United States: ASKBOT For Collaboration Software Not Confusable With ASK For Search Engine Services, Says TTAB

Last Updated: September 6 2018
Article by John L. Welch

The weakness of the term "ASK," the differences in trade channels, and the care with which consumers purchase respondent's products led the Board to dismiss this Section 2(d) petition for cancellation of a registration for the mark ASKBOT, in standard character form, for software and services used for "collaboration and information management, namely, for collection of questions, answers and comments, receiving feedback and votes for ranking content and users." The Board found the mark not likely to cause confusion with the registered mark ASK, in standard character form, for search engine software and services. IAC Search & Media, Inc. v. ASKBOT, Spa, Cancellation No. 92060041 (August 31, 2018) [not precedential] (Opinion by Judge Thomas Shaw).

The Goods and Services: Because of their technical nature and the general wording of the identifications, the Board considered extrinsic evidence to clarify its understanding of the goods and services involved. Respondent's software and services allow users to create their own Q&A forums for "question and answer knowledge management," choose topics for discussion, and prioritize answers. Petitioner IAC provides search engine services, including a specialized search engine services focused on shopping.

Respondent's goods and services allow users the ability to create, organize and save both questions and answers for others, whereas Petitioner's goods and services allow users to directly search the internet without any predetermined search parameters, and the results are neither organized nor saved. The parties' goods and services thus serve different functions within the context of asking and answering questions on the internet.

Nonetheless, the Board found the involved goods and service to be related because "both enable end users the ability to obtain online answers to questions, albeit via different methods."

Trade Channels: Both parties' software and services are offered online. However, "the mere fact that goods and services may both be advertised and offered through the Internet is not a sufficient basis to find that they are sold through the same channels of trade. The Internet is such a pervasive medium that virtually everything is advertised and sold through the Internet."

The involved goods and services also are offered at significantly different price points to users. ASKBOT products and services are offered via third-party software, whereas ASK search engine software and services are offered for free.

We recognize that users of Petitioner's Ask.com search engine who are looking for Q&A software could be directed to Respondent's ASKBOT products. However, this nexus between Petitioner's ASK search engine and Respondent's ASKBOT Q&A products is too tenuous to give rise to the mistaken belief that the goods and services of the parties emanate from the same source.

The Board therefore found that this du Pont factor favored a finding that confusion is not likely.

Purchaser Sophistication: Respondent's customers would need to be able to understand basic computer programming skills, and so the Board found it likely that they also would be able to distinguish the parties' products. And since Petitioner's ASK search engine services are free and Respondent's services require a monthly subscription, Respondent's customers would be expected to exercise a higher degree of care in their purchasing decisions.

And so this du Pont factor also weighed in favor of Respondent.

Strength of Petitioner's Mark: As to conceptual strength, third-party registrations established that the term ASK has some inherent weakness when used in connection with the parties' goods and services: i.e., since one must "ask" a question in order to get an answer, "ask" is suggestive of the function of online information products. The Board found the mark ASK not inherently or conceptually strong.

As to commercial strength, Petitioner claimed that its mark is famous but its proof of same was inadequate, It did not distinguish between its uses of various ASK-formative marks. And although Petitioner's internet traffic and share of searches were "impressive and indicative of commercial success," the Board could not assess the actual impact of that success in creating brand awareness in the minds of consumers. Similarly, Petitioner's advertising expenditures were not put in context relative to other comparable internet search companies.

The Board, however, did find that Petitioner's ASK mark "has attained some commercial strength for the identified goods and services despite the inherent weakness of the term ASK."

On balance, because ASK is inherently weak, third-parties frequently use the term ASK in connection with other information websites, and Petitioner has not established the fame of ASK alone, the ASK mark cannot be regarded as particularly strong and entitled to broad protection.

The Marks:

The term ASK is entitled to greater weight in the du Pont  analysis because it forms the entirety of Petitioner's mark and appears as the first portion of Respondent's mark. Moreover, the term BOT is descriptive of Respondent's goods and services because it "conveys the impression that the software or service will perform repetitive search functions."

In sum, we find that the marks are more similar than dissimilar in appearance, sound and meaning, and have substantially similar overall commercial impressions. The addition of the descriptive term BOT simply is insufficient to distinguish the marks ASK and ASKBOT.

Conclusion: Balancing the relevant du Pont factors, the Board found confusion unlikely, and so it dismissed the petition for cancellation.

The TTABlog

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Klein Moynihan Turco LLP
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Klein Moynihan Turco LLP
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions