In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992);
and In re Elbaum, 211 USPQ 639 (TTAB 1981).
On the face of the registrations and the application,
entrepreneurs who are interested in how web technologies can
Serial No. 78555483
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be used to transform business models would comprise a
receptive audience to these respective service offerings of
applicant and of registrant. The potential customers would
likely be able to discover through online information the
availability of these seminars or conferences, and would
probably attend the advertised public event in a venue such
as large hotel ballrooms or an urban convention center.
Given this presumed overlap between applicant’s and
registrant’s potential customers and channels of trade, this
du Pont factor also favors the position of the Trademark
Examining Attorney.
Similarity of the marks
Applicant does not focus on the similarity of the
marks, preferring instead to emphasize the alleged weakness
of the cited marks. However, as noted above, applicant
seeks to register the mark WORLD INTERNET SUMMIT, while the
marks in the cited registrations are INTERNET SUMMIT, INTERNET
WEB SUMMIT and GLOBAL INTERNET SUMMIT.
All these standard form marks involve the words
“Internet” and “Summit” in this exact order. “World” and
“Global” have similar connotations, and in this context, the
word “Web” also carries with it an implication of the
“worldwide web.” Accordingly, in addition to the obvious
Serial No. 78555483
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similarities in sound and appearance, we find that
applicant’s mark projects substantially the same connotation
and creates a most similar commercial impression to
registrant’s three cited marks.
The number and nature of similar marks registered for similar services
Applicant argues that we should accord the cited
registrations a narrow scope of protection in light of
widespread online usage of the shared terms drawn from the
cited registrations:
The Applicant’s and registrant’s use of the
marks in commerce tend to show that the marks
would be perceived differently by the
relevant public. Indeed, a Google Internet
search returns 37,600 pages of the
Applicant’s “World Internet Summit” mark in
use (Exhibit A) while a search of “Global
Internet Summit” returns 16,200 pages
(Exhibit B) and “Internet Web Summit” returns
2 (Exhibit C).

Applicant argues that as a result, potential purchasers
have been conditioned to look to the other elements of the
marks as a means of distinguishing the source of services in
this field. We disagree.
Without more context, the relative number of Internet
search engine hits for “World Internet Summit” and “Global
Internet Summit” that applicant has provided for the record
seems indeterminative on the question of whether or not
potential purchasers have been conditioned to look to the
Serial No. 78555483
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other elements of the marks (e.g., “Global” or “World”) in
order to distinguish the source of services in this field.
Additionally, the frequency of use on the Internet of each
of these three-word expressions would likely pale by
comparison with the occurrences of the two-word term
comprising another of registrant’s cited mark, INTERNET
SUMMIT, which applicant has adopted in its entirety.
Applicant cannot collaterally attack the validity of this
incontestable registration. And of course, as noted by the
Trademark Examining Attorney, even allegedly weak marks are
entitled to protection against registration by a subsequent
user of a similar mark for closely related services. See
Hollister Incorporated v. Ident A Pet, Inc., 193 USPQ 439
(TTAB 1976).
Conditions under which, and buyers to whom, sales are made
Applicant argues that inasmuch as its fees for its
services are $ 997.00, such a purchaser parts with his money
with the requisite “amount of care and thought.” However,
even at this price, we cannot be sure that all the potential
purchasers are sophisticated and careful. Moreover,
applicant has submitted web advertisements offering a
webcast of its Internet marketing seminar for “a mere $ 27.”
Hence, based on this record, we cannot conclude that
Serial No. 78555483
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applicant’s consumers will be any more sophisticated or
careful than the ordinary purchaser of consumer goods and
services.
Period of contemporaneous use without actual confusion
As to the du Pont factor dealing with the length of
time during and conditions under which there has been
concurrent use without evidence of actual confusion,
applicant argues that coexistence over a period of several
years provides strong evidence that confusion is not likely
to occur in the future. As to whether there has been
sufficient opportunity for confusion to occur, the record
contains no indication of the level of sales or advertising
by applicant. The absence of any instances of actual
confusion is a meaningful factor only where the record
indicates that, for a significant period of time, an
applicant’s sales and advertising activities have been so
appreciable and continuous that, if confusion were likely to
happen, any actual incidents thereof would be expected to
have occurred and would have come to the attention of one or
both of these trademark owners. Similarly, we have no
information concerning the nature and extent of registrant’s
use, and thus we cannot tell whether there has been
sufficient opportunity for confusion to occur, as we have
Serial No. 78555483
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not heard from the registrant on this point. All of these
factors materially reduce the probative value of applicant’s
argument regarding asserted lack of actual confusion.
Therefore, applicant’s claim that no instances of actual
confusion have been brought to applicant’s attention is not
indicative of an absence of a likelihood of confusion. See
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774
(TTAB 1992). In any event, we are mindful of the fact that
the test under Section 2(d) of the Act is likelihood of
confusion, not actual confusion.
Conclusion: Likelihood of Confusion
The respective services involved herein are related,
and they will likely be promoted and offered to ordinary
consumers through similar channels of trade. Furthermore,
when applicant’s mark is compared in its entirety with
registrant’s three cited marks, we find similarities in
sound, appearance, connotation and commercial impression.
