Axel Ltd. Co.

Trademark Trial and Appeal Board

Jan 24, 2014

No. 85473757 (T.T.A.B. Jan. 24, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
January 24, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Axel Ltd. Co.
_____

Serial No. 85473757
Serial No. 85473765
_____

Matthew H. Swyers of The Trademark Company for Axel Ltd. Co.

Edward Nelson, Trademark Examining Attorney, Law Office 106 (Mary I. Sparrow,
Managing Attorney).
_____

Before Mermelstein, Bergsman and Lykos, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Axel Ltd. Co. (“applicant”) filed two use-based applications for the mark
MOBILE NATIONS and design, shown below,

for the services set forth below:
Serial No. 85473757
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2

Providing on-line chat rooms and electronic bulletin
boards for transmission of messages among users in the
field of general interest; Providing on-line chat rooms for
transmission of messages among computer users
concerning telecommunications, mobile telephony, E-mail,
mobile phones, PDAs and wireless communications;
Providing general and non-consumer information online
in the field of telecommunications, mobile telephony, E-
mail, mobile phones, PDAs and wireless communications,
in Class 38;1
Marketing services, namely, providing informational web
pages designed to generate sales traffic via hyperlinks to
other web sites; On-line retail store services featuring
downloadable ring tones; Online retail store services
featuring consumer electronics and telecommunication
products and accessories; Providing on-line directory
information services also featuring hyperlinks to other
web sites, in Class 35;2 and
Computer services, namely, creating an online community
for registered users to engage in social networking, give
and receive peer-to-peer help and feedback for skill and
knowledge building, and showcase their talents;
Computer services, namely, redirecting electronic mail to
changed personal electronic address, in Class 42.3
Applicant disclaimed the exclusive right to use the word “Mobile.” The description
of the mark reads as follows: “The mark consists of an orange outline of a rectangle,
to the left of the black word ‘MOBILE’ which appears above the black word
‘NATIONS.’”
The Trademark Examining Attorney refused to register both applications
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground

1 Serial No. 85473757.
2 Serial No. 85473765.
3 Serial No. 85473765.
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3

that applicant’s mark so resembles the registered mark MOBILENATION and
design, shown below, for “telecommunication services, namely, transmission of
voice, data, graphics, images, audio and video by means of telecommunications
networks, wireless communication networks, and the Internet; telecommunications
services, namely, wire telephone services,” in Class 38, as to be likely to cause
confusion.4

The description of the mark reads as follows: “The mark consists of the encircled
lowercase letters ‘m’ and ‘n’ joined together in ascending height followed by the
letters ‘MOBILENATION’.”
When, as here, applicant has filed ex parte appeals to the Board in two co-
pending applications, and the cases involve common issues of law or fact, the Board,
upon request by the applicant or examining attorney or upon its own initiative, may
order the consolidation of the appeals for purposes of briefing, oral hearing, or final
decision. TBMP § 1214 (3d ed. rev. 2 2013). See also, e.g., In re Anderson, 101
USPQ2d 1912, 1915 (TTAB 2012) (Board sua sponte consolidated two appeals); In re
Country Music Association, Inc., 100 USPQ2d 1824, 1827 (TTAB 2011) (same); In re
Bacardi & Co. Ltd., 48 USPQ2d 1031, 1033 (TTAB 1997) (Board sua sponte

4 Registration No. 4299917, issued March 12, 2013.
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4

considered appeals in five applications together and rendered single opinion).
Accordingly, the Board consolidates these appeals. References to the record refer to
Application Serial No. 85473757 unless otherwise indicated.
Our determination under Section 2(d) is based on an analysis of all of the
probative 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, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks”). These factors, and any
other relevant du Pont factors in the proceeding now before us, will be considered in
this decision.
A. The similarity or dissimilarity of the marks in terms of appearance, sound,
connotation and commercial impression and the strength of the mark in the
cited registration.

