Spirits Product International S.A.

Trademark Trial and Appeal Board

May 26, 2005

No. 78147137 (T.T.A.B. May. 26, 2005)

Mailed: May 26, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Spirits Product International S.A.
________

Serial No. 78147137
_______

William A. Finkelstein of Alschuler Grossman Stein & Kahan
LLP for Spirits Product International S.A.

Amy E. Hella, Trademark Examining Attorney, Law Office 110
(Chris A. F. Pedersen, Managing Attorney).
_______

Before Walters, Chapman and Holtzman, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:

On July 24, 2002, Spirits Product International S.A.
(a corporation of Switzerland) filed an application to
register on the Principal Register the mark SPI for
services amended to read “advertising and promotional
services, namely, rendering advice to others regarding food
and beverage advertising and sales promotion” in
International Class 35. The application is based on (i)
Section 1(b) of the Trademark Act, 15 U.S.C. §1051(a),
through applicant’s assertion of a bona fide intention to
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 78147137
2
use the mark in commerce, and (ii) Sections 44(d) and (e),
15 U.S.C. §§1126(d) and (e) of the Trademark Act, through
applicant’s Benelux Registration No. 0709611 based on its
Benelux application filed July 12, 2002.
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark so resembles the mark shown
below

for “market analysis services, namely, gathering and
evaluating information relating to the development of
market strategies for businesses of others” in
International Class 35,1 that when applicant’s mark is used
in connection with its identified services, there is a
likelihood of confusion, mistake or deception.
Applicant has appealed, and briefs have been filed.
Applicant did not request an oral argument.
With its brief on the case, applicant submitted for
the first time evidence in the form of printouts of pages
from registrant’s website (Exhibit 1) and typed references
to some third-party registrations (p. 14). The Examining

1 Registration No. 1156601 issued June 2, 1981, Section 8
affidavit accepted, Section 15 affidavit acknowledged, renewed.
Ser. No. 78147137
3
Attorney has properly objected to this evidence as untimely
under Trademark Rule 2.142(d). The Examining Attorney’s
objection is sustained and the Board has not considered
this untimely evidence.2
Turning to the merits, 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, however, 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 consider first the marks. Applicant’s mark SPI is
virtually identical to the cited mark, SPI in stylized

