ADT Services, Inc.v.Safe Link Corp.

Trademark Trial and Appeal Board

Mar 31, 1999

No. 91098096 (T.T.A.B. Mar. 31, 1999)

Paper No. 31
Simms/md
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 31,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
ADT Services, Inc. substituted for ADT Security Systems,
Inc.
v.
Safe Link Corporation
_____
Opposition No. 98,096
to application Serial No. 74/516,920
filed on April 25, 1994.
_____
Glenn Mitchell of Fross, Zelnick, Lehrman & Zissu, P.C. for
ADT Services, Inc. substituted for ADT Security Systems,
Inc.
Timothy M. Barnett of Winthrop & Weinstein, P.A. for Safe
Link Corporation.
______
Before Simms, Cissel and Hairston, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
ADT Services, Inc. (opposer) has opposed the
application of Safe Link Corporation (applicant), a
Minnesota corporation, to register the mark shown below
Opposition No. 98,096
2
for services identified as “operation of long range radio
networks to transmit signals for the benefit of the security
monitoring industry.”1 In the notice of opposition, opposer
asserts that it offers and sells security equipment and
services under the marks SAFEWATCH and CUSTOMER LINK, and
security equipment for transmitting security signals over
standard data communications networks, and supervised
leased-line type security for transmitted security signals
over standard data communications networks under the mark
SIGNALINK. Opposer asserts ownership of six federal
registrations covering these marks and contends that
applicant’s mark, SAFE LINK and design, so resembles
opposer’s previously used and registered marks as to be
likely to cause confusion, to cause mistake or to deceive.

1 Application Serial No. 74/516,920, filed April 25, 1994,
claiming use in commerce since December 5, 1993.
Opposition No. 98,096
3
In its answer, applicant has denied the essential
allegations of the notice of opposition and has asserted a
general affirmative defense of waiver, estoppel,
acquiescence and/or laches. Applicant has also asserted the
“affirmative defense” that the words “safe” and “link” are
common in the communications and security fields and cannot
be distinctive of opposer’s goods and services.
The record of this case consists of testimony (and
exhibits) taken by each party; copies of opposer’s pleaded
registrations and portions of various printed publications
relied upon by opposer’s notice of reliance; copies of
third-party registrations, portions of printed publications
and dictionary definitions, all relied upon by applicant’s
notice of reliance; and the application file. The parties
have submitted briefs but no oral hearing was requested.2
Opposer’s Record
Opposer’s SAFEWATCH registrations cover security
services monitoring fire, intruders, burglars and hold-ups;
and security systems, namely, alarm transmitters, intrusion
detectors, and fire and smoke detectors, as well as smoke
and fire alarms. Its CUSTOMER LINK registration covers

2 In its brief, opposer asks us to exclude the third-party
registrations submitted by applicant because they are not
certified status and title copies of those registrations. It is
not necessary that copies of third-party registrations submitted
with a notice of reliance be certified, nor need they be current
status and title copies prepared by this Office. Plain copies of
the registrations, or the electronic equivalent thereof, are all
Opposition No. 98,096
4
installation and maintenance of burglar and fire alarms and
security monitoring systems; the transmission of information
concerning the operation and monitoring of those systems;
and burglar and fire alarm and security system monitoring
services. Finally, opposer’s SIGNALINK registrations cover
line-type security apparatus for transmitting security
signals over standard data communication networks; and
providing supervised leased-line type security for
transmitted security signals over standard data
communication networks. All of these registrations are
valid and subsisting and owned by opposer.
Opposer took the testimony of Mr. Bernard Worst, its
Director of Engineering, and Mr. Joseph Tedesco, its
Director of Systems Integration. Among other things,
opposer provides equipment and monitoring services to
monitor households for fire and break-ins. Opposer’s
systems include sensors, alarm panels, control panels and
monitoring computers.
Before discussing opposer’s residential and commercial
products and services, and the marks used in connection with
those products and services, we shall briefly discuss some
features which may be common to all of opposer’s residential
and commercial property protection services. These features
are the means of communication from the protected premises

