International Communication Services, Inc.

Trademark Trial and Appeal Board

Feb 21, 2012

No. 85017693 (T.T.A.B. Feb. 21, 2012)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: February 21, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re International Communication Services, Inc.
________

Serial No. 85017693
_______

Ruben Alcoba of Alcoba & Associates PA for International
Communication Services, Inc.

Geoffrey Fosdick, Trademark Examining Attorney, Law Office
111 (Robert Lorenzo, Managing Attorney).
_______

Before Zervas, Cataldo and Wolfson,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

International Communication Services, Inc. filed an
application to register on the Principal Register the mark
shown below for “long distance telephone communication
services; prepaid long distance telephone services;
telecommunications reseller services, namely, providing
Ser. No. 85017693
2
long distance telecommunication services” in International
Class 38.1

The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used in connection with its services,
so resembles the marks shown below, previously registered
to a single entity on the Principal Register for, inter
alia,
telecommunication services, namely, personal
communication services; telematic services,
namely, telecommunication services, namely,
provision of mobile telecommunications services,
namely, voice and data transmissions, accessible
by access code or terminals, telephone,
television, radio and data transmissions
accessible by access code or terminals,

1 Application Serial No. 85017693 was filed on April 19, 2010,
based upon applicant’s assertion of January 1, 2010 as a date of
first use of the mark anywhere and in commerce.
“The color(s) blue and gold is/are claimed as a feature of the
mark. The mark consists of an image of a gold speaker with the
first literal element ‘Directo’ underneath in blue, a dot having
a circle surrounding it, the dot and the circle are in gold, the
dot and the circle directly follow the word ‘directo,’ the
literal element ‘com’ following the dot and the circle, the word
‘com’ being in blue, and the literal elements ‘Talk to the world
without borders’ in blue and being positioned underneath the
literal elements directo.com.”
“The English translation of ‘Directo’ in the mark is ‘Direct.’
Ser. No. 85017693
3
telephone, television, radio and teleprinter;
electronic transmission of messages and coded
images; electronic transmission of message and
data; wireless digital messaging services,
electronic store-and-forward messaging,
electronic transmission of data and documents via
computer terminals, computer telecommunications,
namely, providing multiple user access to the
Internet; facsimile transmission, electronic mail
services, telephone communication services

in International Class 38:2
DIRECTO IDEAS TELCEL (standard characters);3
DIRECTO DE TELCEL (standard characters);4 and
DIRECTO IDEAS (standard characters),5 as to be likely
to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs on the
issue under appeal.
Likelihood of Confusion
Turning now to the matter under appeal, our
determination of the issue of likelihood of confusion is
based on an analysis of all of the probative facts in
evidence that are relevant to the factors outlined in In re

2 The cited registrations also recite goods in International
Classes 9, 16 and 25 and services in International Classes 35 and
41.
3 Registration No. 3401700 issued on March 25, 2008. “The
English translation of the word DIRECTO in the mark is DIRECT.”
4 Registration No. 3440582 issued on June 3, 2008. “The English
translation of the word DIRECTO DE in the mark is DIRECT OF.”
5 Registration No. 3440583 issued on June 3, 2008. “The English
translation of the word DIRECTO in the mark is DIRECT.”

Ser. No. 85017693
4
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973). See also In re Majestic Distilling
Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). In any likelihood of confusion analysis, two key,
though not exclusive, considerations are the similarities
between the marks and the similarities between the goods
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 27 (CCPA 1976). See
also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1533 (Fed. Cir. 1997).
Similarity of the Services
Turning first to our consideration of the recited
services, we must determine whether consumers are likely to
mistakenly believe that they emanate from a common source.6
It is not necessary that the services at issue be similar
or competitive, or even that they move in the same channels
of trade, to support a holding of likelihood of confusion.
It is sufficient instead that the respective services are
related in some manner, and/or that the conditions and
activities surrounding the marketing thereof are such that
they would or could be encountered by the same persons
under circumstances that could give rise to the mistaken

