TeleOne, Inc.v.Teleone Corp.

Trademark Trial and Appeal Board

Feb 23, 2009

No. 91176431 (T.T.A.B. Feb. 23, 2009)

Date: February 23, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

TeleOne, Inc.
v.
Teleone Corp.
_____

Opposition No. 91176430 to application Serial No. 78931486
Opposition No. 91176431 to application Serial No. 78931491

_____

Douglas D. Churovich, J. Joseph Muller and Brian J. Gill of
Polster, Lieder, Woodruff & Lucchesi, L.C. for TeleOne, Inc.

Jeffrey M. Furr for Teleone, Corp.
______

Before Quinn, Grendel and Taylor,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Teleone, Corp. (“applicant”) has filed applications to
register on the Principal Register the following marks:
TELEONE (in standard character format and the subject
of Opposition No. 91176430)1; and

(the subject of Opposition No. 91176431)2,

1 Serial No. 78931486, filed on July 18, 2006, with an allegation
of a bona fide intention to use the mark in commerce.

THIS OPINION
IS NOT A PRECEDENT
OF THE TTAB
Opposition Nos. 91176430 and 91176431

2
both for “Voice over IP services; telecommunications
services, namely, telecommunication access services” in
International Class 38. TeleOne, Inc. (“opposer”) has filed
notices of opposition to the registration of both marks.
Opposer, in each notice, alleges that it now and, for many
years prior to the July 18, 2006 filing date of applicant’s
application, has been the owner of the trademark TELEONE “as
applied to” voice over IP services and telecommunication
access services; and that applicant’s marks and its mark are
so similar that their contemporaneous use on the services
set forth in the applications and the services of opposer is
likely to cause confusion, or to cause mistake, or to
deceive the purchasing public, to the damage of opposer.
Applicant, in its answers, has denied the salient
allegations of the notices of opposition.
PRELIMINARY MATTERS
During applicant’s testimony deposition of David
Katimi, opposer objected to the questioning of Mr. Katimi as
a Rule 30(b)(6) witness because the notice of deposition was
only for Mr. Katimi in his “usual” capacity, and not as a
corporate executive. Opposer also objected to the entry as
exhibits of several documents on the ground that they had no

2 Serial No. 78931491, filed on July 18, 2006, with an
allegation of a bona fide intention to use the mark in commerce.
The application includes the following color statement: “The
color(s) blue is/are claimed as a feature of the mark. The
entire mark is BLUE against a transparent background.”
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3
Bates stamp coordination and, accordingly, there was no way
to verify that the documents had been produced in the case.
First, with regard to the Katimi deposition, a Rule 30(b)(6)
deposition is a deposition taken by a party of an adverse
party’s witness during the discovery period. See Fed. R.
Civ. P. 30(b)(6). Accordingly, the characterization of Mr.
Katimi’s trial testimony as that of a Rule 30(b)(6) witness
is in error. We have accorded Mr. Katimi’s testimony the
appropriate probative weight. As regards the accompanying
exhibits, inasmuch as opposer did not maintain the objection
in its brief, it is considered waived and we have considered
the exhibits, except as noted below. See Hard Rock Café
International (USA) Inc. v. Elsea, 56 USPQ2d 1504, 1507 n. 5
(TTAB 2000); and Reflange Inc. v. R-Con International, 17
USPQ2d 1125, 1126 n. 4 (TTAB 1990).
We also note with regard to applicant’s Katimi
deposition that several of the accompanying exhibits appear
to be in Spanish without an English translation. We have
not considered these exhibits except to the extent that they
are translated in the deposition. See Wright and Graham,
Federal Practice and Procedure (1977), § 5075 (“If a party
puts in evidence the whole of an encoded writing, he should
only be held to have introduced the part of it that he has
had translated for the jury.”).
Opposition Nos. 91176430 and 91176431

4
Last, opposer extensively argued in its brief that it
had made prior use of Teleone as a trade name; however prior
use of Teleone as a trade name was not pleaded and the
record does not support a finding that it was tried by
implied or express consent of the parties pursuant to Fed.
R. Civ. P. 15(b). We, therefore, have given these arguments
no consideration, except to the extent that they serve as a
point of reference for opposer’s arguments regarding its use
of TELEONE as a trademark.
THE RECORD
The record of these consolidated proceedings consists
of the pleadings and the files of application Serial Nos.
78931486 and 78931491. During its testimony period, opposer
submitted the testimony depositions of Richard Weinstein,
opposer’s president, with exhibits3; John Pasaka, opposer’s
former vice-president4; applicant’s employees, David Katimi,
Dolly Chacon and Raul Gomez, with exhibits5; Douglas Munar,
an industrial designer with a working relationship with
applicant; and Natalia Builes, an independent contractor of
applicant. Applicant, during its testimony period,

