Axel Ltd. Co.Download PDFTrademark Trial and Appeal BoardJan 24, 2014No. 85473757 (T.T.A.B. Jan. 24, 2014) Copy Citation 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 Serial No. 85473765 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. Serial No. 85473757 Serial No. 85473765 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. Serial No. 85473757 Serial No. 85473765 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, Serial No. 85473757 Serial No. 85473765 5 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 Serial No. 85473757 Serial No. 85473765 6 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 Serial No. 85473757 Serial No. 85473765 7 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 Serial No. 85473757 Serial No. 85473765 8 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. Serial No. 85473757 Serial No. 85473765 9 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 Serial No. 85473765 10 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. Serial No. 85473757 Serial No. 85473765 11 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 Serial No. 85473757 Serial No. 85473765 12 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 Serial No. 85473765 13 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 Serial No. 85473765 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 Mark LOVEP In without are of a When s related, marks a is askin (TTAB registra similar and we o. 854737 o. 854737 OST view of more, are type whic o few third it would re used in g us to d 2013) (th tions and marks; th bsite evi 57 65 the differ insufficie h would b -party reg behoove t connection raw. See e Tradem two third- e Board n dence, wh Reg. No. 4176715 4329998 ences in nt for us t e perceived istrations he Tradem with both In re Sela ark Exam party web oted that ile not 15 Goods On-lin featur commu social global Teleco the re docum electro Promo others the we Teleco transm image telecom commu Intern the servic o draw th as likely are subm ark Exam services t Prods., ining Att sites to sh the combi substantia /services e directo ing inform nities a networkin communic mmunicat ceipt and ents, ima nic transm ting the by provi bsites of o mmunicat ission of s, audio a municati nication et es, two t e inference to emana itted to sh ining Att o corrobor LLC, 107 orney sub ow that th nation of l, was s ry-informa ation reg nd social g services ation netw ions serv delivery ges and o ission goods an ding hype thers; ion servi voice, d nd video ons netw network hird-party that the te from th ow that th orney to ate the inf USPQ2d mitted tw e goods w third-part ufficient tion serv arding vir network by mean orks; ices, nam of messa ther data d service rtext link ces, nam ata, grap by mean orks, wire s, and registrati listed serv e same sou e services show how erence tha 1580, 158 o-third p ere sold u y registrat to show ices tual ing; s of ely, ges, by s of s to ely, hics, s of less the ons, ices rce. are the t he 6-87 arty nder ions the 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. Serial No. 85473757 Serial No. 85473765 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 o. 854737 o. 854737 OST MOMENT AN ocial netw s with sh 57 65 S orking sit ared inter Reg. No. 4176715 4326715 4326688 4331484 es” “use so ests swap 18 Goods Teleco the re docum electro Social global Teleco transm image telecom commu Intern Online Teleco provid intera compu compu commu genera Provid the p genera Teleco provid faciliti betwee mobile wired device Provid registe and to ftware to f files, pho /services mmunicat ceipt and ents, ima nic transm networkin communic mmunicat ission of s, audio a municati nication et; social net mmunicat ing online ction betw ters, m ters, and nication l interest; ing a web urpose of l interest mmunicat ing online es for n and am and ha and w s; ing an onl red users engage in acilitate o tographs, ions serv delivery ges and o ission; g service ation netw ion servi voice, d nd video ons netw network working s ion servi facilities een and a obile an wired devices site on th social n purposes ion servi and telec real-time ong users ndheld co ireless c ine commu to shar social net nline comm videos an ices, nam of messa ther data s by mean orks ces, nam ata, grap by mean orks, wire s, and ervices ces, nam for real- mong use d hand and wire on topics e interne etworking ces, nam ommunica interac of compu mputers, ommunica nity forum e informa working unities w d music, ely, ges, by s of ely, hics, s of less the ely, time rs of held less of t for for ely, tion tion ters, and tion for tion here send 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. Serial No. 85473757 Serial No. 85473765 20 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. Serial No. 85473757 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 23 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 24 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. Copy with citationCopy as parenthetical citation