JB Knowledge Technologies, Inc.

Trademark Trial and Appeal Board

May 5, 2016

No. 86359366 (T.T.A.B. May. 5, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: May 5, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re JB Knowledge Technologies, Inc.
_____

Serial No. 86359366
_____

Leslie Wm. Adams and Benjamin E. Feltner for JB Knowledge Technologies, Inc.

Fred Carl III, Trademark Examining Attorney, Law Office 108,
Andrew Lawrence, Managing Attorney.
_____

Before Quinn, Zervas and Taylor,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
JB Knowledge Technologies, Inc. (“Applicant”) seeks registration on the Principal
Register of the mark SMARTBIDNET (in standard characters) for:
Providing on-line non-downloadable software for
submission of and communication regarding construction
bids, namely, communicating bids among owners,
contractors, engineers, specialist, consultants, tradesman
and bid requesters; providing technical information
updates of industrial process control computer software via
the global computer network; providing temporary use of
non-downloadable computer software for preparing
invoices over computer networks, intranets and the
internet; providing temporary use of non-downloadable
computer software for tracking documents over computer
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networks, intranets and the internet; providing use of
online non-downloadable software for submission of and
communicating regarding bids, namely, communicating
bids among owners, contractors, engineers, specialists,
consultants, tradesman and bid requesters; technical
support services, namely, troubleshooting of computer
software problems (in International Class 42).1

The Trademark Examining Attorney refused registration 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 Applicant’s services, so resembles the previously registered
mark BIDNET (in typed form) for “business information services, namely, providing
access to bid proposals and procurement information on government and business
contracts via a global information network” (in International Class 35)2 as to be likely
to cause confusion.3
When the Examining Attorney made the refusal final, Applicant appealed and
requested reconsideration. When the request for reconsideration was denied, the
appeal resumed. Applicant and the Examining Attorney filed briefs.
We affirm the refusal to register.

1 Application Serial No. 86359366, filed August 6, 2014 under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), alleging first use anywhere and first use in commerce on April 1,
2006.
2 Registration No. 2143815, issued March 17, 1998; renewed. Prior to November 2, 2003,
“standard character” drawings were known as “typed” drawings. A typed mark is the legal
equivalent of a standard character mark. TMEP § 807.03(i) (2016).
3 The Examining Attorney also issued a final refusal based on Applicant’s failure to comply
with a requirement related to the recitation of services. The recitation included a redundancy
(“providing temporary temporary use of non-downloadable computer software for…”) that
required correction. Applicant, in its reply brief, agreed with the necessary correction to cure
the error and consented to a remand, if necessary. A remand is not required to correct this
obvious error. Accordingly, the recitation of services is deemed amended to remove the
redundancy.
Application Serial No. 86359366

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At the outset Applicant highlights an equitable factor, namely that it owned the
now-cancelled Registration No. 3338716 for the mark SMARTBIDNET and design
for the same services as recited in the present application; the registration was
cancelled on June 27, 2014 because Applicant failed to file an acceptable declaration
of continued use under Section 8, 15 U.S.C. § 1058. Applicant further highlights the
fact that Registrant filed a letter of protest with the Office, and that the Examining
Attorney subsequently issued the Section 2(d) refusal. As to the marks, Applicant
asserts that it owns a family of SMART marks, and points out distinguishing features
when the marks at issue herein are compared as actually used. Applicant also
contends that the services, trade channels and purchasers are different, with
Applicant’s services being rendered in the construction industry whereas Registrant’s
services pertain to government contracts. Further, according to Applicant, purchasers
of the respective services are experienced professionals, and no actual confusion has
occurred despite nine years of contemporaneous use of the marks. In support of its
arguments, Applicant submitted screenshots from its website and Registrant’s
website; and copies of Applicant’s other marks which it asserts comprise a family of
SMART marks.
The Examining Attorney maintains that the marks are similar, with Applicant’s
adoption of the registered mark in its entirety and prefacing it with the word SMART.
According to the Examining Attorney, the services are related because both involve a
bidding process. Further, the Examining Attorney is not persuaded by Applicant’s
reliance on its cancelled registration. In support of the refusal the Examining
Application Serial No. 86359366

