Sage Telecom, Inc.

Trademark Trial and Appeal Board

Nov 14, 2008

No. 76659745 (T.T.A.B. Nov. 14, 2008)

Mailed: November 14, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Sage Telecom, Inc.
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Serial Nos. 76659745 and 76659746
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Stephen D. Kahn and Diem H. Tran of Weil, Gotshal & Manges
for Sage Telecom, Inc.

Dorritt Carroll, Trademark Examining Attorney, Law Office
116 (Michael W. Baird, Managing Attorney).
____________

Before Walters, Holtzman and Rogers, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Sage Telecom, Inc. has filed an application to register
the standard character marks ESAGELINK1 and SAGE SELECT2 on
the Principal Register for “telecommunications services,

1 Serial No. 76659745 was filed May 5, 2006, based on use of the mark in
commerce, alleging first use and use in commerce as of September 30,
2005. This application includes a disclaimer of LINK apart from the
mark as a whole. While the examining attorney stated that the
disclaimer is not necessary, applicant did not withdraw the disclaimer
and, thus, it remains of record.

2 Serial No. 76659746 was filed May 5, 2006, based on use of the mark in
commerce, alleging first use and use in commerce as of September 1,
2005.

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial Nos. 76659745 and 76659746

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namely transmission of speech, analog data, digital data and
facsimile by means of telecommunications networks,” in
International Class 38.
The examining attorney has issued a final refusal to
register under Section 2(d) of the Trademark Act, 15 U.S.C.
1052(d), on the ground that applicant’s mark so resembles
the mark SAGE,3 previously registered for, in relevant part,
the goods and services listed below that, if used on or in
connection with applicant’s goods, it would be likely to
cause confusion or mistake or to deceive.
“Computer software for use in … Internet access,”
in International Class 9; and

“Electronic transmission of data and documents via
computer terminals,” in International Class 38.4

Applicant has appealed. Both applicant and the
examining attorney have filed briefs. Due to common issues
of fact and law, the appeals in these two applications were
consolidated by the order of the Board on August 21, 2008.
Therefore, both appeals will be decided in this single
opinion.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are

3 Registration No. 3238564, issued May 8, 2007, from an application
filed May 24, 2002. The registration is owned by Sage Software, Inc.

4 The examining attorney stated in the brief that the goods and services
listed above form the basis for the refusal. The subject registration
also includes additional goods and services in International Classes 9
and 38 as well as services in International Classes 35 and 42. We have
not identified these additional goods and services herein.
Serial Nos. 76659745 and 76659746

