Targus Information Corporation

Trademark Trial and Appeal Board

Jun 15, 2012

No. 77954823 (T.T.A.B. Jun. 15, 2012)

Mailed:
June 15, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Targus Information Corporation
________

Serial No. 77954823
_______

Kathleen A. Pasulka of Procopio Cory Hargreaves & Savitch
LLP for Targus Information Corporation.

Janet H. Lee, Trademark Examining Attorney, Law Office 102
(Karen Stryz, Managing Attorney).
_______

Before Grendel, Bergsman, and Wellington,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Targus Information Corporation (“applicant”) has filed
an application to register on the Principal Register the
mark WHO’S CALLING ME? (in standard character form) for
“application service provider in the field of non-
downloadable software featuring information about inbound
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Serial No. 77954823
2
calls made through cellular phones, telephones” in
International Class 42.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), in view of
previously registered mark WHO’S CALLING (in uppercase
typed letters) for the following goods and services:
Computer software, namely, an Internet based call
measurement and monitoring software suite for business
that tracks and evaluates calls and provides call
related information via real time and periodic
reporting; computer software, namely, an Internet
based interactive notification and reporting software
suite for business in the fields of marketing,
advertising and business development
(in International Class 9);

Business marketing consulting services; market
research and related services, namely, market analysis
and reporting; market data research services, namely,
monitoring and measuring the effectiveness of
advertising through the Internet and through
electronic information storage by tracking telephone
calls by telephone number, caller, location, and
related marketing data; interactive notification and
reporting services, namely, providing user
customizable real time and periodic advertising
effectiveness and customer profile and contact
information...
(in International Class 35); and

Data automation and collection service using
proprietary software to evaluate, analyze and collect
service data; technical consultation in the field of
market data research; providing use of online non-
downloadable software for call measurement and
monitoring services for business that track and
evaluate calls and providing call-related information
via real time and periodic reporting...

1 Serial No. 77954823, filed March 9, 2010, based on an
allegation of a bona fide intent to use the mark in commerce.
Serial No. 77954823
3
(in International Class 42).2

The refusal is also based on the following previously-
registered mark that is owned by the same entity and covers
the identical goods and services:3

For purposes of this appeal and our likelihood of
confusion analysis, we focus on the former mark because it
bears a stronger resemblance to applicant’s proposed mark
inasmuch as it is in typed, all-capital lettering and does
not contain any stylization or design elements. If we do
not find that registrant’s typed drawing mark is similar to
applicant’s mark, then there would not be a likelihood of
confusion between registrant’s composite mark and
applicant’s mark. In re Max Capital Group Ltd., 93 USPQ2d
1243, 1245 (TTAB 2010).
Applicant concurrently appealed the final refusal of
its application and filed a request for reconsideration.
The examining attorney denied the request for

2 Registration No. 2975766, issued July 26, 2005; Section 8
accepted and Section 15 acknowledged. The registration’s
recitation of goods and services has been abbreviated in the body
of this decision.
Serial No. 77954823
4
reconsideration. Both applicant and the examining attorney
have filed briefs. As discussed below, the refusal to
register is affirmed.
Our determination of the examining attorney's refusal
to register the mark under Section 2(d) of the Trademark
Act is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key 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 (CCPA
1976).
We first consider the relatedness of applicant’s
services with the goods and services of registrant. In
making our determination, we must consider the goods and
services as they are described in the registrations and
application, and we cannot read limitations into those
goods. See Hewlett-Packard Co. v. Packard Press Inc., 281

