CGI Group Inc.v.Cardinal Consulting, Inc.

Trademark Trial and Appeal Board

Sep 27, 2010

No. 91183284 (T.T.A.B. Sep. 27, 2010)

Mailed:
September 27, 2010
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

CGI Group Inc.
v.
Cardinal Consulting, Inc.
________

Opposition No. 91183284
against Serial No. 78974000
_______

Robert W. Zelnick and Rita Weeks of McDermott Will & Emery
LLP for CGI Group Inc.

Brian R. Gibbons of Brian R. Gibbons, P.A. for Cardinal
Consulting, Inc.
_______

Before Bucher, Zervas and Ritchie, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Cardinal Consulting, Inc. seeks registration on the
Principal Register of the mark THE CCI GROUP (in standard
character format) for services recited as “information
technology consultation” in International Class 42.1

1 Application Serial No. 78974000 was filed on September 14,
2006, based upon applicant’s allegation of a bona fide intention
to use the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91183284
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CGI Group Inc. has opposed this application on the
ground of priority of use and likelihood of confusion,
alleging that applicant’s mark, when used in connection
with the identified services, so resembles the following
registered marks:

for, inter alia, “consultancy
services in the field of business
management; information
technology outsourcing services
for others; business process
outsourcing services for others”
in International Class 35;
and for “consultancy services in
the field of information
technology; information
technology management services;
information technology systems
integration services” in
International Class 42;2
CGI for, inter alia, “consultancy
services in the field of business
management; information
technology outsourcing services
for others; business process
outsourcing services for others”
in International Class 35;
and for “consultancy services in
the field of information
technology; information
technology management services;
information technology systems
integration services” in
International Class 42;3 and

2 Registration No. 2445560 issued on April 24, 2001; Section
8 affidavit (six-year) accepted and Section 15 affidavit
acknowledged.

3 Registration No. 2445561 issued on April 24, 2001; Section
8 affidavit (six-year) accepted and Section 15 affidavit
acknowledged.

Opposition No. 91183284
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CGI for, inter alia, “ … business
risk management consultation … in
International Class 35;
and for “technical support
services, namely, troubleshooting
of computer hardware and software
problems; computer services,
namely, hosting and maintaining a
site for others to exchange
information about computer
software use; installation and
maintenance of computer software;
updating of computer software for
others; computer project
management services; creating and
maintaining websites for others”
in International Class 42;4

as to be likely to cause confusion, to cause mistake or to
deceive, under Section 2(d) of the Lanham Act, 15 U.S.C.
§ 1052(d). In addition, opposer alleged prior common law
rights in the term CGI Group used in connection with
consultancy services in information technology systems and
management, as well as related goods and services. Opposer
has also opposed this application on the ground of
dilution, alleging that applicant’s mark will blur the
distinctiveness of opposer’s famous CGI Group, CGI and
CGI and design marks.
Applicant, in its answer, denied all the essential
allegations of these claims. By stipulation filed with the