that is required. In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB
Opposition No. 98,096
5
to the central monitoring station. This communication may
be accomplished in several different ways. One common means
is digital communication over public switched telephone
network. Another means of communication from a protected
premises to a monitoring station is by cellular phone
technology. A third means of communication is called long-
range radio frequency (RF) via a private radio network.
Finally, a fourth means of communication is commercial
packet radio, which opposer is now using.
Since the early 1980s, opposer has been offering the
SAFEWATCH home security alarm system. This system consists
of door contacts, control panels and user keypads, all
located on the premises of the residence being protected.
The sensors communicate with the control panel either by
hard-wire communication or by means of short-range radio
transmissions, so-called internal or wireless communication.
The short-range radio transmission between door and window
sensors and the control panel at the protected property
should be distinguished from the long-range radio frequency
communication from the protected premises to the central
monitoring station. Opposer also offers monitoring services
under the mark SAFEWATCH as a part of its residential home
security system. Although long-range radio frequency may be
used in home security systems to communicate between the

1994) and Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992).
Opposition No. 98,096
6
protected property and the central monitoring station,
according to opposer’s testimony, direct telephone network
communication is the primary means for this communication,
although the cellular phone technology may be used at the
request of the customer. Worst dep., 64, 67-68. Opposer
has approximately 1.4 million customers using this
residential home security system, and over 100,000 customers
per year are added. Opposer promotes its SAFEWATCH products
and services by direct mail, flyers, print advertisements,
and by radio and television. There is generally a one-time
charge for installation as well as a monthly charge for
monitoring. Worst dep., 79. Although the SAFEWATCH system
has been sold to some businesses, it is primarily targeted
to residential customers. Tedesco dep., 149.
Opposer offers its SIGNALINK and CUSTOMER LINK services
to large commercial customers. Both of these services have
been offered since the late 1980s or early ´90s. The
SIGNALINK services protect very large banks and very large
retailers by connecting remote branches to a central
monitoring point by leased telephone lines. Mr. Worst
testified that cellular phone connections or long-range
radio frequency communication could be used for these
services. Worst dep., 83. The SIGNALINK services cost
thousands of dollars. Currently, there are between 2,000
and 2,500 remote sites where SIGNALINK services are
Opposition No. 98,096
7
rendered. Mr. Worst testified, at 76, that the SIGNALINK
mark is not used in the same literature as opposer uses to
promote its SAFEWATCH residential home security products and
services, and Mr. Worst is aware of no SIGNALINK customer
who has purchased a SAFEWATCH system for its business.
By means of opposer’s CUSTOMER LINK services, large
banks and retailers are able to transfer information such as
activity reports, opening and closing reports, etc., from
various branches to a central monitoring station. Like
opposer’s SIGNALINK services, opposer’s CUSTOMER LINK
services cost several thousand dollars. Opposer has no
promotional literature that uses both the marks CUSTOMER
LINK and SAFEWATCH together. Worst dep., 82. Opposer has
between 4,500 and 5,000 customers using the CUSTOMER LINK
services. Tedesco dep., 144.
Mr. Worst testified that, to the extent that opposer
may use long-range radio frequency communication, such
communication or service is not operated by opposer, but
rather by a third party. Worst dep., 83, 99, 111, and
Tedesco dep., 162. If long-range radio frequency is used,
opposer purchases this service from a third party and offers
it to the customer.
Opposer’s SIGNALINK and CUSTOMER LINK services are
promoted at trade shows aimed at banks and retailers.
Opposition No. 98,096
8
Although applicant’s questions on cross-examination
were objected to on the grounds that they were beyond the
scope of the direct testimony, opposer’s witnesses did
testify that they were aware of various third-party marks
such as SAFETY NET for a commercial radio system, SAFECOM
used in connection with a radio frequency product, and
SAFEHOUSE used in connection with a security system similar
to opposer’s. Opposer’s witnesses had never encountered
applicant’s SAFE LINK services.
With respect to any long-range radio frequency system,
opposer’s testimony is to the effect that such a service
acts as a backup in case of the loss of direct telephone
service. Further, opposer’s promotional literature,
according to the testimony, does not contain any information
concerning long-range radio frequency communication. Worst
dep., 72.
Applicant’s Record
Applicant took the testimony of its president, Dennis
Gross. Applicant operates long-range radio networks for use
by the security monitoring industry (alarm companies).3
Applicant’s services are effectuated by the placement of a
radio transmitter at a subscriber’s premise (home or
business with an alarm system). The radio transmitter emits