6 As noted above, all three cited registrations recite identical
goods and services.
Ser. No. 85017693
5
belief that they originate from the same producer. See In
re International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
In this case, applicant’s “long distance telephone
communication services” and “prepaid long distance
telephone services” are encompassed by registrant’s more
broadly identified “telephone communication services”
without limitation as to type, i.e., local or long
distance, or the manner of billing, e.g., prepaid. We
therefore must presume that the registrant’s “telephone
communication services” encompass all such types of
services, including “long distance telephone communication
services” and “prepaid long distance telephone services.”
See, e.g., In re Thor Tech, Inc., 90 USPQ2d 1634 (TTAB
2009) (finding “recreational vehicles, namely, travel
trailers and fifth wheel trailers” to be encompassed by and
legally identical to “trailers”); and In re Linkvest S.A.,
24 USPQ2d 1716 (TTAB 1992) (finding “computer software for
data integration and transfer” to be encompassed by and
legally identical to “computer programs recorded on
magnetic disks”).
Thus, we find that these services are legally
identical, for purposes of the second du Pont factor.
Because these services are legally identical, we find that
Ser. No. 85017693
6
the second du Pont factor weighs heavily in support of a
conclusion that confusion is likely.7
Channels of Trade and Classes of Consumers
It is settled that in making our determination
regarding the relatedness of the parties’ services, we must
look to the services as identified in the involved
application and cited registration. See Octocom Systems,
Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990) (“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 [or services] set forth in the
application regardless of what the record may reveal as to
the particular nature of an applicant’s goods [or
services], the particular channels of trade or the class of
purchasers to which the sales of goods [or services] are

7 Because we find that applicant’s “long distance telephone
communication services” and “prepaid long distance telephone
services” are legally identical to the “telephone communication
services” identified in the cited registrations, we need not also
determine the similarity or dissimilarity of registrant’s
services to the other services identified in applicant’s
application, i.e., “telecommunications reseller services, namely,
providing long distance telecommunication services.” Similarity
as to any of the services identified in the application and/or
the cited registration will suffice as a basis for finding the
respective services to be similar for purposes of the second du
Pont factor. See Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re Max
Capital Group Ltd., supra, 93 USPQ2d 1243, 1244; In re Davey
Products Pty Ltd., supra, 92 USPQ2d 1198, 1202; and In re Jump
Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006).
Ser. No. 85017693
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directed.”) See also Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973)
(“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective
descriptions of goods [or services].”) In this case, there
are no restrictions in either applicant’s or registrant’s
recitation of services as to the channels of trade in which
the services may be encountered, or type or class of
customer to which the services are marketed. Thus, both
applicant’s and registrant’s services are presumed to move
in all normal channels of trade and be available to all
classes of potential consumers, including consumers of each
other’s services. See In re Elbaum, 211 USPQ 639, 640
(TTAB 1981). We note in addition that applicant concedes
as much: “[a]pplicant admits that the relevant consumer is
shared with registrant. Their respective [services] are
marketed toward the Mexican-American population.”8 As a
result, this du Pont factor also favors a finding of
likelihood of confusion.
Similarity of the Marks
We now consider the similarity of the marks, noting
initially that, "[w]hen marks would appear on virtually
identical ... services, the degree of similarity [of the

8 Applicant’s brief, p. 3.
Ser. No. 85017693
8
marks] necessary to support a conclusion of likely
confusion declines." See Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed.
Cir. 1992), cert. denied, 506 U.S. 1034 (1994). See also
ECI Division of E-Systems, Inc. v. Environmental
Communications Inc., 207 USPQ 443, 449 (TTAB 1980).
For purposes of our determination of the similarity of
the marks, we will concentrate our discussion on the mark
DIRECTO IDEAS (standard characters) in cited Registration
No. 3440583 because this mark is most similar to the mark
in the involved application. Thus, if the mark DIRECTO
IDEAS is found to be confusingly similar to applicant’s
mark, there is no need to discuss the marks in registrant’s
other two cited registrations. Further, if the mark
DIRECTO IDEAS is not found to be confusingly similar to
applicant’s mark, we would not find such confusing
similarity with the marks in the other two cited
registrations.
Turing then to the marks at issue, we find applicant’s
mark,
Ser. No. 85017693
9