4 Registration No. 3539769 issued on December 2, 2008.

Opposition No. 91183284
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Board on June 10, 2009, the parties agreed that direct
testimony could be filed in the form of a sworn affidavit,
that the affiant would be subject to live cross-examination
by the adverse party, and that the parties reserved the
right to object to declaration testimony.
I. OPPOSER'S EVIDENTIARY OBJECTIONS
We now address numerous objections that opposer has
raised to some of the testimony and accompanying exhibits
of Mr. Frank Cavanaugh, applicant’s President (e.g.,
inadmissible as irrelevant, hearsay, lack of Mr.
Cavanaugh’s personal knowledge, inadmissible under the
best evidence rule, answers that are non-responsive, and
exhibits lacking the requirements for access dates and
document source of Internet screen prints found in Safer,
Inc. v. OMS Investments, Inc., 94 USPQ2d 1031 (TTAB
2010)). Opposer carefully maintained all of these
objections in its brief.
However, we find that none of Mr. Cavanaugh’s
evidence sought to be excluded is outcome determinative.
Given this fact, coupled with the sheer number of
objections, we see no compelling reason to discuss each
specific objection. Suffice it to say, we have considered
Mr. Cavanaugh’s entire testimony and exhibits submitted.
Opposition No. 91183284
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In doing so, we have kept in mind the various objections
raised by opposer and have accorded this evidence whatever
probative value the subject testimony and evidence merit.
Further, while much discussion has been directed to
Exhibit 4 of applicant’s Notice of Reliance (“How to Hire a
Management Consultant”), applicant notes that it also
authenticated and submitted this document as an exhibit
to the Cavanaugh Declaration, as well as an exhibit
during Mr. Cavanaugh’s cross-examination deposition,
providing an alternative basis under which it should be
deemed admissible. We agree, and hence, find that the
motion to strike is moot inasmuch as opposer did not object
to this document as being inadmissible during Mr.
Cavanaugh’s testimony.
II. THE RECORD
In addition to the pleadings and the file of the
involved application, the record also includes the
testimony by sworn declaration of Jean Francois Poirier,
opposer’s Director of Intellectual Property Management,
dated July 2, 2009 (“JFP Decl.”) and accompanying exhibits
A-R thereto; opposer’s Notice of Reliance dated July 2, 2009
(“CGI NOR”), and Exhibits 1-3 thereto, consisting of
certified status and title copies of three of opposer’s
Opposition No. 91183284
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valid and subsisting pleaded trademark registrations for
the marks listed above, pursuant to 37 CFR 2.122(d);
opposer’s Notice of Reliance dated July 2, 2009, and
Exhibits 4-27 thereto, consisting of printed publications,
pursuant to 37 CFR 2.122(e); opposer's Notice of Reliance
dated July 2, 2009, and Exhibits 28-32 thereto, consisting
of: (a) applicant’s responses and objections to opposer’s
First Request for Admissions; (b) applicant's Responses and
Objections to opposer's First Set of Interrogatories; and
(c) applicant's Amended Response to opposer's First Set of
Interrogatories, all pursuant to 37 CFR 2.120(j);
testimony deposition of applicant’s President, Frank
Cavanaugh, taken on June 23, 2009 (“Cavanaugh V.1”) and
accompanying exhibits thereto; and cross-examination
Testimony Deposition of applicant's President, Frank
Cavanaugh, taken on October 29, 2009 (“Cavanaugh V.2”) and
accompanying exhibits thereto.
Applicant filed the testimonial declaration of Frank
Cavanaugh, dated October 1, 2009 (“Cavanaugh Decl.”) and
accompanying exhibits A-1 to C-20 thereto. Applicant also
filed a Notice of Reliance dated October 1, 2009 (“Appl.
NOR”) and accompanying exhibits 1-2 thereto, containing
(a) opposer’s Responses to applicant’s First Set of
Opposition No. 91183284
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Interrogatories; and (2) opposer's Responses to
applicant’s First Request for Admissions and accompanying
exhibit 4 thereto, containing “printed publications”
pursuant to 37 CFR 2.122(e), as noted above.5
III. FACTUAL FINDINGS
Opposer, CGI Group Inc. (hereinafter “CGI Group”) is a
global firm that has for thirty years been advertising and
offering consultancy services in information technology
(“IT”) systems and management, IT systems integration
services, business process services, and related goods
and services, using CGI and CGI Group as service marks,
trademarks and trade names. This includes serving
customers in the United States through offices located in
twenty-six states, in the fields of IT consulting, systems
integration, business process services and computer
software products. JFP Decl. ¶¶ 8, 9, 12, 14, 20 and 32.
CGI Group currently has almost 30,000 employees worldwide
including more than 6,000 in the United States. In recent
years, U.S. sales have accounted for over 30% of CGI
Group’s total revenues. CGI Group is the eighth largest

5 Applicant has withdrawn exhibit 3 to its Notice of Reliance,
so opposer’s earlier motion to strike that document is now moot.