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Attorney introduced excerpts from Applicant’s website, as well as the websites of
third parties; and copies of third-party registrations.
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. In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the similarities between the services. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
With respect to the first du Pont factor dealing with the similarity of the marks,
we must compare the marks BIDNET and SMARTBIDNET in their entireties as to
appearance, sound, connotation and commercial impression. Palm Bay Imports, Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005), quoting In re E. I. du Pont de Nemours & Co., 177 USPQ
at 567. “The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted).
The Examining Attorney argues that “the word SMART, used as a prefix in
Applicant’s mark, is generally understood to mean that the services have computer
processing component that is an enhancement over other similar services.” (9
TTABVUE 5). Although it would have been helpful if a dictionary definition or other
Application Serial No. 86359366

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probative evidence had been submitted in support of this proposition, the Board may
take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C.
Gourmet Food Imps. Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format
or have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB
2006). The word “smart” means, in pertinent part, “operating by automation;
intelligent.” (www.merriam-webster.com). Thus, the mark indicates that the services
are intelligent or highly automated for enhanced operations. See, e.g., In re Cannon
Safe, Inc., 116 USPQ2d 1348, 1349-50 (TTAB 2015); In re Finisar Corp., 78 USPQ2d
1618, 1621 (TTAB 2006), aff'd per curiam, 223 Fed. App'x 984 (Fed. Cir. 2007) (the
term “smart” “tells the consumer that the product is highly automated and capable
of computing information”); In re Cryomedical Sciences, Inc., 32 USPQ2d 1377, 1378
(TTAB 1994) (“It is undeniable that computers have become pervasive in American
daily life. The ‘computer’ meaning of the term ‘smart,’ as is the case with many
‘computer’ words, is making its way into the general language.”).
The marks look and sound alike to the extent that both share the common portion
BIDNET. Further, this common portion results in the marks’ having similar
meanings. Given these similarities, with the only difference being the highly
suggestive or descriptive term SMART in Applicant’s mark, the marks in their
entireties engender overall commercial impressions that are similar. Likelihood of
confusion is not necessarily avoided between two otherwise confusingly similar marks
merely by adding a term that is descriptive or suggestive of the services. See, e.g., In
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re Mighty Leaf Tea, 601 F.3d 1342, 1347-48, 94 USPQ2d 1257, 1260-61 (Fed. Cir.
2010) (affirming Board’s finding that applicant’s mark, ML, is likely to be perceived
as a shortened version of registrant's mark, ML MARK LEES (stylized), when used
on the same or closely related skin-care products); In re Chatam Int’l Inc., 380 F.3d
1340, 1343, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) (“Viewed in their entireties with
non-dominant features appropriately discounted, the marks [GASPAR’S ALE for beer
and ale and JOSE GASPAR GOLD for tequila] become nearly identical.”); Hewlett-
Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1266, 62 USPQ2d 1001, 1004 (Fed.
Cir. 2002) (finding that, even though applicant’s mark PACKARD TECHNOLOGIES
(with “TECHNOLOGIES” disclaimed) does not incorporate every feature of opposer’s
HEWLETT PACKARD marks, a similar overall commercial impression is created);
In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (holding
VANTAGE TITAN for MRI diagnostic apparatus, and TITAN for medical ultrasound
device, likely to cause confusion, noting that the marks are more similar than they
are different and that the addition of applicant’s “product mark,” VANTAGE, to the
registered mark would not avoid confusion); In re El Torito Rests. Inc., 9 USPQ2d
2002 (TTAB 1988) (holding MACHO COMBOS (with “COMBOS” disclaimed), and
MACHO (stylized), both for food items as a part of restaurant services, likely to cause
confusion). Purchasers familiar with Registrant’s BIDNET mark are likely to
perceive Applicant’s mark SMARTBIDNET as a brand extension, or a new line of
enhanced and improved BIDNET services emanating from Registrant, or simply a
Application Serial No. 86359366

