GlobalTransService Corp

Trademark Trial and Appeal Board

Mar 15, 2022

88863794 (T.T.A.B. Mar. 15, 2022)

This Opinion is not a Precedent of the TTAB Mailed: March 15, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re GlobalTransService Corp. _____ Serial No. 88863794 _____ Mark Terry of Mark Terry, P.A. for GlobalTransService Corp. Justine N. Burke, Trademark Examining Attorney, Law Office 121, Richard White, Managing Attorney. _____ Before Shaw, Heasley, and Allard, Administrative Trademark Judges. Opinion by Heasley, Administrative Trademark Judge: Applicant, GlobalTransService Corp., seeks registration on the Principal Register of the word and design mark (with “IMPROVING SUPPLY CHAIN VISIBILITY” disclaimed) for: GPS tracking devices; Global positioning system (GPS) apparatus; Shipping container locator device programmed to use global positioning systems (GPS) and cellular telecommunications; Electronic devices for locating and tracking shipping containers using global positioning systems Serial No. 88863794 - 2 - and cellular communication networks; Downloadable mobile applications for locating and tracking shipping containers; Downloadable computer software for locating and tracking shipping containers, in International Class 9; and Providing temporary use of non-downloadable computer software for locating and tracking shipping containers; Providing temporary use of non- downloadable computer software for locating and tracking freight over computer networks, intranets and the internet, in International Class 42.1 The Examining Attorney has refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as used in connection with these goods and services, so resembles the registered standard character mark BLUE DOT for: Computer software, namely, mobile software framework and accompanying mobile business applications for both wireless/batch remote data collection, mobile business applications for work management, mobile GIS for inspections, inventory management, RFID for preventative maintenance, inspections and audits, storeroom management, asset management, proof of delivery, and miscellaneous data collection mobile applications; Computer hardware, namely, mobile computer hardware for bar-code scanning and RFID technology, in International Class 9 as to be likely to cause confusion, to cause mistake, or to deceive.2 1 Application Serial No. 88863794 was filed on April 8, 2020 based on a declared intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). According to the description of the mark in the application, “[t]he mark consists of the wording ‘BLUE DOTT’ in grey stylized font above the words ‘IMPROVING SUPPLY CHAIN VISIBILITY’ in smaller, grey stylized font, and a pattern of blue hexagons to the right[] of the words.” The colors grey and blue are claimed a feature of the mark. The color white is not claimed, and is presented as background only. Citations to the prosecution file refer to the USPTO’s Trademark Status & Document Retrieval (“TSDR”) system and identify the documents by title, date, and page in the downloadable .pdf version. References to the briefs and other materials in the appeal record refer to the Board’s TTABVUE online docketing system. 2 Registration No. 3685104, issued on the Principal Register on Sept. 22, 2009, renewed; declarations of use and incontestability accepted and acknowledged. Serial No. 88863794 - 3 - When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal proceeded. We affirm the refusal to register. I. Likelihood of Confusion Section 2(d) of the Trademark Act provides that an applied-for mark may be refused registration if it “[c]onsists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive….” 15 U.S.C. § 1052(d). To determine whether there is a likelihood of confusion between the marks under Section 2(d), we analyze the evidence and arguments under the DuPont factors. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”) cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 113 USPQ2d 2045, 2049 (2015). We consider each DuPont factor for which there is evidence and argument. In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1161-62 (Fed. Cir. 2019). “Not all DuPont factors are relevant in each case, and the weight afforded to each factor depends on the circumstances. … Any single factor may control a particular case.” Stratus Networks, Inc. v. UBTA-UBET Commc’ns Inc., 955 F.3d 994, 2020 USPQ2d 10341, *3 (Fed. Cir. 2020). “In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods or services.” Chutter, Inc. v. Great Mgmt. Grp., LLC, 2021 USPQ2d 1001, *29 (TTAB 2021) (citing In re Chatam Int’l Inc., 380 F.3d 1340, Serial No. 88863794 - 4 - 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)). A. Similarity of the Marks Under the first DuPont factor, we determine the similarity or dissimilarity of Applicant’s and Registrant’s marks in their entireties, taking into