Opposition No. 91183284
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independent IT and business process services company in
the world and the fifth largest in North America. Id.
¶ 8. The latest year for which the record showed world-
wide earnings was 2008, when CGI Group earned $3.7 billion
in worldwide revenue. Id. ¶ 21. This includes U.S. sales
revenues of over $1.1 billion. Over the past ten years
alone, CGI Group earned in excess of $6.2 billion in
revenue from sales of CGI’s goods and services in the
United States. Id. ¶ 53.
The record shows that CGI Group has been recognized
in a variety of IT industry magazines and trade journals
as a leading IT consulting, systems integration and
outsourcing managed services provider in the U.S.
healthcare industry. CGI Group has focused intensively on
providing services to private healthcare clients in the
United States (e.g., hospitals, healthcare systems,
regional and federal healthcare organizations, regional
boards, HMOs, managed care organizations and private
insurance companies) as well as the U.S. federal
government. Opposer employs more than 400 professional
employees in the United States. Id. at ¶¶ 42, 45, 46, 48
– 51, and Exhibits 9 and 25 to Opp. NOR.
Opposition No. 91183284
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Over the past decade, CGI Group’s advertising and
promotional materials have used its house mark, CGI, and
many of the uses of record contain its service mark,
trademark and trade name, CGI Group. JFP Decl. ¶ 22.
Opposer has advertised in a variety of IT industry
magazines and trade journals, such as: Techlinks,
Insurance & Technology, Technology Decisions, Healthcare
Finance News Week, AHIMA Advantage e-Alert newsletter, HFMA
— Healthcare Finance Management Association, Healthcare IT
News, Healthcare Informatics, Health Data Management, and
Health Executive. JFP Decl. ¶ 38, Ex. I to JFP Decl. CGI
Group also promotes its CGI Group goods and services under
these CGI Group marks at IT industry tradeshows generally
and tradeshows specifically aimed at the healthcare
industry. JFP Decl. ¶ 38. Similarly, for years, CGI Group
has promoted its CGI goods and services under these CGI
Group marks through its corporate websites,
. Id. ¶¶ 33-38. Additionally, CGI
Group’s advertising and promotional efforts combined with
the commercial success it has enjoyed have led to
significant unsolicited media attention in U.S. and
international publications. Exhibits 4, 6, 7, 9, 21 - 27
to CGI Group NOR. For more than a decade, CGI Group has
Opposition No. 91183284
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been a listed company on the New York Stock Exchange, and
is one of the companies comprising the Standard & Poors 500
Index. JFP Decl., ¶ 16 and Exs. A and B.
Applicant, Cardinal Consulting, Inc., was founded in
1997 by its President, Frank Cavanaugh. The company began
consulting services in 2000. Mr. Cavanaugh is the only
employee of applicant. Originally formed in Illinois,
the name “Cardinal Consulting” was selected because the
cardinal is the state bird of Illinois. The image of a
bird appeared prominently in the company’s early logos.
Around February 2002 Cardinal Consulting Inc. began
incorporating the initials “CCI” into its logo. Cavanaugh
Decl. ¶¶ 6, 24-27.
Applicant is an information technology consulting
firm having a focus on the healthcare industry. Cavanaugh
Decl. ¶ 8. Applicant provides consultancy services in the
field of information technology, information technology
management services, network and infrastructure planning,
IT management support, and IT outsourcing evaluation and
oversight. Ex. 28 to CGI NOR, Response to RFAs 36, 38,
46-48.
As a result of objections by a third-party (named
“Cardinal Health”) to applicant’s offering its services
Opposition No. 91183284
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to the public under the names “Cardinal Consulting” and
“Cardinal Consulting, Inc.,” applicant shifted its name
in 2006 from “Cardinal Consulting, Inc.” to focus on the
initials CCI in its logo, and began using THE CCI GROUP
when promoting its services. Cavanaugh V.1 at 36. From
August 2006 to the present, applicant has been using THE
CCI GROUP in connection with providing information
technology consulting services. Ex. 29 of CGI NOR,
Response to Interrogatories 3-4. Prior to adopting THE
CCI GROUP, applicant allegedly searched the web, but
only for marks containing the exact letter string “C C I.”
Cavanaugh V.2 at 11 and 123. Although he did not consider
that it would pose any problems, applicant was aware of
the CGI Group prior to the institution of this opposition
proceeding. Cavanaugh V.1, at 20-21.
IV. ANALYSIS
A. Opposer’s Standing
Opposer’s standing is a threshold inquiry made by the
Board in every inter partes case. In Ritchie v. Simpson,
170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999), the Federal
Circuit enunciated a liberal threshold for determining
Opposition No. 91183284
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standing, i.e., whether one has a reasonable belief of
damage from the registration, and therefore, has a real
interest in the case. See also Jewelers Vigilance
Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d
2021, 2023 (Fed. Cir. 1987); and Lipton Industries, Inc. v.
Ralston Purina Company, 670 F.2d 1024, 213 USPQ 185 (CCPA
1982). Opposer has properly made its pleaded registrations
of record and has demonstrated that it is still using the
marks. We consider this sufficient to establish opposer’s
interest in, and therefore, standing to oppose registration
of applicant’s mark, in this proceeding. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir.
2000).
B. Opposer’s Priority
Moreover, because opposer has established that it owns
valid and subsisting registrations of its pleaded marks,
Section 2(d) priority is not an issue in this case as to
the marks therefor and goods and services covered thereby.
See King Candy Company v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108 (CCPA 1974); and Carl Karcher
Enterprises Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125
(TTAB 1995). Opposer has also established its common law
priority through documentary evidence of use of CGI Group
Opposition No. 91183284
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in connection with IT consulting, systems integration,
business process services and computer software products.
C. Likelihood of Confusion
We turn, then, to the issue of likelihood of confusion
under Section 2(d) of the Trademark Act. Our determination
must be based upon our analysis of all of the probative
facts in evidence that are relevant to the factors bearing
