Apogee Franchising, LLC

Trademark Trial and Appeal BoardOct 7, 2011

No. 77949678 (T.T.A.B. Oct. 7, 2011)

Mailed: October 7, 2011 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Apogee Franchising, LLC ________ Serial No. 77949678 _______ Scott T. Kannady of Brown & Kannady LLC for Apogee Franchising, LLC. Janet H. Lee, Trademark Examining Attorney, Law Office 102 (Karen Strzyz, Managing Attorney). _______ Before Holtzman, Bergsman and Wellington, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Apogee Franchising, LLC (“applicant”) filed an intent- to-use application for the mark APOGEE, in standard character form, for services ultimately identified as “franchising, namely, consultation and assistance in business management, organization and promotion” in Class 35. The word “apogee” means “the highest or most distant point.”1 1 The Random House Dictionary of the English Language (Unabridged), p. 99 (2nd ed. 1987). The Board may take judicial notice of dictionary evidence. University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Serial No. 77949678 2 The examining attorney refused registration under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. §1052(d), on the ground that applicant’s mark, when used in connection with “franchising, namely, consultation and assistance in business management, organization and promotion,” so resembles the registered mark APOGEE SEARCH, in standard character form, for the services set forth below as to be likely to cause confusion.2 Advertising, marketing and promotion services; cooperative advertising and marketing services by way of solicitation, customer service and providing marketing information via websites on a global computer network; direct marketing advertising for others; direct marketing services; marketing services, namely providing informational web pages designed to generate sales traffic via hyperlinks to other web sites; promoting the goods and services of others through search engine referral traffic analysis and reporting; promoting, advertising and marketing of the on-line websites of others; promotion, advertising and marketing of on-line websites, in Class 35. As a preliminary matter, we note that because the registrant disclaimed the exclusive right to use the word “Search,” the examining attorney concluded that the word “Search” is less significant than the word “Apogee.”3 The 2 Registration No. 3290564, issued September 11, 2007. 3 Examining Attorney’s Brief, unnumbered page 7. Serial No. 77949678 3 examining attorney’s conclusion that the word “Search” is entitled to less significance in the likelihood of confusion analysis is without any evidentiary basis because she did not introduce into evidence why the registrant disclaimed the exclusive right to use the word “Search.” The Trademark Act permits an applicant to voluntarily disclaim registrable matter and, therefore, disclaimed matter may be dominant or significant in some cases. TMEP §1213.10 (7th ed. 2010). See also In re MCI Communications Corp., 21 USPQ2d 1534, 1539 (Comm’r Pats. 1991) (“Examining Attorneys will continue to consider the question of likelihood of confusion, under Section 2(d) of the statute, in relation to the marks as a whole, including any voluntarily disclaimed matter”). Accordingly, the word “Search” is not less significant merely because the registrant has disclaimed the exclusive right to use it. The examining attorney also asserted that the registrant disclaimed the exclusive right to use the word “Search” because it is descriptive of the listed services.4 However, as indicated above, the examining attorney did not submit any evidence regarding why the registrant disclaimed the exclusive right to use the word “search” and she did 4 Id. Serial No. 77949678 4 not submit any evidence to support her conclusion that the word “Search” is descriptive. Suffice it to say that it is not clear from the recitation of services in the cited registration whether the word “Search” is descriptive. Our determination of likelihood of confusion 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 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 Company, 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 (CCPA 1976). A. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. We turn first to the du Pont factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. In a particular case, any one of these means of comparison may be critical in finding the Serial No. 77949678 5 marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1988). In analyzing the similarity or dissimilarity of 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 overall commercial impression so that confusion as to the source of the goods 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 1835, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). In making this determination, we must consider the recollection of the average purchaser who normally retains only a general, rather than a specific, impression of the marks. Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). The marks are similar to the extent that they share the word “Apogee.” In this regard, applicant concedes that the word “Apogee” is “the primary and dominant feature of both marks.”5 The significance of the word “Apogee” in 5 Applicant’s Brief, p. 3. Serial No. 77949678 6 registrant’s mark APOGEE SEARCH is emphasized by its location as the first part of the mark. See Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”); see also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first notice the identical lead word). Furthermore, registrant’s mark APOGEE SEARCH incorporates the entirety of applicant’s mark APOGEE. Likelihood of confusion is often found where the entirety of one mark is incorporated within another. China Healthways Institute Inc. v. Xiamong Wang, 491 F.3d 1337, 83 USPQ2d 1123, 1126 (Fed. Cir. 2007) (confusion is likely as to the source of electronic massagers associated with applicant’s mark CHI and opposer’s mark CHI PLUS); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (CCPA 1967) (applicant’s mark THE LILLY for women's Serial No. 77949678 7 dresses is likely to be confused with opposer’s mark LILLI ANN for women's apparel including dresses); In re United States Shoe Corp., 229 USPQ 707 (TTAB 1985) (applicant’s mark CAREER IMAGE for women's clothing stores and women's clothing likely to cause confusion with registrant’s mark CREST CAREER IMAGES for uniforms including items of women's clothing). In its appeal brief, applicant contends, for the first time, that the word “Apogee is a highly distinctive and fanciful term” giving each of the 189 records “found when a basic word search for the word APOGEE is performed” “a distinct sound, appearance, and commercial impression.”6 The record in an application must be complete prior to appeal. Trademark Rule 2.412(d), 37 CFR §2.142(d). The Board may consider evidence submitted after appeal, despite its untimeliness, if the non-offering party does not object to the evidence and discusses the evidence or otherwise treats it as being of record. TBMP §1207.03 (3rd ed. 2011) and the cases cited therein. First, applicant did not submit the results of the search, so there is no evidentiary basis for applicant’s contention. Second, the examining attorney did not discuss applicant’s contention 6 Applicant’s Brief, p. 3. Serial No. 77949678 8 or treat the 189 records as being of record; therefore, applicant’s unsupported assertion that there are 189 APOGEE records has not been considered. Nevertheless, we agree with applicant’s assertion that the word APOGEE, when applied to the services of applicant and the registrant, is a highly distinctive and fanciful term. However, that means that registrant’s mark APOGEE is an inherently strong mark entitled to a broad scope of protection or exclusivity of use. In its December 9, 2010 response, applicant listed four registrations (but did not submit copies), three for the word APOGEE and one for APOGEE SOFTWARE INC., all for software. Applicant asserted that these APOGEE marks “were allowed registration due to their distinct differences within international class 9.” Presumably, applicant’s position is that the registrations demonstrate that consumers can differentiate between different “Apogee” marks. The registrations are listed below. 1. Registration No. 1554495 is for the mark APOGEE for computer programs in the field of accounting systems and management business applications; 2. Registration No. 2249048 is for the mark APOGEE SOFTWARE for software used as a programming tool for developing software; Serial No. 77949678 9 3. Registration No. 3838151 is for the mark APOGEE for software in the field of energy production in wind farms; and 4. Registration No. 3165292 is the mark APOGEE for software in the field of vehicle electronic and safety systems. The Board does not take judicial notice of registrations, and the submission of a list of registrations does not make these registrations part of the record. In re 1st USA Realty Professionals, Inc., 84 USPQ2d 1581, 1583 (TTAB 2007); In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974). To make registrations of record, soft copies of the registrations or the complete electronic equivalent (i.e., complete printouts taken from any of the USPTO’s automated systems (X-Search, TESS, TARR, or TRAM)) must be submitted. Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370 (TTAB 1998); In re Volvo Cars of North America Inc., 46 USPQ2d 1455, 1456 n.2 (TTAB 1998). If the applicant submits improper evidence of third-party registrations, the examining attorney should object to the evidence in the next Office action, or the Board may consider the objection to be waived. See In re 1st USA Realty Professionals, 84 USPQ2d at 1583 (Board considered applicant’s own registration, provided for the first time Serial No. 77949678 10 on appeal, because it had been referred to during prosecution and the examining attorney addressed the issue without objection; Board also allowed evidence of a list of third-party registrations because the examining attorney did not advise applicant of the insufficiency of the list while there was still time to correct the mistake); In re Broyhill Furniture Industries, Inc., 60 USPQ2d 1511, 1513 n.3 (TTAB 2001) (objection to evidence waived where it was not interposed in response to applicant’s reliance on listing of third-party registrations in response to initial Office action). Because the examining attorney never objected to applicant’s list of registrations, did not advise applicant that merely providing a list of registrations was not the proper way to make the registrations of record, and addressed the probative value of the registrations in her brief, we consider the list of registrations for whatever probative value they may have. Applicant’s list of registrations does not support its position that there is no likelihood of confusion. First, because applicant did not provide copies of the registrations or list the owners of the registrations, we do not know whether those registrations are owned by the same entity. Second, the listed registrations are goods, software, that are separate and distinct from the services Serial No. 77949678 11 at issue in this appeal and they are insufficient to show that the word “Apogee” has any suggestive meaning for those services. Finally, the software listed in the four registrations are in separate and distinct fields (accounting, developing software, energy production for wind farms, and vehicle electronic and safety systems) and, therefore, will not be marketed to the same consumers under circumstances likely to give rise to the mistaken belief that the software emanates from the same source. In other words, the registrations are not probative that consumers can differentiate between different “Apogee” marks. In view of the foregoing, we find that applicant’s mark APOGEE is similar to the mark APOGEE SEARCH in the cited registration in terms of appearance, sound, meaning and commercial impression. B. The similarity or dissimilarity and nature of the services, channels of trade and classes of consumers. It is well-settled that it is not necessary that the respective services be identical or even competitive in order to find that they are related for purposes of our likelihood of confusion analysis. That is, the issue is not whether consumers would confuse the services themselves, but rather whether they would be confused as to the source of the services. See In re Rexel Inc., 223 USPQ Serial No. 77949678 12 830, 831 (TTAB 1984). The services need only be sufficiently related that consumers would be likely to assume, upon encountering the services under similar marks, that the services originate from, are sponsored or authorized by, or are otherwise connected to the same source. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); and In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). To prove that applicant’s “franchising, namely, consultation and assistance in business management, organization and promotion” and the registrant’s “advertising, marketing and promotion services” etc. are related, the examining attorney has submitted numerous use- based, third-party registrations for the services listed in both the application and registration at issue.7 Third- party registrations which individually cover a number of 7 We note that many of the third-party registrations submitted with the December 20, 2010 Office action are duplicates of those submitted with the June 12, 2010 Office action. The Board discourages the submission of such duplicate material, as it only adds to the workload of the Board, which must review all of the evidence and ascertain which material is a duplicate. In fact, the better practice is for the examining attorney to submit all the evidence of a particular type at one time (e.g., all third- party registrations at one time, all LexisNexis evidence at one time, etc.) rather submitting it in multiple Office actions. Serial No. 77949678 13 different services that are based on use in commerce may have some probative value to the extent that they serve to suggest that the listed services are of a type which may emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d at 1785-1786; In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). The following registrations are illustrative.8 Mark Reg. No. Services ECOWASH MOBILE 3633179 Business consultancy services; advertising services; franchising services ICOPY 3431166 Advertising services; franchising, namely, consultation and assistance in business management, organization and promotion; preparing advertising for others SOUTH SHORE SPORTS PROMOTION etc. 3420569 Franchising, namely, consultation and assistance in business management, organization and promotion; advertising and promotion services; advertising, marketing and promotion services LUTÉGE 3312364 Franchising, namely, consultation and assistance in business management, organization and promotion; business management consulting with relation to strategy, marketing, production, personnel and retail sales matters; business administration and management 8 We have not included the entire description of goods for each of the registrations. Only the goods in both applicant’s application and registrant’s registration are listed. Serial No. 77949678 14 Mark Reg. No. Services POSTNET etc. 3208053 Franchising, namely, consultation and assistance in business management, organization and promotion; business administration services; advertising services The examining attorney also submitted excerpts from three websites to show that franchising services encompass advertising, marketing and promotion services.9 FranchisingServices.net, TheFranchiseBuilders.com and Francorp.com all advise businesses about offering franchises, including advertising, marketing and public relations. Applicant argues that the services are not related because “applicant offers its real estate business as a franchise opportunity” while registrant is a marketing company, referencing registrant’s website to support its argument.10 There are two problems with applicant’s argument. First, applicant did not submit an excerpt of the registrant’s website and, therefore, applicant’s argument is without any evidentiary basis. The second 9 December 20, 2010 Office Action. We did not consider the FDSfranchising.com website because it is a company located in the United Kingdom and there is no evidence that it does business in the United States. Also, we did not consider NFSDEV.com because the excerpt does not clearly show that the company renders advertising, marketing and promotion services. 10 Applicant’s Brief, pp. 4-5. Serial No. 77949678 15 problem with applicant’s argument is that applicant’s recitation of services is not limited to the real estate field; it is unrestricted (“franchising, namely, consultation and assistance in business management, organization and promotion”) and, therefore, encompasses all fields. Registrant’s “advertising, marketing and promotion services” are, likewise, not limited any particular field and encompass all fields. Thus, where the [services] in a cited registration are broadly described and there are no limitations in the identification of [services] as to their nature, type, channels of trade or classes of purchasers, it is presumed that the scope of the registration encompasses all [services] of the nature and type described, that the identified [services] move in all channels of trade that would be normal for such [services], and that the [services] would be purchased by all potential customers. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981), citing Kalart Co., Inc. v. Camera-Mart, Inc., 119 USPQ 139 (CCPA 1958). This proceeding concerns applicant’s right to registration of a trademark, not applicant’s actual trademark use. Because the scope of the registration applicant seeks is defined by its application (and not by its actual use), it is the application (and not actual use) that we must look to in determining applicant’s right to Serial No. 77949678 16 register: The authority is legion that the question of registrability of an applicant's mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which sales of the goods are directed. Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Likewise, in considering the scope of the cited registration, we look to the registration itself, and not to extrinsic evidence about the registrant’s actual services, customers, or channels of trade. In re Elbaum, 211 USPQ at 640. Because the recitations of services are unrestricted the channels of trade and classes of consumers may overlap. In view of the foregoing, we find that the services are related and that the channels of trade and classes of consumers are similar. C. Balancing the factors. The du Pont factors require to us to consider the thirteen factors for which evidence has been made of record in likelihood of confusion cases. In view of the facts that the marks are similar, the services are related and because the recitations of services are unrestricted, the Serial No. 77949678 17 services may move in the same channels of trade and be available to the same classes of consumers, we find that applicant’s registration of the mark APOGEE for “franchising, namely, consultation and assistance in business management, organization and promotion” is likely to cause confusion with the mark APOGEE SEARCH for “advertising, marketing and promotion services,” etc. Decision: The refusal to register is affirmed.