Descriptiveness
A mark is merely descriptive, and therefore
unregistrable pursuant to the provisions of Section 2(e)(1)
of the Trademark Act, 15 U.S.C. § 1052(e)(1), if it
immediately conveys information of a significant ingredient,
quality, characteristic, feature, function, purpose or use
Serial No. 78555483
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of the goods or services with which it is used or is
intended to be used. In re Abcor Development Corp.,
588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978) [GASBADGE merely
descriptive of a “gas monitoring badge”]. See also In re
MBNA America Bank N. A., 340 F.3d 1328, 67 USPQ2d 1778, 1780
(Fed. Cir. 2003) [MONTANA SERIES and PHILADELPHIA CARD merely
descriptive of “credit card services.” The Court found that
a “mark is merely descriptive if the ultimate consumers
immediately associate it with a quality or characteristic of
the product or service.”]. Hence, the ultimate question
before us is whether the term WORLD INTERNET SUMMIT conveys
information about a significant feature or characteristic of
applicant’s services with the immediacy and particularity
required by the Trademark Act.
A mark is suggestive, and therefore registrable on the
Principal Register without a showing of acquired
distinctiveness, if imagination, thought or perception is
required to reach a conclusion on the nature of the goods or
services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987) [APPLE PIE merely descriptive of potpourri mixture:
“Whether a given mark is suggestive or merely descriptive
depends on whether the mark ‘immediately conveys … knowledge
of the ingredients, qualities, or characteristics of the
goods … with which it is used,’ or whether ‘imagination,
Serial No. 78555483
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thought, or perception is required to reach a conclusion on
the nature of the goods.’” (citation omitted)].
The question of whether a particular term is merely
descriptive is not decided in the abstract. That is, when
we analyze the evidence of record, we must keep in mind that
the test is not whether prospective purchasers can guess
what applicant’s goods are after seeing applicant’s mark
alone. In re Abcor, supra at 218 [“Appellant’s abstract
test is deficient – not only in denying consideration of
evidence of the advertising materials directed to its goods,
but in failing to require consideration of its mark ‘when
applied to the goods’ as required by statute”]; In re Home
Builders Association of Greenville, 18 USPQ2d 1313 (TTAB
1990) [NEW HOME BUYER’S GUIDE
merely descriptive of “real
estate advertisement services”]; and In re American
Greetings Corp., 226 USPQ 365, 366 (TTAB 1985) [APRICOT is
merely descriptive of apricot-scented dolls]. Rather, the
proper test in determining whether a term is merely
descriptive is to consider the applied-for mark in relation
to the goods or services for which registration is sought,
the context in which the mark is used, and the significance
that the mark is likely to have on the average purchaser
Serial No. 78555483
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encountering the goods or services in the marketplace. See
In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859
(Fed. Cir. 1987) [the term
“first tier” describes a class
of banks]; In re Intelligent

Instrumentation Inc., 40 USPQ2d 1792 (TTAB 1996) [the term
VISUAL DESIGNER is merely descriptive of “computer programs
for controlling the acquisition of data from measurement
devices”]; In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB
1991) [MULTI-VIS is merely descriptive of “multiple viscosity
motor oil”]; In re Engineering Systems Corp., 2 USPQ2d 1075
(TTAB 1986) [DESIGN GRAPHIX merely descriptive of computer
graphics programs]; and In re Bright-Crest, Ltd., 204 USPQ
591 (TTAB 1979) [COASTER-CARDS merely descriptive of a
coaster suitable for direct mailing].
Applicant argues that its mark is suggestive inasmuch
as the “dictionary definition of ‘world’ shows 15 entries
and ‘summit’ 9 entries.” According to applicant, the many
permutations of these multiple definitions support a
conclusion that prospective consumers will need to use
“imagination or forethought” in order to reach a conclusion
as to the nature of the involved services.
By contrast, the Trademark Examining Attorney argues
that applicant has combined three descriptive terms in such
Serial No. 78555483
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a way that within the resulting combination, each component
retains its descriptive significance in relation to the
recited services, and hence, the combination results in a
composite that is itself descriptive. In re Sun
Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001).
Specifically, the word “world” means, “involving or
extending throughout the entire world.” Applicant’s
evidence demonstrates that in addition to seminars in the
United States, applicant offers its services in places like
Australia, Malaysia and Singapore. Applicant conducts
worldwide summits or seminars in the field of Internet
marketing. In short, applicant has no raison d’être without
the “Internet.” The Trademark Examining Attorney has shown
that the term “summit,” as defined in dictionaries and as
used in the business, is synonymous with the term “seminar.”
Additionally, applicant has submitted a disclaimer of the
term “summit” in this application.
Based on this record, we find that each of the terms
“World,” “Internet” and “Summit” is descriptive when applied
to applicant’s Internet marketing seminars. We also find
that these individual words do not somehow lose this
descriptiveness in the combination “World Internet Summit.”
While a combination of words may be registrable if it
creates a unitary mark with a unique, nondescriptive or
Serial No. 78555483
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incongruous meaning, in this case each component of
applicant’s mark WORLD INTERNET SUMMIT retains its
descriptive significance when used in the combination, and
the combination as a whole is also merely descriptive of
applicant’s services. When applied to Internet marketing
seminars held in the United States, Asia and Australia,
there is nothing which would require the exercise of
imagination, cogitation or mental processing or necessitate
the gathering of further information in order for the merely
descriptive significance of the term to be readily apparent
to consumers of applicant’s services.
Accordingly, we find that the term WORLD INTERNET
SUMMIT, when used in connection with seminars in the field
of Internet marketing, would be merely descriptive of the
nature of the services, as contemplated under Section
2(e)(1) of the Act.
Decision: The refusal to register this mark under
Section 2(d) of the Act is hereby affirmed, as is the
refusal to register this mark under Section 2(e)(1) of the
Act.