Google, Inc.v.ACPS Global,Inc.

Trademark Trial and Appeal Board

Jun 11, 2012

No. 91198926 (T.T.A.B. Jun. 11, 2012)

MBA Mailed: June 11, 2012

Opposition No. 91198926

Google Inc.

v.

ACPS Global, Inc.

Before Cataldo, Bergsman and Wolfson, Administrative
Trademark Judges.

By the Board:
This case now comes up for consideration of opposer’s
motion for summary judgment, filed March 13, 2012. The
motion is fully briefed.1
Background
Applicant seeks registration of SOOGLE, in standard
characters, in pertinent part, for “Arranging and
coordinating travel arrangements for individuals and groups,
namely … Online trip and travel reservations services ….”2

1 Applicant’s “reply,” filed May 7, 2012, has been given no
consideration, because a nonmovant is only entitled to file an
opposition to a motion, and is not entitled to file a “reply”
brief or a surreply. See, Trademark Rule 2.127(a) (after the
movant’s reply brief, “[t]he Board will consider no further
papers in support of or in opposition to a motion”); TBMP
§ 502.02(b) (3d ed. 2011).
2 Application Serial No. 77909572, filed January 11, 2010,
based on claimed first use dates of January 17, 2006. The
application indicates that “[t]he wording ‘SOOGLE’ has no meaning
in a foreign language.” The description of services in its
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT A
PRECEDENT OF THE
T.T.A.B.
Opposition No. 91198926
2
In its amended notice of opposition, opposer alleges prior
use and registration3 of GOOGLE, and variations thereof, for
an Internet search engine and a wide variety of other goods
and services, including business listings and “travel-
related” and “transportation-related” services. Several of
opposer’s pleaded registrations are over five years old. As
grounds for opposition, opposer alleges that use of
applicant’s mark is likely to cause confusion with, and
dilute, opposer’s marks and falsely suggest a connection
with opposer, and that applicant is not the owner of its
involved mark. In its answer, applicant admits that opposer
is the owner of its pleaded registrations, that GOOGLE is a
“coined term,” “distinctive” and “famous,” and that opposer
has priority. Answer to Amended Notice of Opposition ¶¶ 3,
6, 11, 15, 20.
Applicant denies the remaining salient allegations in the
notice of opposition.
The Parties’ Contentions

