Latin Vox Incorporated

Trademark Trial and Appeal BoardFeb 22, 2012

No. 77784815 (T.T.A.B. Feb. 22, 2012)

Mailed: February 22, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Latin Vox Incorporated ________ Serial No. 77784815 _______ Molly B. Markley of Young Basile Hanlon & MacFarlane P.C. for Latin Vox Incorporated. Thomas M. Manor, Trademark Examining Attorney, Law Office 110 (Chris A.F. Pedersen, Managing Attorney). _______ Before Grendel, Holtzman and Zervas, Administrative Trademark Judges. Opinion by Zervas, Administrative Trademark Judge: Latin Vox Incorporated (“applicant”) filed, on July 20, 2009, an application to register on the Principal Register the mark MULTIINFLUENTIALS (in standard character form) for services amended to “business networking services” in International Class 35. The application seeks registration pursuant to Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Ser No. 77784815 2 Registration has been finally refused under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), in view of the following five previously registered marks for the identified services and goods: ● Registration No. 3064771 for the mark NOP WORLD INFLUENTIALS (“an illustration drawing with word(s)/letter(s)/number(s) in stylized form”) for “market research services; marketing and advertising consultation; business consultation; business research” in International Class 35; ● Registration No. 3278302 for the mark INFLUENTIALS (in standard characters) for “market research services, marketing and advertising consultation, business consultation, business research, conducting public opinion polls, statistical research and consultation” in International Class 35; ● Registration No. 3379880 for the mark INFLUENTIALS (in standard characters) for “books and periodicals in the fields of market research, marketing and advertising consultation, business consultation, business research, opinion polls, statistical research and consultation” in International Class 16; and ● Registration No. 3506510 for the mark CATEGORY INFLUENTIALS and Registration No. 3509986 for the mark GLOBAL INFLUENTIALS, both in standard character form and both for “market research services, conducting business and market research surveys, conducting marketing studies, marketing and advertising consultation, business consultation, business research, conducting public opinion polls, statistical research and consultation” in International Class 35. Registration No. 3064771 is owned by GFK US Holdings, Inc. and the remaining registrations are owned by GFK Custom Research, LLC. The examining attorney states that the Ser No. 77784815 3 registrations are commonly-owned, and applicant has not contested this statement. Hence, we consider the registrations to be commonly-owned. Applicant appealed the final refusal of its application. Both applicant and the examining attorney filed briefs. As discussed below, the refusal to register is affirmed. Our determination of the examining attorney's refusal to register the mark under Section 2(d) of the Trademark Act 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 begin with Registration No. 3278302 for the mark INFLUENTIALS. If there is a likelihood of confusion with the mark of this registration, then we need not consider Ser No. 77784815 4 the examining attorney’s refusals as they pertain to the remaining four registrations. The first du Pont factor we consider is the similarity and dissimilarity of applicant's and registrant’s services. It is well settled that the services need not be identical or even competitive in order to support a finding of likelihood of confusion. Rather, it is sufficient that the services are related in some manner or that the circumstances surrounding their marketing are such that they would be likely to be encountered by the same persons in situations that would 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 providers of the services. See In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978). The examining attorney maintains, inter alia, that “registrant’s broader market research and advertising goods and services, etc., necessarily encompass the services of the Applicant, and the other [services] which do not directly encompass the Applicant’s services are very closely commercially related thereto.” Brief at unnumbered p. 8. We do not agree that “marketing and advertising Ser No. 77784815 5 consultation,” as stated in registrant’s identification, encompasses applicant’s “business networking services.”1 One pertains to the rendering of advice, or consultation, regarding the marketing or advertisement of a good or service and the other pertains to arranging and conducting business networking services. However, we do agree that there is a commercial relationship between “marketing consultation” and applicant’s services. First, “marketing consultation” in registrant’s identification includes consultation on how to market goods and services through business networking. Second, corporate entities or individuals operating a business would likely use “business networking services” and “marketing consultation” services concurrently to promote their goods or services; both services have the same objective – promotion of goods or services. The person or entity offering a good or service would not only seek assistance in advertising the good or service, such