Mirriad Limited

Trademark Trial and Appeal Board

Feb 13, 2012

No. 77531855 (T.T.A.B. Feb. 13, 2012)

Mailed:
February 13, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Mirriad Limited
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Serial No. 77531855
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Lynne M.J. Boisineau of McDermott, Will & Emery LLP for
Mirriad Limited.

Leslie L. Richards, Trademark Examining Attorney, Law
Office 106 (Mary I. Sparrow, Managing Attorney).
_______

Before Grendel, Taylor and Bergsman,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Mirriad Limited (“applicant”) filed an application on
the Principal Register for the mark MirriAd, in standard
character form, for the services set forth below, as
amended:
Computer software for use in producing
video advertising material, namely,
computer software for embedding visual
images in finished video recordings;
apparatus for recording, transmission
or reproduction of sound or images, all
for use in producing advertising
material; computer software for
presenting advertising content
containing embedded logos or
advertising images to advertising
commissioners and buyers; computer
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 77531855
2
software for assisting the advertising
commissioner or buyer to view, select
and reserve advertising space in the
finished video content; computer
software for the purpose of enabling
the advertising commissioner or buyer
to assess the potential effectiveness
and value of such embedded advertising;
computer software being information
databases for preparing client list and
advertising material; computer software
for analysising [sic] brand demographic
and geographical targets, budgets and
other media planning criteria, in Class
9;

Advertising services, namely, the
placement of the client's brand, logo,
branded goods or advertising commercial
into finished video content; placing
advertising for others; planning,
buying, negotiating advertising space;
advertising and advertisement services,
namely, allowing viewing and amending
of brand positioning and electronic
content; inserting advertising into
electronic content; embedding of
advertising material; evaluation of
advertising space for digitally
embedding images; information,
consultancy and advisory services
relating to all the aforesaid services,
in Class 35;

Brokerage of embedded images into
advertising space in finished video
content, in Class 36;

Digital enhancement of visual images,
including brand or advertiser logos,
for embedding in finished video
content, in Class 40; and

Design and development of computer
hardware and software, in Class 42.

Serial No. 77531855
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The examining attorney refused registration under
Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§ 1052(d), on the ground that applicant’s mark, when used
in connection with the identified goods and services, so
resembles the registered mark MIRIAD, in typed drawing
form, for the goods and services set forth below as to be
likely to cause confusion.1
Computer software in the field of
market research, which allows
monitoring, tracking, and analyzing
market research data, in Class 9; and

Market research services; market
analysis services; conducting marketing
studies, cost and/or price analysis
services; business management
consultation services, business
research and survey services; business
investigations services; market
research services, namely, tracking
customer behavior and perceptions,
tracking advertising, tracking
promotions, and tracking competitor
activities; providing statistical
information; trade information
services; opinion polling for business
or advertising purposes; data
processing analysis services, in Class
35.

Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the

1 Registration No. 2750675, issued August 12, 2003; Sections 8
and 15 affidavit accepted and acknowledged.

Serial No. 77531855
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probative 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, 567 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the goods.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
A. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