3 Applicant also markets radio networks for use by alarm
companies. However, the instant application relates only to
services rather than these goods.
Opposition No. 98,096
9
a signal which is picked up by one or more repeater sites
for ultimate transmission to a monitoring center. Although
opposer is not one of applicant’s customers, applicant does
sell to alarm companies and independent dealers which
install, service and monitor alarm systems. Applicant also
offers its services to some central stations that monitor
alarm systems. The eventual end users or beneficiaries of
applicant’s services are residential and commercial
customers, although applicant itself does not communicate
directly with those end users. Applicant offers its
services at trade shows geared toward alarm companies.
With respect to the relationship between alarm
companies and companies offering long-range radio
transmission services, Mr. Gross testified, at 32, 92 and
107:
Q. Do you have any knowledge as to
whether the alarm companies would
be likely or unlikely to utilize
Safe Link’s name in [their]
marketing materials?
A. In some cases, if they use the
material directly, they may contain
the Safe Link name, but our
experience is that the alarm
companies are trying to build their
own image in the community, and if
it’s there, they don’t really push
it.
Q. And they fold your services into
their own and simply market under
their own name; is that correct?
Opposition No. 98,096
10
A. Typically, that’s been our
experience.
* * * * * * *
A …What we found with this [pamphlet]
is the fact that the majority of
the quantity that we ordered is
still sitting on shelves in our
office, is that we thought alarm
companies were going to need a lot
of help in marketing, as I
suggested before, and as it turns
out, they haven’t really wanted
that help.
* * * * * * *
A. These were never intended to be
used by Safe Link -– Safe Link has
never intended to communicate
directly with end users. Again,
we’ve always felt like the alarm
company needed help in
communicating the idea of phone
line vulnerability and the need to
provide a backup system to the
customers, and these were designed
to help the alarm company do that.
Q. You said you’ve always felt that
way. Has your opinion changed in
that respect?
A. Well, it’s changed to the extent
that very few of the alarm
companies have taken us up on our
offer. In fact, of the alarm
companies which we have sold
networks to, none of them have
requested any of this material.
Mr. Gross also testified that applicant does not make
alarm products or security systems. Further, according to
Mr. Gross, there have been no instances of actual confusion.
With respect to third-party use, Mr. Gross testified that he
Opposition No. 98,096
11
is aware of the use of the following marks: SAFETY NET for
a competitive long-range radio network; Security Link, the
name of an alarm company; SAFECOM for a long-range radio
network; FAST LINK for a long-range radio network; and FEEL
SAFE, used by an alarm company to market its product.
Arguments of the Parties
Opposer argues that confusion is likely when
applicant’s mark is compared separately and with opposer’s
marks as a group. Opposer contends that it has promoted its
SAFEWATCH, CUSTOMER LINK and SIGNALINK marks together, such
that its commercial customers are exposed to the SAFEWATCH
mark used in connection with its residential security
systems. Opposer maintains that its SAFEWATCH mark is a
famous one in the security and monitoring industry and that
its other marks, CUSTOMER LINK and SIGNALINK, are strong
marks in that industry. With respect to the services,
opposer maintains that applicant’s services are one element
of an integrated security system, typically a backup method
of communication, which type of communication is also
available to opposer’s SAFEWATCH customers. Opposer
maintains that applicant’s services are used to accomplish
the same task that is performed by opposer’s security
products and services, and applicant’s services could be
used with opposer’s products and services. That is to say,
opposer’s security systems are available with the same type
Opposition No. 98,096
12
of radio transmission backup system as that offered by
applicant. Opposer points out that applicant even prepares
literature for distribution to the ultimate residential
consumers of security systems. Opposer argues that both
parties offer services that are ultimately purchased by the
same customers -– users of security products and services.
Opposer also maintains that the parties use similar channels
of trade (trade shows) in which to distribute their goods
and services, albeit that the trade shows are different
ones. Concerning some of the evidence of third-party use,
opposer maintains that its objections (beyond the scope of
direct examination) to applicant’s questions to opposer’s
witnesses concerning knowledge of third-party trademarks
containing either SAFE or LINK were proper.4 Moreover,
opposer argues that there is no evidence of the impact of
these third-party marks on the marketplace. Because the
parties’ services may be used by the same end users, some of
whom may by relatively unsophisticated homeowners, and
because applicant’s mark combines portions of opposer’s
marks, confusion is likely, according to opposer.

