Icon Information Consultants, L.P.

Trademark Trial and Appeal Board

Sep 15, 2009

No. 77319921 (T.T.A.B. Sep. 15, 2009)

Mailed: September 15, 2009
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Icon Information Consultants, L.P.
________

Serial Nos. 77319921 and 77319929
_______

Kenneth A. Keeling of Keeling Patents & Trademarks LLC for
Icon Information Consultants, L.P.

Julie A. Watson, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Hairston, Rogers and Drost, Administrative Trademark
Judges.

Opinion by Hairston, Administrative Trademark Judge:

Applications were filed by Icon Information
Consultants, L.P. to register the marks ICON CONSULTANTS
(CONSULTANTS disclaimed)1 and ICON INFORMATION CONSULTANTS
(INFORMATION CONSULTANTS disclaimed)2, both in standard

1 Serial No. 77319921 was filed November 2, 2007 and alleges a
date of first use anywhere and in commerce of September 1998.
2 Serial No. 77319929 was filed November 2, 2007 and alleges a
date of first use anywhere of September 23, 1997 and a date of
first use in commerce of April 1998.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser Nos. 77319921 and 77319929
2
character form and for “employment recruiting, placement
and staffing services, namely, providing, either on a
permanent or temporary basis, employees, consultants,
contractors and subcontractors to third parties” in
International Class 35.
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
each of applicant’s marks, when applied to its services, so
resembles the mark LB ICON, which is registered for, inter
alia, “employment agencies and consultation in the field of
personnel and personnel affairs; job posting of temporary
deployment and subcontracting employment, including
recruitment and selection of personnel, also within the
frame of outplacement, particularly to the benefit of the
new media sector,”3 as to be likely to cause confusion,
mistake or deception.
When the refusals were made final, applicant appealed.
Applicant and the examining attorney have filed briefs.
Because the issue in each case is essentially the same, the
appeals have been treated in a single opinion.4

3 Registration No. 3311687 issued October 16, 2007. The
registration includes other goods and services, but the refusal
is based solely on the services recited above.
4 We also note that the record is essentially the same in each
case.
Ser Nos. 77319921 and 77319929
3
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion
issue. 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 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).
We first turn to a consideration of the du Pont factor
of the relatedness of the services. We begin by noting
that applicant concedes that the respective “services are
similar.” (Brief, p. 11). In fact, the services are
overlapping insofar as applicant’s employment recruiting,
placement and staffing services and registrant’s employment
agencies are concerned.
Further, in view of the overlapping nature of
applicant’s and registrant’s services, and given the
absence of any restrictions or limitations in either
applicant’s or registrant’s recitation of services, we must
Ser Nos. 77319921 and 77319929
4
presume that the respective services are offered in all
normal trade channels for such services and to all normal
classes of purchasers for such services. In re Elbaum, 211
USPQ 639 (TTAB 1981).
The du Pont factors of the relatedness of the
services, trade channels and purchasers weigh in favor of
finding a likelihood of confusion.
With respect to the du Pont factor of purchasing
conditions, applicant argues that the purchasers of its
services and registrant’s services are:
… typically business owners or business managers
that have an employment need and are discerning
when it comes to persons they will bring into
their service to fill their employment needs.…
Applicant asserts that due to the nature of the
services at issue consumers will be sophisticated
as to the various companies offering same, and
will have such contact with these companies in
comparing the services providers, overseeing the
candidates the services providers procure for the
consumers, and determining if the companies
provide them with employees and contractors that
are within the consumers’ standards that the
consumers will not be confused as to the source
of the marks at issue. (Brief, pp. 11-12)

Applicant’s argument, however, overlooks the fact that
employment recruiting, placement and staffing services and
employment agencies essentially have two groups of
consumers: 1) businesses looking to hire employees; and 2)
members of the general public looking for jobs. We note
that the examining attorney submitted a definition of
Ser Nos. 77319921 and 77319929
5
“employment agency” meaning an “organization that places
people in jobs: A commercial organization that finds jobs
for people or people for jobs.” (http://encarta.msn.com)
Although business owners and managers are likely to be at
least somewhat careful in selecting an employment
service/agency to assist them in finding persons for their
job openings, we cannot say that members of the general
public exercise anything more than ordinary care in
selecting an employment service/agency to assist them in
finding jobs. In any event, the fact that purchasers would
typically be knowledgeable “does not preclude their
mistaking one trademark for another” or demonstrate that
they otherwise would be entirely immune from confusion as
to source or sponsorship. Wincharger Corp. v. Rinco, Inc.,
297 F.2d 261, 132 USPQ 289, 292 (CCPA 1962). See also In
re Decombe, 9 USPQ2d 1812 (TTAB 1988); and In re Pellerin
Milnor Corp., 221 USPQ 558 (TTAB 1983).
The factor of purchasing conditions is, therefore,
neutral, as some consumers may be sophisticated in their
purchasing decisions, while others may not.
We turn next to the du Pont factor of whether
applicant’s marks ICON CONSULTANTS and ICON INFORMATION
CONSULTANTS, and the cited registered mark, LB ICON, are
similar or dissimilar, when compared in their entireties in
Ser Nos. 77319921 and 77319929
6
terms of appearance, sound, connotation and commercial
impression. The test under this 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 to result.
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, we must keep in mind that when
marks appear on virtually identical services, the degree of
similarity necessary to support a conclusion of likely
confusion declines. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed.
Cir. 1992).
Applicant argues that the respective marks differ in
that applicant’s marks contain the words CONSULTANTS and
INFORMATION CONSULTANTS, respectively, while registrant’s
mark contains the letters LB; that LB is the dominant
portion of the registrant’s mark; and that the respective
Ser Nos. 77319921 and 77319929
7
marks differ in the number of syllables. In terms of
connotation and overall commercial impression, applicant
argues as follows with respect to its marks:
In the ICON CONSULTANTS mark the element “ICON”
modifies “CONSULTANTS.” This modification gives
the commercial impression of “this is what
consultants should be like,” that is they are the
epitome or symbol of consultants.
(Serial No. 77319921 – Brief, p. 9)

