GSI Commerce Solutions, Inc.

Trademark Trial and Appeal Board

Feb 1, 2006

No. 76370013 (T.T.A.B. Feb. 1, 2006)

Oral Hearing: October 13, 2005 Mailed: February 1, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re GSI Commerce Solutions, Inc.1
________

Serial No. 76370013
_______

Timothy D. Pecsenye of Blank Rome LLP for Global Sports
Interactive, Inc.

Tanya Amos, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).2
_______

Before Hohein, Rogers and Kuhlke, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

GSI Commerce Solutions, Inc. has filed an application
to register the mark GSI COMMERCE (in standard character
form with COMMERCE disclaimed) for services ultimately
identified as “internet consulting services, namely,

1 We note applicant’s change of name from GSI Sports Interactive,
Inc. to GSI Commerce Solutions, Inc. recorded at Reel/Frame
2568/0420. Inasmuch as the name change was recorded prior to
November 2, 2003, applicant is advised, that absent a request for
the name in the application to be changed, the application would
register in applicant’s former name. See TMEP §§502.02 and 504
(4th ed. 2005).

2 During the course of prosecution, this application was
reassigned to the above-noted examining attorney.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Serial No. 76370013
2
providing assistance to others in developing online retail
web sites, namely, providing assistance to others in
developing underlying technology platforms that enhance
their online retail web site efficiency and functionality"
in International Class 42.3
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used in connection with its recited
services, so resembles the registered marks GSINET (in
standard character form) for “providing multiple-user
access to a global computer information network” in
International Class 384 and

for “telecommunications services, namely, providing
multiple user dial-up and dedicated access to the internet”
in International Class 38,5 as to be likely to cause

3 Application Serial No. 76370013, filed February 12, 2002,
alleging a bona fide intent to use the mark in commerce.

4 Registration No. 2351372, issued May 23, 2000.

5 Registration No. 2719396, issued May 27, 2003.

Serial No. 76370013
3
confusion, mistake or deception. The cited registrations
are both owned by Granite State Long Distance, Inc.6
When the refusal was made final, applicant appealed
and filed a request for reconsideration. Upon the
examining attorney’s denial of the request for
reconsideration, the appeal was resumed. The examining
attorney and applicant have filed briefs, and an oral
hearing was held. We affirm the refusal to register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).

6 Granite State Long Distance, Inc. claims ownership of
Registration No. 2351372 in its Registration No. 2719396.
Serial No. 76370013
4
We turn first to a consideration of the services
identified in the application and the cited registrations.
It is well settled that goods or services need not be
similar or competitive in nature to support a finding of
likelihood of confusion. The question is not whether
purchasers can differentiate the goods or services
themselves, but rather whether purchasers are likely to be
confused as to the source of the goods or services. See
Helene Curtis Industries Inc. v. Suave Shoe Corp., 13
USPQ2d 1618 (TTAB 1989). Further, we must consider the
registrant’s services as they are described in the cited
registrations and we cannot read limitations into those
services. See Hewlett-Packard Co. v. Packard Press Inc.,
281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1987). Thus, if the cited
registrations describe services broadly, and there are no
limitations as to the nature, type, channels of trade or
class of purchasers, it is presumed that the registrations
encompass all services within the scope of the description,
that they move in all channels of trade normal for those
services, and that they are available to all classes of
purchasers for the described services. See In re Linkvest
S.A., 24 USPQ2d 1716 (TTAB 1992).
Serial No. 76370013
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The examining attorney has presented evidence of a
relationship between “developing underlying technology
platforms that enhance website efficiency and
functionality” and “providing multiple user access” through
third-party use-based registrations showing that entities
have registered a single mark for providing multiple user
access to the Internet on the one hand and creating
websites for others, providing consulting services in the
areas of electronic commerce, or web site hosting on the
other hand. See, for example, Reg. Nos. 2768750, 2736152,
2664445, and 2387469. Third-party registrations which
individually cover a number of different items, and which
are based on use in commerce, serve to suggest that the
listed goods or services are of a type which may emanate
from a single source. See In re Albert Trostel & Sons Co.,
29 USPQ2d 1783 (TTAB 1993). In addition, the examining
attorney submitted a printout of an excerpt from
registrant’s website wherein registrant offers both
Internet access, web hosting, website design and website
development all under its GSINET marks, and a printout of
an excerpt from applicant’s website wherein applicant
describes its services under the GSI COMMERCE mark as
website design and development. As applicant stated, while
the examining attorney “‘must consider any goods or
Serial No. 76370013
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services in the registrant’s normal fields of expansion,’
the ultimate test is ‘whether purchasers would believe the
product or service is within the registrant’s logical zone
of expansion.’” App. Br. p. 21 citing TMEP §1207.01(a)(v).
The third-party registrations and website printouts
sufficiently demonstrate that applicant’s services are
within the registrant’s “logical zone of expansion.”
Applicant’s counter argument and evidence of third-party
registrations with only Internet access services do not
effectively rebut the examining attorney’s evidence that
applicant’s and registrant’s services are provided under
one mark. The fact that many companies only provide one of
these services does not negate the fact that many other
companies provide both services and consumers are
accustomed to such identity of source. In fact, the
registrant’s website lends further support to that finding,
in that, although it only owns a registration for providing
Internet access, it apparently also provides website
development. Accordingly, based on the evidence of record,
we find that the recited services of applicant and
registrant are related.
Further, given the absence of any restrictions or
limitations in the trade channels in registrant’s
respective recitations of services, such services would
Serial No. 76370013
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encompass the applicant’s retail market and, because the
parties’ respective services are related, they are deemed
to be marketed in the same trade channels and to the same
classes of purchasers.7 Kangol Ltd. V. KangaROOS U.S.A.
Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992).
In view of the above, the du Pont factors of the
similarity of the services and the channels of trade favor
a finding of likelihood of confusion as to the cited
registrations.
We turn now to the first du Pont factor, i.e., whether
applicant’s mark and registrant’s marks are similar or
dissimilar when compared in their entireties in terms of
appearance, sound, connotation and commercial impression.
We make this determination in accordance with the following
principles. The test, under the first du Pont factor, 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 terms of their overall
commercial impression that confusion as to the source of
the services offered under the respective marks is likely