account their appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at 567; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) aff’d 777 Fed. Appx. 516 (Fed. Cir. 2019) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). Applicant argues that the marks, taken in their entireties, are dissimilar in all of these respects. In appearance, it contends, the registered mark BLUE DOT is a two- word, two-syllable mark comprising seven letters in standard characters, whereas BLUE DOTT IMPROVING SUPPLY CHAIN VISIBILITY and Design is a six-word, thirteen-syllable mark with a pattern of blue hexagons to the right, creating “a visually unique and distinct appearance.”3 In sound, it contends, the marks differ, not only in their number of syllables, but in Applicant’s suffix: “IMPROVING 3 Applicant’s brief, 9 TTABVUE 5-6. Serial No. 88863794 - 5 - SUPPLY CHAIN VISIBILITY,” which ends with a “tea” sound, unlike Registrant’s “dot” sound.4 In connotation and commercial impression, it contends, BLUE DOTT IMPROVING SUPPLY CHAIN VISIBILITY and Design “connotes the idea of helping organizations involved in supplying a product or service to a consumer,” unlike the cited mark BLUE DOT, which “conveys an obscure and nebulous concept.”5 So even though the respective marks share some similar wording, BLUE DOT and BLUE DOTT, it argues, the words in Applicant’s mark function together to create a distinctly different connotation and commercial impression.6 We agree with the Examining Attorney, however, that the marks are more similar than dissimilar. Applicant’s mark encompasses the entirety of Registrant’s BLUE DOT mark. “Marks have frequently been found to be similar where one mark incorporates the entirety of another mark, as is the case here. Coca-Cola Bottling Co. v. Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL is similar to BENGAL LANCER); Johnson Publ’g Co. v. Int’l Dev. Ltd., 221 USPQ 155, 156 (TTAB 1982) (EBONY is similar to EBONY DRUM)….” TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1115 (TTAB 2019). The extra “T” in BLUE DOTT 4 Applicant’s brief, 9 TTABVUE 7. 5 Applicant’s brief, 9 TTABVUE 8. 6 Applicant’s brief, 9 TTABVUE 7-8 citing, e.g., Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1408-09 (TTAB 1998) (despite shared wording, HARD ROCK CAFÉ and COUNTRY ROCK CAFÉ suggest distinct musical genres because connotation is determined by the word preceding ROCK). Serial No. 88863794 - 6 - does not suffice to distinguish them, as they still carry the same sound and meaning. See Chutter v. Great Mgmt. Grp., 2021 USPQ2d 1001, at *37-38 (added letter “N” does not distinguish DANTANA’S from DANTANNA’S); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (finding MILTRON and MILLTRONICS (stylized) highly similar in appearance). While the marks must be considered in their entireties, more weight can be given to a common dominant element. Quiktrip W., Inc. v. Weigel Stores, Inc., 984 F.3d 1031, 2021 USPQ2d 35, *2-3 (Fed. Cir. 2021); In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Here, the common, dominant element is BLUE DOT(T)-the whole of the cited mark and the first two words of Applicant’s mark. These first two words are the only arbitrary or fanciful wording in Applicant’s mark, the part customers are most likely to perceive as source-identifying. Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1059-60 (TTAB 2017) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (affirming Board’s finding that “DELTA,” not the disclaimed generic term “CAFE,” is the dominant portion of the mark THE DELTA CAFE). Because they come first, they play a dominant role in Applicant’s mark, as customers will likely notice and remember them. In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). And because Applicant displays them prominently, in a large, bold typeface, consumers will be even more likely to focus on them. Sabhnani v. Mirage Brands, LLC, 2021 USPQ2d 1241, *33 (TTAB 2021) (Respondent’s composite mark dominated by the Serial No. 88863794 - 7 - word MIRAGE, displayed in a large, bold typeface, comprising the largest full word in the mark in terms of size, position, and emphasis). Since the dominant part of both marks is virtually the same, confusion may be likely notwithstanding peripheral differences in Applicant’s trailing terms. Id. at 1049 n.3. Applicant’s disclaimed terms, IMPROVING SUPPLY CHAIN VISIBILITY, are descriptive or laudatory of its goods and services, and would not tend to be perceived as source-indicating. Id. at 1049-50; Chutter, v. Great Mgmt. Grp., 2021 USPQ2d 1001, at *36 (citing In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s commercial impression”)). The trailing terms are also displayed at the bottom of the mark, in significantly smaller font, so it is reasonable to find that they “do not significantly contribute to distinguishing the two marks.” In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1062 (Fed. Cir. 2003) quoted in In re I-Coat Co., LLC, 126 USPQ2d 1730, 1736 (TTAB 2018). Applicant’s design element does not distinguish the marks, either. The blue dots in Applicant’s design, , reinforce, rather than attenuate, the similarity to Registrant’s BLUE DOT wording. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1185 (TTAB 2018) (chateau design reinforces the word CHATEAU). So the wording remains the dominant part of Applicant’s composite mark. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012) (determining that “the verbal portion of a word and design mark likely will be the dominant Serial No. 88863794 - 8 - portion”). Hence, the design element in Applicant’s mark does not serve as a point of distinction. For these reasons, contrary to Applicant’s contentions, the common term BLUE DOT(T) is not “nebulous” but inherently distinctive. It forms the dominant wording in Applicant’s mark, and is virtually identical to the entirety of Registrant’s mark. The extra letters and syllables in Applicant’s mark do not suffice to distinguish the marks. And the design in Applicant’s mark enhances, rather than diminishes, the marks’ similarity. The marks are thus more similar than dissimilar, and the first DuPont factor weighs in favor of finding a likelihood of confusion. B. Relatedness of the Goods and Services and Channels of Trade The second DuPont factor concerns the “similarity or dissimilarity and nature of the goods or services as described in an application or registration…,” and the third DuPont factor concerns the “similarity or dissimilarity of established, likely-to- continue trade channels.” DuPont, 177 USPQ at 567; Stone Lion Capital v. Lion Capital, 110 USPQ2d at 1161. We make our determination based on the goods and services as they are identified in the application and cited registration. In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017). Applicant agrees that one must look to the identification of goods and recitation of services in the application and the registration, but argues that the respective goods and services here are different and move in different channels of trade.7 77 Applicant’s brief, 9 TTABVUE 9. Serial No. 88863794 - 9 - “The mere fact that the goods under the Appellant’s Mark and the goods under the Cited Registration are loosely related to electronic and digital goods is not sufficient to demonstrate a likelihood of confusion,” Applicant states.8 We fully agree. See In re Iolo Technologies, LLC, 95 USPQ2d 1498, 1500 (TTAB 2010). Applicant further argues, however, that “[i]t is readily apparent that Appellant’s goods are intended for use in locating and tracking shipping containers using global positioning systems and cellular communication networks. The goods for the Cited Registration, on the other hand, are intended for use in inspections, inventory management, RFID for preventative maintenance, inspections, and audits. Therefore, … these products serve entirely different purposes.”9 We disagree. Applicant’s identified goods and services are, once again: GPS tracking devices; Global positioning system (GPS) apparatus; Shipping container locator device programmed to use global positioning systems (GPS) and cellular telecommunications; Electronic devices for locating and tracking shipping containers using global positioning systems and cellular communication networks; Downloadable mobile applications for locating and tracking shipping containers; Downloadable computer software for locating and tracking shipping containers; and Providing temporary use of non-downloadable computer software for locating and tracking shipping containers; Providing temporary use of non-downloadable computer software for locating and tracking freight over computer networks, intranets and the internet. Emphasis has been added to underscore the key purpose and function of Applicant’s goods and services: to locate and track shipping containers and freight. 8 Applicant’s brief, 9 TTABVUE 10. 9 Id. Serial No. 88863794 - 10 - True to its slogan, Applicant’s identified goods and services are intended for “improving supply chain visibility.” Registrant’s identified goods are, once again: Computer software, namely, mobile software framework and accompanying mobile business applications for both wireless/batch remote data collection, mobile business applications for work management, mobile GIS for inspections, inventory management, RFID for preventative maintenance, inspections and audits, storeroom management, asset management, proof of delivery, and miscellaneous data collection mobile applications; Computer hardware, namely, mobile computer hardware for bar-code scanning and RFID technology. The goods’ key purposes and functions are underscored here, as well. “RFID” is defined as an “abbreviation for radio frequency identification: a system for finding the position of a product using radio signals. RFID can be used to check where a product is in the supply chain:”10 “RFID tags are barcodes that make use of radio waves to send information tracking individual products at every stage, from delivery to stockroom to checkout, in a networked system.”11 “GIS” is an “abbreviation for Geographic Information System: a computer system for storing, organizing, and studying data that relates to the position, area, or size of things:”12 10 Cambridge English Dictionary, dictionary.cambridge.org. 3/10/22. “The Board may take judicial notice of dictionary definitions, acronyms, and abbreviations including definitions, acronyms and abbreviations in technical dictionaries, translation dictionaries and online dictionaries which exist in printed format or that have regular fixed editions.” TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE § 1208.04 (2021). And it may do so either sua sponte or on request of the applicant or examining attorney. TRADEMARK MANUAL OF EXAMINING PROCEDURE § 710.01(c) (July 2021). 11 Collins Dictionary, CollinsDictionary.com. 3/10/22. 12 Cambridge English Dictionary, dictionary.cambridge.org. 3/10/22. Serial No. 88863794 - 11 - Based on the identifications themselves, it appears that Applicant’s and Registrant’s respective goods and services overlap to perform the same essential function: both monitor and track the location and shipment of goods, from storage to delivery. See In re Info. Builders Inc., 2020 USPQ2d 10444, *3 (TTAB 2020) (“Although the identifications of Applicant’s and Registrant’s Class 9 goods are not identically worded, Applicant’s more broadly defined computer software and Registrant’s computer software essentially serve the same function and purpose….”); Iolo Technologies, 95 USPQ2d at 1500 (“Here, based on the identifications themselves, we find that applicant offers a product that is complementary in function and purpose to the software…services offered by registrant.”). So even though GPS and RFID are different technologies, they serve complementary purposes. The Board encountered a similar scenario comparing medical equipment: MRI and ultrasound equipment can serve complementary purposes, for they can be used by physicians and other medical personnel in the treatment of the same patient for such diseases as prostate and breast cancer or in the treatment of a patient with a fibroid tumor. When we consider that applicant’s and registrant’s goods are medical diagnostic equipment that can originate from the same source (applicant itself is a source of both types of equipment), that can be purchased by the same facilities, and that are used on the same patients to treat the same disease by the same physician, we conclude that these goods are related. In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009). Applicant maintains, though, that the respective goods and services are of a type that are not commonly provided by a single source under the same mark. Based on third-party evidence it adduced during prosecution, it maintains that: Serial No. 88863794 - 12 - [T]he world’s biggest providers of inventory management software (i.e., the registrant’s goods), Avercast, Relex and Odoo, show inventory management and completely lacks any indication that they also provide GPS tracking devices, software for locating and tracking shipping containers and for tracking freight (i.e., [Applicant’s] goods). …the world’s biggest provider of GPS tracking devices (i.e. [Applicant’s] goods), Tracki, completely lacks any indication that it also provides inventory management software (i.e., the registrant’s goods). Therefore, consumers familiar with the [Applicant’s] goods will not expect registrant’s goods and services to be provided by the [Applicant].13 Applicant’s attempted distinction between the respective goods and services is unavailing, however, as tracking the location and shipment of goods facilitates inventory management. One of Applicant’s third-party examples, Relex, illustrates how its inventory planning software improves shipping of inventory from manufacture to storage to retail outlets: 14 13 Applicant’s brief, 9 TTABVUE 11 (emphasis added) citing ex. B to July 19, 2021 request for reconsideration at TSDR 20-31. Avercast.eu, RelexSolutions.com, Odoo.com, Tracki.com. 14 RelexSolutions.com, Applicant’s July 19, 2021 Request for Reconsideration at 25. Serial No. 88863794 - 13 - Hence, the respective goods and services interact to improve the tracking and management of goods as they move through each link of the supply chain. To further counter Applicant’s third-party evidence, the Examining Attorney has introduced screen shots from 17 third-party websites showing that the same entity often provides goods and services of the types identified in the Application and Registration under the same mark.15 For example: • Link Labs- “Link Labs has recently released its