Golgi Technologies, Inc.

Trademark Trial and Appeal Board

Jul 10, 2018

No. 87130545 (T.T.A.B. Jul. 10, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: July 10, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Golgi Technologies, Inc.
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Serial No. 87130545

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Travis Dahlgren Wilson of The Law Offices of Travis D. Wilson,
for Golgi Technologies, Inc.

Charles H. Hiser IV, Trademark Examining Attorney, Law Office 112,
Renee Severance, Managing Attorney.
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Before Zervas, Shaw and Adlin,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Golgi Technologies, Inc. (“Applicant”) seeks registration on the Principal Register
of the standard character mark GOLGI for the following services:
“Business networking; Database management;
Advertising, marketing and promotional services related to
all industries for the purpose of facilitating networking and
socializing opportunities for business purposes; Business
management consulting with relation to strategy,
marketing, sales, operation, product design particularly
specializing in the use of analytic and statistic models for
the understanding and predicting of consumers,
Serial No. 87130545
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businesses, and market trends and actions” in Class 35;
and
“Computer security services in the nature of providing an
internet trust center, namely, computer security assurance
and administration of digital keys and digital certificates;
Computer security services in the nature of providing
authentication, issuance, validation and revocation of
digital certificates” in Class 45.1
The Examining Attorney issued a Final Office Action in which he refused
registration of Applicant’s mark under Trademark Act Section 2(d), 15 U.S.C.
§ 1052(d), based on a likelihood of confusion with the identical standard character
mark GOLGI (Registration No. 4742606) for, inter alia, the following Class 42
services:2
Scientific and technological services, namely, research and
design in the field of information and telecommunications
technology; Industry analysis and research services in the
field of data networking; Design and development of
computer hardware and software; Computer software
consultancy; Computer system design and analysis
including for managing the data interface between
consumer devices and an application provider;
Maintenance of computer software.
Applicant then appealed to the Board. Applicant and the Examining Attorney filed
briefs. We affirm the refusal to register.

1 Application Serial No. 87130545, filed on August 8, 2016 pursuant to Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), asserting a bona fide intention to use the mark in
commerce.
2 Registered May 26, 2015.
Serial No. 87130545
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I. Likelihood of Confusion
Our determination under Section 2(d) of the Trademark Act is based on an
analysis of the probative facts in evidence that are relevant to the factors bearing on
a likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973) (“du Pont”); see also Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005);
In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
considering the evidence of record on these factors, we keep in mind that “[t]he
fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods [or services] and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976). “Not all of the [du Pont] factors are relevant to every case,
and only factors of significance to the particular mark need be considered.” Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1719 (Fed.
Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 94 USPQ2d 1257, 1259
(Fed. Cir 2010)).
A. The Marks
The marks are identical in sound, connotation, appearance and commercial
impression, Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
Serial No. 87130545
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1772, 73 USPQ2d at 1692. Applicant concedes that the marks are identical in
appearance and sound.3
B. The Services and Trade Channels
We now consider the respective services, bearing in mind that where identical
marks are involved, as is the case here, the degree of relatedness between the services
that is required to support a finding of likelihood of confusion declines. See In re
i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123
USPQ2d 1744 (Fed. Cir. 2017). Services need not be identical or competitive in order
to support a finding of likelihood of confusion. “Likelihood of confusion can be found
if the respective products [or services] are related in some manner and/or if the
circumstances surrounding their marketing are such that they could give rise to the
mistaken belief that they emanate from the same source.” Coach Servs. Inc. v.
Triumph Learning LLC, 101 USPQ2d at 1722 (internal quotation marks omitted).
The Examining Attorney relies on third-party registrations to demonstrate that
Applicant’s and Registrant’s services are related. Although third-party registrations
are not evidence that the marks shown therein are in use or that the public is familiar
with them, they nonetheless have some probative value to the extent that they serve
to suggest that the services listed therein are of a kind that may emanate from a
single source under a single mark. In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5