entirety is “Arranging and coordinating travel arrangements for
individuals and groups, namely, destinations stays, honeymoons,
family vacations, and destination weddings; Arranging for travel
visas, passports and travel documents for persons traveling
abroad; Arranging travel tours; Booking of seats for travel;
Coordinating travel arrangements for individuals and for groups;
Escorting of travellers; Escorting travellers; Online trip and
travel reservation services; Organisation (sic) of travel.”
3 Registration Nos. 2806075, 2884502, 2954071, 3140793,
3570103, 3725612, 3962604, 3979983, 3990185, 4016470, 4058966,
4120012 and 4123471. Opposer also alleges ownership of
application Serial Nos. 77082272, 7764401, 78698285 and 78941798.
Opposition No. 91198926
3
Opposer seeks summary judgment on its claims of
priority and likelihood of confusion, and that applicant is
not the owner of the involved mark, relying in large part on
the Declaration of Johanna Sistek (“Sistek Dec.”), opposer’s
in-house trademark counsel. Ms. Sistek declared that
opposer has used GOOGLE extensively since 1997 in connection
with its search engine. Sistek Dec. ¶ 2. In addition,
opposer has used the GOOGLE mark in connection with the
Google Maps service since 2004, through which opposer “has
provided travel and transportation information, such as
maps, business locations, and trip planning,” and has used
GOOGLE for the Google Earth service since 2005, which
enables “users to plan tours or engage in virtual
sightseeing.” Id. ¶¶ 4-5. Opposer argues that its mark is
famous, that the parties’ marks create similar overall
commercial impressions, that the parties’ services and
channels of trade are similar or related, that there has
been actual confusion and that applicant is engaged in a
“bad faith effort to cash in on the success of the GOOGLE
mark ….”
Applicant introduces no evidence in opposition to
opposer’s motion, with the exception of unauthenticated
corporate minutes, and a “stock ledger and certificates,”
none of which appear to relate to applicant’s involved mark.
Applicant argues, however, that there are genuine disputes
Opposition No. 91198926
4
as to material facts remaining for trial. Specifically,
applicant argues that the “cadence,” “pronunciation” and
“the consumer’s perception” of the parties’ marks are
dissimilar, especially because certain of opposer’s pleaded
registrations include color claims, and because applicant
adopted its mark “based on its sound and meaning in
Chinese.” Applicant also points out that opposer does not
rely on survey evidence. Applicant claims that its
customers “are exclusively from mainland China with little
English language ability,” and that therefore the parties’
services and channels of trade are distinct. According to
applicant, opposer’s purported evidence of actual confusion
is unreliable and applicant “had every right” to seek
registration of its mark, “[e]ven if Applicant was already
familiar with” opposer.
Decision
Summary judgment is only appropriate where there are no
genuine disputes as to any material facts, thus allowing the
case to be resolved as a matter of law. Fed. R. Civ. P.
56(a). The party seeking summary judgment bears the burden
of demonstrating the absence of any genuine dispute of
material fact, and that it is entitled to a judgment under
the applicable law. See Celotex Corp. v. Catrett, 477 U.S.
317, 323 (1986); Sweats Fashions, Inc. v. Pannill Knitting
Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1796 (Fed. Cir.
Opposition No. 91198926
5
1987). A factual dispute is genuine if, on the evidence of
record, a reasonable fact finder could resolve the matter in
favor of the non-moving party. See Opryland USA Inc. v.
Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d
1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v.
Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed.
Cir. 1992).
The evidence on summary judgment must be viewed in a
light most favorable to the non-movant, and all justifiable
inferences are to be drawn in the non-movant’s favor.
Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d 766, 25
USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, supra.
The Board may not resolve genuine disputes as to material
facts; it may only ascertain whether genuine disputes as to
material facts exist. See Lloyd’s Food Products, 25 USPQ2d
at 2029; Olde Tyme Foods, 22 USPQ2d at 1542.
Standing and Priority
There is no genuine dispute as to any material fact
relating to either standing or priority. Opposer’s pleaded
registrations establish both. See, e.g., Cunningham v.
Laser Golf Corp., 222 F.3d 943, 945, 55 USPQ2d 1842, 1844
(Fed. Cir. 2000) (party’s ownership of pleaded registration
establishes standing); Penguin Books Ltd. v. Eberhard, 48
USPQ2d 1280, 1286 (TTAB 1998) (citing King Candy Company v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108,
Opposition No. 91198926
6
110 (CCPA 1974)) (priority not at issue where opposer
introduces registration into evidence). Furthermore,
applicant concedes that opposer owns its pleaded
registrations and has priority. Answer to Amended Notice of
Opposition ¶¶ 3, 20.
Likelihood of Confusion
“We determine likelihood of confusion by focusing on …
whether the purchasing public would mistakenly assume that
the applicant’s goods originate from the same source as, or
are associated with,” opposer’s goods. In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). In considering the question on a motion
for summary judgment, we analyze all probative facts in
evidence which are relevant to the thirteen likelihood of
confusion factors set forth in In re E.I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), as well as
whether there are genuine disputes as to any of these
factors which would be material to a decision on the merits.
In this case, opposer has introduced evidence concerning the
fame of opposer’s mark, the similarity between the parties’
services and channels of trade, the similarity between the
parties’ marks, actual confusion and applicant’s intent.
Turning first to the alleged fame of opposer’s mark, it
is well-settled that where fame exists, it “plays a
‘dominant role in the process of balancing the DuPont
Opposition No. 91198926
7
factors,’ … and ‘[f]amous marks thus enjoy a wide latitude
of legal protection.’” Bose Corp. v. QSC Audio Products,
Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir.
2002)(quoting Recot, Inc. v. Benton, 214 F.3d 1322, 54
USPQ2d 1894, 1897 (Fed. Cir. 2000)). Indeed, a strong mark
“casts a long shadow which competitors must avoid.” Kenner
Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d
350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
Furthermore, fame remains “a dominant factor in the
likelihood of confusion analysis … independent of the
consideration of the relatedness of the goods.” Recot, 214
F.3d 1322, 54 USPQ2d at 1898. In fact, “when a product
reaches the marketplace under a famous mark, special care is
necessary to appreciate that products not closely related
may nonetheless be confused as to source by the consumer
because of the fame of the mark.” Bose Corp., 293 F.3d
1367, 63 USPQ2d at 1310.
While consumer surveys may provide direct evidence of
fame, they are not necessary, and to the extent that
applicant argues that the absence of a survey constitutes a
genuine dispute as to a material fact, applicant is
incorrect. Indeed, “fame of a mark may be measured
indirectly, among other things, by the volume of sales and
advertising expenditures of the goods traveling under the
mark, and by the length of time those indicia of commercial
Opposition No. 91198926
8
awareness have been evident.” Id., 63 USPQ2d at 1305.
Other relevant factors include “length of use of the mark,
market share, brand awareness, licensing activities, and
variety of goods bearing the mark.” Coach Services Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1720
(Fed. Cir. 2012).
Here, opposer has introduced substantial evidence that
GOOGLE is an exceedingly famous mark. Specifically, prior
to applicant’s claimed date of first use:4
• opposer’s U.S. revenue exceeded $342
million in 2002, exceeded $1 billion
in 2003, exceeded $2.1 billion in
2004 and exceeded $3.7 billion in
2005; Sistek Dec. ¶ 27 and Ex. 22;