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variation of Registrant’s mark. In any of these situations, purchasers are likely to
believe that Applicant’s mark indicates a connection or association with Registrant.
In an attempt to distinguish the marks, Applicant relies upon Registrant’s actual
use of its mark, that is, in conjunction with the phrase “Grow Your Government
Business” and a picture of a capitol-looking government building. Applicant also
relies upon screenshots of both Applicant’s and Registrant’s websites, arguing that
the marks as actually used are “completely different.” (7 TTABVUE 4). However, the
Board does not look to extrinsic evidence of actual use to distinguish between two
marks inasmuch as actual use may be changed at any time. We do not compare the
marks as actually used, but rather, as indicated above, as depicted in the application
and the cited registration. None of the features appearing with the marks as actually
used is part of either of the marks at issue.
Accordingly, the first du Pont factor weighs in favor of a finding of likelihood of
confusion.
As to the second du Pont factor regarding the similarity of the services, “it is not
necessary that the products [or services] of the parties be similar or even competitive
to support a finding of likelihood of confusion.” Coach Servs. Inc. v. Triumph Learning
LLC, 101 USPQ2d at 1722, citing 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724
(TTAB 2007). Instead, likelihood of confusion can be found “if the respective products
[or services] are related in some manner and/or if the circumstances surrounding
their marketing are such that they could give rise to the mistaken belief that they
emanate from the same source.” Id. The issue here, of course, is not whether
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purchasers would confuse the services, but rather whether there is a likelihood of
confusion as to the source of these services. L’Oreal S.A. v. Marcon, 102 USPQ2d
1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830 (TTAB 1984). See Recot Inc.
v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) "[E]ven if the
goods in question are different from, and thus not related to, one another in kind, the
same goods can be related in the mind of the consuming public as to the origin of the
goods. It is this sense of relatedness that matters in the likelihood of confusion
analysis.").
We must look to the services as identified in the application and the cited
registration.4 See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014), quoting Octocom Sys., Inc. v. Houston
Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re
Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). In this regard we compare
Registrant’s “business information services, namely, providing access to bid proposals
and procurement information on government and business contracts via a global
information network” with Applicant’s “providing use of online non-downloadable
software for submission of and communicating regarding bids, namely,
communicating bids among owners, contractors, engineers, specialists, consultants,
tradesman and bid requesters,” which we view to be Applicant’s services that are
closest to Registrant’s services. Likelihood of confusion must be found if there is likely

4 The difference in classification of the respective services is irrelevant to our likelihood of
confusion analysis. Jean Patou Inc. v. Theon, Inc., 9 F.3d 971, 29 USPQ2d 1771, 1774 (Fed.
Cir. 1993).

