Business Imaging Systems, Inc.

Trademark Trial and Appeal Board

Mar 21, 2016

No. 86201446 (T.T.A.B. Mar. 21, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: March 21, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Business Imaging Systems, Inc.
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Serial No. 86201446
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Jerry J. Dunlap II,
for Business Imaging Systems, Inc.
Inga Ervin, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
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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).
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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.
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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
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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).
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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
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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,
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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
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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.
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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.
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Decision: The refusal to register Applicant’s mark EASYGROOPER under
Section 2(d) of the Trademark Act is affirmed.