Burke, Inc.

Trademark Trial and Appeal Board

Aug 24, 1999

No. 75045982 (T.T.A.B. Aug. 24, 1999)

Hearing: Paper No. 15
October 7, 1998 SIMMS/md
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 24, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Burke, Inc.
________
Serial No. 75/045,982
_______
Patricia B. Hogan of Dinsmore & Shohl for Burke, Inc.
Karen B. Leetzow, Trademark Examining Attorney, Law Office
101 (Chris Wells, Managing Attorney)
_______
Before Simms, Quinn and Chapman, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Burke, Inc. (applicant), an Ohio corporation, has
appealed from the final refusal of the Trademark Examining
Attorney to register the mark shown below
Ser. No. 75/045,982
2
for market research services.1 The Examining Attorney has
refused registration under Section 2(d) of the Act, 15 USC
§ 1052(d), on the basis of Registration No. 1,350,006,
issued July 16, 1985, for the mark THE BURKE INSTITUTE
(“INSTITUTE” disclaimed) for providing classes and seminars
in marketing research. The registration was issued to
Burke Marketing Services, Inc., and thereafter assigned to
Bases Burke Institute, Inc. Applicant has appealed from
this refusal, briefs have been submitted and an oral
hearing was held.
In order to more completely understand the facts in
this case, a brief summary of the procedural history and
the relationship between applicant and registrant will be
discussed.
In the Examining Attorney’s first Office action,
registration was refused on the basis of the registration
indicated above as well as Registration No. 1,297,988,
issued September 25, 1984, covering the mark shown below
for marketing research services.