Application Serial No. 86359366

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to be confusion with respect to any item that comes within the recitation of services
in the application and cited registration. See Tuxedo Monopoly, Inc. v. General Mills
Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc,
116 USPQ2d 1406, 1409 (TTAB 2015).
Applicant’s services referenced above are worded in fairly broad terms,
encompassing the provision of software for communicating bids among contractors,
engineers, specialists, consultants, and bid requesters; Registrant’s services
encompass providing access to bid proposals on business contracts via a global
information network. The respective services relate to providing business information
about bids; as worded, the respective bids could feature the same subject matter,
including construction bids and contracts. If the application or cited registration
describes goods or services broadly, and there is no limitation as to their nature, type,
channels of trade, or class of purchasers, it is presumed that the registration
encompasses all goods or services of the type described, that they move in all normal
channels of trade, and that they are available to all classes of purchasers. See, e.g.,
Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 1373, 107
USPQ2d 1167, 1173 (Fed. Cir. 2013). Similarly, there may be a likelihood of confusion
where an applicant identifies its goods or services so broadly that the identification
encompasses the goods or services identified in the registration of a similar mark.
See, e.g., In re Fiesta Palms LLC, 85 USPQ2d 1360 (TTAB 2007) (holding CLUB
PALMS MVP for casino services, and MVP for casino services offered to preferred
customers identified by special identification cards, likely to cause confusion).
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The third-party registrations submitted by the Examining Attorney are only
marginally probative. The evidence shows registration of the same mark by a single
entity for providing access to online software and providing online information, both
featuring the same types of information and applications. That is, some entities
provide both software services and information services about the same underlying
subject matter (see, e.g., Registration Nos. 4261865 and 4627433). In the present case,
Applicant provides online software services for communicating about bids, and
Registrant provides online business information services providing access to bid
proposals on business contracts.
With respect to trade channels, Applicant asserts that its services are rendered
in the construction industry, whereas Registrant’s services move in the government
contracts industry. As pointed out by the Examining Attorney, however, certain of
Applicant’s services, as referenced above, are not limited to the construction industry,
and Registrant’s services, as identified, provide access to bid proposals on “business
contracts.” Thus, based on the respective recitation of services, the trade channels are
similar, both being rendered in the business bidding and proposal field.
As for purchasers, Applicant contends that its customers desire to manage bid
proposals received from subcontractors, whereas Registrant’s customers desire to
submit bids to governmental agencies. As indicated above, however, the services, as
worded, are not as restrictive as Applicant contends. Rather, the respective services
may be rendered to the same or similar classes of purchasers, as for example, a small
business owner bidding on construction work to be done for a governmental entity.
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Accordingly, the du Pont factors regarding the similarity of the goods, trade
channels and purchasers weigh in favor of a finding of likelihood of confusion.
Applicant contends that purchasers of the respective services are sophisticated;
according to Applicant, its customers are general contractors in the construction
industry, and Registrant’s customers are entities offering goods and services to
government agencies. We initially note that Applicant failed to introduce any
evidence to support its contention regarding sophistication; for example, although
Applicant has referred to the cost of the services, there is no evidence to corroborate
counsel’s statements. Further, the respective services, as identified, do not
necessarily require a sophisticated purchase. As worded, the recitations are
presumed to include purchasers (e.g., small business owners) who may not be as
sophisticated as Applicant contends. However, even assuming that Applicant’s and
Registrant’s services may involve a careful purchase, it is settled that even
sophisticated purchasers are not immune from source confusion, especially in cases
such as the instant one involving similar marks and related services. See In re
Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), citing
Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ
110, 112 (CCPA 1970) (“Human memories even of discriminating purchasers...are not
infallible.”). See also In re Decombe, 9 USPQ2d 1812 (TTAB 1988). We find that the
similarity between the marks and the services rendered thereunder outweigh any
presumed sophisticated purchasing decision. See HRL Associates, Inc. v. Weiss
Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL
Application Serial No. 86359366

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Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods
and marks outweigh sophisticated purchasers, careful purchasing decision, and
expensive goods). In view thereof, we find this du Pont factor to be neutral.
Applicant’s argument that it already owns a family of SMART marks, and that
the present mark should be registered as another member of this family is not
persuasive. As the Board stated in In re Cynosure Inc., 90 USPQ2d 1644, 1645-46
(TTAB 2009):
We reject applicant's family of marks argument. In an ex
parte appeal, the focus of the likelihood-of-confusion
analysis must be the mark applicant seeks to register, not
other marks applicant may have used or registered. In
other words, a family-of-marks argument is not available
to an applicant seeking to overcome a likelihood-of-
confusion refusal. In re Lar Mor International, Inc., 221
USPQ 180 (TTAB 1983) (“In reaching the conclusion of no
likelihood of confusion, we have given no weight to
applicant's argument … that it owns a family of French-
word marks all beginning with the word ‘TRES’… .”); In re
Ald, Inc., 148 USPQ 520, 521 (TTAB 1965) (“Likewise, in
view of the specific prohibition of Section 2(d) of the
Statute, the fact that applicant may possess a ‘family’ of
marks characterized by the term ‘ALD’ is of no particular
significance herein if the mark for which applicant now
seeks registration, ‘ALDPRESS’, when considered in its
entirety, is confusingly similar to the previously registered
mark ‘ALLPREST’.” (footnote omitted)). See also In re U.S.
Plywood-Champion Papers, Inc., 175 USPQ 445, 446
(TTAB 1972) (“Applicant's ownership and registration of
marks other than the mark sought to be registered herein
is immaterial and irrelevant to the specific issue before us,
and cannot justify the registration of what could be a
confusingly similar mark.” (citations omitted)).

