Solid State Design Incorporated

This Opinion is a

Precedent of the TTAB

Mailed: January 3, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE

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Trademark Trial and Appeal Board

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In re Solid State Design Inc.

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Serial No. 87269041

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Gene Bolmarcich, Law Offices of Gene Bolmarcich, for Solid State Design Inc.

Erin R. Zaskoda, Trademark Examining Attorney, Law Office 103,

Michael Hamilton, Managing Attorney.1

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Before Zervas, Lykos, and Larkin,

Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:

Solid State Design Inc. (“Applicant”) seeks registration on the Principal Register

of the mark shown below

for “Computer application software for mobile phones and desktop computers,

namely, software for visualizing the popularity of places in real time, that uses an

1 Mr. Hamilton was the Managing Attorney of Law Office 103 when the Patent and

Trademark Office’s brief was filed. He has since retired from federal service.

Serial No. 87269041

underlying map capability for navigation, sold as ‘business to consumer’ (B2C)

software, and not as ‘business to business’ (B2B) software,” in International Class 9.2

The Trademark Examining Attorney has refused registration of the mark under

Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that it so

resembles the mark shown in Registration No. 4794959 and reproduced below

for “Downloadable mobile applications for mobile phones and mobile electronic

devices, primarily software for travel and destination marketing organizations and

travel marketing professionals,” in International Class 9,3 as to be likely, when used

on or in connection with Applicant’s goods, to cause confusion, mistake, or deception.

2 Application Serial No. 87269041 was filed on December 14, 2016 under Section 1(a) of the

Trademark Act, 15 U.S.C. § 1051 (a), on the basis of Applicant’s claimed first use of the mark

and first use in commerce on November 1, 2016. The original identification of goods was

“Computer application software for mobile and desktop devices, namely, software for

visualizing popular places that uses an underlying map capability for navigation.” Applicant

amended the identification to add, inter alia, the phrase “sold as ‘business to consumer’ (B2C)

software, and not as ‘business to business’ (B2B) software” in response to the first Office

Action citing the registration that is the subject of the final refusal to register. March 23,

2017 Response to Office Action. The application describes the mark as consisting “of the

wording ‘populace’ with the silhouette of a person’s head centered within [the] letter ‘o.’”

3 The cited registration issued on August 18, 2015. The registrant describes the mark as

consisting “of an orb or ball shaped object formed by alternating bands of the colors red and

white; said object casts a slight discrete shadow in grey; below the object is the word

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When the Examining Attorney made the refusal final, Applicant appealed.

Applicant and the Examining Attorney have filed briefs. We affirm the refusal to

register. As explained below, we are compelled to do so in large part not just because

the marks are similar, but because the goods and classes of customers are too: the

cited registration is unrestricted in that it neither specifies the function of the

registrant’s downloadable mobile applications nor meaningfully limits their classes

of customers.

We are obligated to decide this appeal on the basis of the registration that was

issued. Applicant’s argument that it “should not have registered this way under

USPTO rules for specificity in software IDs,” 4 TTABVUE 12, is a collateral attack

on the registration, which we cannot entertain on this appeal because of the statutory

presumptions that we must accord the registration under Section 7(b) of the

Trademark Act. In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534-35 (Fed.

Cir. 1997).4 We note, however, that an applicant has the option of “seeking a consent

from the owner of the cited registration, or seeking a restriction of the registration

under Section 18 of the Trademark Act, 15 U.S.C. § 1068,” which permits the Board

in an inter partes proceeding “to cancel registrations in whole or in part, or to

‘otherwise restrict or rectify . . . the registration of a registered mark.’” In re Cook

Med. Tech. LLC, 105 USPQ2d 1377, 1384 (TTAB 2012).

‘populace’, said word being printed in small letters, all in black.” The colors red, white, grey,

and black are claimed as a feature of the mark.

4 “[T]he present ex parte proceeding is not the proper forum for such a challenge,” id. at 1534,

which would properly be made in an inter partes proceeding for cancellation of the

registration.

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Serial No. 87269041

Likelihood of Confusion Analysis

Section 2(d) of the Trademark Act prohibits the registration of a mark that so

resembles a registered mark as to be likely, when used on or in connection with the

goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.

§ 1052(d). Our determination of likelihood of confusion under Section 2(d) is based

upon an analysis of all probative facts in the record that are relevant to the likelihood

of confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357,

177 USPQ 563, 567 (CCPA 1973). We consider each du Pont factor that is relevant

and for which there is record evidence. See, e.g., M2 Software, Inc. v. M2 Commc’ns,

Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v.

GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015). “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.” Federated Foods, Inc. v.

Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).

I. Similarity of the Marks

This du Pont factor focuses on “‘the similarity or dissimilarity of the marks in their

entireties as to appearance, sound, connotation and commercial impression.’” Palm

Bay Imps. Inc. v. Veuve Cliquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,

73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). “The

proper test is not a side-by-side comparison of the marks, but instead whether the

marks are sufficiently similar in terms of their commercial impression such that

persons who encounter the marks would be likely to assume a connection between

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Serial No. 87269041

the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101

USPQ2d 1713, 1721 (Fed. Cir. 2012) (quotation omitted). Applicant claims that its

application software is sold “to the general consuming public,” 4 TTABVUE 6, “who

normally retains a general rather than a specific impression of trademarks or service

marks.” In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016); accord

Johann Maria Farina Gegenuber Dem Julichs-Platz v. Chesebrough-Pond, Inc., 470

F.2d 1385, 176 USPQ 199, 200 (CCPA 1972) (“[t]he focus must be on the ‘general

recollection’” consumers have of the two marks) (citation omitted); see also Franklin

Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981)

(consumers viewing a trademark “ordinarily must depend upon their past recollection

of marks to which they were previously exposed”) (citation omitted).

“[L]ikelihood of confusion cannot be predicated on dissection of a mark, that is, on

only part of a mark. On the other hand, in articulating reasons for reaching a

conclusion on the issue of confusion, 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.” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).

Both marks contain the word “populace” in bolded all-lowercase letters, and a

design element. “In the case of a composite mark containing both words and a design,

‘the verbal portion of the mark is the one most likely to indicate the origin of the goods

to which it is affixed.’” In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed.

Cir. 2012) (quoting CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir.

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Serial No. 87269041

1983)). “The verbal portion of a word and design mark likely will be the dominant

portion” because it “likely will appear alone when used in text and will be spoken

when requested by consumers.” Id. at 1911; see also L.C. Licensing, Inc. v. Berman,

86 USPQ2d 1883, 1887 (TTAB 2007) (“[I]t is well settled that if a mark comprises

both a word and a design, then the word is normally accorded greater weight because

it would be used by purchasers to request the goods.”).

This general principle applies squarely to the marks here. As an initial matter,

the design element in Applicant’s mark is somewhat difficult to discern, as illustrated

by the drawing of the mark in the application that is reproduced below:

But even if the design element is clearly recognized as “a silhouette of a person’s head

centered within [the] letter ‘o’” in the word “populace,” as Applicant describes it in

the application, we find that it is a minor feature of secondary importance, and the

mark will be spoken simply as the word “populace” and will be recalled primarily by

that word. See Bond v. Taylor, 119 USPQ2d 1049, 1055-56 (TTAB 2016) (words

BLACK MEN ROCK in composite mark found to be more likely to indicate the origin

of the goods and services than the adjacent “silhouette of a man with his arms

outstretched in a sign of victory[.]”).

In the mark in the cited registration, the “orb or ball shaped object formed by

alternating bands of the colors red and white” is visually striking, but this globe

image has only modest source-identifying significance when it appears with the word

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Serial No. 87269041

“populace,” which means “the people who live in a country or area.” MERRIAM-

WEBSTER DICTIONARY (merriam-webster.com, accessed on December 6, 2017).5 Like

Applicant’s mark, the cited mark as spoken is the word “populace,” and we find that

consumers will recall the mark primarily by that word.6

Thus, the word “populace” dominates both marks because it is the part that is

most likely to “make an impression upon purchasers that would be remembered and

relied upon to identify the goods . . . .” In re Appetito Provisions Co., 3 USPQ2d 1553,

1554 (TTAB 1987).

We turn next to a comparison of the marks in their entireties, giving greater

weight in that comparison to the dominant word “populace” than to the marks’ design

elements.

The marks are identical in sound because they are both verbalized as “populace.”

They are similar in appearance because although they include different design

elements, the most memorable visual feature is the word “populace,” which is

displayed in both marks in bolded all-lowercase letters that are substantially similar

in stylization. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed.

Cir. 1993) (composite marks containing the identical words RIGHT-A-WAY were

5 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v.

J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ

505 (Fed. Cir. 1983), including online dictionaries that exist in printed form or regular fixed

editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377-78 (TTAB 2006).