is similar to registrant’s DIRECTO IDEAS mark in that
they contain the nearly identical term DIRECTO.COM or
DIRECTO as the first portion thereof. DIRECTO and
DIRECTO.COM are nearly identical in sound and meaning, and
because registrant’s mark is presented in typed or standard
character form, registrant’s mark may appear in size, color
and font identical to that of applicant’s mark. Cunningham
v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847
(Fed. Cir. 2000) (“Registrations with typed drawings are
not limited to any particular rendition of the mark and,
in particular, are not limited to the mark as it is used in
commerce”); and In re Cox Enterprises Inc., 82 USPQ2d 1040,
1044 (TTAB 2007) (“We must also consider that applicant’s
mark, presented in typed or standard character form, is not
limited to any special form or style as displayed on its
goods”).
With regard to the “.com” portion of applicant’s mark,
we take judicial notice of the following definition of
“.com” as “ABBREVIATION: commercial organization (in
Ser. No. 85017693
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Internet addresses).”9 We further take judicial notice of
the following definition of “TLD” as “(Top-Level-Domain)
The Highest level domain category in the Internet domain
naming system. There are two types, the generic top-level
domains, such as .com, .org, and .net….”10 The term “.com,”
in itself, has no source-identifying significance. See In
re Hotels.com, L.P., 87 USPQ2d 1100 (TTAB 2008). Rather,
it serves only to signify that the user of the domain name
is a commercial entity, and that the goods or services
offered by the entity involve use of the Internet. See Id.
See also In re Oppendahl & Larson LLP, 373 F.3d 1171, 71
USPQ2d 1370 (Fed. Cir. 2004). Thus, the presence of “.com”
in applicant’s mark does not serve to distinguish it from
that of registrant.
Moreover, the significance of DIRECTO.COM in
applicant’s mark and DIRECTO in registrant’s mark is
reinforced by their location as the first word in both
marks. Presto Products Inc. v. Nice-Pak Products, Inc., 9
USPQ2d 1895, 1897) TTAB 1988) (“it is often the first part
of a mark which is most likely to be impressed in the mind
of a purchaser and remembered”). See also Century 21 Real

9 The American Heritage Dictionary of the English Language, (4th
Ed. 2000).
10 McGraw Hill Computer Desktop Encyclopedia (9th ed. 2001).

Ser. No. 85017693
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Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the
marks, consumers must first notice the identical lead
word). Thus, DIRECTO.COM or DIRECTO is the portion of the
marks to which the viewer is drawn, as well as the portion
that the viewer is most likely to remember.
The gold speaker design in applicant’s mark, though
visually somewhat prominent, is less significant than the
wording therein. This is because when a mark comprises
both wording and a design, the wording would be used by
customers to request the identified goods or services. See
In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
Further, the speaker design suggests telephone
communication and thus is suggestive of applicant’s recited
services. As for the presence of TALK TO THE WORLD WITHOUT
BORDERS in applicant’s mark, this wording, which is located
in small script beneath DIRECTO.COM, is visually less
prominent than DIRECTO.COM and thus less likely to be
impressed upon consumers. It is a well-established
principle that, in articulating reasons for reaching a
conclusion on the issue of likelihood of confusion, there
is 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
Ser. No. 85017693
12
consideration of the marks in their entireties. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). In this case, for the above reasons we find
DIRECTO.COM to be the most dominant portion of applicant’s
mark.
With regard to registrant’s DIRECTO IDEAS mark, we do
not discount the term IDEAS but recognize that it appears
after the initial term DIRECTO which, as discussed above,
is afforded greater prominence due to being the first part
thereof. See Presto Products Inc., supra, and Century 21
Real Estate Corp., supra. Thus, we find the term DIRECTO
to be the most prominent and distinctive portion of
registrant’s DIRECTO IDEAS mark.11
The most distinctive portion of applicant’s mark,
namely, DIRECTO.COM, is nearly identical to the most
distinctive portion of registrant’s mark, namely, DIRECTO.
Thus, we find that when viewing the marks as a whole, these

11 Applicant’s arguments that registrant disclaimed DIRECTO in
Registration No. 3660945 for the mark AMIGO DIRECTO DE TELCEL is
unavailing. First, we are not privy to the facts and
circumstances of the prosecution history of that registration,
which is not of record. Further, and more importantly, it is
settled that “the filing of a disclaimer with the Patent and
Trademark Office does not remove the disclaimed matter from the
purview of determination of likelihood of confusion.” Shell Oil,
26 USPQ2d at 1689. See also In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“The technicality of a
disclaimer in National's application to register its mark has no
legal effect on the issue of likelihood of confusion”).