The marks are very similar:
MIRIAD vs. MirriAD
At the outset, we note that registrant’s mark is
registered in typed drawing form and applicant’s mark is in
standard character form; therefore, neither mark is limited
to any special form or style as displayed on or in
connection with the goods and services set forth in their
respective registration and application. When a mark is
presented in typed drawing form or standard character form,
the Board must consider all manners in which a party could
depict the mark. Citigroup Inc. v. Capital City Bank
Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir.
Serial No. 77531855
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2011); In re Cox Enterprises Inc., 82 USPQ2d 1040, 1043
(TTAB 2007), citing Phillips Petroleum Co. v. C.J. Webb,
Inc., 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971) (“we must
not be misled by considering [applicant’s] mark only in its
printed or typewritten form, with all the characters being
of equal height.”). Thus, registrant’s mark could be
displayed as MiriAD or applicant’s mark could be displayed
as MIRRIAD.
Furthermore, slight differences in the marks MIRIAD
and MirriAD do not create dissimilar marks. In re Great
Lakes Canning, Inc., 227 USPQ 483, 485 (TTAB 1985)
(“Moreover, although there are certain differences between
the [marks’ CAYNA and CANA] appearance, namely, the
inclusion of the letter ‘Y’ and the design feature in
applicant’s mark, there are also obvious similarities
between them. Considering the similarities between the
marks in sound and appearance, and taking into account the
normal fallibility of human memory over a period of time (a
factor that becomes important if a purchaser encounters one
of these products and some weeks, months, or even years
later comes across the other), we believe that the marks
create substantially similar commercial impressions”). See
also United States Mineral Products Co. v. GAF Corp., 197
USPQ 301, 306 (TTAB 1977) (“‘AFCO’ and ‘CAFCO,’ which
Serial No. 77531855
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differ only as to the letter ‘C’ in USM’s mark, are
substantially similar in appearance and sound”) and In re
Bear Brand Hosiery Co., 194 USPQ 444, 445 (TTAB 1977) (“The
mark of the applicant, ‘KIKS’ and the cited mark ‘KIKI’
differ only in the terminal letter of each mark. While
differing in sound, the marks are similar in appearance and
have a somewhat similar connotation”).
With respect to the sound of the marks, while there is
no correct pronunciation for a mark, it is likely that both
marks will be pronounced as “mir´ ē əd” (e.g., myriad).
Even if applicant’s mark is pronounced as “mir´ ē ad,” it
is still similar to “mir´ ē əd.”
Whether applicant’s mark is pronounced as “mir´ ē əd”
or “mir´ ē ad,” consumers are likely to think of the word
“myriad” which means “a very great or indefinitely great
number of persons or things.”2 Synonyms include countless,
boundless, infinite, and untold.3 Thus, the marks will have
a similar meaning and engender similar commercial
impressions.

2 The Random House Dictionary of the English Language
(Unabridged), p. 1272 (2nd ed. 1987). The Board may take judicial
notice of dictionary evidence. University of Notre Dame du Lac
v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
3 Id.
Serial No. 77531855
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In view of the foregoing, we find that the marks are
similar in terms of appearance, sound, meaning and
commercial impression.
B. The similarity or dissimilarity and nature of the
goods and services, channels of trade and classes of
consumers.

The question of likelihood of confusion is determined
based on the identification of goods and recitation of
services in the application and cited registration. In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4
(Fed. Cir. 1993); Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973)
(“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective
descriptions of goods”); and In re Jump Designs, LLC, 80
USPQ2d 1370, 1374 (TTAB 2006). 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”). Therefore, we may not read
Serial No. 77531855
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limitations into the identification of goods or recitation
of services. 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”).
In addition, the greater the degree of similarity
between the marks, the less similarity between the goods
and/or services is required to support a finding of
likelihood of confusion. Where as here, the marks are very
similar, there need be only a viable relationship between
the goods and services to find that a likelihood of
confusion exists. In re Opus One, Inc., 60 USPQ2d 1812,
1815 (TTAB 2001); In re Concordia International Forwarding
Corp., 222 USPQ 355, 356 (TTAB 1983).
1. Class 9
Applicant is seeking to register its mark for, inter
alia, “computer software for analysising [sic] brand
demographic and geographical targets, budgets and other
media planning criteria,” in Class 9.
The registrant has registered its mark for “computer
software in the field of market research, which allows
monitoring, tracking, and analyzing market research data,”
Serial No. 77531855
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in Class 9. During the prosecution of a third-party
registration, the registrant entered into a consent
agreement with the third party explaining that registrant’s
software “integrates all continuous tracking data captured
from, for example, brand awareness, customer satisfaction
and advertising campaigns into a single marketing
information database … The system is essentially a
marketing decision making tool for all types of information
collected over time allowing decision makers to get the
most out of their data.”4 Thus, registrant’s software is
used to analyze all types of marketing information,
including brand awareness, customer satisfaction and
advertising campaigns. Registrant’s software for
“monitoring, tracking and analyzing market research data”
encompasses applicant’s analyzing “brand demographic and
geographical targets, budgets and other media planning
criteria.” In view thereof, applicant’s Class 9
description of goods and registrant’s Class 9 description
of goods are, in part, legally identical.

4 Applicant’s June 9, 2010 Response. We are not using the
explanation of registrant’s services in the consent agreement to
expand or restrict registrant’s description of goods. We are
using it to understand the specific meaning of the description of
goods; in other words, to explain the purpose or function of
registrant’s software. See In re Trackmobile, 15 USPQ2d 1152,
1154 (TTAB 1990).