3 Applicant’s brief at 5-6, 4 TTABVUE 10-11.
Serial No. 87130545
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(TTAB 2015); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009) (citing
In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky
Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)). See, for example, the
following third-party registrations cited in connection with Applicant’s Class 35
services:
- Registration No. 2971252 for CHANNEL VANTAGE for
computer software design in Class 42 and business
consultation services, namely, database management in
Class 35.
- Registration No. 3144526 for a running man design for
computer software development services in Class 42 and
business consultation services in Class 35.
- Registration No. 3284557 for JANMEDIA for computer
software design, programing and maintenance services in
Class 42 and advertising services in Class 35.
- Registration No. 4125843 for CRUDESUITE for computer
software maintenance services in Class 42 and database
management services in Class 35.
- Registration No. 4140295 for WHERE BRANDS LIVE
NOW for computer and computer software design services
in Class 42 and advertising, marketing and promotional
services in Class 35.
- Registration No. 4195486 for FTI CONSULTING and
design for computer software design and programming
services in Class 42 and database management in Class 35.
- Registration No. 4702606 for VUNGLE for computer
software development and programming in Class 42 and
advertising and marketing services in Class 35.
- Registration No. 4978552 for H-SCORE for computer
software consulting, design, and programming as well as
maintaining software for others in Class 42 and database
management and processing in Class 35.
Serial No. 87130545
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- Registration No. 4978890 for CORE DIALOG for
computer software research and design services in Class 42
and advertising and marketing services in Class 35.4
See also, for example, the following third-party registrations cited in connection
with Applicant’s Class 45 services:
- Registration No. 3119507 for RAVENWING for computer
software development services and computer consulting in
Class 42 and computer security assurance and
administration of digital keys and certificates in Class 45.
- Registration No. 3144526 for a running man design for
computer software development services in Class 42 and
monitoring of computer systems for security purposes in
Class 45.
- Registration No. 4216870 for VESGROUP
INCORPORATED for computer software maintenance and
software development services in Class 42 and computer
security assurance and administration of digital keys and
certificates and other computer security services in
Class 45.
- Registration No. 4365342 for NORTON SECURED and
design for computer software design services in Class 42
and computer security assurance and administration of
digital keys and certificates and other computer security
services in Class 45.
- Registration No. 4488738 for ORCELO for computer
software maintenance and development services in Class
42 and computer security assurance and administration of
digital keys and certificates in Class 45.
- Registration No. 5076659 for DEVFX for computer
software development services in Class 42 and computer
security and authentication services in Class 45.5

4 November 23, 2016 Office Action, TSDR 5 et seq.
5 Id.
Serial No. 87130545
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In addition, the Examining Attorney submitted webpages from elevativ.com
offering advertising and marketing services and mobile app development services;
nascode.com offering marketing and advertising services and software development
services; and spherexx.com offering software development services and marketing
and branding services.6
The Examining Attorney concludes that the evidence “demonstrates that
consumers are accustomed to encountering the services set forth in the application
and registration under the same mark and in the same trade channels” and
“[b]ecause the services of the parties is [sic] clearly of a type provided by a single
source and within the same trade channels, Applicant’s and Registrant’s services are
considered related for likelihood of confusion purposes.”7
Applicant argues:
The actual goods and services of the Applicant and
Registrant vary significantly with only a modicum of
superficial similarity. The Applicant provides highly
specialized business services related to their ‘Internet of
Things’ platform used by developers of ‘smart devices’ to
monitor and control their devices as well as protect them
from exploitation. On the other hand, the Registrant’s
goods and services are specifically telecommunication
products and services targeted specifically to the telecom
industry. A consumer looking to purchase services to help
manage their “Internet of Things” devices varies
significantly from a Telcom [sic] Company looking for a
mobile communications platform.
The small similarities that do exist between the Applicant’s
and Registrant’s goods and services are that they both
utilize computer technology and online communication. In

6 June 12, 2017 Office Action, TSDR 2-10.
7 6 TTABVUE 13.
Serial No. 87130545
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the second decade of the 21st century computer technology
and online communication are basically ubiquitous. Almost
every company utilizes computer technology and online
communication in the facilitation of their business. As
stated above with the example of giant online retailers and
big box stores, a finding of similarity just because both
companies use computer technologies or online
communications would make a finding of confusing
similarity that would unfairly prohibit trade.8
There are two problems with Applicant’s arguments. First, Applicant’s services as
described in its recitation of services are not limited to a particular platform or to
developers of “smart devices,” and not all of Registrant’s services as described in its
Class 42 recitation of services are restricted to the telecommunication industry.
Under In re i.am.symbolic, llc, 123 USPQ2d 1749, likelihood of confusion “must be
resolved on the basis of the goods [or services] named in the registration and, in the
absence of specific limitations in the registration, on the basis of all normal and usual
channels of trade and methods of distribution,” citing SquirtCo v. Tomy Corp., 697
F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983). Because we determine the question
of likelihood of confusion based on the recitation of services, rather than on actual use
of a mark, Applicant’s arguments regarding actual use by Applicant and Registrant
are inapposite.
Second, to the extent that Applicant’s reference to “giant online retailers and big
box stores” is a challenge to the probity of certain third-party registrations, there is
sufficient evidence in the record from other sources to demonstrate that the services
are of a kind that may emanate from a single source under a single mark.