on the issue of likelihood of confusion. See In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also In re Majestic Distilling Company, Inc.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
considering the evidence of record on these factors, we
keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods [or services]
and differences in the marks.” See Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976).
As to the du Pont factor focusing on the relationship
of the services, we turn first to the common law usage of
CGI Group. This is opposer’s service mark and trade name
most similar to applicant’s mark. We note that the
Opposition No. 91183284
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evidence in the record confirms that the information
technology consulting services previously offered by
opposer are remarkably similar to those of the newcomer,
applicant, as to their respective fields of emphasis.
Specifically, opposer targets its IT consultation services
to individuals and firms in a wide variety of businesses,
including in particular the U.S. healthcare industry. We
have no question but that applicant’s recitation of
services encompasses these services. Hence, in reality,
the parties to this proceeding should be viewed as
competitors in the area of IT consultation in general and
as directed to the healthcare field in particular.
As to the customer base of its services, the evidence
shows that opposer offers IT consultation services under
its common law mark without restriction as to size of the
customer or the type of enterprise. The record does show,
however, a special emphasis in consultation services
offered to firms in the U.S. healthcare industry.
Similarly, given applicant’s broad, unrestricted recitation
of services, the potential consumers for applicant’s
services must be deemed to target its IT consultation
services to small proprietors, Fortune 100 companies and
large international enterprises, in every conceivable
Opposition No. 91183284
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field, including in the healthcare industry. As noted
above, testimony evidence also confirms that applicant
targets its services to firms in the U.S. healthcare
industry without restriction as to the relative size of the
customer.
Furthermore, as to the du Pont factor focusing on the
conditions under which and buyers to whom sales are made,
nothing in this record persuades us that all purchasers of
information technology consultation services are
necessarily sophisticated purchasers who would be immune to
source confusion when faced with similar marks used on the
identical services involved in this case. To the contrary,
especially when the customers involve smaller firms such as
the local pharmacy that wants to offer health care products
or e-prescription fulfillment over the Internet, IT
consulting might well include relatively low level services
like search engine optimization, which services would be
encompassed by applicant’s broad recitation of services.
In his declaration and on cross-examination, Mr. Cavanaugh
disclosed an average contract size with applicant’s clients
to be $36,000. With his subsequent focus on listed clients
with whom applicant had negotiated very large, six-figure
contracts, it is clear that applicant would also have its
Opposition No. 91183284
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share of contracts in the range of several thousand dollars
for “mom and pop” operations that are known to rely upon
consultants like applicant to assist in the design and
purchase of IT systems. Cf. Checkpoint Systems Inc. v.
Check Point Software Technologies Inc., 269 F3d 270,
60 USPQ2d 1609 (3rd Cir. 2001). As a result, we cannot
presume that the purchase of such services would
necessarily be the subject of a great deal of thought or
analysis or be limited to sophisticated purchasers.
Additionally, we look to the strength of opposer’s
marks. The CGI Group is a global firm that has been
offering IT consulting services for more than thirty
years. Having more than six-thousand employees in the
United States alone, CGI Group is the fifth largest
independent IT and business process services company in
North America, having in recent years more than a billion
dollars of annual revenue in the U.S., and being one of
the companies comprising the Standard & Poors 500 Index.
Based upon information about its annual advertising budget
and sales volumes – both in raw numbers and as compared
with others in this field – and the national recognition
implicit in its position in the U.S. financial markets, in
assessing opposer’s level of renown in the field of IT
Opposition No. 91183284
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consulting, we find on this record that opposer’s CGI Group
trade name and service mark is a famous mark, thereby
playing “a ‘dominant’ role in the process of balancing the
du Pont factors.” Recot Inc. v. M.C. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000). See also
Packard Press Inc. v. Hewlett-Packard Co., 227 F.3d 1352,
56 USPQ2d 1351, 1356 (Fed. Cir. 2000).
As to the number and nature of similar marks registered
for similar goods and services, applicant has failed to
enter into evidence any third-party registrations.
Moreover, we are not persuaded by the weight of applicant’s
third-party screen-prints purportedly showing use of other
marks on the Internet. At most, applicant offers Frank
Cavanaugh’s testimony referencing alleged third party
usage of other marks involving initialisms. See
Cavanaugh Decl. ¶ 78-138, Exs. B1-C20 to Cavanaugh Decl.
Admittedly, he has no personal knowledge of these
referenced third parties’ uses as he could not speak to
actual use of the marks, the scope of the parties’
services, their channels of trade, etc. See Cavanaugh
V.2, 111-115. While we did not find it necessary to
strike this evidence, we find that it is entitled to
little probative weight.
Opposition No. 91183284
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We accept the fact that applicant was able to locate
on the web dozens of companies having service marks and/or
trade names in the form of three letter initialisms,
beginning with the letter “C.” These three letter
initialisms included ones that followed up the leading
letter “C” by most any letter of the alphabet in this
middle position, and ending with the letter “I.”
Interestingly, despite applicant’s assurances that it
performed a due diligence search of the web prior to
adopting this initialism, applicant produced in Mr.
Cavanaugh’s declaration a listing of third-party
consultants in the fields of IT and medicine who had
adopted some form of a CCI mark:

A Canadian consulting company involved
in healthcare projects (clinical
programs, multidisciplinary facilities
or community health networks) across
Canada as well as in the developing
world.6

A Pennsylvania firm that serves health
care providers with consultancy
services dealing with issues of
compliance with federal government
rules and regulations.7

6 Comprehensive Care International (CCI) of Toronto, Ontario;
http://www.ccihealth.com/home.asp

7 Compliance Concepts, Inc. (CCI) of Wexford PA, incorporated
in July 1997; http://www.complianceconcepts.com

Opposition No. 91183284
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A women-owned business providing
clients with systems engineering and
information technology, especially in
emerging technologies, Internet
application development, project
management, outsourcing, e-commerce,
etc.8

CCi
An IT service firm providing IT
staffing solutions and IT managed
services for organizations.9

A Maryland firm providing IT
consulting services, including IT
strategy and planning, business
process and systems design,
applications development and
implementation, system conversions,
and strategic IT direction for global
organizations.10

On the edge of Columbus, this is one
of Ohio’s largest workers’
compensation risk consulting & claims
management service providers.11

CCI
A privately held IT consulting firm
specializing in infrastructure
support, privacy compliance and data
security, helping clients in
government and commercial industries
protect and manage vital data. 12

8 Computer Consultants of America, Inc. (CCI), incorporated
in the state of Michigan in February 1994; http://www.computer-
consultants.com/home.php

9 Caliber Consulting Inc (CCi), with offices in CA and WY,
was founded in 1998; http://www.calibercon.com/4436.html

10 Ceccone-Clermont International (CCI) of Ashton, MD;
http://www.ccillc.com/index.html

11 CareWorks Consultants, Inc. (CCI) of Dublin, OH;
http://www.careworksconsultants.com/about-cci/cci-overview

12 Content Communications, Inc. (CCI) of Washington DC;
http://www.contentcom.com/index.html
Opposition No. 91183284
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CCI
A small Maryland business that
provides a variety of computer
services to the federal government.13

A communications network integrator
providing solutions to the cable,
broadband, and telecommunications
industries.14