Applicant also states, through its counsel, that it is unaware of any actual
confusion with the cited mark despite nine years of contemporaneous use. Applicant’s
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assertion, in this ex parte proceeding, is entitled to little weight. See In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003)
(“uncorroborated statements of no known instances of actual confusion are of little
evidentiary value”). See also In re Bisset-Berman Corp., 476 F.2d 640, 177 USPQ 528,
529 (CCPA 1973) (stating that testimony of applicant’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); In re Binion, 93 USPQ2d
1531, 1536 (TTAB 2009); In re 1st USA Realty Professionals Inc., 84 USPQ2d 1581,
1588 (TTAB 2007); In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984).
In any event, the record is devoid of evidence relating to the extent of use of
Applicant’s and Registrants’ marks and, thus, whether there have been meaningful
opportunities for instances of actual confusion to have occurred in the marketplace.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir.
2000). Accordingly, the du Pont factor of the length of time during and conditions
under which there has been contemporaneous use of the marks without evidence of
actual confusion is considered neutral.
Applicant claims that it has priority of use over Registrant’s use. Applicant's
allegation constitutes an impermissible collateral attack on Registrant's registration.
Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b), provides that a certificate of
registration on the Principal Register shall be prima facie evidence of the validity of
the registration, of the registrant's ownership of the mark and of the registrant's
exclusive right to use the mark in connection with the goods or services identified in
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the certificate. During ex parte prosecution, including an ex parte appeal, an
applicant will not be heard on matters that constitute a collateral attack on the cited
registration (e.g., priority of use over a registrant's use of the cited registered mark).
In re Dixie Rests., 105 F.3d 1405, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997); In re
Jump Designs, LLC, 80 USPQ2d 1370, 1376 (TTAB 2006). See TMEP § 1207.01(d)(iv).
That brings us to Applicant’s equitable argument based on its ownership of the
now-cancelled Registration No. 3338716 for the mark SMARTBIDNET and design
for the same services as recited in the present application; according to Applicant,
Registrant did not file an opposition when the earlier application was published, and
Registrant otherwise has not objected to Applicant’s use going back several years.
The earlier registration was cancelled because Applicant failed to file an acceptable
declaration of continued use under Section 8. Applicant further highlights the fact it
was only after Registrant filed a letter of protest with the Office that the Examining
Attorney issued the Section 2(d) refusal. See generally TMEP § 1715.
An expired or cancelled registration is evidence of nothing but the fact that it once
issued. Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ 1816, 1819 n.4
(TTAB 2015), citing Sunnen Prods. Co. v. Sunex Int’l Inc., 1 USPQ2d 1744, 1747
(TTAB 1987). A cancelled registration is not entitled to any of the statutory
presumptions of Section 7(b) of the Trademark Act, including the presumption of an
exclusive right to use the mark. See In re Ginc UK Ltd., 90 USPQ2d 1472 (TTAB
2007); In re Hunter Publishing Co., 204 USPQ 957 (TTAB 1979) (cancellation
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“destroys the Section [7(b)] presumptions and makes the question of registrability ‘a
new ball game’ which must be predicated on current thought.”). Further,
The Board is not bound by the prior decisions of examining
attorneys in allowing the foregoing marks for registration.
It has been noted many times that each case must be
decided on its own facts. See In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even
if some prior registrations had some characteristics similar
to [applicant's] application, the PTO's allowance of such
prior registrations does not bind the Board or this court.”);
and In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828
F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987). In view
of the foregoing, we are obligated to assess the
registrability of applicant's mark on its own merits based
on the record in this application and not simply based on
the existence of other registrations. Thus, this cancelled
registration is only evidence that the registration issued
and does not afford applicant any legal presumptions
under § 7(b) of the Trademark Act. See Anderson, Clayton
and Co. v. Krier, 478 F.2d 1246, 178 USPQ 46, 47 (CCPA
1973) (statutory benefits of registration disappear when
the registration is cancelled); In re Brown-Forman Corp.,
81 USPQ2d 1284, 1286 n.3 (TTAB 2006); In re Phillips-Van
Heusen Corp., 63 USPQ2d 1047, 1048 n.2 (TTAB 2002).