3 Neither applicant nor its counsel attended the Weinstein
deposition.

4 Neither applicant nor its counsel attended the Weinstein
deposition.

5 We note that the some of the same exhibits that were
introduced by Mr. Katimi were discussed in the Chacon and Gomes
depositions.
Opposition Nos. 91176430 and 91176431

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submitted the testimony deposition, with exhibits, of David
Katimi, applicant’s business developer. Only opposer filed
a brief.
FINDINGS OF FACT
Opposer

Opposer, incorporated as TeleOne, Inc., markets,
manufactures, sells and services telecommunications
platforms for different levels of business. (Weinstein
test. p. 11). One such level involves providing
telecommunication services for “end-user” customers,
including both residential and business customers.
(Weinstein test. p. 11-12). Opposer’s telecommunication
services include, inter alia, voice data and video
transmission and voice over internet protocol (“voice over
IP”). (Weinstein test. pp. 13-14). Opposer further
provides telecommunications access services, such as
providing interconnectivity between its customers and
others, including residential or very small business
customers. (Weinstein test. pp. 14-15). Since 2001,
opposer has used its TELEONE trademark in association with
its telecommunication services, including voice over IP and
telecommunication access services. 6 (Weinstein test. pp.

6 Mr. Weinstein particularly states:

Q. And how long have you been employed by TeleOne, Inc.?
A. Since it’s inception.
Q. And when was TeleOne, Inc. incorporated?
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17-18). In late 2001, opposer acquired the Internet domain
names “teleone.com” and “teleone.net” and created a website
associated with both of these domain names. Opposer has at
all times since the creation of its website in 2001
displayed its TELEONE trademark as a service mark with the
“TM” designation7 and, hence, opposer’s website has
continuously been used to promote telecommunications
services since 2001.8 (Weinstein test. pp. 47-48).
Customers can order opposer’s telecommunication products and
services sold under the mark TELEONE by viewing offerings

A. In 2001.
***
Q. When did TeleOne, Inc. begin to identify its
telecommunication services using the mark TeleOne?
A. Literally from inception.
Q. And at any time since the company’s inception did TeleOne
ever stop using the mark TeleOne to promote its
telecommunications goods and services?
A. No, sir, it did not.
(Weinstein test. pp. 10, 18)

Because opposer does not specify a date certain in 2001 as
the date it began using the TELEONE mark to identify its
services, we must presume that opposer commenced use of its
trademark on December 31, 2001. See TMEP § 903.07.

7 Opposer particularly indicated that “[o]pposer’s website has,
at all times since its creation in 2001, prominently displayed
Opposer’s trademark and trade name TELEONE as both a corporate
logo and as a service mark with the ‘TM’ designation.” (Weinstein
test. p. 47 and exh. 6). The logo design consists of the word
TeleOne in upper and lower case lettering with a graduated arch
of descending-sized circles which extend from the left side of
the wording over the wording and ending above the letter “e.”
Inasmuch as opposer did not further discuss this logo in its
brief, we will likewise limit our analysis to the word-only form
of opposer’s trademark.

8 Opposer’s website has only been “down” (i.e., non-operational)
for approximately six months in 2007 due to server damage caused
by a massive power outage. (Weinstein test. p. 51).
Opposition Nos. 91176430 and 91176431

7
shown and described on Opposer’s website and then placing an
order using the telephone numbers provided on the website.
(Pasaka test. p. 18). Opposer also promotes its TELEONE
mark by identifying potential customers and making
presentations to them. (Weinstein test. p. 16). Potential
customers are further identified through “word of mouth” or
other forms of introduction. (Id.). Opposer also
consistently affixes the “TM” symbol whenever the mark is
displayed, e.g., on opposer’s website, letterhead and
materials used for customer presentation. In addition to
its website, opposer advertises its voice over IP and
telecommunication access services rendered under the TELEONE
mark via the Yellow Pages®. (Weinstein test. p. 103).
Applicant
Applicant, Teleone Corp., was incorporated in November
2002. (Katimi [July] test. p. 9.) Applicant provides
“[a]ll kinds of IP telephony products” which are sold to
retail and wholesale customers that have the need to make
international calls, including individuals, call centers and
small and medium businesses. (Katimi [July] test. p. 11.)
The services provided under the mark include voice over IP
services aimed at both the corporate and individual markets.
(Katimi test. [Feb], exh. 4), Applicant’s earliest use of
the marks was on December 17, 2002. (Id). Applicant’s
services are marketed through its website, at tradeshows,
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8
and by sales representatives. (Katimi test. [Feb.], exh 4
and Katami test. [July] p. 22, 24, 25). Applicant
advertises its mark in magazines and advertising brochures.
(Katimi test. [July], pp. 25-26).
DISCUSSION
Standing