These third party websites certainly suggest that
applicant entered a crowded field of CCI service marks
and/or trade names for firms doing IT consulting work,
healthcare consulting services, and communication services.
However, in order to oppose applicant’s mark in this inter
partes proceeding, it is not necessary that opposer also
police world-wide any and all third-party uses of “CCI” on
the Internet in a wide variety of fields.
Furthermore, as seen in opposer’s common law usage,
the mark opposer claims is not just CGI, but also CGI
Group. Without taking a position as to the inherent
source-indicating capability of the term “Group,” we must
look at opposer’s and applicant’s marks in their entireties

13 Crisafulli Consulting, Inc. (CCI) of Damascus, MD;
http://www.team-cci.com/Default.aspx

14 Cable Constructors, Inc., now CCI Systems, Inc., founded in
1955 in Iron Mountain, MI; http://cci-systems.us/

Opposition No. 91183284
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when comparing these marks, and both follow similar three-
letter initialisms with the identical word, “Group.” By
contrast, none of these other purported uses of CCI marks
shows the addition of the word “Group.”
In short, we find that these third-party marks are not
probative of the strength or weakness of opposer’s service
mark and trade name as it relates to companies engaged in
IT consultancy. Certainly, the letters “C G I” in opposer’s
design mark, standard character format mark, CGI, and
the common law usages shown in the record (e.g., “CGI
Group” or “the CGI Group Inc.”) are deemed to be arbitrary
as applied to IT consultancy services.
With these points in mind, we turn to a consideration
of the parties’ marks, keeping in mind as well that “when
marks would appear on virtually identical goods or
services, the degree of similarity necessary to support a
conclusion of likely confusion declines.” See Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
Having established that opposer’s CGI Group marks are
arbitrary and quite strong, we look to the similarities
with applicant’s applied-for mark, THE CCI GROUP.
Opposition No. 91183284
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Certainly if one compares THE CCI GROUP to “CGI Group”
or “the CGI Group Inc.,” the marks are similar in appearance,
sound, connotation and commercial impression. As to
appearance, it is easy to overlook the dissimilarities
between the two marks having upper-case letters “C” and “G”
in this middle position. Even apart from the visual
similarity of these respective, middle letters, our primary
reviewing Court has taken the position that it is difficult
to remember a series of arbitrarily-arranged letters.
Weiss Associates Inc. v. HRL Associates, Inc., 902 F.2d
1546, 14 USPQ2d 1840, 1841 (Fed. Cir. 1990) [TMM held
confusingly similar to TMS, both for systems software].
As to sound, the pronunciation of the letters “C” and
“G” within these letter strings means they have a similar
overall sound.
On this record, we find that consumers and potential
consumers will likely view both of these marks as arbitrary
letter strings, without any connotations relevant to our
determination herein. The identical word “Group” in
applicant’s applied-for mark and opposer’s common law mark
connotes a unit of persons working together. Opposer
demonstrates that this is a relatively rare choice of words
for the trade names / service marks of vendors at industry
Opposition No. 91183284
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conferences such as Healthcare Information and Management
Systems Society (HIMSS), where CGI Group, THE CCI GROUP and
hundreds of other firms in the healthcare IT industry have
annual exhibits. Cavanaugh V.2 at 92-94.
As applied to the identical services, they will
therefore engender the same commercial impression. The
slight difference in the marks fails to avoid a likelihood
of consumer confusion.
Given that a service mark and trade name of the fame
of opposer’s mark “casts a long shadow which competitors
must avoid” [Kenner Parker Toys Inc. v. Rose Art Industries
Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992)],
we find that applicant cannot justify the adoption of such
a strikingly similar mark.
Having focused primarily on opposer’s common law
usage, and having found, a likelihood of confusion as to
this common law mark used in connection with the affected
services, we do not need to consider further the marks in
the claimed registrations.
Accordingly, with opposer having demonstrated its
priority, we hereby find a likelihood of confusion, and the
opposition is sustained.
Opposition No. 91183284
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D. Dilution
Opposer also alleges that applicant’s mark was likely
to impair the distinctiveness of its marks. However, given
our holding on likelihood of confusion, we do not reach the
question of a likelihood of dilution by blurring.
Decision: The opposition is sustained under Section
2(d) of the Lanham Act, and registration to applicant is
hereby refused.