Ser. No. 85017693
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similarities outweigh their differences. Consumers who are
familiar with the mark, DIRECTO IDEAS, used in connection
with registrant’s telephone communication services, who
then see the mark

used in connection with applicant’s “long distance
telephone communication services; prepaid long distance
telephone services; telecommunications reseller services,
namely, providing long distance telecommunication services”
are likely to assume that the owner of registrant’s mark
simply has utilized a similar mark to identify its long
distance telephone and telecommunication services. In
other words, consumers are likely to view both marks as
variations of each other, and therefore as indicators of a
single source. Thus, despite the fact that the applicant’s
mark includes a design and additional wording, and
registrant’s mark contains the additional term IDEAS, the
marks are more similar than dissimilar in appearance,
sound, connotation and commercial impression. Accordingly,
Ser. No. 85017693
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this du Pont factor favors a finding of likelihood of
confusion.
Sophisticated Purchasers
Another du Pont factor discussed by applicant is that
of the conditions of sale. Applicant asserts that “history
has demonstrated that the consuming public for Applicant’s
and Telcel’s product are sophisticated and completely able
to distinguish between the marks and their source.”12
However, there is no evidence that either applicant’s
services or those of registrant are limited to use only by
highly sophisticated persons. Further, there is nothing
inherent in telephone communication services that supports
a finding that such services would be rendered only to
sophisticated consumers. Indeed, these services are
commonly utilized by consumers of all types, who may or may
not exercise a high degree of care in selecting them.
Finally, it is settled that even sophisticated purchasers
are not necessarily knowledgeable in the field of
trademarks or immune from source confusion. See In re
Decombe, 9 USPQ2d 1812, 1814-1815 (TTAB 1988). As a
result, this du Pont factor further favors a finding of
likelihood of confusion.

12 Id. at 5.

Ser. No. 85017693
15
Actual Confusion
A further du Pont factor discussed by applicant is
that of the lack of instances of actual confusion.
Applicant asserts that the absence of actual confusion for
at least 10 years suggests no likelihood of confusion.
However, it is not necessary to show actual confusion in
order to establish likelihood of confusion. See Weiss
Associates Inc. v. HRL Associates Inc. 902 F.2d 1546, 223
USPQ 1025 (Fed. Cir. 1990). Particularly in an ex parte
proceeding, applicant’s assertion of the absence of actual
confusion is of little probative value in our determination
on the issue of likelihood of confusion because the Board
cannot readily determine whether there has been a
significant opportunity for actual confusion to have
occurred, such that the absence of confusion is meaningful.
See In re Opus One Inc., 60 USPQ2d 1812, 1817 (TTAB 2001);
In re Kangaroos U.S.A., 223 USPQ 1025 (TTAB 1984); and In
re Jeep Corp., 222 USPQ 333 (TTAB 1984). In those
situations where the Board has recognized the absence of
actual confusion as probative in an ex parte setting, there
existed a “confluence of facts” which together strongly
suggested that the absence of confusion was meaningful and
should be given probative weight. See In re Opus One Inc.,
supra; and In re Jeep Corp., supra. There is no evidence
Ser. No. 85017693
16
that such a “confluence of facts” is present in this case.
As a result, this du Pont factor appears to be neutral.
Summary
In summary, weighing all of the relevant du Pont
factors, we find that a likelihood of confusion exists.
Moreover, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. See In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 165, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal of registration under Section
2(d) of the Trademark Act on the ground of likelihood of
confusion with Registration No. 3440583 is affirmed.