An opposer must have “a ‘real interest’ in the outcome
of a proceeding in order to have standing.” Richie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir.
1999). “To establish a reasonable basis for a belief that
one is damaged by the registration sought to be cancelled, a
petition may assert a likelihood of confusion which is not
wholly without merit.” Lipton Industries v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).9 Herein,
the evidence of record shows that opposer is the source of,
inter alia, voice over IP services and telecommunication
access services with which it uses its TELEONE mark. We
find this fact, together with the fact that opposer’s
likelihood of confusion claim is not frivolous satisfies the
requirements for standing in this case. See id.
Opposer, as plaintiff in these opposition proceedings,
has the burden of proving, by a preponderance of the

9 Because of the linguistic and functional similarities of the
opposition and cancellation provisions of the Lanham Act, “we
construe the requirements of those two sections of the Lanham Act
consistently.” Ritchie, 50 USPQ2d at 1025 n.2.

Opposition Nos. 91176430 and 91176431

9
evidence, its asserted grounds of priority and likelihood of
confusion. See Cerveceria Centroamericana, S.A. v.
Cerveceria India, Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309
(Fed. Cir. 1989). We first address the issue of likelihood
of confusion.
Likelihood of Confusion

Our determination under Section 2(d) is based on an
analysis of all the facts in evidence that are relevant to
the factors bearing on the likelihood of confusion issue.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973).
Applicant seeks to register the marks TELEONE (in
standard character form) and both for “voice over
IP services; telecommunications services, namely,
telecommunication access services.” Opposer’s evidence
demonstrates that it provides, inter alia, voice over IP
services and telecommunication access services under the
mark TELEONE.10 There is no question with respect to the
relatedness of the services; applicant’s services are
identical to opposer’s voice over IP and telecommunication
access services.

10 Opposer’s evidence demonstrates that opposer provides
additional telecommunication services and related goods. In
analyzing likelihood of confusion, we limit our discussion to
opposer’s voice over IP and telecommunications access services as
these services are identical to those services identified in
applicant’s applications.

Opposition Nos. 91176430 and 91176431

10
Further, because the parties’ services are identical,
we must presume that they will be offered in the same
channels of trade and purchased by the same classes of
purchasers, including residential and small business
customers seeking, e.g., voice over IP solutions. See
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813 (Fed. Cir. 1987). Applicant nonetheless
suggests that its services are targeted primarily to the
Hispanic market.11 However, as there are no such
restrictions in the applications, it must be presumed that
applicant’s services will be offered to all usual
purchasers, including non-Hispanics. See In re Elbaum, 211
USPQ 639 (TTAB 1981).
We next consider the similarity or dissimilarity of the
marks. In so doing, we must consider the appearance, sound,
connotation and commercial impression of each mark. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1722, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). Although we must compare the marks in their
entireties, 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) (“There

11 Katimi test. [July] p. 13.
Opposition Nos. 91176430 and 91176431

11
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
consideration of the marks in their entireties.). Last,
when marks would appear on identical services, as they do
here, the degree of similarity necessary to support a
conclusion of likely confusion declines. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1701 (Fed. Cir. 1992).
We find that the wording TELEONE is the dominant and
distinguishing portion of applicant’s mark (the
subject of Serial No. 78931491). While the swirling circle
design is noticeable, it is not sufficient to distinguish
the mark from opposer’s mark. It is settled that with a
composite mark comprising a design and words, the word
portion of the mark is usually the one most likely to
indicate the origin of the services to which it is affixed.
CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed.
Cir. 1983); and In re Dakin’s Miniatures, Inc., 59 USPQ2d
1593 (TTAB 2001) (“words are normally accorded greater
weight because they would be used by purchasers to request
the goods”). Further, neither the blue color nor the
stylization of the lettering is so distinctive as to be
source-indicating. While differences admittedly exist
between applicant’s TELEONE and design mark and opposer’s
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12
mark, they are substantially similar in appearance, sound,
connotation and commercial impression due to the shared,
dominant term “TELEONE.” Indeed, applicant admitted that
its marks and opposer’s mark have the same overall
commercial impression. (Katimi test. [Feb.] p. 57).
Moreover, purchasers familiar with opposer’s mark and
services are likely to believe that applicant’s mark is
merely a variant design adopted by opposer to identify
opposer’s voice over IP and telecommunication access
services.
We find also that applicant’s TELEONE mark (the subject
of Serial No. 78931486) is identical to opposer’s TELEONE
mark.
Inasmuch as applicant’s marks are either identical or
substantially similar to opposer’s mark, and the services of
the parties are the same, there is a likelihood of confusion
in this case.
Priority

