Zappoint Corp.

Trademark Trial and Appeal BoardJul 27, 2016

No. 86310032 (T.T.A.B. Jul. 27, 2016)

Mailed: July 27, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Zappoint Corp. ________ Serial Nos. 86310014 and 86310032 _______ Daniel R. McClure of McClure Qualey & Rodack LLP for Zappoint Corp. Matthew J. McDowell, Trademark Examining Attorney, Law Office 101 (Ron Sussman, Managing Attorney). _______ Before Cataldo, Goodman and Pologeorgis, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Zappoint Corp. (“Applicant”) filed two applications under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), to register on the Principal Register ZAPPOINT as a mark in standard characters for the goods and services set forth below (separated for ease of discussion): Computer software for social network links to transmit, show, publish, display, mark, blog and share electronic information, audio signals, and video signals through Internet or other communication networks; computer software for social network links to create and view personal information with visual effects via portable digital electronic devices, and to exchange personal information between portable digital This Opinion is not a Precedent of the TTAB Serial Nos. 86310014 and 86310032 - 2 - electronic devices other than in the fields of database management for use in career management and recruitment; downloadable computer application software for social network links to create and view personal information with visual effects via portable digital electronic devices, and to exchange personal information between portable digital electronic devices other than in the fields of database management for use in career management and recruitment in International Class 9;1 and Providing temporary use of online non-downloadable computer software for social network links, which facilitates the uploading, downloading, streaming, posting and display of audio and video files, and facilitates blogging, linking, sharing and providing electronic media or information on communication networks; providing communication and information network planning and design that allows online users to create personal profiles with visual effect parameters, the content of which is based on social network information and is viewed via portable digital electronic devices with visual effects using the parameters, and allows online users to exchange, transfer and share information between portable digital electronic devices other than in the fields of database management for use in career management and recruitment; providing temporary use of online non-downloadable application software for social network links, creating a virtual community, and transmitting audio, video, photos, images, text, graphics and data; providing information in the field of computers or software; providing a website that gives users the ability to create customized pages for social network links, which include user-defined or specified information, personal profile pages, audio, video, photo images, text, graphics and information, and visual effect parameters, the content of which is viewed via portable digital electronic devices with visual effects using the parameters in International Class 42.2 1 Serial No. 86310032 was filed on June 15, 2014. 2 Serial No. 86310014 was filed on June 15, 2014. Serial Nos. 86310014 and 86310032 - 3 - The Trademark Examining Attorney refused registration to both applications under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the registered mark ZAPOINT in standard characters for Providing on-line non-downloadable software for use in database management for use in career management and recruitment in International Class 93 that registration of Applicant’s mark would be likely to cause confusion among consumers as to the source of the goods and services. When the refusal to register was made final in both cases, Applicant appealed. Applicant and the Examining Attorney filed briefs.4 Proceedings Consolidated When, as here, Applicant has filed ex parte appeals to the Board in two co-pending applications, and the cases involve common issues of law or fact, the Board, upon request by the Applicant or Examining Attorney or upon its own initiative, may order the consolidation of the appeals for purposes of briefing, oral hearing, and/or final decision. See In re Anderson, 101 USPQ2d 1912, 1915 (TTAB 2012) (Board sua sponte consolidated two appeals); In re Country Music Association, Inc., 100 USPQ2d 1824, 1827 (TTAB 2011) (same); In re Bacardi & Co. Ltd., 48 USPQ2d 1031, 1033 (TTAB 1997) (Board sua sponte considered appeals in five applications together and 3 Registration No. 3585365 issued on March 10, 2009. Section 8 affidavit accepted; Section 15 affidavit acknowledged. 4 The attachments to the Examining Attorney’s brief will be given no consideration. To the extent they were not made of record prior to appeal, they are untimely. See Trademark Rule 2.141(d). To the extent they were timely made of record during prosecution, they are duplicative and unnecessary. Serial Nos. 86310014 and 86310032 - 4 - rendered single opinion). In this case, the marks in the involved applications are identical, the goods and services are related, the refusal to register both marks is based upon the same registration, and the appeals are presented on essentially identical records. Accordingly, the Board consolidates these appeals. References to the record refer to Application Serial No. 86310014 unless otherwise indicated. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the 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., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (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, 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”). These factors, and any other relevant du Pont factors in the proceeding now before us, will be considered in this decision. Similarity and Dissimilarity of the Marks We turn first to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm Bay Serial Nos. 86310014 and 86310032 - 5 - Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)). In comparing the marks, we are mindful that the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the goods or services offered under the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The mark in the cited registration is ZAPOINT, which appears to be a coined term with no meaning on this record as applied to the goods. Thus, ZAPOINT appears to be an arbitrary term as applied to Registrant’s goods and entitled to a broad scope of protection. The mark in the involved applications, ZAPPOINT, is nearly identical to the registered mark in appearance and sound. The sole difference between the marks is the presence in Applicant’s mark of an additional letter “P,” which may go unnoticed by consumers. The cited mark would appear to be pronounced as ZA- POINT while Applicant’s mark would be pronounced as ZAP-POINT. However, it is settled that there is no correct pronunciation of trademarks, and the two marks may Serial Nos. 86310014 and 86310032 - 6 - well be verbalized in a very similar or even identical manner by consumers. Cf. In re Teradata Corp., 223 USPQ 361, 362 (TTAB 1984) (“as we have said many times, there is no ‘correct’ pronunciation of a trademark”). As a result, we find the marks ZAPOINT and ZAPPOINT to be nearly identical in appearance and sound and that, overall, the marks convey highly similar connotations and commercial impressions. Relationship of the Goods and/or Services We turn to the du Pont factor involving the similarity or dissimilarity of Applicant’s goods and services and Registrant’s goods. It is settled that in making our determination, we must look to the goods and/or services as identified in the application vis-à-vis those recited in the cited registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 110 USPQ2d at 1161; Octocom Sys., Inc. v. Houston Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d 1713 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). See also On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984). The issue here is not whether purchasers would confuse the goods and/or services, but rather whether there is a likelihood of confusion as to the source of these goods Serial Nos. 86310014 and 86310032 - 7 - and/or services. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830 (TTAB 1984). Applicant, with its September 17, 2015 communication, submitted a copy of a fact sheet discussing its services and screenshots from its Internet website displaying its goods as provided on Google Play and the iTunes App Store.5 The fact sheet includes the following information and is reproduced in part below. Zappoint Introduction No time to organize? Have you captured the opportunity to follow up on a first encounter? After two weeks, you both will no longer remember. Introducing the most elegant way. Zappoint Next Generation Business Card Organizer Easy to Scan One click to call Taking Note Event Attendee Easy to scan As easy as can be Batch mode scanning Always Perfect Automatic image quality enhancement Anytime and anywhere, just do it One click to talk One tap on Hi icon to establish relationships After Hi, information is always up to date Get more connections to expand your business opportunity Note taking Recording momentous moments Story of your connections Reminder when you meet next time Applicant’s fact sheet also includes the following page: 5 P. 6-32. Serial Nos. 86310014 and 86310032 - 8 - Applicant’s Internet website includes the following pages: Serial Nos. 86310014 and 86310032 - 9 - Screenshots of Applicant’s goods as provided on Google Play and the iTunes App store are displayed below. Serial Nos. 86310014 and 86310032 - 10 - Serial Nos. 86310014 and 86310032 - 11 - Applicant explains that The services of the Applicant are a social networking service. These services provide users with a platform for people to build relationships and network with others. Some popular social network services include Facebook, Instagram, Twitter, LinkedIn, Pinterest and Vine. The software application provided by the Applicant acts similarly to these sites. It gives its users a way to organize business and/or personal contacts and establish and maintain relationships with these contacts. The software enables users to scan business cards to enter information Serial Nos. 86310014 and 86310032 - 12 - about a contact. Users can create personal profiles, make notes about contacts and communicate/exchange information with contacts.6 In support of his contention that the goods and services are related, the Examining Attorney made of record screenshots from the following commercial Internet websites discussing goods and services used for networking that are similar in nature to those of both Applicant and Registrant, including the following representative samples:7 6 Id. at 3-4. 7 October 13, 2015 Office action, p. 8-67. Serial Nos. 86310014 and 86310032 - 13 - (Mashable.com); Serial Nos. 86310014 and 86310032 - 14 - Serial Nos. 86310014 and 86310032 - 15 - (contactually.com); (brighthub.com). Serial Nos. 86310014 and 86310032 - 16 - These websites demonstrate that certain of Applicant’s type of goods and services and Registrant’s type of goods are used for the same purposes, namely, organizing, collecting, storing and updating contacts obtained through business cards, social media, and personal interactions. Based upon the evidence of record, we find that Registrant’s “Providing on-line non- downloadable software for use in database management for use in career management and recruitment” is related to Applicant’s broadly worded Computer software for social network links to transmit, show, publish, display, mark, blog and share electronic information, audio signals, and video signals through Internet or other communication networks inasmuch as Applicant’s software may be used to collect and manage information concerning social and business contacts that users may utilize to further their careers or recruit individuals