3 Registration No. 2975767, issued July 26, 2005; Section 8
accepted and Section 15 acknowledged.
Serial No. 77954823
5
F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1987).
We agree with the examining attorney’s general
statement and analysis, that “[b]oth applicant and
registrant provide goods and services that involve software
that monitor and track phone calls.” Brief, (unnumbered)
p. 12. More specifically, however, we can discern that
applicant’s services involving “non-downloadable software
featuring information about inbound calls made through
cellular phones, telephones” actually encompass
registrant’s services recited as “providing use of online
non-downloadable software for call measurement and
monitoring services for business that track and evaluate
calls and providing call-related information via real time
and periodic reporting.” The “information” ascertained and
provided via applicant’s services potentially includes the
“call measurement and monitoring services for business”
information mentioned in registrant’s services. Put
simply, both applicant and registrant’s services involve
using software to ascertain information from incoming calls
and providing this information to the consumers, namely,
the entities receiving the telephone calls. Thus,
according a reasonable reading to and interpetation of the
Serial No. 77954823
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services, as they are recited in the application and
registration, we must consider the services to be legally
identical.
We further find a close relationship between
applicant’s services and registrant’s software.
Registrant’s “Internet based call measurement and
monitoring software suite for business that tracks and
evaluates calls and provides call related information via
real time and periodic reporting” performs a similar
function to applicant’s services “in the field of non-
downloadable software featuring information about inbound
calls made through cellular phones, telephones.” Again,
the “information” derived from the inbound telephone calls
with respect to applicant’s services may include the same
type of information being tracked by registrant’s software.
For example, a business entity interested in tracking its
incoming telephone calls and possibly evaluating
information gained from these calls, could enlist
applicant’s services or purchase registrant’s software to
accomplish its objective.
In sum, applicant’s services are identical to certain
services in the registrant and applicant’s services are
otherwise closely related to registrant’s goods. The du
Pont factor regarding the similarity of the goods and
Serial No. 77954823
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services weighs strongly in favor of finding a likelihood
of confusion.
Because the respective services are in part legally
identical, we must assume that the purchasers and channels
of trade for such services would also be the same. See
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”).
Applicant implicitly acknowledges that consumers of
applicant’s and registrant’s services may be the same, but
asserts that they will exercise a higher degree of care in
their purchasing decisions. Specifically, applicant argues
that their services “require sophistication on the part of
purchasers” because they are “directed to businesses that
require these technical services” and “[t]hese business
owners or business department purchasers are not likely to
be confused about the company in which they are dealing.”
Serial No. 77954823
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Brief, p. 5. Applicant’s argument that business owners in
need of applicant’s and registrant’s services will exercise
a higher degree of care is not supported by the record.
In view thereof, the factors involving classes of
consumers and trade channels favors a finding of likelihood
of confusion to the extent that the services are in part
legally identical. With respect to consumer
sophistication, we cannot make a determination based on the
record before us. Even assuming a somewhat higher degree
of consumer care, based on a ‘business-to-business’
services relationship, this would not outweigh the identity
of the services and the presumption that the services
travel in the same channels of trade and are sold to the
same classes of consumers.
We now consider the similarity and dissimilarity
between the marks. Our focus is on whether the marks are
similar in sound, appearance, meaning, and commercial
impression. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005).
Here, the marks WHO’S CALLING and WHO’S CALLING ME?
are clearly very similar in sound, appearance, meaning and
commercial impression. Applicant’s mark incorporates
registrant’s mark in its entirety and the addition of the
Serial No. 77954823
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term ME? does very little to distinguish the marks. Both
marks, when used in connection with their respective goods
and services, will be understood in the same manner, i.e.,
as an interrogatory directed to obtaining information
regarding incoming telephone calls. Accordingly, we find
that the marks, when considered as a whole, are very
similar and this du Pont factor weighs heavily against
applicant.
Finally, we address the strength of the cited mark.
Applicant argues that “others are using similar marks for
what appear to be related services.” Brief, p. 5. Upon
review of the entire record, however, there is little to no
evidence of third-party use of similar marks in connection
with related goods and/or services. Even accepting that
there may be a degree of weakness based on the suggestive
nature of the registrant’s mark in connection with its
goods and services, it is undeniable that even weak marks
are entitled to protection. King Foods, Inc. v. Town &
Country Food Co., Inc., 159 USPQ 44 (TTAB 1968). Here, we
are presented with extremely similar marks used for
identical and closely related goods and services.
After careful consideration of the briefs and the
evidence of record, we conclude that contemporaneous use of
applicant’s mark WHO’S CALLING ME? and the previously-
Serial No. 77954823
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registered mark WHO’S CALLING, on identical services in
part or closely related goods and services, is likely to
cause confusion as to the source or sponsorship of such
services and goods.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.