We turn first to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177
USPQ at 567. In a particular case, any one of these means of comparison may be
critical in finding the marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534,
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1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1987). In
comparing the marks, we are mindful that the test is not whether the marks can be
distinguished when subjected to a side-by-side comparison, but rather whether the
marks are sufficiently similar in terms of their overall commercial impression so
that confusion as to the source of the goods or services offered under the respective
marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants
Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No.
92-1086 (Fed. Cir. June 5, 1992).
While the marks are not identical, they are similar because both marks
include a variation of the term “Mobile Nation”; applicant’s mark includes the term
MOBILE NATIONS and the registered mark includes the term MOBILENATION.
However, our analysis of the similarity or dissimilarity of the marks cannot be
predicated on dissecting the marks into their various components; that is, the
decision must be based on the entire marks, not just part of the marks. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). See also
Franklin Mint Corp. V. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 23, 234 (CCPA
1981) (“It is axiomatic that a mark should not be dissected and considered
piecemeal; rather, it must be considered as a whole in determining likelihood of
confusion”). On the other hand, different features may be analyzed to determine
whether the marks are similar. Price Candy Company v. Gold Medal Candy
Corporation, 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955). In fact, there is
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nothing improper in stating that, for rational reasons, more or less weight has been
given to a particular feature of a mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. In re National Data Corp., 224 USPQ
at 751.
We find that the word portions of the marks MOBILE NATIONS and
MOBILENATION are the dominant elements of both marks. While the design
elements in the marks are different, neither design element is so prominent or well-
known as to obviate the likelihood of confusion arising from consideration of the
marks in their entireties. In this regard, when the marks consist of words and a
design, the words are normally given greater weight because they would be used by
consumers to request the services. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593,
1596 (TTAB 1999); In re Appetito Provisions Co., 2 USPQ2d 1553, 1554 (TTAB
1987). See also Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560,
4 USPQ2d 1793, 1798 (Fed. Cir. 1987); Giant Food, Inc. v. Nation’s Food Service,
Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). In the settings of both marks,
the terms MOBILE NATIONS and MOBILENATION project the basic significance
of the marks.
The presence or absence of a space between the two words (MOBILE
NATIONS vs. MOBILENATION) is an inconsequential difference which, even if
noticed or remembered by consumers, would not serve to distinguish these marks.
See, e.g., Seaguard Corp. v. Seaward International, Inc., 223 USPQ 48, 51 (TTAB
1984) (SEA GUARD and SEAGUARD are “essentially identical”); In re Best Western
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Family Steak House, Inc., 222 USPQ 827 (TTAB 1984) (“there can be little doubt
that the marks [BEEFMASTER for restaurant services and BEEF MASTER for
frankfurters and bologna] are practically identical and indeed applicant has not
argued otherwise.”) (Emphasis in the original).
The addition of the letter “S” at the end of the word portion in applicant’s
mark MOBILE NATIONS does little to distinguish it from the word portion of the
mark in the cited registration MOBILENATION. Calvin Klein Industries Inc. v.
Calvins Pharmaceuticals Inc., 8 USPQ2d 1369, 1271 (TTAB 1988) (likelihood of
confusion between CALVIN for men’s body products and CALVINS for condoms
because the marks are virtually identical and the goods are related); In re Curtice-
Burns, Inc., 231 USPQ 990, 992 (TTAB 1986) (applicant’s mark MCKENZIE’S and
the registered mark MCKENZIE “are virtually identical in commercial
impression”); Winn's Stores, Incorporated v. Hi-Lo, Inc., 203 USPQ 140, 143 (TTAB
1979) (little if any trademark significance can be attributed to apostrophe and letter
“s” in opposer's mark “Winn’s” when compared with applicant's mark “Win-Way”).
Finally, as used in connection with the identified services, the marks have
the same meaning and they engender the same commercial impression: that is, a
cellular community for wireless communications.
Although not repeated in its briefs, applicant argued during prosecution that
that because the mark in the cited registration is diluted and entitled to only a
narrow scope of protection or exclusivity of use, consumers can distinguish the
marks and, therefore, applicant’s mark is not likely to cause confusion with the
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mark in the cited registration.5 To support its argument, applicant submitted
copies of 12 registrations consisting of either the word “Nation” or “Mobile,” but not
both, for related services. See for example,
1. Registration No. 3556118 for the mark UNWIRED NATION;
2. Registration No. 2889632 for the mark T-MOBILE USA; and
3. Registration No. 3820731 for the mark UBER NATION.
There are two problems with applicant’s evidence and argument which
prevents us from finding that the mark in the cited registration is diluted and
entitled to only a narrow scope of protection or exclusivity of use, that consumers
can distinguish the marks and that applicant’s mark is not likely to cause confusion
with the mark in the cited registration. First, absent evidence of actual use, third-
party registrations have little probative value because they are not evidence that
the marks are in use on a commercial scale or that the public has become familiar
with them. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ
462, 463 (CCPA 1973) (the purchasing public is not aware of registrations reposing
in the U.S. Patent and Trademark Office); Productos Lacteos Tocumbo S.A. de C.V.
v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011). See also In
re Hub Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983).
[I]t would be sheer speculation to draw any inferences
about which, if any of the marks subject of the third[-
]party registrations are still in use. Because of this doubt,
third[-]party registration evidence proves nothing about
the impact of the third-party marks on purchasers in
terms of dilution of the mark in question or conditioning

