First Principles, Inc.

Trademark Trial and Appeal Board

Sep 11, 2003

No. 75782740 (T.T.A.B. Sep. 11, 2003)

Hearing: Mailed: 11 SEP 2003
19 AUG 2003 Paper No. 22
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re First Principles, Inc.1
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Serial No. 75/782,740
_______
Joseph J. Christian of Schmeiser, Olsen & Watts for First
Principles, Inc.
Michael E. Bodson, Trademark Examining Attorney, Law Office
110 (Chris A. F. Pedersen, Managing Attorney).
_______
Before Cissel, Hairston, and Drost, Administrative
Trademark Judges.
Opinion by Drost, Administrative Trademark Judge:
On August 20, 1999, an application that was eventually
assigned to First Principles, Inc. (applicant) was filed to
register the mark ESP (in typed form) on the Principal
Register for services ultimately identified as “conducting
classes, seminars, and individualized instruction in the
field of the psychological methodologies of learning and
1 The application was originally filed by Executive Success
Programs, Inc. In an assignment recorded at Reel 2684, Frame
0243, the application was assigned to First Principles, Inc.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 75/782,740
2
facilitating how to develop the psychological habits for
success therefrom; distribution of course materials in
connection therewith” in International Class 41.2 See
Applicant’s Response dated March 21, 2001.3
The examining attorney refused to register the mark
under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), because of a registration4 of the mark ESP (in
typed form) for “educational services, namely, providing
instructions to improve social skills, personal
presentation and communication” in International Class 41.
After the examining attorney made the refusal final,
this appeal followed. An oral hearing was held on August
19, 2003.
We affirm.
2 The application (Serial No. 75/782,740) is based on applicant’s
claim of a date of first use and a date of first use in commerce
of August 31, 1998.
3 We note that in its appeal brief (page 1), applicant refers to
its services as they were previously identified, i.e., “classes,
seminars and individualized instruction in the field of
psychological basis of learning; distribution of course materials
therewith.” See Applicant’s Response dated July 19, 2000 at 1.
At oral argument, neither applicant nor the examining attorney
indicated that the identification of services was an issue or
that the identification would change the outcome of the case.
Indeed, the current identification simply uses the term
psychological “methodologies” and adds the phrases or terms
“facilitating how to develop the psychological habits of success
therefrom,” “conducting,” and “in connection.” The same refusal
was made regardless of the identification of services.
Therefore, we will refer to the services as applicant last
amended them.
4 Registration No. 2,163,935 issued on June 9, 1998.
Ser No. 75/782,740
3
Determining whether there is a likelihood of confusion
requires application of the factors set forth 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); 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 and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
Regarding the similarities of the marks, it is clear
that the marks are identical. Both marks are for the
identical term, “ESP,” in typed form.
We now consider whether the services of the parties
are related. We must consider the services as they are
identified in the application and registration.5 In re
Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d 1531, 1534
(Fed. Cir. 1997) (punctuation in original), quoting,
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811
5 As we indicated previously, we will use applicant’s most recent
amended identification of services.
Ser No. 75/782,740
4
F.2d 1490, 1 USPQ2d 1813, 1816 (Fed. Cir. 1987)
(“’Likelihood of confusion must be determined based on an
analysis of the mark applied to the … services recited in
applicant’s application vis-à-vis the … services recited in
[a] … registration, rather than what the evidence shows the
… services to be’”). See also Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) (“The authority is legion that
the question of registrability of an applicant’s mark must
be decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed”).
“In order to find that there is a likelihood of
confusion, it is not necessary that the goods or services
on or in connection with which the marks are used be
identical or even competitive. It is enough if there is a
relationship between them such that persons encountering
them under their respective marks are likely to assume that
they originate at the same source or that there is some
association between their sources.” McDonald's Corp. v.
McKinley, 13 USPQ2d 1895, 1898 (TTAB 1989). Furthermore,
when both parties are using the identical designation, “the
Ser No. 75/782,740
5
relationship between the goods on which the parties use
their marks need not be as great or as close as in the
situation where the marks are not identical or strikingly
similar.” Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ
70, 78 (TTAB 1981). See also In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993) (“[E]ven when
goods or services are not competitive or intrinsically
related, the use of identical marks can lead to an
assumption that there is a common source”).
In this case, registrant’s educational services