• Interbrand Consultancy found the
GOOGLE mark to be the “single most
popular brand” in 2002, 2003 and
2005; id. ¶ 25;

• in 2001, PC Magazine listed opposer
among the “Top 100 Web Sites;” id.
Ex. 19;

• in 2006, opposer made Time magazine’s
list of “25 Sites We Can’t Live
Without;” id. Ex. 19;

• opposer’s mark was mentioned in
articles in the New York Times, USA
Today, Wall Street Journal,
Washington Post, and in reports by
Reuters and United Press
International, among many others;
id.;

4 Applicant submits no evidence supporting its claimed date of
first use.
Opposition No. 91198926
9
• opposer’s mark was mentioned in
broadcasts on CNBC, CNN, NPR and Fox
News; id.;

• in 2005 opposer was ranked No. 2 and
in 2006 opposer was ranked No. 1 on
Wired magazine’s “The Wired 40” list,
which identifies businesses with
“strategic vision, global reach,
killer technology,” and the
publication in 2006 described opposer
as follows: “Less cuddly but more
profitable than ever, the monster
from Mountain View has rivals but no
peers …;” id. Ex. 21;

• a 2005 CNN poll found that “[t]he
search engine Google is the most
significant development in the 15-
year history of the World Wide Web;”
id.; and

• in 2006 Penn, Schoen and Berland
Associates indicated that GOOGLE was
the “best known brand name” in the
United States. Id.

Since applicant’s claimed date of first use and filing date,
opposer’s fame has only grown. In fact,
• in 2007, Millward Brown, a market
research firm, indicated that GOOGLE
was the world’s “most powerful
brand,” and a Reuters article about
the ranking stated that the ranking
“underscores how quickly the Web
search leader has become an everyday
name;” id.;

• Nielsen Wire found that in November
2011, GOOGLE was “the most-visited
Web brand” in the United States,
ahead of second place Facebook; id.
Ex. 17;

• the 2011 Interbrand Best Global
Brands survey ranked GOOGLE No. 4,
Opposition No. 91198926
10
behind only COCA COLA, IBM, and
MICROSOFT, and ahead of GENERAL
ELECTRIC and MCDONALD’S, stating:
“[w]ith a 27 percent increase in
brand value in the past year,
Google’s position as one of the
world’s pre-eminent brands is growing
and nothing seems capable of stopping
it;” id. Ex. 20;

• The Meriam-Webster dictionary
indicates that the origin of the word
“Google” is a “trademark for a search
engine,” and defines the verb
“Google” as “to use the Google search
engine to obtain information about
(as a person) on the World Wide Web;”
Declaration of Jedediah Wakefield,
one of opposer’s attorneys
(“Wakefield Dec.”) Ex. 5; and

• Opposer’s U.S. revenue exceeded $6
billion in 2006, exceeded $8.6
billion in 2007, exceeded $10.6
billion in 2008, exceeded $11.1
billion in 2009, exceeded $14 billion
in 2010 and exceeded $17.4 billion in
2011. Sistek Dec. ¶ 27.

