Tomorrow's Technologies, Inc.v.Outernet-Worldwide Telepathic Web, LLC

Trademark Trial and Appeal Board

May 22, 2014

No. 91206595 (T.T.A.B. May. 22, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: 5/22/2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Tomorrow’s Technologies, Inc.
v.
Outernet-Worldwide Telepathic Web, LLC
_____

Opposition No. 91206595
to application Serial No. 85251761
filed on 02/25/2011
_____

Dwayne K. Goetzel of Meyertons, Hood, Kivlin, Kowert & Goetzel
for Tomorrow’s Technologies, Inc.

John Russell of Allmark Trademark for Outernet-Worldwide
Telepathic Web, LLC.
______

Before Quinn, Taylor and Wolfson,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Outernet-Worldwide Telepathic Web, LLC (“applicant”) filed,
on February 25, 2011, application Serial No. 85251761 under
Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), to
register the mark OUTERNET WORLDWIDE TELEPATHIC WEB (in standard
characters) (“WORLDWIDE TELEPATHIC WEB” disclaimed) for
“providing online retail store services featuring books and
downloadable audio recordings in the fields of telepathic
Opposition No. 91206595

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healing and personal growth” (in International Class 35); and
“informational website in the field of telepathic healing and
personal growth” (in International Class 44). The application
alleges first use anywhere and first use in commerce on January
21, 2011.
Tomorrow’s Technologies, Inc. (“opposer”) opposed
registration under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground that applicant’s mark, when used in
connection with applicant’s services, so resembles opposer’s
previously used and registered mark OUTERNET (in standard
characters) for the services set forth below1 as to be likely to
cause confusion.2
Computer network operations management and
administration services for others for use
with a global computer network; management
of computer networks for others for use with
a global computer network (in International
Class 35);

Computer workstation and server maintenance
services for computer systems with access to
a global computer network (in International
Class 37);

Creating, sending, receiving and storing
electronic mail on a global computer
network; computer telecommunications
connectivity services to a global computer
network; and services for providing multi-
user computer teleconferencing for the

1 Registration No. 2363470, issued July 4, 2000; renewed.
2 Opposer also pleaded dilution; however, no mention was made of this
claim in opposer’s brief. Accordingly, we deem this claim to be
waived. See Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d
1313, 1314 n.4 (TTAB 2005).
Opposition No. 91206595

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transfer of audio and video on a global
computer network (in International Class
38); and

Computer website hosting services for others
on a global computer network; computer
security services for computers with access
to a global computer network; providing
access to audio and video on a global
computer network; storing audio and video on
a global computer network; design and
implementation of computer networks for use
with a global computer network; computer
workstation and server configuration
services for computer systems with access to
a global computer network; providing multi-
user access to a global computer network for
the transfer and dissemination of
information; creating audio and video for
others on a global computer network; and
services related to the registration and use
of domain names on a global computer network
(in International Class 42).

Applicant, in its answer, denied the salient allegations of
likelihood of confusion.
The record comprises the pleadings; the file of the
application;3 a copy of the pleaded registration, excerpts of
printed publications and websites (of the parties, and of third
parties), and opposer’s discovery requests (Requests for
Admission, Interrogatories and Requests for Production) to which
applicant failed to respond, all introduced by opposer’s notice

3 The application is automatically of record without any action by the
parties pursuant to Trademark Rule 2.122(b). Thus, opposer’s notice
of reliance thereon is unnecessary, and the Board discourages such
filings. See Venture Out Properties LLC v. Wynn Resorts Holdings LLC,
81 USPQ2d 1887, 1889 n.8 (TTAB 2007).
Opposition No. 91206595

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of reliance. Applicant neither took testimony nor submitted any
other evidence. Only opposer filed a final brief on the case.
We first turn our attention to opposer’s Requests for
Admission, to which applicant failed to respond. Under Fed. R.
Civ. P. 36, a requested admission is deemed admitted unless a
written answer or objection is provided to the requesting party
within thirty days after service of the request, or within such
time as the parties agree in writing. See Fed. R. Civ. P.
36(a)(3). If a party on which requests have been served fails
to timely respond thereto, as in the case of applicant herein,
the requests will stand admitted by operation of law except in
limited circumstances, none of which is present here. See Fram
Trak Industries v. Wiretracks LLC, 77 USPQ2d 2000, 2005 (TTAB
2006); Pinnochio’s Pizza Inc. v. Sandia Inc., 11 USPQ2d 1227,
1228 n.5 (TTAB 1989). It is not necessary to file a motion to
deem requests for admissions admitted when no response is
served, since the admissions are deemed admitted by operation of
Fed. R. Civ. P. 36(a). See TBMP § 407.03(a) (3d ed. rev. 2
2013). Any matter admitted (either expressly, or for failure to
timely respond) under Fed. R. Civ. P. 36(a) is conclusively
established for purposes of the Board proceeding. See Texas
Dept. of Transportation v. Tucker, 95 USPQ2d 1241, 1244 (TTAB
2010); Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032, 1037 n.8
(TTAB 2007). See also TBMP § 407.04.
Opposition No. 91206595

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Through applicant’s failure to respond to the Request for
Admission, applicant, by operation of law, admits the following:
opposer is the owner of Registration No. 2363470, which is valid
and subsisting (Nos. 10-13); and that opposer has priority of
use over applicant (Nos. 15-17; 24).
Opposer established its standing to oppose registration of
the involved application by virtue of its registration of the
mark OUTERNET for the recited services, and applicant’s
admissions related thereto.4 Thus, opposer has shown that it is
not a mere intermeddler. See Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); and
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024,
213 USPQ 185 (CCPA 1982).