involve providing instruction to improve social skills,
personal presentation, and communication. Applicant’s
services involve providing instruction in the psychological
methodologies of learning. A review of applicant’s
brochure includes a checklist “of skills you need to
improve or develop.” Among the list are such skills as
communication, developing relationships, public speaking,
team building, and rapport. The brochure maintains that
these “are just some of the skills you will learn to
develop at The Executive Success Programs Inc.”
Applicant’s services clearly include instruction in the
areas of social skills, public speaking, and communication,
and thus, there is at the very least some overlap between
applicant’s and registrant’s services.
Ser No. 75/782,740
6
Applicant argues that the services are different
because registrant’s classes are “a one-day seminar
teaching social appearance and presentation. Appellant’s
courses do not teach [how to] dress for success or what to
say at cocktail parties, etc. The Appellant’s services are
a plurality of interactive modules, related to a myriad of
topics, taught over several days, if not months and years.”
Applicant’s Brief at 5. Similarly, applicant also argues
that the channels of trade are different. The problem with
applicant’s arguments is that registrant’s services are not
limited in the way applicant suggests and even if
registrant were currently limiting its services in this
manner, nothing prevents registrant from changing the
length or style of its educational services or its channels
of trade. As discussed previously, we must consider
registrant’s services as they are described in the
registration. In addition, we cannot read limitations into
these services even if there was evidence of record on this
point. 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.”) Because applicant’s
Ser No. 75/782,740
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services include providing instructions in communication,
public speaking, relationships, team building, and rapport,
these services must be considered to be closely related, if
not virtually identical, to registrant’s instructions in
the fields of communication, personal presentation, and
social skills. There is also no basis for finding that the
channels of trade for the identified services are
different.
We also note that the examining attorney has included
copies of registrations and Lexis/Nexis printouts that are
also some evidence that personal growth and development
services (which would be similar to the services
applicant’s brochure indicates applicant is providing) and
educational services in the field of communication skills
are related. See, e.g., Bangor Daily News, September 4,
1998 (Personal development series featuring a communication
workshop) and Registration Nos. 2,116,906; 1,997,745; and
1,920,104.6
Having found that the marks are identical and the
services are closely related, if not overlapping, we now
address applicant’s remaining arguments. Applicant argues
that the “purchase of the Applicant’s services is a
6 In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988).
Ser No. 75/782,740
8
sophisticated, expensive purchase made by a highly
discriminating purchaser.” Applicant’s Brief at 9. While
there is little evidence on this point, we cannot agree
that, even if the purchasers are sophisticated and the
services expensive, this factor would overcome the
likelihood of confusion when the identical mark is used on
overlapping or virtually identical services. In re Hester
Industries, Inc., 231 USPQ 881, 883 (TTAB 1986) (“While we
do not doubt that these institutional purchasing agents are
for the most part sophisticated buyers, even sophisticated
purchasers are not immune from confusion as to source
where, as here, substantially identical marks are applied
to related products”); In re Total Quality Group Inc., 51
USPQ2d 1474, 1477 (TTAB 1999) (“We recognize applicant's
attorney's point that its software is expensive and that
purchasers of it are likely to be sophisticated. Suffice
it to say that no evidence in support of these assertions
was submitted. In any event, even careful purchasers are
not immune from source confusion”).
Applicant also makes two final arguments. The first
is that there is no evidence that the registered mark is
famous and the second is that there is no evidence of any
actual confusion involving the marks. Neither argument is
persuasive. The absence of evidence of fame is hardly
Ser No. 75/782,740
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significant. See Majestic Distilling, 65 USPQ2d at 1205
(citation omitted) (“Although we have previously held that
the fame of a registered mark is relevant to likelihood of
confusion, we decline to establish the converse rule that
likelihood of confusion is precluded by a registered mark’s
not being famous”). Regarding the lack of actual
confusion, we note that there is little, if any, evidence
of the extent of use by applicant of its trademark, and, of
course, we have not had an opportunity to hear from the
registrant in this ex parte proceeding. Moreover, the
“lack of evidence of actual confusion carries little
weight.” Majestic Distilling, 65 USPQ2d at 1205.
While we have considered applicant’s arguments to the
contrary, we are convinced that there is a likelihood of
confusion when applicant and registrant use the identical
mark ESP on closely related services.
Decision: The refusal to register applicant’s mark
under Section 2(d) is affirmed.