ConsulNet Computing, Inc.

Trademark Trial and Appeal Board

Mar 7, 2005

No. 78156904 (T.T.A.B. Mar. 7, 2005)

Mailed:
7 March 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re ConsulNet Computing, Inc.
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Serial No. 78156904
_______

Renee L. Mitchell of Ryley Carlock & Applewhite for
ConsulNet Computing, Inc.

Carol A. Spils, Trademark Examining Attorney, Law Office
101 (Thomas G. Howell, Managing Attorney).
_______

Before Holtzman, Rogers, and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On August 22, 2002, ConsulNet Computing, Inc.
(applicant) filed an application (No. 78156904) to register
the mark QUANTUM LEAP SUCCESS WEB SITE (typed) for services
ultimately identified as: “direct marketing advertising
for mortgage and real estate industries; developing
promotional and marketing campaigns for mortgage and real
estate industries" in Class 35. The application contains
an allegation of a date of first use and first use in
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 78156904
2
commerce of November 11, 1998, and a disclaimer of the term
“web site.”
The examining attorney has refused to register
applicant’s mark under Section 2(d) of the Trademark Act
(15 U.S.C. § 1052(d)) because of a prior registration for
the mark QUANTUM LEAP (typed) for:
Providing advertising agency services to others,
namely, creating, producing, and arranging for the
distribution of advertising materials promoting the
goods and services of others; production and
distribution of television and radio commercials; and
dissemination of advertising for others via an on-line
electronic communications network in Class 35 and

Design of advertising and promotional computer
software for others in Class 42.1

The examining attorney argues that both marks contain the
same words “Quantum Leap” and that the addition of the
other terms, “Success Web Site,” does not overcome the
likelihood of confusion. Regarding the services, the
examining attorney points out (Brief at 6) that both
applicant’s and registrant’s “marks are used to identify
advertising services.” Furthermore, the examining attorney
asserts that registrant’s services would include “those for
mortgage and real estate industries in the applicant’s more
specific identification.” Id.

1 Registration No. 2,353,038, issued May 30, 2000.
Ser No. 78156904
3
Applicant argues that the marks are dissimilar, that
the customers are sophisticated, and that “Applicant
provides different, targeted instructional and maintenance
sales services to a very specific group of customers.”
Brief at 6.
When there is a question of likelihood of confusion,
we analyze the facts as they relate to the relevant factors
set out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000). In considering the
evidence of record on these factors, we must keep in mind
that “[t]he fundamental inquiry mandated by § 2(d) goes to
the cumulative effect of differences in the essential
characteristics of the goods [or services] and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We first address the similarities and dissimilarities
of the marks QUANTUM LEAP SUCCESS WEB SITE and QUANTUM
LEAP. Both marks begin with the identical words QUANTUM
LEAP, which are the only words in registrant’s mark.
Applicant then adds the words “Success Web Site.”
Applicant’s specimen begins with the following question:
Ser No. 78156904
4
“How can the Quantum Leap strategies that have
revolutionize[d] the way you run your real estate business
work even better on the Internet?” (emphasis omitted). The
specimen goes on to explain that “You will have your own
web site on the Internet within one week”; “You’ll find out
how to attract visitors to your web site”; and “we can
transfer it over to your new web site.”
Applicant’s services are designed to attract visitors
to a business’s web site so the disclaimed term “web site”
would not likely be used by potential purchasers to
distinguish the services. “Regarding descriptive terms,
this court has noted that the ‘descriptive component of a
mark may be given little weight in reaching a conclusion on
likelihood of confusion.’” Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000),
quoting, In re National Data Corp., 753 F.2d 1056, 224 USPQ
749, 752 (Fed. Cir. 1985). Disclaimed matter is often
“less significant in creating the mark’s commercial
impression.” In re Code Consultants Inc., 60 USPQ2d 1699,
1702 (TTAB 2001).
When we compare the marks QUANTUM LEAP and QUANTUM
LEAP SUCCESS WEB SITE, we do not disregard the words
“Success Web Site” in applicant’s mark, however, that mark
is dominated by the term QUANTUM LEAP, i.e., the entirety
Ser No. 78156904
5
of registrant’s mark. The fact that an applicant adds an
additional word or words to a registered mark does not mean
that the marks are no longer similar. Wella Corp. v.
California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422
(CCPA 1977) (CALIFORNIA CONCEPT and surfer design likely to
be confused with CONCEPT for hair care products). Thus,
neither the term “web site” nor the term “success,” which
suggests the positive results of using applicant’s
services, would sufficiently distinguish the marks.
We also do not disregard the fact that the examining
attorney originally cited five other registrations that
included the term “QUANTUM LEAP” owned by two different
entities. The first three registrations include two for
QUANTUM LEAP INNOVATIONS (Registration Nos. 2,551,643 and
2,279,276) for, inter alia, computer software for use in
research, planning and strategic analysis and one for
QUANTUM LEAP (No. 1,677,420) for computer software for
problem solving, all owned by Quantum Leap Research, Inc.
The other registrations are for QUANTUM LEAP ADVANTAGE
(Nos. 2,345,904 and 2,205,082) for audio tapes,
publications, and seminars on business growth and
improvement owned by Great Western Development Corp. These
registrations as well as other registrations referenced by
applicant are for goods and services that are significantly
Ser No. 78156904
6
further removed from applicant’s advertising services.
Also, most of the marks in the previously cited
registrations are less similar to applicant’s mark than the
mark in the currently cited registration. While we have
considered the fact that QUANTUM LEAP is not a unique term,
the evidence does not lead us to conclude that it is
entitled to an extremely narrow scope of protection.
Therefore, even with applicant’s additional wording,
the similarities in appearance, sound, meaning, and
commercial impression of the marks QUANTUM LEAP and QUANTUM
LEAP SUCCESS WEB SITE would outweigh their differences.
Another key question in any likelihood of confusion
analysis is the similarity or dissimilarity of the
applicant’s and registrant’s services. Applicant’s
services are “direct marketing advertising for mortgage and
real estate industries; developing promotional and
marketing campaigns for mortgage and real estate
industries." Registrant’s services include creating,
producing, and arranging for the distribution of
advertising materials promoting the services of others;
production and distribution of television and radio
commercials; and dissemination of advertising for others
via an on-line electronic communications network and
designing software for others.
Ser No. 78156904
7
“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective
descriptions of goods” or services. Paula Payne Products
v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77
(CCPA 1973). In this case, applicant has limited its
direct marketing advertising, promotional, and marketing
services to the mortgage and real estate industries.
Registrant’s services are not limited to any specific
industry.2 While applicant acknowledges (Brief at 8) that
“Registrant is likely to advertise or promote its services
and Mark in a much larger market,” we note that this “much
larger market” would include the mortgage and real estate
industries. Squirtco v. Tomy Corp., 697 F.2d 1038, 216
USPQ 937, 940 (Fed. Cir. 1983)(“There is no specific
limitation and nothing in the inherent nature of Squirtco’s
mark or goods that restricts the usage of SQUIRT for
balloons to promotion of soft drinks. The Board, thus,
improperly read limitations into the registration”).

2 Applicant argues (Brief at 7-8) that if “applicant had known
that the amendment suggested by the Examining Attorney to clarify
its services would be interpreted by the Examining Attorney as
‘advertising agency services,’ Applicant would not have agreed to
amend its recitation in this manner.” Applicant then requests a
remand. At this late date, the request for a remand in
applicant’s brief does not show good cause and it is denied.
TBMP § 1209.04 (2d ed. 2004). We further note that our
determination that there is confusion in this case is not based
on an assumption that applicant’s services are necessarily
advertising agency services.
Ser No. 78156904
8
Furthermore, applicant’s “developing promotional and
marketing campaigns” and registrant’s “creating, producing,
and arranging for the distribution of advertising materials
promoting the goods and services of others” are very
closely related, if not overlapping. One final point on
the services is that applicant’s specimen and the use of
the term “web site” in its mark indicates that its services
would include an online aspect. Similarly, registrant’s
services also include “the dissemination of advertising for
others via an on-line electronic communications network.”
Even if the services are not overlapping, “it has
often been said that goods or services need not be
identical or even competitive in order to support a finding
of likelihood of confusion. Rather, it is enough that
goods or services are related in some manner or that
circumstances surrounding their marketing are such that
they would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks
used thereon, to a mistaken belief that they originate from
or are in some way associated with the same producer or
that there is an association between the producers of each
parties' goods or services.” In re Melville Corp., 18
USPQ2d 1386, 1388 (TTAB 1991).
Ser No. 78156904
9
Here, both applicant’s and registrant’s services could
be encountered by the identical purchasers in the mortgage
and real estate industries. Even though registrant’s
services are identified as advertising agency services to
others and applicant’s services include direct marketing
advertising, potential customers seeking advertising help
could explore both advertising agencies and those marketing
services directly to businesses. In addition, we are
unable to discern any significant differences in the
channels of trade, as the services are identified in the
application and registration. Therefore, the services are
related and there are no significant differences in the
purchasers or channels of trade to the extent that those
services overlap in the mortgage and real estate
industries.
Additionally, applicant argues (Brief at 9) that its
purchasers are “educated professionals dealing with the
details of complex real estate and mortgage transactions.”
The mere fact that the potential purchasers of the services
of applicant and registrant may be educated or even
sophisticated does not mean that there is no likelihood of
confusion in this case. “Even careful purchasers are not
immune from source confusion.” In re Total Quality Group
Inc., 51 USPQ2d 1474, 1477 (TTAB 1999). Here, we have no
Ser No. 78156904
10
evidence on the level of sophistication of the purchasers.
Even if these purchasers were sophisticated when
negotiating or handling real estate transactions, it is not
clear how discerning these purchasers would be when
purchasing advertising-related services. In this case,
even sophisticated purchasers would assume that there is
some relationship when the marks QUANTUM LEAP and QUANTUM
LEAP SUCCESS WEB SITE are used for related advertising
services. Those purchasers familiar with registrant’s
QUANTUM LEAP services would likely believe that applicant’s
QUANTUM LEAP SUCCESS WEB SITE services are a further
refinement to registrant’s services.
Applicant also argues that the marks have co-existed
for approximately six years. However, the “lack of
evidence of actual confusion carries little weight,
especially in an ex parte context.” Majestic Distilling,
65 USPQ2d at 1205 (citation omitted). With little or no
evidence on the extent of use of the marks or the volume of
sales and advertising of the marks, there is no reason to
give this factor any significant weight.
After analyzing the facts of a case involving the
issue of likelihood of confusion, we are required to
resolve any reasonable doubts we may have in favor of the
prior registrant. In re Pneumatiques, Caoutchouc
Ser No. 78156904
11
Manufacture et Plastiques Kleber-Colombes, 487 F.2d 918,
179 USPQ 729, 729-30 (CCPA 1973); In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir.
1988). To the extent we have any such doubts, we resolve
them in registrant’s favor.
Decision: The examining attorney’s refusal to
register applicant’s mark on the ground that it is likely
to cause confusion with the cited registered mark used in
connection with the identified services under Section 2(d)
of the Trademark Act is affirmed.