5 November 16, 2011 response to Office action.
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of the purchasers as to their weakness in distinguishing
source.
Id. at 286. See also Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22
USPQ2d 1542, 1545 (Fed. Cir. 1992) (“As to strength of a mark, however,
registration evidence may not be given any weight”).
Second, none of the third-party registrations include both “Mobile” and
“Nation” or variations thereof and, therefore, none of the marks in the third-party
registrations are as close to the mark in the cited registration as applicant’s mark.
In view of the foregoing, we find that the marks are similar in terms of
appearance, sound, connotation and commercial impression.
B. The similarity or dissimilarity and nature of the services, the established
likely-to-continue channels of trade and classes of consumers.

1. Application Serial No. 85473757.
Applicant is seeking to register its mark for the following services:
Providing on-line chat rooms and electronic bulletin
boards for transmission of messages among users in the
field of general interest; Providing on-line chat rooms for
transmission of messages among computer users
concerning telecommunications, mobile telephony, E-mail,
mobile phones, PDAs and wireless communications;
Providing general and non-consumer information online
in the field of telecommunications, mobile telephony, E-
mail, mobile phones, PDAs and wireless communications.
The recitation of services in the cited registration is set forth below:
Telecommunication services, namely, transmission of
voice, data, graphics, images, audio and video by means of
telecommunications networks, wireless communication
networks, and the Internet; telecommunications services,
namely, wire telephone services.
Serial No. 85473757
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The Trademark Examining Attorney submitted five use-based, third-party
registrations for services listed in both the application (Serial No. 85473757) and
the cited registration. Third-party registrations which individually cover a number
of different services that are based on use in commerce have some probative value
to the extent that they serve to suggest that the listed services are of a type which
may emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785-1786; In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6
(TTAB 1988). The registrations are listed below.6
Mark Reg. No. Services
WATCHITOO 3816546 Providing online chat rooms and
electronic bulletin boards for
transmission of messages among users in
the field of general interest;

Telecommunication services, namely,
worldwide switched text and message
transmission services, electronic message
sending and outcall notification services;
providing electronic and digital
transmission of voice, data, images
signals, and messages in relation to
using mobile devices, namely, to look up
user profile information, search for users,
send messages to users, post information
viewable by users, add contacts, and
provide notifications; electronic
transmission of instant messages and
data

6 We have not included the entire recitation of services for each of the registrations. Only
the services that are in applicant’s application and registrant’s registration are listed. We
did not consider Registration No. 4299898 for the mark ICORRECT or Registration No.
4291085 for a design mark because both of those registrations were based on Section 44 and
not on use in commerce.
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Mark Reg. No. Services
TRACKALERT 3820819 Providing online chat rooms and
electronic bulletin boards for
transmission of messages among users in
the field of general interest;

Electronic and digital transmission of
voice, data, images, signals and
messages; message collection and
transmission
STARS AND STRIPES 3009353 Providing on-line chat rooms and
electronic bulletin boards for
transmission of messages among
computer users concerning news and
subjects of general interest;

Electronic and digital transmission of
voice, data, images, signals and
messages
TRENDFORCE 3147999 Telecommunication gateway services
providing on-line electronic bulletin
boards for transmission of messages
among computer users concerning
various topics;

Telecommunication services, namely
wireless transmission, uploading and
downloading of voice, data, images,
audio, video, signals and message with
wireless calling plans; wireless telephone
communications
ADELANTE 3246332 Providing on-line electronic bulletin
boards for transmission of messages
among users concerning a wide variety of
topics;

Telecommunication services, namely,
wireless transmission, uploading and
downloading of voice, data, images,
audio, video, signals and message with
wireless calling plans; wireless telephone
services

