Business Imaging Systems, Inc.Download PDFTrademark Trial and Appeal BoardMar 21, 2016No. 86201446 (T.T.A.B. Mar. 21, 2016) Copy Citation This Opinion is not a Precedent of the TTAB Mailed: March 21, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Business Imaging Systems, Inc. _____ Serial No. 86201446 _____ Jerry J. Dunlap II, for Business Imaging Systems, Inc. Inga Ervin, Trademark Examining Attorney, Law Office 111, Robert L. Lorenzo, Managing Attorney. _____ Before Kuhlke, Taylor and Lynch, Administrative Trademark Judges. Opinion by Taylor, Administrative Trademark Judge: Business Imaging Systems, Inc. (“Applicant”) seeks registration on the Principal Register of the mark GROOPER (in standard characters) for Computer application software for computer systems, namely, software for scanning, analyzing adaptive categorizing and storing data in International Class 9.1 1 Application Serial No. 86201446 was filed on February 23, 2014, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act. 15 U.S.C. § 1051(b). Serial No. 86201446 - 2 - The Trademark Examining Attorney has refused registration of Applicant’s mark on the ground that the mark for which registration is sought so resembles the mark in Registration No. 4416255, EASYGROUPER (standard characters) registered on the Supplemental Register, for “providing temporary use of on-line non-downloadable software for providing, managing and updating business contact information,” in International Class 422 as to be likely, when used on or in connection with the identified goods to cause confusion, or to cause mistake or to deceive, pursuant to Section 2(d) of the Trademark Act 15 U.S.C. § 1052(d). After the Trademark Examining Attorney made the refusal final, Applicant appealed to this Board. We affirm the refusal to register. Our determination 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 issue of likelihood of confusion as set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and services at issue. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, Applicant and the Examining Attorney have also submitted arguments regarding the sophistication of the purchasers. We have considered each of these issues and all other matters of which there is evidence of record. The Marks 2 Issued October 8, 2013. Serial No. 86201446 - 3 - We first consider the du Pont factor of the similarity/dissimilarity of the marks and compare them in their entireties in terms of sound, appearance, meaning and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). 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 their entireties that confusion as to the source of the goods offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general, rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). With these principles in mind we compare Applicant's mark GROOPER with the cited registered mark EASYGROUPER and find them similar to the extent that they both include in whole or in part the aurally identical term GROOPER/GROUPER. The phonetically identical common words begin with the letters “GRO” and end with the letters “PER.” The difference in spelling consists of the letters “O” and “U,” respectively, which are embedded in the middle of each word. Given the overall similarity in the terms, it is unlikely that consumers will notice the different letters, or treat them as a distinguishing feature. Nor does the addition to the cited mark of “EASY,” defined in pertinent part as “[c]apable of being accomplished or acquired with ease; posing no difficulty,”3 3 The American Heritage Dictionary of the English Language (5th ed. 2015), (www.ahdictionary.com/word/search.html?q=easy), last viewed February 26, 2016. We take, as we may, judicial notice of the referenced definition. See Boston Red Sox Baseball Club LP Serial No. 86201446 - 4 - distinguish the two marks, notwithstanding its position as the first term in the cited mark. Instead, and with particular regard to the connotation and commercial impression of the marks, the word EASY is likely to be perceived by consumers as modifying the term “grouper.” Thus the word EASY acts as an intensifier, so that it emphasizes the ease of the managing or “grouping” aspect of Registrant’s identified non-downloadable software as a service. Applicant’s GROOPER mark, given the categorizing aspect of its software, also engenders a commercial impression related to “grouping,” with the result that the connotation and commercial impression of the two marks is the same. While clearly there are differences between the two marks when viewed on a side- by-side basis, we find that in their entireties, Applicant’s mark GROOPER and Registrant’s mark EASYGROUPER are substantially similar in appearance, sound, meaning and commercial impression. The factor of similarity of the marks thus favors a finding of likelihood of confusion. Notably, Applicant does not address the du Pont factor of the similarity of the marks at all. Instead, Applicant primarily focuses its argument in support of reversal on its perceived differences between its goods and the services recited in the cited registration and the asserted sophistication of the respective purchasers. Applicant particularly relies on the recent decision of the Federal Circuit, In re St. Helena v. Sherman, 88 USPQ2d 1581, 1590 n.8 (TTAB 2008) (online reference works which exist in printed format or have regular fixed editions are proper subject matter for judicial notice). Serial No. 86201446 - 5 - Hospital, 113 USPQ2d 1082 (Fed. Cir. 2014), where the court determined that the mark TAKETEN for a residential health improvement program was not confusingly similar to the mark TAKE 10! for printed health material related to an initiative encouraging schools to provide physical activity programs, because of the lack of substantial evidence to prove similarity in the respective goods and services coupled with the high degree of consumer care used in selecting the applicant’s goods. We do not find the case analogous, and remind Applicant that each case must be decided on its own facts. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics similar to [applicant’s] application, the PTO’s allowance of such prior registrations does not bind the Board or this court.”); In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987). In view of the foregoing, we are obligated to assess the registrability of Applicant’s mark on its own merits and not simply based on the existence of other registrations. Nor do we find application of the “something more” standard discussed in St. Helena Hospital appropriate here, where the services (software as a service) are essentially the goods (software) provided in a different format. As more fully discussed below, we do not find the goods and services at issue here sufficiently dissimilar to warrant reversal of the refusal of registration. In addition, there is no evidence of record that would lead us to determine that consumers of Applicant’s goods and/or Registrant’s services exercise a level of care in their purchasing decisions that confusion between the respective marks is unlikely. Even assuming, arguendo, that these services and goods might travel in business Serial No. 86201446 - 6 - channels, such channels include relatively small and unsophisticated businesses and individuals operating sole proprietorships. Nonetheless, even if purchasers of Applicant’s goods and Registrant’s services would exercise some degree of care in their purchasing decisions, even knowledgeable and careful purchasers can be confused as to source, where, as here, very similar marks are used in connection with highly related goods and services. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) citing Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) ("Human memories even of discriminating purchasers … are not infallible."). See also Refreshment Machinery Inc. v. Reed Industries, Inc., 196 USPQ 840, 843 (TTAB 1977) (selling to a sophisticated purchaser does not automatically eliminate the likelihood of confusion because “[i]t must also be shown how the purchasers react to trademarks, how observant and discriminating they are in practice, or that the decision to purchase involves such careful consideration over a long period of time that even subtle differences are likely to result in recognition that different marks are involved”). We thus find this du Pont factor neutral. The Goods and Services We turn then to the du Pont factor of the relatedness of the goods and services and compare Applicant’s “computer application software for computer systems, namely, software for scanning, analyzing adaptive categorizing and storing data” with the “providing temporary use of on-line non-downloadable software for providing, Serial No. 86201446 - 7 - managing and updating business contact information,” as recited in the cited registration. In making our comparison, it is well settled that the question of likelihood of confusion must be determined based on an analysis of the goods identified in Applicant’s application vis-à-vis the services recited in the cited registration. Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992); The Chicago Corp. v. North American Chicago Corp., 20 USPQ 2d 1715 (TTAB 1991). Further, it is a general rule that the goods and services do not have to be identical or directly competitive to support a finding that there is a likelihood of confusion. It is sufficient if the respective goods and services are related in some manner and/or that the conditions surrounding their marketing are such that they would be encountered by the same persons under circumstances that could, because of the similarity of the marks used in connection therewith, give rise to the mistaken belief that they emanate from or are associated with a single source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993); In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). Based on the identifications themselves, we find that Applicant’s broadly worded software for analyzing adaptive categorizing may perform the same or similar function as Registrant’s on-line non-downloadable software (for temporary use) for providing, managing and updating business contact information that could be used the same consumer and for the same purpose, i.e., organizing and managing business contact information. Further, the evidence of record also demonstrates that Applicant’s goods are likely to be perceived as originating from the same source as Serial No. 86201446 - 8 - Registrant’s services. Specifically, the Examining Attorney made of record Internet materials showing goods of a type identified by Applicant and services of the type identified by the Registrant offered via the same website under the same mark.4 For example, the website of infoUSA (http://inforusa.com) points out that while on the website, the user can create a mailing list of businesses by “customiz[ing] and download[ing] a targeted business list” (in keeping with Registrant’s services of “updating business information”) and store this information (in keeping with Applicant’s software used to store data). Also, as proclaimed on the ReferenceUSA website (http://www.referenceusa.com): New! Save Your Searches. Patrons can now sign up for personal accounts with ReferenceUSA. Personal accounts allow users to create custom use profiles, same searches and search criteria for future list building and much more. In addition, all users will have a personalized dashboard once signed into ReferenceUSA. Simply sign up for an account on a subscribing libraries’ Reference USA portal. Here again, a user can “create a user profile” or, in other words, “manage and update business contact information” and also “save searches.” Based on the nature of the goods as identified in Applicant’s application and the services as recited in the cited registration, and on the third-party evidence of record, we conclude that Applicant’s goods and Registrant’s services perform overlapping functions and otherwise are complementary and closely related services that are often offered under a single mark by a single entity such that, when identified by 4 Attachments to the Final Office Action, dated January 9, 2015. Serial No. 86201446 - 9 - substantially similar marks, i.e., GROOPER and EASYGROUPER, confusion as to source is likely. In its December 5, 2014 response, Applicant argued that no likelihood of confusion exists in this case because, as Applicant states, “the marks are directed to different consumers, via different channels of trade and are for distinctly different products, namely a cloud based group email directory service in the case of ‘EASYGROUPER’ as opposed to software to collect, analyze and store data in the case of ‘GROOPER’.” We find this argument unavailing. First, there are no limitations in the identifications as to channels of trade and classes of purchasers in either Applicant’s application or the cited registration. As regards the specific goods and services provided, as noted above, not only is Registrant’s recitation of services not so limited, the software offered by Applicant and the software as a service provided by Registrant perform overlapping functions. After careful consideration of all of the evidence of record and the arguments put forth by Applicant and the Examining Attorney, we conclude that purchasers familiar with Registrant’s services of “providing temporary use of on-line non-downloadable software for providing, managing and updating business contact information” offered under the mark EASYGROUPER would be likely to believe, upon encountering Applicant’s mark GROOPER for “computer application software for computer systems, namely, software for scanning, analyzing adaptive categorizing and storing data,” that such goods and services originate from or are sponsored by or are otherwise affiliated with the same source. Serial No. 86201446 - 10 - Decision: The refusal to register Applicant’s mark EASYGROOPER under Section 2(d) of the Trademark Act is affirmed. Copy with citationCopy as parenthetical citation