6 By way of example, while the registrant’s entire mark appears on a webpage made of record

by Applicant, the word “Populace” alone is used in two instances on that page to identify the

registrant. March 23, 2017 Response to Office Action at 4. The word “populace” will also

necessarily be used without the design features of either mark in any database searches

regarding Applicant’s or the registrant’s application software.

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Serial No. 87269041

dominated by those words, and differences in scripts and arrow designs in those

marks did “not diminish their substantial identity when viewed as a whole.”).

With respect to connotation and commercial impression, Applicant argues that

“the marks have different connotations and commercial impressions” because

“Applicant’s mark has an outline of a person, emphasizing the social aspect of the

goods, whereas the Cited Mark uses a globe design, emphasizing the travel and

tourism aspect of the goods.” 4 TTABVUE 19. These claimed subtle differences in

meaning are not supported by any record evidence that the average consumer of

application software, “who normally retains a general rather than a specific

impression of trademarks,” Bay State Brewing, 117 USPQ2d at 1960, will interpret

the dominant word “populace” to connote something different in each mark. The word

“populace” imbues both marks with an essentially identical meaning pertaining to

“the people who live in a country or area,” and we agree with the Examining Attorney

that “the average consumer is most likely to recall generally the literal element

‘POPULACE’ . . . rather than making a very nuanced distinction that the outline of a

person emphasizes the social aspect of the applicant’s goods and the arguably globe

or orb image emphasizes the travel and tourism aspect of the cited goods . . . .” 6

TTABVUE 7.7

7 We further note that a globe image could actually connote the earth’s “populace,” an

inference that Applicant fails to address.

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Serial No. 87269041

We find that the marks are similar in appearance, identical in sound, and highly

similar in connotation and commercial impression when considered in their entireties

and that this du Pont factor strongly supports a finding of a likelihood of confusion.

II. Similarity of the Goods, Channels of Trade, and Classes of Customers

The second du Pont factor concerns the “similarity or dissimilarity and nature of

the goods or services as described in an application or registration . . . .” Stone Lion

Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1159

(Fed. Cir. 2014). The third and fourth du Pont factors concern “[t]he similarity or

dissimilarity of established, likely-to-continue trade channels,” and the “conditions

under which and buyers to whom sales are made, i.e. ‘impulse’ vs. careful,

sophisticated purchasing,” respectively. Id. The analysis of each of these factors is

premised upon the identifications of goods in the application and in the cited

registration. Id. at 1161-63; Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918

F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Jump Designs LLC, 80

USPQ2d 1370, 1374 (TTAB 2006) (discussing the impact of the identifications of

goods on these factors).

A. Similarity of the Goods

The goods identified in the application are “[c]omputer application software for

mobile phones and desktop computers, namely, software for visualizing the

popularity of places in real time, that uses an underlying map capability for

navigation, sold as ‘business to consumer’ (B2C) software, and not as ‘business to

business’ (B2B) software.” The word “namely” in the identification serves to specify

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Serial No. 87269041

the function of Applicant’s software as “visualizing the popularity of places in real

time, that uses an underlying map capability for navigation.”8

The goods identified in the cited registration are “[d]ownloadable mobile

applications for mobile phones and mobile electronic devices, primarily software for

travel and destination marketing organizations and travel marketing professionals.”

The function of the applications is not specified,9 and Applicant and the Examining

Attorney disagree as to the nature and scope of the goods. Applicant argues that “one

can logically assume that the software must be of a type that is specifically and

especially useful to travel and destination marketing organizations and travel

professionals,” 4 TTABVUE 12, while the Examining Attorney argues that “because

the cited software identification is broad, the presumption is that such software could

encompass the exact same software” identified in the application. 6 TTABVUE 10.

We are constrained to agree with the Examining Attorney.

Applicant’s claim that the identification in the cited registration is limited to

software applications that are “specifically and especially useful” to their users must

be rejected in view of the controlling principle that where the goods in an application

8 The Trademark Manual of Examining Procedure (“TMEP”) (Oct. 2017) states that the

“terms ‘namely,’ ‘consisting of,’ ‘particularly,’ and ‘in particular’ are definite and are preferred

to set forth an identification that requires greater particularity.” TMEP Section 1402.03(a).

We discuss below the significance of the remaining language in the identification, “sold as

‘business to consumer’ (B2C) software, and not as ‘business to business’ (B2B) software,”

which is a purported limitation on the classes of customers for the app, not a specification of

its function.