Serial No. 77531855
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Because the Class 9 software described in the
application and the cited registration are in part legally
identical, we must presume that the channels of trade and
classes of purchasers are the same. See Genesco Inc. v.
Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part
identical and in-part related nature of the parties’ goods,
and the lack of any restrictions in the identifications
thereof as to trade channels and purchasers, these clothing
items could be offered and sold to the same classes of
purchasers through the same channels of trade”); In re
Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994)
(“Because the goods are legally identical, they must be
presumed to travel in the same channels of trade, and be
sold to the same class of purchasers”).
Furthermore, because there are no limitations as to
channels of trade or classes of purchasers in the
registrant’s Class 9 “computer software in the field of
market research, which allows monitoring, tracking, and
analyzing market research data” or applicant’s Class 9
“computer software for analysising brand demographic and
geographical targets, budgets and other media planning
criteria,” we must presume that the software move in all
channels of trade normal for those goods, and that they are
available to all classes of purchasers for those goods.
Serial No. 77531855
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See In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
Because of the related nature of the software, we find that
the software moves in the same channels of trade and are
sold or licensed to the same classes of consumers.
2. Class 35
Applicant is seeking to register its mark for, inter
alia, “information, consultancy and advisory services
relating to” placing brands, logos, and goods into videos,
planning, buying, negotiating advertising space,
advertising for others, brand positioning, and evaluation
of advertising space for digitally embedding images.
Registrant has registered its mark for, inter alia, market
research and analysis services, conducting marketing
studies, tracking customer behavior and perceptions,
tracking advertising, and tracking promotions.
Registrant’s recitation of services is very broad and,
therefore, is similar to, if not identical to, applicant’s
services. For example, applicant’s “planning, buying,
negotiating advertising space” services are closely related
to registrant’s tracking advertising and tracking
promotions services because a company would want to track
(i.e., follow the progress of) the advertising and
promotions it planned and bought, and applicant’s
consultancy and advisory services relating to brand
Serial No. 77531855
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positioning is closely related to registrant’s market
research services. In any event, it is sufficient for
finding likelihood of confusion if the relatedness is
established for any item encompassed by the recitation of
services in the application. Tuxedo Monopoly, Inc. v.
General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988
(CCPA 1981).
As indicated above, we may not use extrinsic evidence
to limit or restrict applicant’s or registrant’s recitation
of services as applicant would have us do.5 In other words,
applicant’s recitation of services may not be limited to
“embed[ding] advertising into video content such as movies,
television, or video games.”6
As discussed above in connection with the Class 9
software, because there are no limitations as to channels
of trade or classes of purchasers in the registrant’s
marketing services or applicant’s “information, consultancy
and advisory services,” we must presume that the Class 35
services of both applicant and registrant move in all
channels of trade normal for those services, and that they
are available to all classes of purchasers for those
services. Because of the related nature of the services,

5 Applicant’s Brief, p. 11.
6 Applicant’s Brief, p. 12.
Serial No. 77531855
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we find that the services in Class 35 move in the same
channels of trade and are sold to the same classes of
consumers.
3. Classes 36, 40 and 42
There is no evidence in the record to show that
applicant’s services in Classes 36, 40 and 42 are related
to registrant’s goods in Class 9 and/or services in Class
35, that the respective goods and services move in the same
channels of trade, or that the respective goods and
services are sold to the same classes of consumers. In
fact, the examining attorney does not point us to any such
evidence that may be in the record or even argue that the
services in Classes 36, 40 and 42 are related to
registrant’s goods in Class 9 and/or services in Class 35.
C. Balancing the factors.
Because the marks are similar and the goods and
services in Classes 9 and 35 are related, if not in part
legally identical, and presumed to move in the same
channels of trade and are presumed to be sold to the same
classes of consumers, we find that applicant’s mark
MirriAD, for the goods and services set forth in Classes 9
and 35 of its application, so resembles the mark MIRIAD for
the goods and services set forth in Classes 9 and 35 of the
registration, as to be likely to cause confusion.
Serial No. 77531855
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On the other hand, because there is no evidence
regarding the relationship between applicant’s services in
Classes 36, 40 and 42 and the goods and services set forth
in the cited registration, we find that applicant’s mark
MirriAD, for the services set forth in those classes, is
not likely to cause confusion with the mark MIRIAD in
Classes 9 and 35.
Decision: The refusal to register is affirmed as to
the goods in Class 9 and the services in Class 35.
The refusal is reversed as to the services in Classes
36, 40, and 42.
The application will be forwarded for publication in
Classes 36, 40 and 42 in due course.