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relevant to the factors bearing on the likelihood of
confusion issue. See In re E. I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
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 and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re
Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein.
We consider, first, the goods and services involved in
this case, and we note that the question of likelihood of
confusion must be determined based on an analysis of the
goods or services recited in applicant’s application vis-à-
vis the goods or services recited in the registration,
rather than what the evidence shows the goods or services
actually are. Canadian Imperial Bank v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987). See
also, Octocom Systems, Inc. v. Houston Computer Services,
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4
Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1992); and The
Chicago Corp. v. North American Chicago Corp., 20 USPQ2d
1715 (TTAB 1991). Further, it is a general rule that goods
or services need not be identical or even competitive in
order to support a finding of likelihood of confusion.
Rather, it is enough that goods or services are related in
some manner or that some circumstances surrounding their
marketing are such that they would be likely to be seen by
the same persons under circumstances which could give rise,
because of the marks used therewith, to a mistaken belief
that they originate from or are in some way associated with
the same producer or that there is an association between
the producers of each parties’ goods or services. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and cases cited
therein; and Time Warner Entertainment Co. v. Jones, 65
USPQ2d 1650, 1661 (TTAB 2002).
The registrant’s relevant services consist of the
electronic transmission of data and documents via computer
terminals; and its relevant goods consist of computer
software for use in Internet access. Applicant’s services
involve the transmission of, inter alia, data and facsimiles
via telecommunications networks, which the examining
attorney contends is essentially “electronic transmission
services by means of computer networks.” (Id.) We take
judicial notice of the definition in Merriam-Webster’s
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Collegiate Dictionary (2003, 11th ed.) of
“telecommunication” as “communication at a distance (as by
telephone)[;] technology that deals with telecommunication.”
We also note the definition submitted by the examining
attorney from the Internet dictionary www.webopedia.com of
“network” as “a group of two or more computer systems linked
together.” (’45 Office Action, 11/8/07.) In view thereof,
the examining attorney argues that “[b]ecause computer
networks are composed of computer terminals, the parties’
(sic) services in International Class 38 are all but
identical.” (Id.)
Applicant describes its services variously as
“provid[ing] Internet connection service to residences and
businesses” (‘45 Brief, p. 8.) and providing a “benefits
program that [applicant] offers to customers who subscribe
to its telephone service, providing extra services such as
24-hour customer service and free long distance on
holidays.” (‘46 Response of 12/20/07, p. 3.)
Applicant argues that the respective goods and services
do not perform the same function, are not substitutes for
one another in the marketplace, and are unlikely to be
considered related. Applicant describes registrant’s goods
as business application software for office purposes such as
accounting, budgeting, human resources, and payroll
management” (‘46 Response of 12/20/07, p. 3); and contends
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that registrant “markets its applications in four customer-
focused divisions: Business Management, Healthcare, Payment
Solutions, and Industry & Specialized Solutions.” (‘46
Brief, p. 8.) Applicant refers to registrant’s website;
however, no excerpts from this site have been submitted and
the Board will not take judicial notice of websites and
matter contained thereon.
Despite the ways in which applicant now characterizes
its services and describes registrant’s services, both
applicant’s and registrant’s services, as identified,
involve the transmission of data and documents
electronically, whether it is via the Internet or phone
lines. As such the respective services are closely related,
if not the same.
We do not reach the same conclusion with respect to
registrant’s specified goods, i.e., “computer software for
use in … Internet access.” The examining attorney has
submitted no evidence regarding any relationship between
this software and applicant’s identified services and, thus,
we do not find that such a relationship is established in
this case.
Moreover, while both applicant’s and registrant’s
services are broadly identified and likely are offered to
the same broad category of customers, including businesses
and residences, registrant’s specified software would appear
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to be offered to Internet access providers and/or by those
providers to subscribers as part of providing Internet
access. Thus, the trade channels and purchasers of
registrant’s specified software would appear to be quite
different from the trade channels and purchasers of both
registrant’s and applicant’s identified services. Applicant
argues that the purchasers of registrant’s goods and
services are sophisticated businesses and purchasers of its
services are careful, knowledgeable potential Internet
subscribers; however, there is no evidence to this effect in
the record and we are not convinced that the purchasers of
applicant’s services and registrant’s specified goods and
services are so limited. Regardless, even sophisticated
business purchasers and careful consumers are not
necessarily knowledgeable about trademarks or immune from
source confusion. In re Decombe, 9 USPQ2d 1812 (TTAB 1988).
Therefore, we find that these du Pont factors regarding
the services, trade channels and purchasers weigh against
applicant.
We turn, next, to a determination of whether
applicant’s mark and the registered mark, when viewed in
their entireties, are similar in terms of appearance, sound,
connotation and commercial impression. The test is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
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sufficiently similar in terms of their overall commercial
impressions that confusion as to the source of the goods or
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. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore,
although the marks at issue must be considered in their
entireties, it is well settled that one feature of a mark
may be more significant than another, and it is not improper
to give more weight to this dominant feature in determining
the commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
Registrant’s mark in its entirety consists of the
single term SAGE, which is arbitrary in connection with both
applicant’s services and registrant’s goods and services.
There is no evidence in this record of third-party use or
registration of SAGE in connection with similar or related
goods and services and, thus, it would appear to be a strong
mark.
We agree with the examining attorney that SAGE is the
dominant portion of each of applicant’s marks. We take
judicial notice of the definition in Merriam-Webster’s
Collegiate Dictionary (2003, 11th ed.) of “e” as “electronic
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.” Additionally, the examining attorney
submitted during examination a definition from the Internet
dictionary, www.webopedia.com, of “link” as “a line or
channel over which data is transmitted.” Thus, we agree
with the examining attorney that the “E” and “LINK” portions
of applicant’s mark are merely descriptive in connection
with its identified services and of less significance in
determining the overall commercial impression of the mark.
Nor does the combination of these three elements, “E,”
“SAGE,” and “LINK,” into a single term change the
significance or connotation of the individual terms.5
Therefore, when we consider registrant’s mark, SAGE, and
applicant’s mark, ESAGELINK, in their entireties, we
consider them to be more similar than dissimilar.
With respect to applicant’s mark SAGE SELECT, the
examining attorney submitted excerpts from several Internet
websites to show that several telecommunications companies
use the word “select” to indicate a higher grade of service,
e.g., “AT&T select,” “Sprint select,” “Sprint Nextel
select,” and “Verizon select.” Not only because SELECT is a
laudatory term in connection with the identified services,
but because SAGE is the initial word in this two-word mark,
we find that SAGE is the dominant portion of this mark as

5 Moreover, the specimen of record shows the mark ESAGELINK with a lower
case initial “e” and upper case letters “S” and “L,” thus reinforcing
the impression of the individual components of the mark.
Serial Nos. 76659745 and 76659746

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well. Similarly, when we consider registrant’s mark, SAGE,
and applicant’s mark, SAGE SELECT, in their entireties, we
consider them to be substantially similar. In fact,
applicant has merely taken registrant’s mark in its entirety
and added a laudatory term so that, in connection with the
closely related services involved herein, prospective
purchasers are likely to believe that applicant’s SAGE
SELECT services are a “select,” i.e., special class, of
registrant’s SAGE services.
When we consider the record and the relevant likelihood
of confusion factors, and all of applicant's arguments
relating thereto, including those arguments not specifically
addressed herein, we conclude that in view of the
substantial similarity in the commercial impressions of
applicant’s marks, SAGE SELECT and ESAGELINK, and
registrant’s mark, SAGE, their contemporaneous use on the
closely related, if not identical, services involved in this
case is likely to cause confusion as to the source or
sponsorship of such services.
Decision: The refusal under Section 2(d) of the Act is
affirmed in each application.