4 It is noted that opposer submitted with its notice of reliance a
“soft” copy of its pleaded registration, not one “prepared and issued”
by the Office as required by Trademark Rule 2.122(d)(2). A federal
registration owned by any party to a Board inter partes proceeding
will be received in evidence and made part of the record in the
proceeding if that party files, during its testimony period, a notice
of reliance on the registration, accompanied by (a) a copy of the
registration prepared and issued by the Office showing both the
current status of and current title to the registration; or (b) a
current printout of information from the electronic database records
of the Office such as (i) TSDR (Trademark Status and Document
Retrieval) showing the current status and title (owner) of the
registration and, if the TSDR printout does not reflect the current
owner of the registration, a printout from the Office’s Assignment
database demonstrating an assignment to the current owner of the
registration; or (ii) TESS (Trademark Electronic Search System) along
with a copy of any records from the Assignment database showing an
assignment to the current owner of the registration. In the event
opposer finds itself in future Board proceedings, it would be well
advised to become familiar with the details in making its registration
of record, as set forth in TBMP § 704.03(b)(1)(A).
Opposition No. 91206595

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In view of opposer’s ownership of a valid and subsisting
registration of its mark OUTERNET, as established by applicant’s
admissions related thereto, opposer’s priority is not in issue
with respect to the recited services. King Candy, Inc. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974).
Our determination under Section 2(d) 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. In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). 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).
In returning to the unanswered Requests for Admission,
applicant admitted, by operation of law, the following pertinent
facts regarding the likelihood of confusion with opposer’s mark:
the word OUTERNET in both marks has the same or similar meaning
(Nos. 26-27); the word OUTERNET in both marks sounds the same
(No. 30) and looks the same (No. 31); applicant’s services will
be offered or provided via an internet-based website (No. 32),
as are opposer’s services (No. 36); applicant’s services offered
under its mark are provided in trade channels similar to
Opposition No. 91206595

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opposer’s trade channels (No. 33); and applicant’s website
contains several references to OUTERNET without the words
“Worldwide Telepathic Web” next to OUTERNET (No. 37). Lastly,
applicant admitted that there is a likelihood of confusion
between the involved marks (No. 39).
Keeping applicant’s admissions in mind, and for the sake of
completeness, we now turn to consider the merits of the
likelihood of confusion issue. In comparing opposer’s mark
OUTERNET to applicant’s mark OUTERNET WORLDWIDE TELEPATHIC WEB,
we must consider the marks in their entireties as to appearance,
sound, connotation and commercial impression to determine the
similarity or dissimilarity between them. Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
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. In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“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 consideration of the
marks in their entireties. Indeed, this type of analysis appears
to be unavoidable.”). In applicant’s mark, the words “WORLDWIDE
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TELEPATHIC WEB” are disclaimed. Thus, we view the term OUTERNET
in applicant’s mark to be the dominant portion. See, e.g., In
re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34
(Fed. Cir. 1997) (“DELTA,” not the disclaimed generic term
“CAFE,” is the dominant portion of the mark THE DELTA CAFE).
Moreover, purchasers in general are inclined to focus on the
first word or portion in a trademark; in applicant’s mark,
OUTERNET is the first word. 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 likely to be impressed upon
the mind of a purchaser and remembered”). See Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73
USPQ2d at 1692.
Accordingly, the dominant portion of applicant’s mark is
identical to the entirety of opposer’s mark. Applicant has
adopted the entirety of opposer’s mark and merely added highly
descriptive and disclaimed wording to it. As admitted by
applicant, OUTERNET in both marks looks the same, sounds the
same, and has the same meaning. Given this identity in part,
when the marks are considered in their entireties, the marks
engender very similar overall commercial impressions.
The similarity between the marks is a factor that weighs in
favor of a finding of a likelihood of confusion.
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We next turn to consider the second du Pont factor
regarding the similarity/dissimilarity between the services. It
is well settled that the services of the parties need not be
identical or competitive, or even be offered through the same
channels of trade, to support a holding of likelihood of
confusion. It is sufficient that the respective services of
opposer and applicant are related in some manner, and/or that
the conditions and activities surrounding the marketing of the
services are such that they would or could be encountered by the
same persons under circumstances that could, because of the
similarity of the marks, give rise to the mistaken belief that
they originate from the same source. See Hilson Research, Inc.
v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB
1993); In re International Telephone & Telegraph Corp., 197 USPQ
910, 911 (TTAB 1978). The issue here, of course, is not whether
purchasers would confuse the services, but rather whether there
is a likelihood of confusion as to the source of these services.
L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); and
In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
In this case, we find opposer’s services such as “computer
network operations management and administration services for
others for use with a global computer network”; “computer
website hosting services for others on a global computer
network”; “providing multi-user access to a global computer
Opposition No. 91206595

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network for the transfer and dissemination of information;
creating audio and video for others on a global computer
network” to be related and complementary to applicant’s “online
retail store services and informational website in the field of
telepathic healing and personal growth.” Both the registration
and application include broadly worded services related to
online and website services, including creating and hosting
online content, and providing access to online services. As
pointed out by opposer, its services could be used in connection
with the provision of applicant’s services, as for example,
opposer’s internet access or website hosting services could be
used in order to set up and host applicant’s online retail store
or informational website. Further, applicant’s admissions and
the evidence of record show that the services are rendered in
the same or similar trade channels to the same or similar
classes of purchasers.
The similarity between the services, trade channels and
purchasers are factors that weigh in favor of opposer.
We conclude that purchasers familiar with opposer’s online
services rendered under the mark OUTERNET, would be likely to
mistakenly believe, upon encountering applicant’s mark OUTERNET
WORLDWIDE TELEPATHIC WEB for its online services, that the
respective services originated from or are associated with or
sponsored by the same entity.
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Decision: The opposition is sustained, and registration to
applicant is refused.