9 As we explain below, the word “primarily” in the registrant’s identification is not the

equivalent of the word “namely” in Applicant’s identification, and does not serve to specify

the function of the application.

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Serial No. 87269041

or registration are broadly described, they are deemed to encompass “all the goods of

the nature and type described therein . . . .” Jump Designs, 80 USPQ2d at 1374. The

only limitation on the function of the goods in the registration is that the apps are

used “for mobile phones and mobile electronic devices.”10 The identification leaves the

goods broadly described as “[d]ownloadable mobile applications for mobile phones and

mobile electronic devices,” and we must deem those goods to include all “goods of the

nature and type described therein,” id., which encompass Applicant’s more

specifically identified type of “[c]omputer application software for mobile phones.”11

Applicant stresses that the registration is inconsistent with the guidance provided

in the USPTO’s Acceptable Identification of Goods and Services Manual (“ID

Manual”), which provides that simply “[s]tating that the ‘downloadable mobile

applications’ are ‘for use with mobile devices’ is not acceptable” to specify the function

of such applications.12 This appeal illustrates the problems that can arise when the

requirement to specify the function of a computer program such as a downloadable

app is not satisfied.

10 Section 1402.03(d) of the TMEP provides that “[t]ypically, indicating only the intended

users, field, or industry will not be deemed sufficiently definite to identify the nature of a

computer program,” and the language “primarily software for travel and destination

marketing organizations and travel marketing professionals” does not specify the nature of

the applications because it does not explain what they do. This language instead identifies

the main, but not exclusive, intended users of the goods.

11 The language “[d]ownloadable mobile applications for mobile phones and mobile electronic

devices” is not the sort of technical or vague language that would justify resort to “extrinsic

evidence of use to determine the meaning of the identification of goods.” In re C.H. Hanson

Co., 116 USPQ2d 1351, 1354 (TTAB 2015).

12 We take judicial notice that a mobile application is also known as an “app,” which is

“typically a small, specialized program downloaded onto mobile devices.” DICTIONARY.COM,

Unabridged Random House, Inc. (www.dictionary.com, accessed on December 6, 2017).

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Serial No. 87269041

Section 1402.03(a) of the TMEP instructs examining attorneys that the

identification of goods or services in an application for registration “should state

common names for goods and services, be as complete and specific as possible, and

avoid indefinite words and phrases.” The identifications of goods in the application

and cited registration both involve mobile software applications. The ID Manual

states that “[m]obile applications are software applications designed for

smartphones, tablet computers, and other mobile devices, and require specification

of the function of the software.”13 Because mobile applications are a type of computer

program, the requirement of specifying the function of an app reflects the general

requirement that computer program identifications “must be sufficiently specific to

permit determinations with respect to likelihood of confusion” and to “avoid the

issuance of unnecessary refusals of registration under 15 U.S.C. §1052(d) where the

actual goods of the parties are not related and there is no conflict in the marketplace.”

TMEP Section 1402.03(d) (citing In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992)).

The ID Manual provides the following form language for an acceptable description of

a downloadable mobile app: “Downloadable mobile applications for {indicate

function of software, e.g., managing bank accounts, editing photos, making

restaurant reservations, etc. and, if software is content- or field-specific, the

content or field of use}.” ID Manual Term ID 009-4414 (effective May 9, 2013)

(emphasis added).

13 ID Manual note to the entry for “Downloadable mobile applications for.…” (Oct. 2013 note).

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Serial No. 87269041

We fully acknowledge the issues arising from the unrestricted identification of

goods in the registration, but we lack the authority to read limitations into the

identification, In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1748 (Fed

Cir. 2017), including a specification of the function of the apps, or to “grant relief

under Section 18 sua sponte.” Cook Med. Tech., 105 USPQ2d at 1384 n.6.

Because the goods as identified must be deemed to be legally identical in part, this

du Pont factor supports a finding of a likelihood of confusion.

B. Similarity of the Channels of Trade

Because we must deem the goods to be legally identical in part, we are obligated

to assume that their channels of trade are legally identical as well, even in the

absence of record evidence. Viterra, 101 USPQ2d at 1908; In re Yawata Iron & Steel

Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968). This du Pont factor supports a

finding of a likelihood of confusion.

C. Similarity of the Classes of Customers

Because we must deem the goods to be legally identical in part, we are also

obligated to assume that the classes of customers are legally identical. Viterra, 101

USPQ2d at 1908; Yawata Iron & Steel, 159 USPQ at 723. The identifications of goods

in the application and cited registration both contain purported restrictions on the

classes of customers for the respective apps, but for the reasons discussed below, they

do not negate the presumptive overlap in the classes of customers.