7 Applicant’s reliance on In re Shipp, 4 USPQ2d 1174 (TTAB 1987)
is misplaced. As the examining attorney noted, that case
involved goods and services that had significantly different
consumers in that “the applicant offered laundry and dry cleaning
services to the general public, whereas the cited registrant’s
goods were commercial dry cleaning machine filters, and a variety
Serial No. 76370013
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to result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of service marks. See Sealed Air Corp.
v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore,
although the marks at issue must be considered in their
entireties, it is well-settled that one feature of a mark
may be more significant than another, and it is not
improper to give more weight to this dominant feature in
determining the commercial impression created by the mark.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985). Finally, the meaning or connotation of a
mark must be determined in relationship to the named goods
or services. See In re Sears, Roebuck and Co., 2 USPQ2d
1312 (TTAB 1987).
We find that applicant’s mark is highly similar to the
cited marks. The respective marks all begin with the
letters GSI. The other wording in the marks is, at a
minimum, highly suggestive and not sufficient to
distinguish the GSI marks. The NET portion of registrant’s
marks suggests online or internet services. The dictionary
definitions submitted by applicant support this finding:
.net, Abbreviation: network provider ( in
Internet addresses);

of dry cleaning preparations offered to dry cleaning
establishment owners and operators.” Br. p. 11.
Serial No. 76370013
9