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Chat rooms and bulletin-boards are electronic means of communication.
“Chat rooms” are “online spaces where individuals possessing similar interests
might congregate, converse, and even share their physical locations to facilitate
meeting in person.”7 Likewise, a “bulletin-board system” is a “computerized system
used to exchange public messages or files. … Any user may ‘post’ his or her own
message (so that they appear on the site for all to read).”8 Because chat rooms and
bulletin-board systems are electronic means of communication, the third-party
registrations support finding that telecommunication services encompass those
means of electronic communication. Therefore, telecommunication services and
providing electronic bulletin board or chat room services are related.
Because there are no limitations as to channels of trade or classes of
purchasers in the recitation of services in the cited registration, it is presumed that
registrant’s services move in all channels of trade normal for those services, and
that they are available to all classes of purchasers for those services, including
applicant’s services. See Paula Payne Products Co. v. Johnson Publishing Co., 473
F.2d 901, 177 USPQ 76 (CCPA 1973); Kalart Co. v. Camera-Mart, Inc., 258 F.2d
956, 119 USPQ 139 (CCPA 1958); In re Linkvest S.A., 24 USPQ2d 1716, 1716
(TTAB 1992). Therefore, because the applicant’s services are identical in part to

7 “Internet,” ENCYCLOPAEDIA BRITANNICA (2013). The Board may take judicial notice of
information from encyclopedias. Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La
Michoacana Inc., 98 USPQ2d 1921, 1934 n.6 (TTAB 2011). “Chat rooms” are defined in the
“Internet” entry.
8 "Bulletin-board system (BBS)," ENCYCLOPAEDIA BRITANNICA (2013).
Serial No. 85473757
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those in the cited registration, applicant’s channels of trade are likewise identical
(at least in part) to those of the registrant.
Applicant argues that its services are different and move in different
channels of trade because “[a]pplicant’s services are used exclusively in connection
with operating numerous leading websites catering to smartphone and tablet
owners. [Applicant’s mark] is the umbrella brand for five mobile communities…
The specific information provided includes industry news and rumors, original
opinion editorials, help and how to content and reviews about phones tablets, apps
and accessories. … Applicant uses its mark in association with services that are
provided exclusively through websites consisting of blogs, community forums, and e-
commerce stores and hosted at [applicant’s five mobile communities].”9
However, because the scope of the registration applicant seeks is defined by
its application (and not by its actual use) it is the application (and not actual use)
that we must look to in determining applicant’s right to register:
The authority is legion that the question of registrability
of an applicant's mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant's goods, the particular
channels of trade or the class of purchasers to which sales
of the goods are directed.
Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990).

9 Applicant’s Brief, pp. 10-11.
Serial No. 85473757
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14

In view of the foregoing, we find that the services are related and that they
move in the same channels of trade.
2. Application Serial No. 85473765 – Class 35.
Applicant is seeking to register its mark for the following services:
Marketing services, namely, providing informational web
pages designed to generate sales traffic via hyperlinks to
other web sites; On-line retail store services featuring
downloadable ring tones; Online retail store services
featuring consumer electronics and telecommunication
products and accessories; Providing on-line directory
information services also featuring hyperlinks to other
web sites.
The recitation of services in the cited registration is set forth below:
Telecommunication services, namely, transmission of
voice, data, graphics, images, audio and video by means of
telecommunications networks, wireless communication
networks, and the Internet; telecommunications services,
namely, wire telephone services.
The Trademark Examining Attorney argues that “[c]ollectively, the identified
services of both applicant and registrant demonstrate that the identified services
are inter-related in the field of telecommunications and wireless networks that
provide a wide variety of data and information and user activities to and for
others.”10 In support of this argument, the Trademark Examining Attorney
submitted two use-based, third-party registrations for services listed in both the
application (Serial No. 85473765) and the cited registration. The registrations are
listed below:

10 Trademark Examining Attorney’s Brief, page 6 (unnumbered).
Serial N
Serial N

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Serial No. 85473757
Serial No. 85473765

16

complementary nature of the goods); In re Donnay International, S.A., 31 USPQ2d
1953, 1955 (TTAB 1994) (two third-party registrations with both tennis rackets and
soccer balls “do not persuade us it is the norm for companies to sell both rackets and
soccer balls and to adopt a single product mark for both, or that customers would be
aware of such a practice, such that they would assume that the products emanate
from a the same source if they were sold under the same or similar marks.”). See
also In re Princeton Tectonics Inc., 95 USPQ2d 1509, 1510 (TTAB 2010) (under the
circumstance of this case, one third-party registration is not sufficient to establish
that “personal headlamps” and “lighting fixtures” are goods that emanate from a
single source).
With respect to the channels of trade and classes of consumers, the
Trademark Examining Attorney argues that “the registrant operates in all normal
channels of trade and reaches all classes of purchasers of the identified goods and/or
services.”11 However, the Trademark Examining Attorney submitted no evidence
regarding the channels of trade or classes of purchasers. While channels of trade
and classes of purchasers will be presumed identical if and to the extent the goods
and services are shown to be identical, Genesco Inc. v. Martz, 66 USPQ2d 1260,
1268 (TTAB 2003); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994);
see In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even
though there was no evidence regarding channels of trade and classes of consumers,
the Board was entitled to rely on this legal presumption in determining likelihood of