innovative asset tracking software product….” “Link Labs’ asset tracking technology enables you to efficiently track packages and goods as they move through your supply chain…”; Inventory Management & Monitoring; “RFID tags can also be a cost-effective choice for tracking inventory as it enters and leaves a warehouse or retail facility.”16 • Automile-GPS Asset and Equipment Tracking. “Keep an eye on your equipment, trailers, containers and more”; Tracking devices that interact with RFID; Asset Tracking, “Assign jobs directly from the app”, “Manage all your items directly in the app”;17 • Cellocator- “A unique container tracking solution based on the CelloTrack and encased in a hardened enclosure, providing robust cargo monitoring with ease of installation and removal”; “The CelloTrack Nano enables real-time monitoring of the location and condition or cargo, assets and goods….”’; “The CelloTrack is suitable for a wide variety of asset management applications….”;18 15 Examining Attorney’s brief, 11 TTABVUE 12-13, June 26, 2020 Office Action at 11-80, Jan. 19, 2021 Office Action at 8-120, Aug. 18, 2021 Office Action (Response to Request for Reconsideration) at 7-98. 16 Link-Labs.com, Jan. 19, 2021 Office Action at 65-100 (emphasis added). 17 Automile.com, Jan. 19, 2021 Office Action at 8-38 (emphasis added). 18 Cellocator.com, Jan. 19, 2021 Office Action at 47-58. Serial No. 88863794 - 14 - • Logistimatics-GPS Shipment Tracking; “Get instant visibility on all of your shipments [with] our powerful, easy-to-use tracking platform for shipments.” “Track shipping containers across the globe with our container tracking product.” “Manage all of your trackers with a powerful easy-to-use dashboard.”19 • Macro 2000-“Our Container Management Software (CMS) has been designed to assist tracking of containers & is the easiest way to control your container terminal”; “Records all movements in and movements out, and sundry internal and external movements”; Inventory Management Software; “The Macro Stock Control System is a comprehensive conventional stock control system”; “The Sales and Distribution System is responsible for … the delivery of the product and all associated documentation.”;20 • WirelessLinks-GPS Asset Tracking & Status “View, monitor and track in real-time the location of every asset within your fleet and quickly see your entire asset inventory”; “Inventory management reports allow you to: …Improve supply chain management”; Asset Tracking Active RFID;21 • Mobilogix- “Tracking and monitoring your assets is key but optimizing and putting that data to work improves overall business performance”; “Mobilogix empowers the best possible data optimization through precise asset tracking, monitoring, and management for the world’s leading companies.”22 • SMSGroup- Proof of Delivery; “Scanning, photos, electronically captured signatures, and GPS tracking are all available to ensure accurate delivery 19 Logistimatics.com, Jan. 19, 2021 Office Action at 101-112 (emphasis added). 20 Macro2000.com, June 26, 2020 Office Action at 34-39 (emphasis added). 21 Wlius.com, June 26, 2020 Office Action at 65-72 (emphasis added). 22 Mobilogix.com, Aug. 18, 2021 Office Action (Response to Request for Reconsideration) at 47-56, 76-83. Serial No. 88863794 - 15 - reporting. RFID tags can also allow drivers to record delivery information without leaving their vehicle.”23 This third-party evidence supports the relatedness of the respective goods and services by showing how customers are accustomed to encountering them-offered by a single source under the same mark. See In re Detroit Athletic Co., 128 USPQ2d at 1051 (crediting relatedness evidence that third parties use the same mark for the goods and services at issue because “[t]his evidence suggests that consumers are accustomed to seeing a single mark associated with a source that sells both”); Hewlett- Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (evidence that “a single company sells the goods and services of both parties, if presented, is relevant to the relatedness analysis....”); Ricardo Media Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, *3 (TTAB 2019). Moreover, the evidence shows how the respective goods and services may be used together for the same or related purposes, may be found in the same channels of trade, and may appeal to the same classes of customers: businesses that store and ship goods. Hewlett-Packard Dev. Co., L.P. v. Vudu, Inc., 92 USPQ2d 1630, 1633 (TTAB 2009); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1203-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272-73 (TTAB 2009) (website evidence shows same or overlapping channels of trade and classes of customers). 