1 Application Serial No. 75/045,982, filed January 19, 1996. The
application is based upon applicant’s claim of use in commerce
since July 3, 1995. The Examining Attorney had also refused
registration on the ground that the mark was primarily merely a
surname under Section 2(e)(4) of the Act, 15 USC § 1052(e)(4),
but the applicant submitted a satisfactory showing of acquired
distinctiveness under Section 2(f) of the Act, 15 USC § 1052(f).
Ser. No. 75/045,982
3
That registration also issued to Burke Marketing Services,
Inc. and was thereafter assigned to Burke Marketing
Research, Inc. and eventually to applicant, Burke, Inc.
That registration issued under Section 2(f) of the Act, and
a combined Sections 8 and 15 declaration was submitted.
After the initial refusal, applicant responded by
claiming ownership of the ‘988 registration. Applicant
indicated that the cited registration, the ‘006
registration, was previously owned by applicant’s
predecessor and then assigned to Bases Burke Institute,
Inc. Applicant stated that that entity brought suit in the
Southern District of Ohio (captioned BBI Marketing
Services, Inc. v. Burke Marketing Research, Inc.). That
litigation was resolved by a settlement agreement between
the parties, after the court found that the plaintiff was
not likely to succeed on the issue of likelihood of
confusion during a preliminary injunction hearing. The
settlement agreement, executed by BBI Marketing Services,
Ser. No. 75/045,982
4
Inc. and applicant (Burke, Inc.), among other things,
provided:
7. BURKE [applicant] agrees, for a
period of two (2) years from the
effective date of this Settlement
Agreement, to include on each publicly
distributed advertisement for seminars
in marketing research offered my BURKE,
a disclaimer indicating that the
seminars being offered by BURKE are not
affiliated with “The Burke Institute”
or “BBI Marketing Services, Inc.”
8. BURKE agrees that it will include a
notation or statement to the effect
that “The Burke Institute” is a
registered service mark of BBI
Marketing Services, Inc. any time the
term “The Burke Institute” is used in
BURKE’s marketing or promotional
materials.
9. BURKE agrees for a period of two (2)
years from the effective date of this
Settlement Agreement to use the BURKE
LOGO [either the instant mark or
applicant’s registered mark] in
connection with each of its seminars in
marketing research and on all
advertising for such seminars.
Upon entry of this agreement, the complaint was dismissed
with prejudice.
Examining Attorney’s Arguments
In the next office action, the Examining Attorney
withdrew the refusal with respect to the ‘988 registration
but again refused registration on the basis of the ‘006
registration covering the mark THE BURKE INSTITUTE for
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5
providing classes and seminars in marketing research.
Essentially, the Examining Attorney took the position that
the settlement agreement was not an acceptably worded
consent agreement for purposes of registration and did not
detail the reasons why no likelihood of confusion existed
or the arrangements which the parties were undertaking to
avoid public confusion. Indeed, the Examining Attorney
argued that the requirement by the agreement that applicant
include a disclaimer that its services are not associated
with the registrant recognized that a likelihood of
confusion existed. The Examining Attorney argued that the
agreement did not restrict the respective marketing
channels or fields of use of the marks. Nor did the
agreement explicitly contain a consent by registrant to
registration by applicant. The Examining Attorney argued
that applicant’s mark was similar in commercial impression
to the registered mark THE BURKE INSTITUTE because the
dominant element of the marks is the word BURKE. The
Examining Attorney also contended that applicant’s market
research services and registrant’s educational services
were closely related. The Examining Attorney made of
record third-party registrations showing various marks
registered to different entities for both market research
services and classes in marketing research topics, in an
Ser. No. 75/045,982
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attempt to show that these services might be expected to
come from the same entity. As noted, the Examining
Attorney took the position that the settlement agreement is
not the equivalent of a consent agreement to registration
and that applicant has not specified the steps it will take
to avoid consumer confusion after the initial two years
covered by the agreement.
Applicant’s Arguments
In support of registration, applicant argues that the
written agreement settling the federal law suit constitutes
a valid consent agreement which is substantial evidence
that confusion is unlikely, and that applicant is the owner
of a registration for a nearly identical mark for the same
services covered by this application. With respect to the
settlement agreement, applicant contends that both it and
registrant have operated with knowledge of the other’s use
of the respective marks since June 1989, when the
registrant became a separate corporate entity. Because
registrant was using its mark in connection with the
conducting of classes and seminars in marketing research,
registrant’s efforts were directed at limiting applicant’s
use in connection with educational services, applicant
contends. According to applicant, the registrant has not
only consented to use by applicant of the mark herein
Ser. No. 75/045,982
7
sought to be registered but has “required” it in the
settlement agreement. Applicant argues that the fact that
the agreement covers only applicant’s use of its mark in
connection with seminars supports the view that applicant’s
market research services, which are the subject of this
application, will not be viewed by the relevant public as
emanating from the same source, if offered under the mark
herein sought to be registered. Pointing to the provision
requiring a disclaimer of affiliation when applicant
advertises its seminars for a period of two years,
applicant argues that the parties to the agreement believed
that this disclaimer would dispel any possibility of
confusion during the initial period of time when both
parties were offering seminars. Applicant states that the
sophistication of the customers was considered in
determining that two years would be a sufficient amount of
time for this disclaimer to be in effect. Both applicant
and the Examining Attorney have argued the effect of a
number of Federal Circuit cases in the area of consent
agreements, and applicant urges that the Board not
substitute its judgment, but rather give substantial weight
to the settlement agreement in this case. Finally,
applicant argues that the Board should permit registration
of this mark, which is substantially similar to its
Ser. No. 75/045,982
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incontestably registered mark (also showing the word BURKE
in white letters on a black background) shown on page 3
above, which mark has been in use since 1931, long prior to
registrant’s use and registration.
Discussion and Opinion
After careful consideration of this record and the
argument of the attorneys, we believe that applicant has
demonstrated, at least prima facie, that we should allow
applicant’s mark to be published for possible opposition.
Although it is true that the settlement agreement
concluding the civil action between applicant and an entity
in privity with registrant does not specifically cover
applicant’s right to register, we nevertheless believe that
the settlement agreement should be considered as a consent
agreement between applicant and the owner of the cited
registration. See In re N.A.D. Inc., 743 F.2d 996, 224
USPQ 969, 970 (Fed. Cir. 1985), and In re Sears, Roebuck &
Co., 2 USPQ2d 1312, 1314 (TTAB 1987). As applicant has
noted, the Court has repeatedly admonished the Board to
defer to the parties, who are familiar with the trade
practices and the marketplace. In re Four Seasons Hotels
Ltd., 987 F.2d 1565, 26 USPQ2d 1071 (Fed. Cir. 1993);
Amalgamated Bank v. Amalgamated Trust & Savings, 842 F.2d
1270, 6 USPQ2d 1365 (Fed. Cir. 1988); and Bongrain
Ser. No. 75/045,982
9
International (American) Corp. v. Delice de France, Inc.,
811 F.2d 1479, 1 USPQ2d 1775, 1778 (Fed. Cir. 1987).
Giving proper weight to the settlement agreement in
this case, we believe that registrant has, in effect,
consented to the use and registration by applicant of the
mark herein sought to be registered for market research
services. In reaching this conclusion, we have considered
the fact that the agreement by its terms only covers
applicant’s use of the instant mark in connection with
educational services and not the services involved in this
application. As applicant has argued, the registrant’s
focus in the agreement seemed to have been on those
services offered by applicant which are identical to
registrant’s, and not on the market research services which
are not. This is all the more reason to believe that
registrant has no objection to applicant’s use and
registration of this mark, which is different from
registrant’s registered mark (BURKE and design vs. THE
BURKE INSTITUTE). See also In re Parfums Schiaparelli
Inc., 37 USPQ2d 1864 (TTAB 1995), overruled in part by In
re Sambado & Son Inc., 45 USPQ2d 1312 (TTAB 1997).
Accordingly, we conclude that, on this record, confusion is
Ser. No. 75/045,982
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not likely and that applicant’s mark should be published
for opposition.2
Decision: The refusal of registration is reversed.
R. L. Simms
T. J. Quinn
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial and
Appeal Board.

2 Although we have found registrability on the basis of this
record, we are troubled by the fact that a supplemental consent
to registration was apparently not sought by applicant. Given
the relationship between applicant and registrant (and their
predecessors) and the fact that they resolved a prior legal
conflict by an agreement, a supplemental agreement along with the
existing settlement agreement perhaps could have avoided the
needless delay and expense caused by the repeated refusals and
this appeal, as well as the expenditure of TTAB resources.