2 With specific regard to applicant’s references to third-party
registrations, typed reference to third-party registrations is
not sufficient to make them of record. See In re Volvo Cars of
North America Inc., 46 USPQ2d 1455, footnote 2 (TTAB 1998); and
In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974). Also, third-
party registrations do not establish that the marks shown therein
are in use, much less that consumers are so familiar with them
that they are able to distinguish among such marks.
Ser. No. 78147137
4
lettering. The stylized lettering in registrant’s mark is
a minor difference and would not obviate any likelihood of
confusion. See Spoons Restaurants Inc. v. Morrison, Inc.,
23 USPQ2d 1735 (TTAB 1991), aff’d unpub’d (Fed. Cir., June
5, 1992).
We find that applicant’s mark is identical in sound
and highly similar in appearance to the cited registration.
As to connotation and commercial impression, applicant
contends that because Strategic Planning Institute, Inc. is
registrant’s corporate name, and the letters SPI are an
abbreviation of descriptive terminology in registrant’s
case, the registered mark is weak and entitled to limited
protection. Applicant further contends that “there are
literally thousands of businesses in the United States
using combinations of letters in their business names and
service marks” (brief, p. 13) and “once customers realize
that a mark is merely an abbreviation for a business name,
there is a perception that the mark is merely an
alternative for the name (as opposed to an arbitrary mark
with independent significance.) Thus, many customers will
flip-flop in their use of the business name and the
abbreviation mark” (brief, p. 12); and that consumers will
resist making purchasing decisions based on weak marks,
such as letter combination marks.
Ser. No. 78147137
5
Applicant’s argument that SPI is descriptive in
relation to registrant’s services is not persuasive and it
is an impermissible collateral attack on the cited
registration. See In re Dixie Restaurants Inc., supra, 41
USPQ2d at 1534; and In re Peebles Inc., 23 USPQ2d 1795,
footnote 5 (TTAB 1992).
Applicant’s arguments regarding consumer perception of
letter marks in general and these two SPI marks in
particular are not supported by any evidence. That is,
there is no evidence of record of any use by any party
(including applicant, the cited registrant or any third-
party) of any mark including the letters SPI for the
involved services or any other goods or services, nor any
evidence of how consumers would so perceive the marks.
Applicant’s argument regarding the connotations of
the two SPI marks is unavailing because registrant’s
corporate name is not part of the registered mark and,
thus, any connotation of the mark as an acronym is not
relevant to our consideration of the marks before us.
Further, assuming arguendo that consumers may be aware of
the parties’ respective corporate names and further
assuming that they will then attribute the letters “SPI” to
refer to the separate corporate names, this would
nonetheless not obviate the likelihood of confusion between
Ser. No. 78147137
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these letter marks using the identical three letters in the
identical order.
We find that applicant’s mark is identical in sound,
appearance, connotation and overall commercial impression
to the cited registered mark. See Weiss Associates Inc. v.
HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed.
Cir. 1990).
Applicant has not established that the cited
registered mark is a weak mark. Even if applicant had so
established (which it did not), weak marks are nonetheless
entitled to protection against registration by a subsequent
user of the same or similar mark for the same or related
goods or services. See Hollister Incorporated v. Ident A
Pet, Inc., 193 USPQ 439 (TTAB 1976).
Turning next to a consideration of the goods involved
in this case, we start with the well-settled principle that
goods or services need not be identical or even competitive
to support a finding of likelihood of confusion. Rather,
it is enough that the goods or services are related in some
manner or that the circumstances surrounding their
marketing are such that they would likely be seen by the
same persons under circumstances which could give rise,
because of the marks used therewith, to a mistaken belief
that they emanate from or are in some way associated with
Ser. No. 78147137
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the same producer or that there is an association between
the producers of each party’s goods or services. See In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984); In re Opus One Inc., 60 USPQ2d
1812 (TTAB 2001); and In re Peebles Inc., 23 USPQ2d 1795,
1796 (TTAB 1992). Further, the question of likelihood of
confusion in Board proceedings regarding the registrability
of marks, must be determined based on an analysis of the
goods or services identified in applicant’s application
vis-a-vis the goods or services recited in the
registration. See Octocom Systems Inc. v. Houston Computer
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1990); and Canadian Imperial Bank v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
In this case, the registered mark is for “market
analysis services, namely, gathering and evaluating
information relating to the development of market
strategies for businesses of others,” while applicant
intends to offer “advertising and promotional services,
namely, rendering advice to others regarding food and
beverage advertising and sales promotion.”
Applicant argues, inter alia, that its identified
services are limited to the food and beverage industries,
while registrant’s identification of services uses vague
Ser. No. 78147137
8
terminology such as “market analysis services” and
“relating to”; that registrant analyzes markets and
businesses across all sectors (i.e., at a broad level) and
registrant merely supplies information about what is going
on in various industries, while applicant distributes
alcoholic beverages and provides highly tailored specific
advertising and promotional advice to its distributors in a
narrow market segment.
As the Examining Attorney correctly argues, even
though applicant’s advertising and promotional services are
limited to the food and beverage industries, registrant’s
“market analysis services…” are not so limited and thus
registrant’s services include such services for the food
and beverage industries. Moreover, applicant’s arguments
(unsupported by evidence) regarding registrant simply
offering data to general business segments is not relevant
as there are no such limitations in registrant’s
identification of services. As explained previously, the
Board must decide the issue of registrability on the basis
of the identifications of services in the cited
registration and the application.
In support of the refusal to register, and
particularly the relatedness of the respective services,
the Examining Attorney has submitted copies of several
Ser. No. 78147137
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representative third-party registrations, based on use in
commerce, indicating the same entities offer marketing
services and advertising services/advertising consulting
services under the same mark. See, for example, the
following:
Registration No. 2721452 for, inter
alia, “advertising agencies, namely,
promoting the services of businesses
through the distribution of printed,
audio, and video promotional materials
and by rendering sales promotion
advice, providing advertising space in
periodicals, creating corporate logos
and brand identity, for others;
business marketing and direct mail
consulting services, and merchandising
display services, for others”;

Registration No. 2481090 for, inter
alia, “advertising and business
management services, namely, marketing
consulting services, updating and
dissemination of advertising material,
conducting marketing research and
studies; business management and
business organization consulting,
namely, expert advice on how to
implement a marketing strategy and how
to backup and support that strategy;
business management in the area of
advertising; … ”;