In addition, applicant concedes that GOOGLE is famous.
Answer to Amended Notice of Opposition ¶ 15.
In short, the evidence of record establishes that
opposer’s GOOGLE mark is famous, and significantly so.
Moreover,
[t]he law has clearly been well settled
for a longer time than this court has
been dealing with the problem to the
effect that the field from which
trademarks can be selected is unlimited,
and there is therefore no excuse for
even approaching the well-known
trademark of a competitor, that to do so
raises “but one inference – that of
gaining advantage from the wide
Opposition No. 91198926
11
reputation established by appellant in
the goods bearing its mark,” and that
all doubt as to whether confusion,
mistake, or deception is likely is to be
resolved against the newcomer,
especially where the established mark is
one which is famous and applied to an
inexpensive product bought by all kinds
of people without much care.

Specialty Brands, Inc. v. Coffee Bean Distributors, Inc.,
748 F.2d 669, 223 USPQ 1281, 1285 (Fed. Cir. 1984) (quoting
Planters Nut & Chocolate Co. v. Crown Nut Co., Inc. 305 F.2d
916, 134 USPQ 504, 511 (CCPA 1962)); see also, Kenner Parker
Toys, 963 F.2d at 350, 22 USPQ2d at 1456. In short, this du
Pont factor weighs heavily in opposer’s favor.
Turning next to the similarity of the parties’ marks,
we consider the similarities and dissimilarities of the
parties’ marks in appearance, sound, meaning, and commercial
impression. Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). 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 their entireties that confusion as to the source
of the services offered under the respective marks is likely
to result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). As the fame
Opposition No. 91198926
12
of a mark increases, and here opposer’s marks enjoy
significant fame, the degree of similarity between the marks
necessary to support a conclusion of likely confusion
declines. Bose Corp. v. QSC Audio Products Inc., 293 F.3d
1367, 63 USPQ2d at 1311-12.
In this case, the parties’ marks are identical but for
a single letter, and they therefore look and sound quite
similar, and rhyme. See, Interstate Brands Corp. v. McKee
Foods Corp., 53 USPQ2d 1910, 1913 (TTAB 2000) (“Both marks
are highly similar in sound, since YO-YO’s directly rhymes
with HOHOs. Similarity in either form, spelling or sound
alone may be sufficient to support a finding of likelihood
of confusion.”). The similarities between the marks are
more significant in this case than in many others, because
here, as applicant admits, GOOGLE is “a coined term,” and
there is no evidence that SOOGLE has any meaning. Answer to
Amended Notice of Opposition ¶ 6. To the extent that
applicant now argues that SOOGLE has significance or a
particular meaning in Chinese, there is no evidence
supporting this argument, and in any event, applicant’s
involved application contradicts any such argument, as it
indicates that SOOGLE “has no meaning in a foreign
language.” Finally, while certain of opposer’s pleaded
registrations include color claims, most do not, and GOOGLE
is registered in standard character form for a wide variety
Opposition No. 91198926
13
of goods and services. This factor therefore also weighs
heavily in opposer’s favor.
With respect to the similarity of the parties’ services
and channels of trade, we must compare the services
identified in applicant’s application to those opposer
offers under its marks. Hewlett-Packard Co. v. Packard
Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir.
2002). Here, applicant seeks registration of its mark for,
inter alia, “Arranging and coordinating travel arrangements”
and “Online trip and travel reservation services.” And
applicant admits that “a customer can learn information
about travel,” “travel destinations” and “arranging for
travel visas” using opposer’s services. Wakefield Dec. Ex.
3 (applicant’s responses to opposer’s Requests for Admission
Nos. 27-29). Applicant further admits that opposer’s
services “include travel planning services” and “map
services,” and that customers can use opposer’s services for
“online trip reservations,” “travel reservations,”
“organization of travel” and “arranging and coordinating
travel arrangements.” Id. (applicant’s responses to
opposer’s Requests for Admission Nos. 30-35). In other
words, applicant admits that the parties’ services are at
the very least related. Opposer’s evidence also makes clear
that the parties’ services are at least related, as opposer
offers, inter alia, “travel and transportation information …
Opposition No. 91198926
14
trip planning,” and images “enabling users to plan tours or
engage in virtual sightseeing.” Sistek Dec. ¶¶ 4, 5, 9, 11,
12.
Applicant’s argument that its customers “are
exclusively from mainland China with little English language
ability” is misplaced, because the identification of
services in the involved application is not restricted in
this manner. Where, as here, applicant seeks a
geographically unrestricted registration, the Board is
constrained to consider likelihood of confusion in terms of
nationwide markets. Bank of America National Trust &
Savings Association v. The First National Bank of Allentown,
220 USPQ 892, 897 (TTAB 1984); Giant Food Inc. v. Nations
Foodservice, Inc., 214 USPQ 641, 644 (TTAB 1982), reversed
for other reasons, 710 F.2d 1565, 218 USPQ 390 (Fed. Cir.
1983).
Furthermore, because applicant’s recitation of services
is not limited to Chinese-speaking individuals, the Board
cannot consider this asserted limitation.
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.