to their businesses.8 The evidence demonstrates that numerous software packages provide users the ability to transmit, show, display and share information regarding social contacts and that these contacts may promote a user’s career advancement. Registrant’s goods further are related to Applicant’s software used to create and view personal information and to exchange personal data, “other than in the fields of database management for use in career management and recruitment” because even though Applicant specifically excludes the particular uses 8 These goods, as well as several categories of Applicant’s services, are not subject to the limiting language excluding the uses of Registrant’s goods. See In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1166 & n.4 (TTAB 2013) (finding that semicolon separates services into discrete categories). Serial Nos. 86310014 and 86310032 - 17 - of Registrant’s goods, the evidence of record suggests that social networking software may be used to find jobs and notify others of career opportunities. Similarly, the evidence of record shows that Registrant’s goods are related to Applicant’s services, including the broadly worded “providing temporary use of online non-downloadable computer software for social network links,” “providing information in the field of computers or software,” and “providing a website that gives users the ability to create customized pages for social network links” inasmuch as these services may provide users the ability to create webpages, obtain information and use software to manage databases in the fields of career management and recruitment. The evidence demonstrates that users of online software and websites utilize these tools to, inter alia, create and manage databases of contacts for career advancement. Applicant argues that its goods and services “provide users with a platform for people to build relationships and network with others.”9 “The software enables users to scan business cards and to enter information about a contact”10 while Applicant’s services “simply provide users with an organizational tool to keep track of social contacts who have given them a business card.”11 However, these goods and services appear to be conceptually related to Registrant’s software used for “database management for use in career management and recruitment” inasmuch as both 9 7 TTABVUE 5. 10 Id. 11 Id. Serial Nos. 86310014 and 86310032 - 18 - enable users to organize or manage information regarding contacts and social networking on the one hand and career management and recruiting on the other. Applicant emphasizes that its goods and services are geared toward social contacts while Registrant’s goods are for business purposes. Nonetheless, Applicant’s goods and services, even if not intended for use in career management or recruitment, are used to collect information regarding business cards and social contacts and the Examining Attorney’s evidence of record suggests that such tools are also used to create databases of contacts that exchange information regarding jobs and career advancement, and thus may be used for purposes of “career management.” Based upon the evidence of record submitted by Applicant and the Examining Attorney, we find that consumers would readily perceive certain of Applicant’s goods and services and Registrant’s goods as being related. Moreover, it is not necessary for the Examining Attorney to prove likelihood of confusion with respect to each item of goods and services identified in Applicant’s single-class applications; if there is likelihood of confusion with respect to any of Applicant’s identified goods or services, the refusal of registration must be affirmed. See Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937 (Fed. Cir. 1983); Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). The evidence of record in this case indicates that the goods and services of Applicant and the goods of Registrant are commercially related and may be encountered together by consumers. Relationship of the Trade Channels and Classes of Consumers Serial Nos. 86310014 and 86310032 - 19 - The only evidence relating to the trade channels through which the goods and services at issue travel is the third-party website evidence submitted by the Examining Attorney, discussed above. This evidence shows that certain websites feature goods and/or services that are similar in type to the goods and services of Applicant and the goods of Registrant. Applicant argues that “consumers of the Registrant’s services are generally employees within a human resources group of a company.”12 “Consumers of the Applicant’s [goods and] services are individuals that wish to communicate, contact, share information, etc. with other individuals with whom they have exchanged business cards.”13 However, none of those putative limitations are present in the recitations of either Applicant’s goods and services or Registrant’s goods. See, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 110 USPQ2d at 1161. Furthermore, there is no evidence to suggest that the Internet sites discussed above are atypical in the field of computer networking goods and services. We find the evidence sufficient to show that, in the marketplace, goods and/or services similar to those of Applicant and Registrant are found in at least one common trade channel, namely, the Internet, and are utilized by common consumers. Balancing the factors In view of the facts that the marks are highly similar, certain of the goods and/or services are related and that the goods and/or services move in at least one identical channel of trade and are marketed to the same consumers, we find that a likelihood 12 Id. at 6. 13 Id. Serial Nos. 86310014 and 86310032 - 20 - of confusion exists between the marks and goods and services identified in both involved applications and the mark and goods in the cited registration. Decision: The refusal to register application Serial Nos. 86310014 and 86310032 under Section 2(d) of the Trademark Act is affirmed.