OnePoint Public & Private Solutions LLC

Trademark Trial and Appeal BoardSep 29, 2012

No. 77790842 (T.T.A.B. Sep. 29, 2012)

Mailed: September 29, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re OnePoint Public & Private Solutions LLC ________ Serial No. 77790842 _______ Daniel L. Fiore of Reger Rizzo & Darnall LLP for OnePoint Public & Private Solutions. Fred Carl III, Trademark Examining Attorney, Law Office 108 (Andrew Lawrence, Managing Attorney). _______ Before Holtzman, Taylor and Lykos, Administrative Trademark Judges. Opinion by Holtzman, Administrative Trademark Judge: An application has been filed by OnePoint Public & Private Solutions LLC (applicant) to register the mark ONEPOINT PUBLIC & PRIVATE SOLUTIONS, in standard characters, for services ultimately identified as "commercial lobbying services" in Class 35.1 1 Application Serial No. 77790842, filed July 28, 2009, based on an allegation of a bona fide intention to use the mark in commerce. The above identification was submitted by applicant in its "supplemental brief" and accepted by the examining attorney in his appeal brief. Accordingly, the examining attorney's requirement for an acceptable THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77790842 2 The trademark examining attorney has refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. Â§1052(d), on the ground that applicant's mark, when applied to applicant's services, so resembles the registered mark ONEPOINT in standard characters for the following services (in Class 35) as to be likely to cause confusion.2 Coordination, monitoring of and refinement of marketing campaigns using closed-loop campaign tracking and response management strategies and technology; providing information in the field of business planning via the internet; business marketing consulting services, namely, consulting services for product and service marketing, marketing campaign planning, strategy, implementation and management, outsourcing facilities and customer relationship management techniques, namely tracking of customer contact information, tracking of referral sources, and customer financial histories; business management and business consulting in the field of customer relationship management; marketing data collection; marketing data integration, marketing data management, marketing report generation, and systems for integrating marketing and customer data with other business and statistical marketing data; creating acquisition and loyalty strategies for customers utilizing competitive reviews, benchmarking, economic models and strategy development and implementing such strategies for others; developing strategies to profile and pinpoint potential customers, new opportunities and strategic business alliances using customer attributes, demographics, financial information, and lifestyle information; development of strategies to assist clients with strategic customer acquisition and knowledge, customer retention, marketing campaign identification of services is deemed satisfied, and the appeal on this issue is moot. 2 Registration No. 3113830, issued July 11, 2006. Serial No. 77790842 3 management and market knowledge and implementing such strategies for others; preparing targeted mailing lists, telemarketing lists and e-mail lists by adding customer attributes, demographics, financial information, lifestyle information; computerized database management; information analysis, namely performing market analysis using client databases in the field of modeling, scoring and analytics, marketing and solicitation and customer profiles and creating reports from such client databases; market analysis services in the nature of statistical analysis and sample design; preparation of statistical business reports; business consultation regarding customer profiling; data processing services, namely processing sales and promotional data; direct marketing campaign management, namely, marketing consulting services. When the refusal was made final, applicant appealed. Briefs have been filed.3 Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of confusion analysis, however, two key considerations are the similarities or dissimilarities between the marks and the similarities or dissimilarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). 3 The examining attorney's objection to the third-party websites referenced by applicant for the first time in its appeal brief is well taken. This evidence is untimely and will not be considered. See Trademark Rule 2.142(d). Nor will we consider applicant's unsupported arguments in its brief which are based on or relate to this untimely evidence. Serial No. 77790842 4 We turn first to a comparison of applicant's mark ONEPOINT PUBLIC AND PRIVATE SOLUTIONS with registrant's mark ONEPOINT, and a consideration of the marks in their entireties in terms of sound, appearance, meaning and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). While marks must be compared in their entireties, one feature of a mark may have more significance than another, and in such a case there is nothing improper in giving greater weight to the more significant feature. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). The term ONEPOINT is registrant's entire mark. The identical term ONEPOINT is aurally and visually a significant part of applicant's mark ONEPOINT PUBLIC & PRIVATE SOLUTIONS. ONEPOINT is the first part of applicant's mark that purchasers will see or hear when encountering the mark, and it is therefore more likely to have a greater impact on purchasers and be remembered by them. See Palm Bay, 73 USPQ2d at 1692-93 (The term VEUVE in the mark VEUVE CLICQUOT is a "'prominent feature' as the first word in the mark"); Presto Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) ("it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered"). Serial No. 77790842 5 Furthermore, the wording PUBLIC & PRIVATE SOLUTIONS in applicant's mark may add to, but does not significantly change, the meaning and commercial impression created by the term ONEPOINT standing alone. Rather than distinguishing the marks, the phrase is likely to simply suggest additional information about applicant's ONEPOINT lobbying services, i.e., that applicant provides solutions to meet the needs of its public and private sector clients. Because the identical term ONEPOINT is registrant's entire mark and forms a significant part of applicant's mark, we find that the marks as a whole are similar in sound, appearance, connotation and commercial impression. We also note that there is no evidence of third-party use of ONEPOINT or any other evidence to show that the registered mark is not a strong mark. Turning next to the relationship between the services, we keep in mind that the services must be considered as they are described in the application and cited registration, rather than in light of what the services may actually be. See Hewlett- Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1987). Applicant's services are "commercial lobbying services." Registrant's services, which are essentially marketing services, Serial No. 77790842 6 include the following: "Coordination, monitoring of and refinement of marketing campaigns using closed-loop campaign tracking and response management strategies and technology"; "business marketing consulting services, namely, consulting services for product and service marketing, marketing campaign planning, strategy, implementation and management..."; "developing strategies to profile and pinpoint...new opportunities and strategic business alliances"; "development of strategies to assist clients with...marketing campaign management and market knowledge and implementing such strategies for others"; "preparing targeted mailing lists, telemarketing lists and e-mail lists..."; and "direct marketing campaign management, namely marketing consulting services." It is true, as applicant states, that lobbying and marketing are different services. However, the question is not whether purchasers can differentiate the services themselves but rather whether purchasers are likely to confuse their source. See Helene Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989). Thus, it is not necessary that the respective services be similar or even competitive to support a finding of likelihood of confusion. It is sufficient if the services are related in some manner and/or that the conditions surrounding their marketing are such that they would be encountered by the same persons under circumstances that could, because of the Serial No. 77790842 7 similarity of the marks used thereon, give rise to the mistaken belief that they emanate from or are associated with the same source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). We find that applicant's and registrant's services are related and they may be used for similar purposes. The examining attorney submitted printouts from several third-party websites showing that both lobbying services and marketing services, such as the marketing campaign planning and strategies identified in the cited registration, are offered under a single mark. Excerpts from these websites are set forth below. McLane, Graf, Raulerson & Middleton Professional Association provides "lobbying services" along with "Customer Service & Marketing" as part of its program support. mclane.com Stefan/George Associates, an advocacy and association management firm, offers "lobbying services" as well as "Marketing and Networking Services" which includes "targeted media lists" and "social marketing: Meeting client needs as it relates to the legislative arena by utilizing new trends." stefangeorge.com Hurt, Norton & Associates Inc. offers "a range of consulting, marketing and lobbying services." The firm provides "Government Marketing" assisting with "marketing corporate products and services, and provid[ing] advocacy services for corporate issues and congressional legislation as required by the client." In addition, the firm "provides valuable networking and business contacts for our clients." hurtnorton.com Serial No. 77790842 8 Brown Communications, LLC offers "a full range of communications and marketing services" including "Government Relations and Lobbying Services," "Marketing Plan Development & Implementation" and "Market Research and Focus Group Sessions," and states that "Marketing a product or service entails creating the right blend of advertising, public