11 Id.
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17

confusion), the examining attorney’s evidence does not establish that applicant’s
marketing and retail services are in fact identical to the registrant’s identified
telecommunications services.
In view of the foregoing, we find that the Trademark Examining Attorney
failed to show that the services are related, that the services move in the same
channels of trade or that the services are sold to the same classes of consumers.
3. Application Serial No. 85473765 – Class 42.
Applicant is seeking to register its mark for the following services:
Computer services, namely, creating an online community
for registered users to engage in social networking, give
and receive peer-to-peer help and feedback for skill and
knowledge building, and showcase their talents;
Computer services, namely, redirecting electronic mail to
changed personal electronic address.
The recitation of services in the cited registration is set forth below:
Telecommunication services, namely, transmission of
voice, data, graphics, images, audio and video by means of
telecommunications networks, wireless communication
networks, and the Internet; telecommunications services,
namely, wire telephone services.
The Trademark Examining Attorney submitted four use-based, third-party
registrations for services listed in both the application (Serial No. 85473765) and
the cited registration. The registrations are listed below.

Serial N
Serial N

Mark
LOVEP
MAGIC
SOOLIG

“S
member
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4176715
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4326688
4331484
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et;
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site on th
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Serial No. 85473757
Serial No. 85473765

19

messages and chat, set up blogs (Web diaries) and discussion groups, and share
opinions.”12 “Telecommunications” is defined as “communicating information,
including data, text, pictures, voice and video over long distance.”13 In this case, the
third-party registrations support the nexus between the services because social
networking services utilize online telecommunications and consumers encountering
similar marks for both services are likely to believe that they emanate from the
same source.
According to applicant’s witness Marcus Adolfsson, applicant’s mark “is used
exclusively with operating numerous leading websites catering to smartphone and
tablet owners.”14 The services are provided through websites consisting of blogs,
community forums, and e-commerce stores.15 Because there are no limitations as to
channels of trade or classes of purchasers in the recitation of services in the cited
registration, registrant’s telecommunications could also be used to operate website
for smartphone and tablet owners and be provided through websites.
In view of the foregoing, we find that the services are related and that they
move in the same channels of trade.

12 "Internet," ENCYCLOPAEDIA BRITANNICA (2013). “Social networking sites” are defined
in the “Internet” entry.

13 THE COMPUTER GLOSSARY, p. 394 (7th ed. 1995). The Board may take judicial notice
of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213
USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
14 Adolfsson Dec. ¶2 attached to applicant’s March 21, 2011 response to Office Action (Serial
No. 85473765).
15 Id. at ¶¶3 and 4.
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Serial No. 85473765

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C. Degree of consumer care.
Applicant argues that its “services exist only for smartphone and tablet
owners seeking reviews, getting started guides, and forums for their mobile devices.
… Thus, clients will be choosing services which are designed exclusively for them.
… In contrast, [registrant’s] mark is used to attract individuals seeking a wireless
savings club. … As such, the average consumer of the cited mark’s services would
exercise a high level of sophistication in purchasing their services as part from the
services of Applicant’s mark therefore minimizing any likelihood of confusion.”16
However, as discussed above, we are bound by the recitation of services in the
cited registration and applicant’s application, not by what the evidence may show
the actual services to be. See In re Elbaum, 211 USPQ 639, 640 (TTAB 1981), citing
Kalart Co., Inc. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958) (in
considering the scope of the cited registration, we look to the registration itself, and
not to extrinsic evidence about the registrant’s actual goods, customers, or channels
of trade). We cannot resort to extrinsic evidence to restrict applicant’s or
registrant’s services, channels of trade, or likely customers. See In re Bercut-
Vandervoort & Co., 229 USPQ 63, 764 (TTAB 1986) (evidence that relevant goods
are expensive wines sold to discriminating purchasers must be disregarded given
the absence of any such restrictions in the application or registration).
In this regard, we note that the services listed in applicant’s recitation of
services are rendered to users of mobile phones, email, personal digital assistants