person or entity would also network to make direct contact with potential purchasers of the service. Thus, those offering marketing consultation services and business networking services would, in most instances, 1 Of the services listed in the registration, “marketing and advertising consultation” is most similar to applicant’s services. Ser No. 77784815 6 direct their promotional efforts to the same individuals, particularly with respect to small businesses.2 Hence, the services are such that they would be likely to be encountered by the same persons in situations that would give rise, because of the marks used thereon (see discussion, infra), to a mistaken belief that there is an association between the service providers. In addition, the examining attorney made several third-party registrations of record to demonstrate that applicant’s services and one or more of registrant’s services (he did not specify which of registrant’s services) are of a type which may emanate from a single source. 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 services are of a type which may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). Most of the third-party registrations do not refer to applicant’s services as presently identified in the application; the examining attorney submitted the registrations before applicant amended its recitation of 2 Applicant maintains at p. 6 of its brief that “[d]ue to the differences in the type of service offered, the services are marketed through different channels of trade and would not come to the attention of the same type of purchaser,” but offers no evidence in support of its contention. Ser No. 77784815 7 services to recite only one service and did not supplement his evidence thereafter. Also, the examining attorney did not identify in his brief which third-party registrations he was relying on to establish a relationship between the services, as amended, and many of the third-party registrations recite numerous services. It is not apparent to us whether he believes certain services encompass business networking services, and if so, what registrations he is relying on. Thus, we consider as relevant only those registrations that specifically mention networking services and those services listed in the cited registration – only four such registrations do so, namely Registration Nos. 3101933, 3203041, 3362226 and 3645682. These four registrations support our finding, supra, of a commercial relationship between the services. The du Pont factor regarding the similarity of the services is resolved in favor of finding a likelihood of confusion. Turning then to the similarity and dissimilarity of the marks, our focus is on whether the marks are similar in sound, appearance, meaning, and commercial impression. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). Ser No. 77784815 8 Applicant's mark is a combination of the prefix MULTI and the word INFLUENTIALS; even with the addition of MULTI at the beginning of the mark, INFLUENTIALS is still easily recognized in the mark. The marks hence are similar in sound and appearance. As for the meaning of the marks, the entry from the online edition of Merriam-Webster’s Dictionary, accessed at merriam-webster.com, identifies “multi-” as a “combining form” and defines “multi-” as “many : multiple : much.”3 “Influentials” in applicant’s mark has the same meaning “influentials” has in registrant’s mark; “multi-” merely indicates multiple or many “influentials.” Thus, the marks have similar meanings. As for the commercial impression of the marks, because the prefix “multi-” means “many,” and the mark may be perceived as meaning “many influentials,” with applicant not offering any defined meaning, the commercial impressions of the marks are similar. We therefore resolve the du Pont factor involving the similarity of the marks in favor of finding a likelihood of confusion. 3 We take judicial notice of this definition of “multi-.” The Board may take judicial notice of dictionary definitions, including online dictionaries which exist in printed format. See In re CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002). See also University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Ser No. 77784815 9 Applicant mentions in its brief that it argued in response to an Office action that “the common portion of the mark ‘FLUENTIALS’ is weak because it is relatively descriptive in connection with marketing and advertising ….” Brief at pp. 2 – 3. (Actually, the common portion of the marks is “INFLUENTIALS.”) In support, applicant made of record three registrations and one application. The application has no probative value, see In re Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002), and the three third-party registrations are for marks that have a different commercial impression than that of registrant’s mark. In conclusion, because of the similarity in the marks and the commercial relationship between the services, we find that purchasers familiar with registrant's services offered under the mark INFLUENTIALS in Registration No. 3278302 would be likely to believe, upon encountering applicant's mark MULTIINFLUENTIALS for the services recited in its application that they originate with or are somehow associated with the same entity. Decision: The refusal to register under Section 2(d) of the Trademark Act is affirmed.