InFocus Corporation

This Opinion is Not a
Precedent of the TTAB

Mailed: March 19, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE

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Trademark Trial and Appeal Board

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In re InFocus Corporation

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Serial No. 87337539

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B. Anna McCoy of McCoy Russell LLP
for InFocus Corporation

Tara L. Bhupathi, Trademark Examining Attorney, Law Office 124,
Lydia Belzer, Managing Attorney.

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Before Mermelstein, Adlin, and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

I. Background

InFocus Corporation (“Applicant”) seeks registration on the Principal Register of

the mark for “video conferencing services, namely,

providing cloud-based telecommunications connections between video conferencing
Serial No. 87337539

systems for video calling” in International Class 38.1 The application contains the

following description of the mark: “The mark consists of the words INFOCUS in

stylized lettering. Color is not claimed as a feature of the mark.”

The Examining Attorney refused registration under Section 2(d) of the Trademark

Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the registered mark

INFOCUS MARKETING, in both standard characters,2 and the design form

, both with MARKETING disclaimed,3 and both for the

following services:

Mailing list preparation; business marketing and direct
mail consulting services; commercial mail receiving
agency, namely, providing specialized mail management
services; business information services, namely, gathering
and reporting information regarding e-mail addresses of
others that are made available to other companies for
commercial purposes; design of advertising materials for
others; addressing of envelopes; direct mail advertising
services in Int. Class 35;

Electronic transmission of mail and messages; e-mail data
services in Int. Class 38;

1 Application Serial No. 87337539 is based on Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a), and has a filing date of February 15, 2017.
2Registration No. 3959752 issued May 10, 2011 on the Principal Register, and has been
maintained.
3 Registration No. 3959753 issued May 10, 2011 on the Principal Register, and has been
maintained. The registration contains the following description of the mark: “The mark
consists of the word ‘INFOCUS’ above a red line, which is above the word ‘MARKETING,’
where an arrow extends from the ‘F’ to the center of the adjacent ‘O,’ and the ‘O’ has a bulls-
eye appearance, where the inner ring of the ‘O’ is red and the rest of the words ‘INFOCUS’
and ‘MARKETING’ is gray. The color(s) gray and red is/are claimed as a feature of the mark.”

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Serial No. 87337539

Design printing for others; printing of advertising matter;
converting paper into mailing envelopes and other mailers
in Int. Class 40.

After the Examining Attorney made the refusal final, Applicant appealed. For the

reasons set forth below, we affirm the refusal to register.

II. Likelihood of Confusion

The determination under Section 2(d) involves an analysis of all of the probative

evidence of record bearing on the likelihood of confusion. In re E.I. du Pont de

Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors

to be considered, hereinafter referred to as “du Pont factors”); see also In re Majestic

Distilling Co., 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 relatedness of the goods and services. See In re Chatam Int’l Inc.,

380 F.3d 1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004); 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.”).

A. Similarity of the Marks

We first turn to the du Pont factor comparing the applied-for and cited marks,

which we consider “in their entireties as to appearance, sound, connotation and

commercial impression.” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison

Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du

Pont, 177 USPQ at 567). The test assesses not whether the marks can be

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Serial No. 87337539

distinguished in a side-by-side comparison, but rather whether their overall

commercial impressions are so similar that confusion as to the source of the services

offered under the respective marks is likely to result. Coach Servs. v. Triumph

Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); see also Edom

Labs., Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012). We remain mindful that

“marks must be considered in light of the fallibility of memory and not on the basis

of side-by-side comparison.” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082,

1085 (Fed. Cir. 2014).

Turning first to the cited standard character INFOCUS MARKETING, INFOCUS

is the most prominent element. INFOCUS dominates, both because as the first word

it “is most likely to be impressed upon the mind of a purchaser and remembered,”

Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) and

Palm Bay Imps., 73 USPQ2d at 1692, and because the only other word,

MARKETING, is disclaimed as generic for or descriptive of the services. See In re

Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (in

comparing THE DELTA CAFÉ to DELTA, the term CAFÉ lacks sufficient

distinctiveness to create a different commercial impression). Also, the cited standard-

character mark could be presented in the same font as Applicant’s mark, increasing

the similarity in appearance. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,

1909 (Fed. Cir. 2012) (holding that the specific font style of a mark cannot serve as

the basis to distinguish it from a mark in standard character form). INFOCUS

MARKETING and Applicant’s mark look and sound very similar.

