United States: Precedential No. 3: TTAB Refuses To Limit Goods In Cited Software Registration, Affirms Section 2(D) Refusal

Last Updated: February 2 2018
Article by John L. Welch

The Board affirmed a Section 2(d) refusal to register the mark shown below left, for "Computer 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," finding it likely to cause confusion with the registered mark shown below right, for "Downloadable mobile applications for mobile phones and mobile electronic devices, primarily software for travel and destination marketing organizations and travel marketing professionals." Applicant Solid State argued, to no avail, that the registration improperly failed to specify the function of the software, but the Board observed that it lacked the power to read limitations into the unrestricted identification of goods in the registration. In re Solid State Design Inc., Serial No. 87269041 (January 3, 2018) [precedential] (Opinion by Judge Christopher Larkin).

The marks: The Board found the word "populace" dominant in both marks, and the marks identical in sound, similar in appearance, and highly similar in connotation and commercial impression.

[W]e agree with the Examining Attorney [Erin R. Zaskoda] 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 . . . ."

The goods:  The only limitation on the goods in the cited registration is that they are "[d]ownoadable mobile applications for mobile phones and mobile electronic devices." The Board is required to consider that identification as including "all good of the nature and type described therein." In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006). Therefore, the goods in the registration must be deemed to encompass Applicant's more specifically identified "computer application software for mobile phones."

Applicant asserted that the cited registration is inconsistent with the guidance provided by the USPTO's Acceptable Identification of Goods Manual, which states that "[m]obile applications are software applications design for smartphones, tablet computers, and other mobile devices, and require specification of the function of the software." The ID Manual further provides that "[s]tating that the 'downloadable mobile applications' are 'for use with mobile devices' is not acceptable" to specify the function of such applications. It provides the following form language: "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}." [Emphasis by the Board].

The Board noted that "[t]his 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." It pointed out, however, that the TTAB lacks the authority to read limitations into the identification of goods, In re i/am/symbolic, LLC, 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." In re Cook Med. Tech. LLC, 105 USPQ2d 1377, 1384 n.6 (TTAB 2012). The Board observed that, in such a situation, the 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. Id.

Trade channels and consumers: Because the involved goods are legally identical, the Board presumed that they travel in the same channels of trade. As to the classes of consumers, the Board must also deem these to be identical. Although both the application and cited registration "contain purported restrictions on the classes of consumers for the respective apps, ... they do not negate the presumptive overlap in the classes of consumers." The language "sold as 'business to consumer (B2C) software, and not as 'business to business' (B2B) software" in the application is aspirational and marketing-related and does not exclude businesses (which range from individuals to large multinational corporations). The word "primarily" in the cited registration does not specify the exclusive classes of consumers as limited to only the listed travel professionals.

We therefore find that the apps identified in the cited registration may be sold to general consumers as well as 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.

And so the Board affirmed the refusal to register.

The TTABlog

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