8 Applicant’s brief at 8, 4 TTABVUE 13.
Serial No. 87130545
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In sum, we find that the Examining Attorney’s evidence establishes a relationship
between Registrant’s Class 42 services and Applicant’s Class 35 and 45 services. See
Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986,
988 (CCPA 1981) (likelihood of confusion must be found as to the entire class if there
is likely to be confusion with respect to any service that comes within the recitation
of services in that class).
Turning to the trade channels and purchasers, the Examining Attorney argues
that the evidence establishes that Applicant’s and Registrant’s services “are sold or
provided through the same trade channels and used by the same classes of consumers
in the same fields of use.”9 However, simply because services are listed on the same
registration does not mean that they travel in the same trade channels. In addition,
we are not persuaded by three websites that the trade channels are the same; they
are too few in number. Also, “the mere fact that goods and services may both be
advertised and offered through the Internet is not a sufficient basis to find that they
are sold through the same channels of trade. The Internet is such a pervasive medium
that virtually everything is advertised and sold through the Internet.” Parfums de
Couer Ltd. v. Lazarus, 83 USPQ2d 1012, 1021 (TTAB 2007).
We see no reason why, however, a purchaser seeking “maintenance of computer
software” services would not also consider an entity offering “database management”
in Class 35, because “database management” could encompass maintaining database
software. In addition, the same purchaser could purchase Registrant’s software

9 6 TTABVUE 12.
Serial No. 87130545
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design and development services and Applicant’s Class 45 computer security services.
Thus, the purchasers of Applicant’s and Registrant’s services could overlap. As for
trade channels, there is insufficient information in the record to arrive at a
determination; we find the du Pont factor regarding trade channels neutral. See Bond
v. Taylor, 119 USPQ2d 1049, 1054 (TTAB 2016) (finding likelihood of confusion where
services are related but trade channels are neutral in the du Pont analysis).
C. Purchaser Care and Sophistication
Applicant urges us to consider consumer sophistication and purchaser care, and
argues that in this case, they tend to minimize the likelihood of confusion. Applicant
has not introduced any evidence to demonstrate the sophistication of the purchasers,
the care exerted in their purchasing decisions, or even the cost of such services which
could be reflective of the level of sophistication and care exerted in purchasing such
services. Nonetheless, this factor appears to weigh in Applicant’s favor. That is,
potential purchasers of the respective services would appear to be business customers
who would be expected to exercise some degree of care in the purchasing decision.
However, we do not believe that this factor precludes a likelihood of confusion, in view
of the identity of the marks and the similarity of the services. See In re Shell Oil, 26
USPQ2d at 1690; In re Cynosure Inc., 90 USPQ2d 1644, 1647 (TTAB 2009) (citing
Wm. K. Stamets Co. v. The Metal Prods. Co., 176 USPQ 92, 93 (TTAB 1972) (even
technically trained purchasers who are extremely familiar with expensive machinery
may be confused when similar marks are used with respect to the same goods)).
Serial No. 87130545
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D. Absence of Actual Confusion
Applicant also points out the absence of actual confusion between Applicant’s
services and Registrant’s services, although it acknowledges that in an ex parte
proceeding, the lack of actual confusion is of little probative value. Applicant argues
that viewed holistically with the other relevant factors, the absence of actual
confusion still strengthens Applicant’s assertion of no likelihood of confusion.10
The present application is an intent-to-use application, and there is no indication
that Applicant has begun to use its mark, or, if so, for how long. The du Pont factor
concerning actual confusion is therefore neutral in our analysis.
E. Conclusion
We have considered all of the evidence in the record and the arguments of the
Examining Attorney and Applicant, including evidence and arguments not
specifically addressed in this decision. In view of the identity of the marks and the
relatedness of the services, and because the purchasers could overlap, even if
purchasers are sophisticated and use care in their purchases, we conclude that
confusion is likely between Applicant’s mark for its both its Class 35 and 45 services
and Registrant’s identical mark for its Class 42 services.
Decision: The refusal to register is affirmed for both Class 35 and 45.

10 Applicant’s brief at 10, 4 TTABVUE 15.