Net, The Internet.
The American Heritage Dictionary of the English Language:
Fourth Edition (2000).
Certainly, with regard to registrant’s standard
character mark, GSI is the dominant portion. Similarly,
the COMMERCE portion of applicant’s mark has been
disclaimed in response to the examining attorney’s
requirement and applicant concedes that the word COMMERCE
“indicates to consumers that the mark GSI COMMERCE is
representative of an aspect of retail activity.” App. Br.
p. 15. Although the appearance of applicant’s mark is
slightly different from the marks in the cited
registrations due to the other words therein, we do not
believe that this difference alone creates an overall
different commercial impression. In addition, the square
design in Registration No. 2719396, although it creates a
different appearance, is not so prominent as to outweigh
the impression made by the identical abbreviations GSI,
which is what consumers will use in referring to the
services. In re Dakin’s Miniatures Inc., 59 USPQ2d 1593
(TTAB 1999). We agree with the examining attorney that
GSI, the first term in the marks, “is most likely to be
remembered by consumers.” Br. p. 4.
Serial No. 76370013
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We are not persuaded by applicant’s argument that the
different elements COMMERCE and NET create a different
commercial impression “because electronic commerce and on-
line retail activity is very different from dial-up and
network connectivity, and consumers certainly know that”
(App. Br. p. 15), and that the examining attorney “failed
to appreciate that NET and COMMERCE, if used in a
descriptive sense, ultimately describe totally different
services and generate distinctly different commercial
impressions” (App. Br. p. 16). This argument, in fact,
supports a finding of likelihood of confusion. Having
stated that the words NET and COMMERCE are descriptive
terms (i.e., devoid of source identifying significance),
applicant is essentially left with the implication that it
is the identical common portion GSI which is the element of
the marks that has source identifying significance.
Applicant argues that the words NET and COMMERCE will
direct the consumer to the respective services which are
different. Although different, the services are related
(as previously explained) and the different descriptive
terms in the marks, in this circumstance, may serve to
increase the likelihood of confusion. A consumer,
accustomed to seeing Internet access providers also provide
website development and e-commerce consulting, could
Serial No. 76370013
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certainly be confused as to source when presented with
these marks, GSINET and GSI COMMERCE.
In addition, applicant’s argument that GSI is an
“abbreviation used across a wide spectrum of goods and
services, such that it is relatively commonplace” (App. Br.
p. 18) and thus “‘GSI” is not alone likely to be perceived
by the purchaser as distinguishing source” (App. Br. p.
19), is unavailing. First, the third-party applications
submitted by applicant have no probative value, other than
as evidence that the applications were filed. Second, the
seven third-party registrations submitted by applicant are
for completely different services and, therefore, are not
evidence that GSI is a weak term when used in connection
with the services in issue in this case. In re Dayco
Products-Eaglemotive Inc., 9 USPQ2d 1910, 1911 (TTAB 1988)
(third-party registrations can be useful “to demonstrate
the sense in which a term is used in ordinary parlance and
they can show that a particular term has been adopted by
those engaged in a certain field or industry and that said
term has less than arbitrary significance with respect to
certain goods or services”). Thus, the factor of the
similarity of the marks also favors a finding of likelihood
of confusion.
Serial No. 76370013
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Further, we do not accord significant weight to
applicant's contention, unsupported by any evidence, that
there have been no instances of actual confusion despite
contemporaneous use of the respective marks. The Federal
Circuit has addressed the question of the weight to be
given to an assertion of no actual confusion by an
applicant in an ex parte proceeding:
With regard to the seventh DuPont factor, we
agree with the Board that Majestic's
uncorroborated statements of no known instances
of actual confusion are of little evidentiary
value. See In re Bissett-Berman Corp., 476 F.2d
640, 642, 177 USPQ 528, 529 (CCPA 1973) (stating
that self-serving testimony of appellant's
corporate president's unawareness of instances of
actual confusion was not conclusive that actual
confusion did not exist or that there was no
likelihood of confusion). A showing of actual
confusion would of course be highly probative, if
not conclusive, of a high likelihood of
confusion. The opposite is not true, however.
The lack of evidence of actual confusion carries
little weight, [citation omitted], especially in
an ex parte context.

Majestic Distilling, 65 USPQ2d at 1205.

Accordingly, while examples of actual confusion may
point toward a finding of a likelihood of confusion, an
absence of such evidence is not as compelling in support of
a finding of no likelihood of confusion. Thus, we cannot
conclude from the lack of instances of actual confusion
that confusion is not likely to occur.
Serial No. 76370013
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Finally, with regard to applicant’s contention that
this application should be allowed in view of applicant’s
copending application that has been allowed for
publication, it is well settled that prior decisions of
other examining attorneys are not binding upon the Office
and the Board must decide each case on its own facts and
record. In re Merrill Lynch, Pierce, Fenner & Smith Inc.,
828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987); In re
International Taste Inc., 53 USPQ2d 1604 (TTAB 2000); In re
Consolidated Foods Corp., 200 USPQ 477 (TTAB 1978).8
In conclusion, we find that because the marks are
similar, the services are related, and the channels of
trade are the same or overlapping, confusion is likely
between applicant’s mark and the marks of the cited
registrations. Finally, to the extent that any of the
points argued by applicant may cast doubt on our ultimate
conclusion on the issue of likelihood of confusion, we
resolve that doubt, as we must, in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
463, 6 USPQ2d 1025 (Fed. Cir. 1988).

8 We further note that the mark and services in the allowed
application are different from those in the instant application,
which may bring up different issues, thus underscoring the
soundness of the case law that prior decisions by examining
attorneys in another application are not binding.
Serial No. 76370013
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Decision: The refusal to register under Section
2(d) of the Trademark Act is affirmed.