23 TheSMSGroup.com, Aug. 18, 2021 Office Action (Response to Request for Reconsideration) at 66-75 (emphasis added). Serial No. 88863794 - 16 - For these reasons, the second and third DuPont factors, regarding the similarity of the goods and services, channels of trade, and classes of customers, favor a finding of likelihood of confusion. C. Strength or Weakness of the Cited Registered Mark Under the sixth DuPont factor, we consider whether the strength of the cited registered mark may be attenuated by “[t]he number and nature of similar marks in use on similar goods [and services].” DuPont, 177 USPQ at 567. Applicant adduces evidence of seven third-party registered marks containing BLUE DOT in one form or another in the following table to show that the wording is weak or diluted:24 24 Applicant’s brief, 9 TTABVUE 11-14; Dec. 28, 2020 Response to Office Action at 17-27 (TESS printouts). Serial No. 88863794 - 17 - Serial No. 88863794 - 18 - 25 We agree with the Examining Attorney, however, that this third-party registration evidence does not weaken the scope of protection to which the cited registered mark is entitled. “In determining the strength of a mark, we consider both its inherent strength based on the nature of the mark itself and its commercial strength, based on the marketplace recognition of the mark.” Chutter v. Great Mgmt. Grp., 2021 USPQ2d 1001, at *30. “[T]hird-party registrations, with no evidence of the extent of the use of the marks in commerce, do not diminish the commercial strength of Registrant’s mark, and are relevant only to the extent that they ‘may bear on conceptual weakness if a term is commonly registered for similar goods or services.’” In re Embiid, 2021 USPQ2d 577, *34 (TTAB 2021) (quoting Tao v. Bender, 125 USPQ2d 1043, 1057). That last phrase, “similar goods or services,” is telling, for under the sixth du Pont factor, “the controlling inquiry is the extent of third-party marks in use on ‘similar’ goods or services. . . . ‘It is less relevant that [the mark] is used on unrelated goods or 25 Applicant’s brief, 9 TTABVUE 12-13. Serial No. 88863794 - 19 - services….’” Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1694 (Fed. Cir. 2018) (quoting Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992)). Here, six of the seven third-party registrations are for unrelated goods-thermometers, software concerning infectious diseases, leadership development publications, and lighting products-“products far removed from the … products [and services] at issue and therefore … not probative.” In re Sibony, 2021 USPQ2d 1036, *7-8 (TTAB 2021). Furthermore, two of the third-party registrations, Reg. Nos. 4798644 and 4656477, have been cancelled. In re Embiid, 2021 USPQ2d 577, at *35 n. 48 (“The existence of a cancelled registration-particularly one cancelled for failure to provide a declaration of continued use-does not tend to show that the cited mark is weak due to third-party use.”) (quoting Inn at St. John’s, 126 USPQ2d at 1745). And two more, Reg. Nos. 5483360 and 5230335, were issued under Section 44(e) with no maintenance documents filed thereafter, so they do not evince use of the subject marks in the United States. Calypso Tech. Inc. v. Calypso Capital Mgmt. LP, 100 USPQ2d 1213, 1221 (TTAB 2011) (third party registrations based on international registrations are not evidence that the marks have been used in the United States). That leaves one live third-party registration, Reg. No. 5494384, for a similar mark, BLUEDOT and Design, for arguably relevant goods: computer software for use in the geo-location of mobile computer devices. That registration issued, however, issued under the Madrid Protocol, Section 66A, and no maintenance document has been filed, so like the Paris Convention registrations, it does not evince use of the registered mark in the United States. Id. See also Bond v. Taylor, 119 USPQ2d 1049, Serial No. 88863794 - 20 - 1055 (TTAB 2016) (“[E]vidence of one third-party user of a mark that is similar to [Registrant]’s mark is not sufficient to establish that [Registrant]’s mark is a weak mark entitled to only a narrow scope of protection or exclusivity of use especially when Applicant has not introduced any evidence regarding the extent to which that mark has been used.”). Moreover, the registration issued in June 2018, so it is still potentially subject to cancellation under Section 2(d). In the meantime, while it resides on the Register, its presence there will not aid an applicant in registering yet another confusingly similar mark. AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973); In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016). The sixth DuPont factor is neutral. II. Conclusion All in all, we find that the marks are similar, for use on or in connection with similar or related goods and services that flow through the same channels of trade to the same classes of customers. There is, therefore, a likelihood of confusion under Section 2(d) of the Trademark Act. 15 U.S.C. § 1052(d). Decision: The refusal to register Applicant’s mark is affirmed.