relations, and promotion." browncomm.com Carmen Group is a "lobbying firm" with "proven Strategic Marketing Expertise" stating that they "integrate multi-level campaigns with budget discipline" that includes research, print ads, websites, list building and email campaigns. carmengroup.com In addition, the examining attorney submitted several use- based, third-party registrations showing, in each instance, that the same mark has been registered for both applicant's and registrant's types of services. The registrations include: Reg. No. 3538706 (THE POWER OF DIRECT) listing "lobbying and public relations services" and "providing information in the field of direct marketing"; Reg. No. 3420715 (STRATEGIC PUBLIC PARTNERS GROUP) listing "lobbying services" and "consultation and management services for...marketing,...brand management, media management, and communications"; Reg. No. 3916563 (PHARMACY PLUS) listing "lobbying services" and "providing business consulting services in...marketing..."; and Reg. No. 3950612 (REAL AMERICAN STRENGTH) listing "lobbying services" and "advertising, marketing and promotional networking and socializing opportunities for business purposes; business marketing services." These third- Serial No. 77790842 9 party registrations, while not evidence of use of the marks therein, may serve to suggest that applicant's and registrant's services are of a type which may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). Applicant argues, pointing to the dictionary definitions of "marketing," "lobby" and "lobbying" set forth below,4 that "[t]he plain meaning of the services demonstrates distinct services offered, on the one hand, in connection with the promotion and sale of goods or services in the private sector for profit, and on the other hand, in connection with the promotion of particular interests before a legislative body in the public sector." Marketing: 1: the act or process of selling or purchasing in a market 2: an aggregate of functions involved in moving goods from producer to consumer. Lobby/Lobbying: To conduct activities aimed at influencing public officials and esp. members of a legislative body on legislation 1: to promote (as a project) or secure the passage of (as legislation) by influencing public officials 2: to attempt to influence or sway (as a public official) toward a desired action. 4 We take judicial notice of these definitions which were recited in applicantâ€™s brief. 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). Applicant identifies the source of these definitions as Webster's Ninth New Collegiate Dictionary, but did not submit copies of the relevant pages from the dictionary. Nevertheless, there is no dispute as to the meanings of these words and we accept that the words are defined as applicant claims. Serial No. 77790842 10 However, as the examining attorney points out, the definitions merely show that the services are defined differently and that they are not the same. He states that "[r]egardless of whether these services share a definition or are identical, they are related to each other by virtue of the fact that they are customarily offered together." As the website evidence shows, marketing services can be offered as a separate service by lobbying firms (to promote corporate goods and services to the government), or as part of the lobbying service itself, using marketing campaigns to optimize their lobbying efforts. Furthermore, it is implicit in the definition of lobbying submitted by applicant, and shown by the reference below, that a lobbying service would involve promotional or marketing activities designed to influence public opinion or public officials. [C]ontemporary usage has broadened the term [lobbying] to incorporate making demands upon civil servants, state institutions, and influencing public opinion by reasoned argument, public relations campaigns, mass media coverage, or sometimes the offer of favors.5 As to the channels of trade and classes of purchasers, because there are no restrictions or limitations in either applicant's or registrant's identification of services, we must 5 The Crystal Reference Encyclopedia (2005); from the website credoreference.com. We take judicial notice of this reference work. Serial No. 77790842 11 presume that such services are offered in all the normal channels of trade to all the usual purchasers for such services. Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910 (TTAB 2000). The website evidence referenced above shows that the channels of trade and purchasers for both lobbying services and marketing services in fact overlap. We recognize that the overlapping purchasers of applicant's and registrant's services would be sophisticated and knowledgeable and that they would exercise at least some degree of care in selecting the services. However, even careful purchasers can be confused as to source under circumstances where, as here, very similar marks are used in connection with 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."). In view of the foregoing, and because similar marks are used in connection with related services, we find that confusion is likely. Decision: The refusal to register under Section 2(d) is affirmed.