Applicant argues that the portion of the identification of goods in the application

that states that the mobile application is “sold as ‘business to consumer’ (B2C)

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software, and not as ‘business to business’ (B2B) software,” identifies Applicant’s

customers as “the general consuming public.” 4 TTABVUE 6. We take judicial notice

that “B2C” is defined as “the online selling of goods and services to final customers,

DICTIONARY OF BUSINESS TERMS (Thomson 2006), and “an advertising or marketing

program aimed at businesses doing business directly with consumers as opposed to

other businesses,” THE ULTIMATE BUSINESS DICTIONARY (Perseus Publishing 2003),

while “B2B” is defined as “the online selling of goods and services between

businesses,” DICTIONARY OF BUSINESS TERMS, and “an advertising or marketing

program aimed at businesses doing business with other businesses as opposed to

consumers.” THE ULTIMATE BUSINESS DICTIONARY.

We find that the identification of goods in the application indicates that the

prospective purchasers of the identified goods include, but are not limited to, the

general consuming public. The language “sold as ‘business to consumer’ (B2C)

software, and not as ‘business to business’ (B2B) software” appears to be aspirational

and marketing-related; it does not exclude that businesses (which range from sole

proprietorships to large multinational corporations) could purchase the software as

well.

With respect to the identification of goods in the cited registration, Applicant

argues that the language “primarily software for travel and destination marketing

organizations and travel marketing professionals” means that the apps “are sold only

to ‘travel and destination marketing organizations and travel marketing

professionals,’” 4 TTABVUE 6, while the Examining Attorney argues that the

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identification “does not exclude the general consuming public” as customers because

it “states that the downloadable mobile applications are primarily (not only) for travel

and destination marketing organizations and travel marketing professionals.” 6

TTABVUE 14-15. According to the Examining Attorney, the classes of customers for

“the cited goods could still include the general consuming public based on what is

explicitly stated in the registration.” 6 TTABVUE 15. We are again constrained to

agree with the Examining Attorney.

As noted above, Section 1402.03(a) of the TMEP, entitled “Inclusive Terminology,”

states that an acceptable identification of goods must “avoid indefinite words and

phrases.” Section 1402.03(a) further provides that the “terms ‘including,’ ‘comprising,’

‘such as,’ ‘and the like,’ ‘and similar goods,’ ‘products,’ ‘concepts,’ ‘like services,’ and

other indefinite terms and phrases are almost always unacceptable,” but that “the

terms ‘namely,’ ‘consisting of,’ and “in particular’ are definite and are preferred to set

forth an identification that requires greater particularity.” As discussed above, the

identification of a mobile app is an “identification that requires greater particularity.”

The adverb “primarily” in the identification of goods in the registration means “for

the most part.” MERRIAM-WEBSTER ONLINE DICTIONARY (www.merriam-webster.com,

accessed on December 6, 2017). We conclude that the use of the wording “primarily

software for travel and destination marketing organizations and travel marketing

professionals” in the identification of goods in the cited registration does not specify

the exclusive class of customers, that is, “primarily” does not limit the classes of

customers for the goods to only the listed travel professionals. Nor does the reference

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to travel professionals effectively specify the function of the apps. In the context of

the identification, the word “primarily” is akin to the indefinite word “including,”

which “is used for saying that a person or thing is a part of a particular group or

amount,” CAMBRIDGE DICTIONARY (dictionary.cambridge.com, accessed December 6,

2017), rather than to the word “namely.” We therefore find that the apps identified

in the cited registration may be sold to general consumers as well as to travel

professionals. We also find that Applicant’s software could be purchased by

businesses. Accordingly, we find that the classes of customers in the application and

registration overlap. This du Pont factor supports a finding of a likelihood of

confusion.

Conclusion

All of the relevant du Pont factors support a finding of a likelihood of confusion.

The marks are very similar, the mobile software apps at issue must be deemed, in

part, to perform identical functions, the channels of trade must be deemed to be

identical, and the purchasers of Applicant’s app must be deemed to overlap with the

purchasers of the registrant’s apps. On the basis of the identifications of goods in the

application and cited registration, on which we must focus, we find that confusion as

to the source or sponsorship of Applicant’s goods is likely.

Decision: The refusal to register is affirmed.

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