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Serial No. 87337539

Turning next to the other cited mark, INFOCUS also dominates this mark,

appearing in larger, bolder font than the disclaimed term, MARKETING. While

also has a design element, it is incorporated into the “F” and “O”

of INFOCUS, and reinforces that term with an arrow and bullseye suggesting that

the marketing services hit their focus. We do not agree with Applicant’s argument

that the relatively small design element in this cited registration, which is merely

incorporated into the letters “F” and “O” dominates that mark. Also, Applicant’s mark

includes a somewhat similarly shaped indentation in the “O”

and “C” of INFOCUS, albeit facing the other direction. Applicant argues that the

indentation is a beam of light. In any event, like the cited design mark, Applicant’s

mark includes a pointed feature, similar to the arrow in the cited design mark, and

in both marks the pointed features are directed horizontally. We find that the design

elements and otherwise fairly standard stylization of the marks are not significant

points of distinction.

The dominant INFOCUS element of the cited marks is more important, and

identical to the only word in Applicant’s mark, contributing to an overall similarity

in appearance, sound, meaning and impression. See In re Nat’l Data Corp., 753 F.2d

1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“[I]n 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

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Serial No. 87337539

entireties”); see also Stone Lion Capital Partners v. Lion Capital LLP, 746 F.3d 1317,

110 USPQ2d 1157, 1161 (Fed. Cir. 2014). Because of this shared term, the relative

insignificance of the stylization and design, and the generic or descriptive nature of

MARKETING in this context, we also find the overall connotation and commercial

impression of the marks to be quite similar. This du Pont factor weighs in favor of

likely confusion.

B. The Services

“[L]ikelihood of confusion can be found ‘if the respective [services] are related in

some manner and/or if the circumstances surrounding their marketing are such that

they could give rise to the mistaken belief that they emanate from the same source.’”

Coach Servs., 101 USPQ2d at 1722 (internal citations omitted). In analyzing the

second du Pont factor, we look to the identifications in the application and cited

registrations. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1052

(Fed. Cir. 2018); Stone Lion Capital Partners, 110 USPQ2d at 1162; Octocom Sys.,

Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.

1990).

The Examining Attorney submitted persuasive evidence that consumers are

accustomed to encountering under the same mark video conferencing services such

as Applicant’s as well as electronic transmission of mail and messages or email data.

For example:4

4We do not find the Broadvoice web evidence probative as it does not appear to refer or relate
to video conferencing. May 17, 2017 Office Action at 16-17 (broadvoice.com). Similarly, the
BendTel website also does not directly refer to video conferencing. Id. at 32-35 (bendtel.com).

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Serial No. 87337539

The VONAGE website shows various services offered
under that mark including “Video Conferencing” and
“SMS”5 and “Chat Apps.” The website also mentions “Cloud
capabilities.”6

The JIVE website features “web and video conferencing,
and cloud contact center to communicate better” including
cloud-based “VoIP, video conferencing, and contact center
products.” It also advertises the ability to “communicate
via voice, video, or chat using your web browser.” JIVE
even lists “Group text chat” as a feature of “Jive’s HD video
conference solution.”7

The Website of APPTIX promotes under that mark “Cloud
Solutions,” noting that “Apptix has integrated our hosted
email, voice, instant messaging, Web conferencing,
collaboration, and mobility services for a complete Unified
Communications package.”8

The VITEL GLOBAL website refers to its “cloud-based
telephone solution” that includes “Conference Bridging”9
and mentions that its “smart Voicemail system sends an
email as soon as a voice mail arrives.” The site also refers
to “Conference Calling-Conference Bridge” next to an icon
of a screen.10

GOOGLE promotes Google Duo, “a simple video calling
app” next to Google Allo, “a smart messaging app.”11

The website of AT&T COLLABORATE describes itself as a
“flexible solution [that] blends voice, video, IM, and

5We take judicial notice of the Merriam-Webster.com definition of “SMS” as “a technology for
sending short text messages between mobile phones.” See 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); In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
6 May 17, 2017 Office Action at 12-14 (vonage.com).
7 Id. at 21-27. (jive.com).
8 Id. at 30-31 (apptix.com).
9 Id. at 36 (vitelglobal.com).
10 Id. at 39-40.
11 Id. at 43 (google.com).