4 Because the existence of third-party marks may have a bearing
on the strength or distinctiveness of opposer’s marks, we have
considered this testimony. We note that applicant’s witness has
also testified about third-party uses. However, we have given
little weight to the existence of these marks in our analysis
because of the lack of evidence about the nature and extent of
their use.
Opposition No. 98,096
13
Applicant, on the other hand, argues that the
respective marks must be compared separately because opposer
does not use them together; that no consumer can combine
applicant’s services with opposer’s security system; and
that any radio transmission backup services which opposer
uses are actually provided by third parties. Concerning the
strength of opposer’s marks, it is applicant’s position that
the house mark ADT is the strong mark, not the other marks
which opposer relies upon.
Discussion
Priority is not an issue in this case in view of
opposer's valid and subsisting registrations. King Candy
Co. v. Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108
(CCPA 1974). In any event, this record establishes
opposer’s priority.
While opposer has argued that its SAFEWATCH goods and
services are promoted with its CUSTOMER LINK and SIGNALINK
goods and services, this record does not establish any
significant common promotional effort. We do not have a
situation, therefore, where the SAFEWATCH products and
services are typically used on similar or complementary
goods and services rendered under the different marks
CUSTOMER LINK and SIGNALINK. If such were the case,
customers might come to associate these different marks with
the same entity. We note that, even if the marks were used
Opposition No. 98,096
14
together (and this record does not support that conclusion),
the common customers would be large corporate clients such
as banks or retail companies.
Although opposer has alleged that its mark SAFEWATCH is
famous, the record does not support that conclusion. While
this mark is mentioned in the articles of record, along with
the more well-known mark and trade name ADT, we do not
believe that this publicity and the evidence of sales is
sufficient support for a determination of fame.
Applicant’s services are offered only to alarm
companies (“the security monitoring industry,” according to
the description of applicant’s services), relatively
sophisticated customers. Even though applicant has prepared
material that an end user, such as a homeowner, might see,
applicant’s long-range radio frequency services are offered
and sold only to alarm companies, independent dealers and to
central monitoring stations. In other words, applicant’s
customers appear to be competitors of opposer and not
customers of opposer. Even assuming that a SAFEWATCH
residential customer of opposer encounters applicant’s SAFE
LINK and design mark in connection with a backup
communication service used as a part of a security
monitoring system, those marks, we believe, are sufficiently
different that confusion would be unlikely. They have
significant differences in sound, appearance and meaning.
Opposition No. 98,096
15
And, if large commercial customers of opposer’s CUSTOMER
LINK and SIGNALINK services were to encounter applicant’s
SAFE LINK long-range radio frequency services, those
sophisticated commercial consumers would be likely to
distinguish the marks and the source of those services.
Accordingly, because applicant’s mark and services are
sufficiently different, we find confusion to be unlikely.
Decision: The opposition is dismissed.
R. L. Simms
R. F. Cissel
P. T. Hairston
Administrative Trademarks
Judges, Trademark Trial
and Appeal Board