In re Pedersen, 109 USPQ2d 1185, 1197 (TTAB 2013). See In re Davey Prods. Pty Ltd.,
92 USPQ2d 1198 (TTAB 2009).
For whatever reason, the Examining Attorney who examined Applicant's prior
application did not refuse registration under Section 2(d) based on Registrant’s
registration that is now cited against Applicant in its present application. However,
the Board is not bound by the decision of the prior Examining Attorney. We must
decide this case based on the evidence which is before us now. As the Board stated in
In re Thomas:
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Further, our determination of likelihood of confusion must
be based on the facts and record before us. We are not
bound by the previous examining attorney's determination
that applicant's mark was registrable, and we will not
compound the problem of the registration of a confusingly
similar mark by permitting such a mark to register again.

79 USPQ2d at 1028. See also In re Perez, 21 USPQ2d 1075, 1077 (TTAB 1991)
(Section 2(d) refusal affirmed even though the cited registration had not been cited
against applicant's previous registration, now expired, of the same mark for the same
goods; “[W]e are, of course, not bound by an Examining Attorney's prior
determination as to registrability.”). See generally In re Omega SA, 404 F.3d 1362, 83
USPQ2d 1541 (Fed. Cir. 2007). Even when one registration issues over the other and
both existed side-by-side for some period of time (in this case over six years), that is
just one factor “which is placed in the hopper with other matters which ordinarily are
considered in resolving the question of likelihood of confusion, but which is not in the
least determinative of said issue.” In re Trelleborgs Gummifabriks Aktiebolag, 189
USPQ 106, at 107 (TTAB 1975). In this case, we find that the factors of the similar
marks and similar services outweigh this point in our consideration of likelihood of
confusion as a whole. In re Kent-Gambore Corp., 59 USPQ2d 1373, 1377 (TTAB 2001).
Thus, under the miscellaneous thirteenth du Pont likelihood of confusion factor,
we have taken into account the facts pertaining to Applicant's cancelled prior
registration. We find that they weigh in Applicant's favor to a degree, but they are
not determinative.
We have carefully considered all of the evidence made of record pertaining to the
issue of likelihood of confusion, as well as all of the arguments related thereto,
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including any evidence and arguments not specifically discussed in this opinion. We
conclude that purchasers familiar with Registrant’s “business information services,
namely, providing access to bid proposals and procurement information on business
contracts via a global information network” rendered under the mark BIDNET would
be likely to mistakenly believe, upon encountering Applicant’s mark SMARTBIDNET
for “providing use of online non-downloadable software for submission of and
communicating regarding bids, namely, communicating bids among owners,
contractors, engineers, specialists, consultants, tradesman and bid requesters,” that
the services originated from or are associated with or sponsored by the same entity.
Decision: The refusal to register is affirmed.