16 Applicant’s Brief, p. 13.
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Serial No. 85473765

21

and computers; in other words, virtually everyone. With such a broad range of
potential purchasers, not all can reasonably be expected to exercise a high degree of
care. See In re Pierce Foods Corporation, 230 USPQ 307, 309 (TTAB 1986) (“Nor
are we persuaded by applicant's arguments that confusion is unlikely because the
purchasers are careful and sophisticated. Applicant's institutional purchasers could
well range in size from a large motel and restaurant chain to a relatively small
restaurant. Therefore, not all of applicant's purchasers can be expected to be as
highly discriminating as applicant contends. Also, even a sophisticated purchaser
may not necessarily be sophisticated concerning trademarks and therefore, able to
avoid being confused with respect to source.”).
In view of the foregoing, we find that the degree of care factor favors finding
that there is a likelihood of confusion.
D. Instances of actual confusion.
Applicant argues that it is not aware of any instances of confusion between
the services offered in connection with the marks. However, applicant’s assertion,
in an ex parte proceeding, of the contemporaneous use of applicant’s and registrant’s
marks without actual confusion has little, if any, probative value. See In re Bisset-
Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (stating that self-
serving testimony of applicant’s corporate president's unawareness of instances of
actual confusion was not conclusive that actual confusion did not exist or that there
was no likelihood of confusion); In re Binion, 93 USPQ2d 1531, 1536 (TTAB 2009);
Serial No. 85473757
Serial No. 85473765

22

In re 1st USA Realty Professionals Inc., 84 USPQ2d 1581, 1588 (TTAB 2007); and In
re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984).
The du Pont factor of the length of time during and conditions under which
there has been contemporaneous use without evidence of actual confusion is
considered neutral.
E. Balancing the factors.
1. Application Serial No. 85473757.
In view of the facts that the marks are similar, the services are related and
that the services move in the same channels of trade, we find that applicant’s mark
MOBILE NATIONS and design for “providing on-line chat rooms and electronic
bulletin boards for transmission of messages among users in the field of general
interest; providing on-line chat rooms for transmission of messages among computer
users concerning telecommunications, mobile telephony, e-mail, mobile phones,
PDAs and wireless communications; providing general and non-consumer
information online in the field of telecommunications, mobile telephony, e-mail,
mobile phones, PDAs and wireless communications” is likely to cause confusion
with the mark MOBLENATION and design for “telecommunication services,
namely, transmission of voice, data, graphics, images, audio and video by means of
telecommunications networks, wireless communication networks, and the Internet;
telecommunications services, namely, wire telephone services.”

Serial No. 85473757
Serial No. 85473765

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2. Application Serial No. 85473765 – Class 35.
Despite the similarity of the marks, because there is insufficient evidence in
the record that the services are related and that they move in the same channels of
trade, we find that applicant’s mark MOBILE NATIONS and design for “marketing
services, namely, providing informational web pages designed to generate sales
traffic via hyperlinks to other web sites; on-line retail store services featuring
downloadable ring tones; online retail store services featuring consumer electronics
and telecommunication products and accessories; providing on-line directory
information services also featuring hyperlinks to other web sites” is not likely to
cause confusion with the mark MOBLENATION and design for “telecommunication
services, namely, transmission of voice, data, graphics, images, audio and video by
means of telecommunications networks, wireless communication networks, and the
Internet; telecommunications services, namely, wire telephone services.”
3. Application Serial No. 85473765 – Class 42.
In view of the facts that the marks are similar, the services are related and
the services move in the same channels of trade, we find that applicant’s mark
MOBILE NATIONS and design for “computer services, namely, creating an online
community for registered users to engage in social networking, give and receive
peer-to-peer help and feedback for skill and knowledge building, and showcase their
talents; computer services, namely, redirecting electronic mail to changed personal
electronic address” is likely to cause confusion with the mark MOBILENATION and
design for “telecommunication services, namely, transmission of voice, data,
Serial No. 85473757
Serial No. 85473765

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graphics, images, audio and video by means of telecommunications networks,
wireless communication networks, and the Internet; telecommunications services,
namely, wire telephone services.”
Decision: The refusal to register application Serial No. 85473757 is
affirmed.
The refusal to register application Serial No. 85473765 in Class 42 is
affirmed.
The refusal to register application Serial No. 85473765 in Class 35 is
reversed.
Application Serial No. 85473765 will be published for opposition in Class 35
only.