Opposition No. 91198926
15
Octocom Systems, Inc. v. Houston Computers Services, Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Accordingly, not only is there no genuine dispute as to any
material fact regarding the similarity of the parties’
services (they are at least related), but there is also no
genuine dispute of material fact regarding the channels of
trade for the parties’ services or the classes of consumers.
We must presume that those too are the same. Id. (“Because
[applicant] seeks an unrestricted registration, such
evidence as there is of a specific class of customers did
not relate to a material fact.”) (emphasis in original); see
also, Hewlett-Packard, 62 USPQ2d at 1005; Genesco Inc. v.
Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part
identical and in-part related nature of the parties’ goods,
and the lack of any restrictions in the identifications
thereof as to trade channels and purchasers, these clothing
items could be offered and sold to the same classes of
purchasers through the same channels of trade”); In re Smith
and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the
goods are legally identical, they must be presumed to travel
in the same channels of trade, and be sold to the same class
of purchasers”). These factors also weigh in opposer’s
favor.
Turning finally to opposer’s purported evidence of
actual confusion and applicant’s bad faith, we note
Opposition No. 91198926
16
applicant’s objection to the reliability of opposer’s actual
confusion evidence, and applicant’s assertion (albeit
without supporting evidence) that it did not act in bad
faith. In any event, it is well-settled that the absence of
evidence of actual confusion, or bad faith intent, does not
raise a genuine dispute as to any material fact. “The test
is likelihood of confusion not actual confusion … It is
unnecessary to show actual confusion in establishing
likelihood of confusion.” Weiss Associates, Inc. v. HRL
Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1842-43
(Fed. Cir. 1990); Apple Computer v. TVNET.net, Inc., 90
USPQ2d 1393, 1397-98 & n.7 (TTAB 2007) (“applicant’s
arguments regarding the lack of actual confusion and its
good faith adoption of its VTUNES.NET mark do not raise
genuine issues of material fact that preclude entry of
summary judgment”).
Weighing all of the factors together, and after a
careful review of all evidence of record and the parties’
arguments, only some of which have been specifically
addressed here, we find that there are no genuine disputes
of material fact that a likelihood of confusion exists
between opposer’s marks and applicant’s involved mark for
the parties’ respective services. Indeed, the fame of
opposer’s mark, and the similarities between the parties’
Opposition No. 91198926
17
marks, services and channels of trade all weigh in favor of
a finding of likelihood of confusion.
Conclusion
Because we find, based on the record herein and the
applicable law, that there is no genuine dispute as to any
material fact and that opposer has established its priority
and likelihood of confusion as a matter of law, opposer’s
motion for summary judgment is hereby GRANTED. Accordingly,
judgment is entered against applicant, the opposition is
sustained and registration to applicant is refused.5
***

5 Because the opposition is sustained on the ground of
priority and likelihood of confusion, there is no need to
consider whether opposer is entitled to summary judgment on its
claim that applicant is not the owner of the involved mark.