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Serial No. 87337539

conferencing,” and “a hosted voice service that integrates
voice, video, web, and messaging.”12

The CENTURY LINK BUSINESS website promotes
“Conferencing and Collaboration” as well as “Email” under
that mark. Next to a photo of a video conference, a
description states that “Web Conferencing fully integrates
voice, web, and desktop video conferencing…” and later
notes that within the web conferencing an “instant
messenger (IM) application” is provided.13

The FRONTIER website promotes providing email,
texting, and conferencing under that mark, and the video
conferencing includes a “chat” feature.14

VERIZON’s website advertises cloud-based “Web, Voice
and Video Collaboration Tools” that encompass “3-Way
Calling” and “Voice Messaging to Email.”15

The FUZE website promotes “HD Audio-Video
Conferencing” and “Modern Group Messaging” under its
mark.16

The EZTALKS website advertises “Web Conferencing &
Video Conferencing” including an “Instant Messaging”
feature.17

CISCO promotes its CISCO WebEx video conferencing and
CISCO Spark “workspaces in the cloud” that “save your
messaging.”18

12 Id. at 49 (business.att.com).
13 Id. at 53-58 (centurylink.com).
14 Id. at 59-63 (business.frontier.com).
15 Id. at 65-67 (verizon.com).
16 December 5, 2017 Office Action at 6 (fuze.com).
17 Id. at 7-8 (eztalks.com).
18 Id. at 9-10 (webex.com).

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Serial No. 87337539

The ZOOM website touts its “#1 Video Conferencing and
Web Conferencing Service” that includes “Business IM
Cross-Platform Messaging & File Sharing.”19

STARLEAF promotes “the StarLeaf app” for “Messaging”
and “Video Calling.”20

The TRUECONF website promotes its “Video
Conferencing” that includes “instant messaging, common
chats.”21

This marketplace evidence shows consumer exposure to the same mark for services

such as Applicant’s and Registrant’s.

Applicant argues against the relatedness of the services based on an improper

attempt to limit the identifications in the cited registrations. We find the plain

language in the cited registrations, “Electronic transmission of mail and messages; e-

mail data services,” clear and unambiguous, needing no “interpretation.” Cf. In re

Trackmobile, Inc., 15 USPQ2d 1152 (TTAB 1990) (considering extrinsic evidence to

interpret “vague” terminology with special meaning in the industry). Nevertheless,

Applicant argues that the recitation in the cited registrations must be “interpreted in

accordance with Rule 2.71(a),”22 which provides that “[t]he applicant may amend the

application to clarify or limit, but not to broaden, the identification of goods and/or

services….” 37 C.F.R. § 2.71(a). Applicant submitted the prosecution history of the

cited registrations to argue that the original identification of services in the

underlying applications must inform how we construe the final recitations in the

19 Id. at 11 (zoom.us).
20 Id. at 12 (starleaf.com).
21 Id. at 13-14 (trueconf.com).
22 7 TTABVUE 10 (Applicant’s Brief).

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Serial No. 87337539

registrations. Applicant alleges that because the original language referred to “Email

services, namely transmission services with full scale reporting,” the current

language, “Electronic transmission of mail and messages; email data services” cannot

encompass “instant messaging services and general email provider utility services”

because they are outside the scope of the original identifications, in violation of Rule

2.71(a).23

We rejected an analogous argument in In re Solid State Design Inc., 125 USPQ2d

1409 (TTAB 2018), wherein the applicant contended that the cited registration’s

unrestricted recitation of “software” violated USPTO rules for specificity. We held

that regardless of the failure of the cited registration to indicate the function of the

software, as required by USPTO policy, the Board “lack[s] the authority to read

limitations into the identification.” Id. at 1413-14. We pointed to “the controlling

principle that where the goods in an application or registration are broadly described,

they are deemed to encompass ‘all the goods of the nature and type described

therein….’” Id. at 1413 (citing In re Jump Designs LLC, 80 USPQ2d 1370, 1374

(TTAB 2006)). Any issues an applicant has with the breadth of an identification in a

cited registration must be addressed through 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. Id. at 1409. Thus, we decline to ignore the

23 7 TTABVUE 11 (Applicant’s Brief).

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Serial No. 87337539

references in the cited registrations to electronic transmission of messages or limit

the references to email transmission and data services.24

This factor weighs in favor of likely confusion.

