Internet Promise Group LLC

Trademark Trial and Appeal BoardAug 11, 2016

No. 86253009 (T.T.A.B. Aug. 11, 2016)

This Opinion is not a Precedent of the TTAB Mailed: August 11, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Internet Promise Group LLC _____ Serial No. 86253009 _____ Internet Promise Group, pro se.1 Odessa Bibbins, Law Office 118, Thomas G. Howell, Managing Attorney. _____ Before Adlin, Hightower and Goodman, Administrative Trademark Judges. Opinion by Hightower, Administrative Trademark Judge: Internet Promise Group LLC (“Applicant”) seeks registration on the Principal Register of the mark TOUCHSENSE ID, in standard characters and with ID disclaimed, for the following goods in International Class 9:2 computer software application utilizing an existing touch screen of a smart phone like device for collecting a biometric sample, namely, a fingerprint or a thumbprint 1 All papers filed in the application and appeal were signed by Tara Chand, Applicant’s president. 2 Application Serial No. 86253009 was filed on April 15, 2014 under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention to use the mark in commerce. Serial No. 86253009 - 2 - for the purpose of authentication to the device itself and or others via the wireless network. The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied to the goods identified in the application, so resembles the mark TOUCHSENSE, in two standard character registrations on the Principal Register, as to be likely to cause confusion, to cause mistake, or to deceive. The same entity owns the two cited registrations for the following goods, all in International Class 9: • Computer software featuring force feedback and computer hardware featuring force feedback,3 and • Electric, electromechanical and electronic components in the nature of touch-enabled devices for providing tactile, touch, haptic, and force feedback sensations, namely, rotary controls, electric rotary switches, encoders, potentiometers, digital controls and switches, namely, directional touchpads, multidirectional digital switches, electronic rocker switches, toggle switches, electronic hat switches, namely POV (point of view) switches and electronic momentary switches, namely, switches which return to their normal positions when released, electric control panels, graphical, mechanical, keyboard-based, voice-based, text, and touch-based user interface software, computer touchscreens, touch panels, and touch pads, plasma display panels, LCD (liquid crystal display) panels, CRT (cathode ray tube) display panels, OLED (organic light emitting diode) display panels and video monitors, keyboards, stylus-based input devices, namely, digitizer tablets, computer touchscreens, touch pads, video monitors, fixed computer terminals and portable computer terminals, personal computer, laptop computers, wireless computer terminal and portable graphics tablet computer, computer display monitors equipped with touchscreens, electronic controllers for computer touchscreens, computer joysticks, computer game joysticks, computer mice, trackballs, and gesture-based control devices, namely, digitizer tablets, computer touchscreens, touchpads, video monitors, fixed 3 Registration No. 2556821, issued April 2, 2002; renewed March 30, 2012. Serial No. 86253009 - 3 - computer terminals and portable computer terminals, and global positioning systems (GPS) consisting of computers, computer software, transmitters, receivers, and network interface devices, all for use in financial transaction systems, automated teller machines, voting machines, office equipment, copiers, printers, consumer electronics devices and appliances, security and fire safety monitoring products, self-service computer systems, information kiosks, ticketing kiosks, kiosks providing Internet access, music, and video playback and download devices, digital signage, audio, video, and lighting controls, musical instruments, recording, production, broadcast, and live performance systems, industrial computers, industrial process and control systems, test and measurement equipment, personal communication, information, and entertainment devices, telephones, cell and mobile phones, cameras, PDAs (personal digital assistants), geographical information systems, PCs, graphics workstations, televisions, music and video players, medical devices, medical simulation devices and training systems, control systems, simulators, training systems for manned and unmanned vehicles, navigation, entertainment, climate, communications, diagnostics, weapon system controls, console gaming products and gaming devices for gambling, wagering, playing lottery games, arcades, and computer games; electric, electromechanical and electronic components in the nature of touch-enabled devices for providing tactile, touch, haptic, and force feedback sensations, namely, electronic steering wheels and yokes, namely, a double handle for controlling movement for video, arcade, and casino games; electrical controllers in the nature of touch-enabled devices for providing tactile, touch, haptic, and force feedback sensations for industrial equipment for process and control systems, namely, joysticks, electronic steering wheels, yokes, namely, a double handle for controlling movement and electronic effect foot pedals for use with video games, computer simulators, and computer training systems; electric, electromechanical and electronic components in the nature of touch-enabled devices for providing tactile, touch, haptic, and force feedback sensations, namely, electronic foot pedals for use in interactive video games, video game interactive control floor pads for computer games.4 4 Registration No. 3431198, issued February 13, 2006; combined declaration of use and incontestability under Sections 8 and 15 of the Trademark Act accepted and acknowledged May 12, 2014. Serial No. 86253009 - 4 - After the Examining Attorney made the refusal final, Applicant appealed to this Board and requested remand for submission of additional evidence. On remand, the Examining Attorney issued a subsequent final action, following which the appeal resumed. Applicant submitted an appeal brief, a supplemental brief, and a reply brief, and the Examining Attorney submitted an appeal brief. It appears that Applicant, proceeding pro se, intended to request a second remand in its supplemental appeal brief. Under the heading “First Part: Request for Remand to Examining Attorney,” Applicant asserted in its supplemental brief that the Examining Attorney “grossly misunderstood” the nature of the goods identified in the application and cited registrations.5 Applicant argued: “Therefore, a request for remand to the Examining Attorney for a proper examination is deemed necessary and is requested.”6 Briefing continued, however, and neither Applicant nor the Examining Attorney brought this request to the Board’s attention in their subsequent briefs or otherwise. Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 1204 (2016) directs that: “A request for remand should not be combined with the applicant’s appeal brief, but should be made by a separate document.” (citing In re Best Western Family Steak House, Inc., 222 USPQ 827, 828 (TTAB 1984)). Indeed, Applicant may be aware of this principle, having filed its first request for remand (which was 5 Supplemental Appeal Brief at 2-3, 10 TTABVUE 3-4. 6 Id. at 5, 10 TTABVUE 6. Serial No. 86253009 - 5 - granted) as a separate document.7 Applicant also submitted additional evidence with its first request for remand, but did not do so with its subsequent request. We do not find any of the circumstances supporting remand referenced in TBMP § 1209.04 to be present. Considering the reason given and the late point in the appeal when the request was made, we do not find that Applicant has shown good cause for remand, and the request is denied. See In re Luxuria s.r.o., 100 USPQ2d 1146, 1147 (TTAB 2011). We turn now to the merits of the appeal. Our determination under Section 2(d) is based on an analysis of all probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). We first address the du Pont likelihood of confusion factor focusing on “‘the similarity or dissimilarity of the marks in their entireties as to appearance, sound, 7 6 TTABVUE. The Examining Attorney also advised Applicant in her December 1, 2015 Subsequent Final Office Action that: “Any further request for the trademark examining attorney to consider this application must be made via a request for remand to the Board, for which good cause must be shown.” 8 TTABVUE 2. Serial No. 86253009 - 6 - connotation and commercial impression.’” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). Applicant’s mark is TOUCHSENSE ID. Although we consider the mark in its entirety, we find that ID contributes less to the mark’s overall commercial impression because it is descriptive of Applicant’s goods, which are intended to collect fingerprints for authentication purposes, and also because it is short and the final term in the mark. TOUCHSENSE – which appears first and is longer and more distinctive than ID – is the dominant portion in Applicant’s mark, and is identical to the entirety of the cited mark. Likelihood of confusion has been found where, as here, the entirety of one mark is incorporated within another. See, e.g., Coca-Cola Bottling Co. of Memphis, Tenn., Inc. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (BENGAL LANCER for club soda, quinine water and ginger ale likely to cause confusion with BENGAL for gin); In re El Torito Rests. Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (MACHO COMBOS, with “combos” disclaimed, likely to cause confusion with MACHO for restaurant entrees); Johnson Publ’g Co. v. Int’l Dev. Ltd., 221 USPQ 155, 156 (TTAB 1982) (EBONY DRUM for hair care products likely to cause confusion with EBONY for cosmetics). The fact that TOUCHSENSE is the first term in Applicant’s mark further enhances its similarity to the cited mark. See, e.g., Palm Bay, 73 USPQ2d at 1692 (stating that “veuve” is a prominent part of the mark VEUVE CLICQUOT because it is the first word in the mark); Century 21 Real Estate Corp. v. Century Life of Am., Serial No. 86253009 - 7 - 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (stating that consumers will first notice the identical lead word on encountering the marks); Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (stating that “it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”). Considering the marks in their entireties, we find Applicant’s mark TOUCHSENSE ID to be highly similar to the cited mark TOUCHSENSE in appearance, sound, meaning, and overall commercial impression. The first du Pont factor weighs strongly in favor of a finding that confusion is likely. We next consider the second du Pont factor, the similarity or dissimilarity of the goods. The test is not whether consumers would be likely to confuse the goods, but rather whether they would be likely to be confused as to their source. In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012). We must make our determination regarding the similarities between the goods, channels of trade, and classes of purchasers based on the goods as they are identified in the involved application and cited registration, respectively, not on any extrinsic evidence of actual use. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys. Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Therefore, we must presume that Applicant’s and Registrant’s identifications comprise the full range of the identified goods. See, e.g., In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“[B]ecause neither Applicant nor Registrant has limited its products to any particular style, type of Serial No. 86253009 - 8 - consumer, or price point, we must assume that both identifications include ‘residential and commercial furniture’ of all types, styles, and price levels offered to the full range of usual consumers for such goods.”). A likelihood of confusion may be found with respect to a particular class based on any item within the identification of goods for that class. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). The greater the degree of similarity between the marks, the lesser the degree of similarity between the goods necessary to support a finding of likelihood of confusion. In re C.H. Hanson Co., 116 USPQ2d 1351, 1351 (TTAB 2015); In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001). We focus on the goods identified in the subject application: computer software application utilizing an existing touch screen of a smart phone like device for collecting a biometric sample, namely, a fingerprint or a thumbprint for the purpose of authentication to the device itself and or others via the wireless network and the goods identified in cited Registration No. 3431198, particularly the following: Electric, electromechanical and electronic components in the nature of touch-enabled devices for providing tactile, touch, haptic, and force feedback sensations, namely . . . touch-based user interface software, computer touchscreens, touch panels, and touch pads . . . computer display monitors equipped with touchscreens . . . personal communication, information, and entertainment devices, telephones, cell and mobile phones (Registration No. 3431198) Applicant argues that the goods it will offer under the TOUCHSENSE ID mark are not the same as or similar to those offered by the owner of the cited registrations: Serial No. 86253009 - 9 - Prior registered goods are directed to provide force feedback to a sense of touch much like when in a mechanical typewriter, when a key is pressed the finger of the hand feels a return force to know that a user has pressed that key. In contrast [Applicant] Internet Promise’s goods have nothing to do with keys or key space or activating a key on a touch screen surface and force feedback sensation there from, and, instead are directed to using the touch screen surface to record a biometric sample of the finger or thumb by merely placing the finger or thumb flat on the touch screen surface . . . . Therefore the prior registered goods and Internet Promise’s goods are inherently and distinctively different and not at all [the] same or similar as has been argued by the Examining Attorney in support of likelihood of confusion.8 To support a finding of likelihood of confusion as to source, however, it is not necessary that the goods be identical, similar, or even competitive. It is sufficient that the goods are related in some manner, or that the circumstances surrounding their marketing are such that they would be encountered by the same persons in situations that would give rise, because of the marks, to a mistaken belief that they originate from the same source or that there is an association or connection between the sources of the goods. In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009). While we agree that Applicant’s identified goods are different from the registered goods, they both center on the user’s physical interaction with touch screens, including on cell phones and “a smart phone like device” – for Applicant, to collect a fingerprint or thumbprint, and for Registrant, to provide force feedback. Given this 8 Reply Brief, 13 TTABVUE 11. Serial No. 86253009 - 10 - commonality, when these types of goods are offered under the highly similar marks TOUCHSENSE and TOUCHSENSE ID, we find that consumers would be likely to assume that they originate from the same source, or that there is an association or connection between the sources of the goods. Indeed, some users of smart phones could be expected to encounter both marks simultaneously when using their devices and likely would believe that Applicant’s mark represents a brand extension of Registrant’s force feedback product, one which performs the function of identifying users. Turning to the third and fourth du Pont factors, the channels of trade and conditions of sale, Applicant contends that its goods are software downloadable to a mobile device, while the registered goods must be purchased as original equipment manufacturer hardware and engineered into a hardware product.9 Therefore, Applicant argues, Registrant’s goods travel in different channels of trade from its goods and are sold to sophisticated consumers. Applicant’s identification is not restricted to downloadable software; nor are the goods identified in the cited registrations limited to original equipment manufacturer hardware. Applicant concedes that its goods may be preloaded onto a mobile device by the device seller or manufacturer.10 Under the identification in the cited 9 See Supplemental Brief at 12, 10 TTABVUE 13; Reply Brief at 12, 13 TTABVUE 13. 10 See id. (stating that “the possibility that Internet Promise’s goods may be sold as preloaded on the mobile device by the seller/manufacturer of the devices does not change the nature of the Internet Promise’s goods to be as either OEM or as hardware goods”); see also Appeal Brief at 17, 4 TTABVUE 18 (“When a retail customer is buying the goods for the applied-for mark they are buying a smart phone in a smart phone packaging as the applied-for mark is for a computer software inside the smart phone . . . .”). Serial No. 86253009 - 11 - registration, on which our decision must be based, the same is true of Registrant’s goods.11 Because neither Registrant’s nor Applicant’s identification of goods includes any limitations with respect to trade channels, and the goods in both IDs may be purchased preloaded onto mobile devices, we presume that the goods are sold in the same channels of trade. Consumers of Registrant’s goods may be “sophisticated” or careful, but because Registrant’s identification is not limited by type of consumer, that is not relevant. See Stone Lion, 110 USPQ2d at 1162-63. We have considered all of the arguments and evidence of record, including any not specifically discussed herein, as they pertain to the relevant du Pont likelihood of confusion factors. Applicant’s mark is highly similar to the cited mark. In addition, the goods identified in the subject application and cited Registration No. 3431198 are used and marketed such that source confusion is likely to arise, and travel through the same channels of trade to the same consumers. Therefore, we find that Applicant’s mark is likely to cause confusion with the mark in cited Registration No. 3431198 when used in association with the goods identified in the application. Decision: The refusal to register Applicant’s mark is affirmed. 11 See also printouts from Registrant’s website attached to the December 1, 2015 Subsequent Final Office Action at 11-12, stating that Registrant’s “TouchSense technology provides haptics in mobile phone, automotive, gaming, medical and consumer electronics products from world-class companies,” and that its haptics “can be found today in mobile phones, tablets, portable gaming devices, automotive systems, console and PC gaming controllers, consumer devices, medical devices and touchscreen kiosks.” 8 TTABVUE 18-19.