In the ICON INFORMATION CONSULTANTS mark the
element “ICON” will be regarded as modifying the
phrase “INFORMATION CONSULTANTS.” This
modification gives the commercial impression of
“this is what consultants that provide
information should be like,” that is they are the
epitome or symbol of information consultants.
(Serial No. 77319929 – Brief, p. 9)

With respect to the cited mark, applicant argues that:
In the mind of today’s computer-savvy consumers
the positioning of the word “ICON” last in a
phrase conveys the concept of an easy means to
reach a goal. Because of this, the LB ICON mark
conveys the commercial impression of “click or
come here for easy access to the services of LB.”
(Brief, p. 9)

When applicant’s marks ICON CONSULTANTS and ICON
INFORMATION CONSULTANTS and registrant’s mark LB ICON are
considered in their entireties, giving appropriate weight
to the features thereof, we find that the marks are more
similar than dissimilar.
The term ICON is visually and aurally the most
significant portion of applicant’s and registrant’s marks.
Ser Nos. 77319921 and 77319929
8
Although the marks include other wording, it is the ICON
portion of each mark that conveys the strongest impression.
The disclaimed and descriptive terms in applicant’s marks,
CONSULTANTS and INFORMATION CONSULTANTS, are not ignored,
but the fact is that purchasers are more likely to rely on
the nondescriptive portion of the marks, that is, the word
ICON as an indication of source. See National Data Corp.,
supra at 751 (“That a particular feature is descriptive or
generic with respect to the involved goods or services is
one commonly accepted rationale for giving less weight to a
portion of a mark.”). Furthermore, the fact that
registrant’s mark begins with the letters LB is simply not
a sufficient basis on which to support a finding of no
likelihood of confusion.
With respect to the connotation and commercial
impression of the marks, based on the record in this case,
ICON appears in all three marks to be nothing other than an
arbitrary term. The term does not appear to have any
recognized meaning in relation to employment
services/agencies. Although applicant argues that its
marks and registrant’s mark have different connotations and
commercial impressions, there is no support for this
argument. Specifically, there is nothing in this record to
indicate that the term ICON, when appearing last in a
Ser Nos. 77319921 and 77319929
9
phrase, connotes “an easy means to reach a goal.” Thus,
applicant’s contention that registrant’s mark conveys the
commercial impression of “click or come here for easy
access to the services of LB” is unfounded. Furthermore,
there is no evidence as to how applicant has used its marks
or promoted its services. Thus, applicant’s contention
that consumers will view the term ICON in its marks as
suggesting that applicant’s services are the “epitome” of
these types of services is entirely speculative. Even if,
however, we were to accept applicant’s contentions in this
regard, there is no reason the term ICON could not have the
same connotation in applicant’s and registrant’s marks. In
short, we are unable to conclude, based on applicant’s mere
argument, that its marks and registrant’s mark have
different connotations and commercial impressions.
We have also considered applicant’s argument that its
marks contain more words and, therefore, more syllables
than the registered mark. However, we are not persuaded by
this argument. As noted above, the test is not whether
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 to result. The focus
Ser Nos. 77319921 and 77319929
10
is on the recollection of the average purchaser, who
normally retains a general rather a specific impression of
trademarks. Overall, applicant’s marks and registrant’s
mark convey the same commercial impression.
To the extent that consumers note the differences
between applicant’s marks and registrant’s mark, they would
view applicant’s marks ICON CONSULTANTS and ICON
INFORMATION CONSULTANTS as simply variations of the
registered mark LB ICON, with all of them indicating a
single source of the services.
In sum, we find that applicant’s marks and the cited
registered mark are similar in terms of sound and
appearance. Furthermore, we find no significant
differences in the connotations and commercial impressions
of the respective marks that might otherwise make confusion
unlikely to result from use of the marks on overlapping
services. We find that the du Pont factor of the
similarity of the marks weighs in favor of finding a
likelihood of confusion.
In sum, we conclude that a likelihood of confusion
exists in view of the similarity of the respective marks,
and the overlapping services, trade channels and
purchasers. To the extent that we have any doubt about
this conclusion, we must resolve this doubt in favor of the
Ser Nos. 77319921 and 77319929
11
registrant. In re Chatam International Inc., 380 F.3d
1340, 71 USPQ2d 1944 (Fed. Cir. 2004); and In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed.
Cir. 1988).
Decision: The refusals to register in application
Serial Nos. 77319921 and 77319929 are affirmed.