Because there is a likelihood of confusion between the
parties’ marks, the next critical question is which party
has priority of use. Opposer is relying on its common law
rights in the TELEONE mark. In order for a plaintiff to
prevail on a claim of likelihood of confusion based on its
ownership of common law rights in a mark, the mark must be
distinctive, inherently or otherwise, and plaintiff must
Opposition Nos. 91176430 and 91176431

13
show priority of use. See Otto Roth & Co. v. Universal
Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981).
Applicant has not questioned the distinctiveness of TELEONE
and, in fact, seeks registration, in part, of an identical
mark for identical services. Nor are there any other
circumstances in the case which would have put opposer on
notice of this defense, and we therefore find that the mark
is distinctive. See The Chicago Corp. v. North American
Chicago Corp., 20 USPQ2d 1715 (TTAB 1991). See also Wetseal
Inc. v. FD Management Inc., 82 USPQ2d 1629 (TTAB 2007).
As regards priority, the record is clear that opposer
first used its TELEONE mark in 2001 (because no specific
date was established, the date is construed as December 31,
2001) in connection with its voice over IP and
telecommunication access services. Although applicant based
both applications (filed July 18, 2006) on a bona fide
intention to use the marks in commerce, applicant now claims
first use of its marks on December 17, 2002. Applicant
bases this earlier first date of use on invoices mailed with
the company logo on them. (Katimi test. [Feb], p. 31 and
exh. 4-7). Even accepting, arguendo, that applicant first
used its TELEONE and TELEONE and design marks on December
17, 2002, and that applicant first used TELEONE as a trade
Opposition Nos. 91176430 and 91176431

14
name in November 200212, those dates – although earlier than
the July 18, 2006 filing dates of applicant’s intent to use
applications – still are subsequent to opposer’s established
first use date.13
Quite simply, on this record, priority rests with
opposer. As previously indicated, confusion is likely
between applicant’s marks and opposer’s mark.

12 We note that applicant did not assert an earlier use of
TELEONE as a trade name.

13 In response to applicant’s assertion of an earlier first use
date, opposer contends that such use by applicant in connection
with international long distance telecommunication services prior
to November 11, 2004 was unlawful because it was a per se
violation of a Federal Communication Commission (“FCC”)
regulation which requires an international carrier to obtain a
license prior to operating. With respect to this allegation of
unlawful use, as the Board stated in Satinine Societa in Nome
Collettivo di S.A. e M. Usellini v. P.A.B Produits et Appareils
de Beaute, 209 USPQ 958, 965 (TTAB 1981), “the proofs submitted
by the party charging noncompliance [with a Federal statute] must
leave no room for doubt, speculation, surmise, or interpretation.
Additionally, said party should submit an up-to-date copy of the
statute in question, together with any pertinent rules,
regulations, and decisions issued thereunder.” Opposer, however,
did not provide an up-to-date copy of the relevant statute or any
other information pertinent to its assertion that applicant
failed to comply with FCC regulations. Accordingly, this claim
will not be further considered. In any event, and as noted
above, applicant’s asserted earlier use date is subsequent to
opposer’s established first use date and, accordingly,
inconsequential to our decision.
We add, also, that opposer is incorrect in its contention that
applicant’s proof of a date of first use prior to the date
asserted in its intent-to-use application must be “clear and
convincing.” When an application is based on intent-to-use in
commerce, that applicant is entitled to rely, for purposes of
priority, on actual trademark use or use analogous to trademark
use earlier than the filing date of its intent-to-use
application. See Corporate Document Services Inc. v. I.C.E.D.
Management Inc., 48 USPQ2d 1477 (TTAB 1998); and Dyneer Corp. v.
Automotive Products plc, 37 USPQ 1251 (TTAB 1995). The clear and
convincing standard is applicable to use-based applications where
the applicant attempts to prove a date of first use earlier than
that set forth in its application.
Opposition Nos. 91176430 and 91176431

15
Last, opposer maintains that applicant was fully aware
of opposer’s senior use of TELEONE when “applicant proceeded
to use opposer’s TELEONE mark as its own.” (Br. pp. 43-44).
Even if applicant knew of opposer’s mark prior to the
adoption of its TELEONE and TELEONE and design marks, mere
knowledge thereof does not establish that applicant adopted
its marks in bad faith. Ava Enterprises, Inc. V. Audio Boss
USA, Inc., 77 USPQ2d 1783 (TTAB 2006). Even so, it is
settled that one who adopts a mark similar to the mark of
another for the same or closely related goods or services
does so at his own peril. W.R. Grace & Co. v. Herbert J.
Meyer Industries, Inc. 190 USPQ 308 (TTAB 1976).

Decision: The oppositions are sustained.