C. Trade Channels and Classes of Consumers

Turning to the trade channels and consumers, unrestricted identifications of

services such as those at issue here require us to presume that the services travel in

all the usual channels of trade for such services and are available to all potential

classes of ordinary consumers. We reject Applicant’s attempt to differentiate the

trade channels based on evidence that they actually are more limited than what

appears on the face of the identifications. See Cunningham v. Laser Golf Corp., 222

F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (affirming Board finding that where

the identification is unrestricted, “we must deem the goods to travel in all appropriate

trade channels to all potential purchasers of such goods”). See also Levi Strauss & Co.

v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 107 USPQ2d 1167, 1173 (Fed.

Cir. 2013). The third-party marketplace evidence of relatedness of the services

discussed above demonstrates that video conferencing services such as those recited

in the application and electronic transmission of mail and messages or email data, as

identified in the cited registrations, are featured together on the same websites under

24Even if we limited the scope of the identifications in the cited registrations, as Applicant
requests, the marketplace evidence discussed above establishes the relatedness of Applicant’s
video conferencing services and the services that would remain in the cited registrations. For
example, the APPTIX, VITEL GLOBAL, CENTURY LINK BUSINESS, and FRONTIER
website evidence suggests that consumers encounter these types of services under the same
mark.

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Serial No. 87337539

the same marks, and would be encountered by the same consumers. The trade

channels and classes of consumers overlap. Thus, this factor weighs in favor of likely

confusion.

D. Sophisticated Purchasing

Without providing evidence, and instead relying only on the nature of the recited

services, Applicant contends that “customers would be shopping in a professional

capacity for business/organizational needs.”25 See In re Simulations Publ’ns, Inc., 521

F.2d 797, 187 USPQ 147, 148 (CCPA 1975) (“Statements in a brief cannot take the

place of evidence.”); Galen Med. Assocs., Inc. v. United States, 369 F.3d 1324, 1339

(Fed. Cir. 2004) (“Statements of counsel . . . are not evidence.”). Applicant also

suggests that these services are in niche markets in which consumers are accustomed

to exercising care in shopping. In her brief, the Examining Attorney points to the lack

of evidence and further contends that sophistication in a particular field does not

immunize consumers from source confusion. She also implies that some of the

relevant consumers are “the public,” and emphasizes that we must assess likely

confusion from the standpoint of the least sophisticated potential purchaser.26

The relevant customers are not necessarily sophisticated. We find that consumers

of Applicant’s and Registrant’s services include ordinary members of the public, who

may video-conference with family and friends, or use email and messaging services.

Even in the business realm, the customers would encompass individual

25 7 TTABVUE 15 (Applicant’s Brief).
26 9 TTABVUE 16 (Examining Attorney’s Brief).

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Serial No. 87337539

entrepreneurs and small businesses. Thus, the services may be offered to a broad

range of individuals and businesses, with widely varying degrees of experience, care

and sophistication, and we must consider the least sophisticated. See Stone Lion

Capital Partners, 110 USPQ2d at 1163 (“Accordingly, the Board properly considered

all potential investors for the recited services, including ordinary consumers seeking

to invest in services with no minimum investment requirement. Although the

services recited in the application also encompass sophisticated investors, Board

precedent requires the decision to be based ‘on the least sophisticated potential

purchasers.’”). This factor is neutral.

E. Lack of Actual Confusion Evidence

Applicant alleges that the marks have coexisted for the recited services for more

than four years without actual confusion.27 However, “uncorroborated statements of

no known instances of actual confusion are of little evidentiary value.” In re Majestic

Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003) (citing In re

Bissett-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (stating that

affidavit of applicant’s corporate president’s unawareness of instances of actual

confusion was not conclusive that actual confusion did not exist or that there was no

likelihood of confusion)). Regardless, we have no evidence of whether the extent and

circumstances of Applicant’s and the Registrant’s use was such as to give rise to

27We do not find Applicant’s arguments based on other services probative, and in this ex
parte case, Applicant’s contention that it should be considered the senior user is unavailing.
In re Calgon Corp., 435 F.2d 596, 168 USPQ 278, 280 (CCPA 1971) (“As the board correctly
pointed out, ‘the question of priority of use is not germane to applicant’s right to register’ in
this ex parte proceeding.”).

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Serial No. 87337539

meaningful opportunities for actual confusion to occur. In re Kangaroos U.S.A., 223

USPQ 1025, 1026?27 (TTAB 1984). We find this factor neutral.

Decision: Based on the similarity of the marks, the related services that travel

in identical trade channels to the same classes of consumers, who would not

necessarily exercise great care in purchasing, confusion is likely. The refusal to

register Applicant’s mark is affirmed.

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