Registration No. 2300224 for, inter
alia, “market analysis; market
research; business research and
surveys; conducting business and market
research; conducting marketing studies;
business management and consultation;
demographic consultation; management
consultation in the fields of
advertising and media
communications;…”;
Ser. No. 78147137
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Registration No. 2296586 for, inter
alia, “advertising agency services,
namely, promoting the goods and
services of others; market analysis;
market research, business research and
surveys, conducting business and market
research; conducting marketing studies;
business management and consultation; …
management consultation in the fields
of advertising and media
communications; … ”;

Registration No. 2653057 for, inter
alia, “advertising agencies; …
conducting business and marketing
research and studies; … market analysis
and research; … developing promotional
campaigns for businesses; product
merchandising services; consultation in
the fields of advertising, marketing
and product merchandising; … ”;

Registration No. 2513197 for, inter
alia, “advertising agencies; market
research; market analysis; business
consultation in the fields of
advertising, marketing, product
branding and product promotion; …” ;
and

Registration No. 2791800 for, inter
alia, “marketing, namely, promoting the
goods and services of others through
the provision of customized advertising
in print, displays, and electronic
media, market research; market
analysis; benchmark analysis, namely
conducting studies for others regarding
best business practices; business
consultation in the fields of
advertising and marketing, product
branding and product promotion; …
providing comprehensive business
management and consultation to clients
to help clients manage their resources
most effectively; business marketing
consulting services in the field of
Ser. No. 78147137
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competitive market analysis and
strategy analysis, conducting marketing
surveys and studies.”

When considering the third-party registrations
submitted by the Examining Attorney, we remain mindful that
such registrations are not evidence that the marks shown
therein are in use or that the public is familiar with
them. Such third-party registrations nevertheless have
some probative value to the extent they may serve to
suggest that such services are of a type which emanate from
the same source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785 (TTAB 1993); and In re Mucky Duck Mustard
Co., Inc., 6 USPQ2d 1467, footnote 6 (TTAB 1988). Thus,
the third-party registrations submitted by the Examining
Attorney are evidence of the relatedness of the respective
services in that they show that consumers may well expect
applicant’s advertising and promotional services and
registrant’s market analysis services to emanate from a
single source. That is, applicant’s identified services
and the services listed in the cited registration are
likely to be perceived as related in the mind of the
consuming public as to origin. See Hewlett-Packard Company
v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004
(Fed. Cir. 2002)(“even if the goods and services in
question are not identical, the consuming public may
Ser. No. 78147137
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perceive them as related enough to cause confusion about
the source or origin of the goods and services”); and Recot
Inc. v. M.C. Becton, 214 F.3d 1332, 54 USPQ2d 1894, 1898
(Fed. Cir. 2000)(“even if the goods [or services] in
question are different from, and thus not related to, one
another in kind, the same goods [or services] can be
related in the mind of the consuming public as to the
origin of the goods [or services]. It is this sense of
relatedness that matters in the likelihood of confusion
analysis.”).
We find that applicant’s advertising and promotional
services and registrant’s market analysis services are
related.3
Applicant argues that the channels of trade are
different because, for example, registrant offers its
services online through an Internet website but applicant
“does not provide services through online interaction with
a database.” (Brief, p. 18.) While applicant’s services
are limited to the food and beverage industries, there are
no specific limitations on trade channels through which
applicant’s services could be offered. Therefore, this

3 Applicant’s arguments to the contrary are not supported by
rebuttal evidence. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009, 1010 (Fed. Cir.) (The issue in the case was mere
descriptiveness, but the Court discussed an applicant’s burden of
coming forward with evidence in support of its arguments.)
Ser. No. 78147137
13
argument by applicant is irrelevant and unpersuasive. See
Octocom v. Houston, supra.
We find that the respective services, as identified,
could be offered through the same or at least overlapping
channels of trade.
Applicant argues that “the respective services
involved for both parties are marketed to experienced
business persons and corporate executives who are highly
knowledgeable about the services they are seeking” and that
“the prospective purchasers of these services will always
give careful consideration to the identity of the service
provider, because, despite the dissimilarity of [the]
services, both businesses involve an ongoing contractual
relationship (as opposed to a simple impulse buy)”; and
that applicant’s purchasers “are almost exclusively highly
specialized beverage and food distribution businesses that
already have pre-existing contractual relationships with
Applicant.” (Brief, pp. 20-21.)
Again, there are no limitations in registrant’s
identification of services as to purchasers, and to the
extent that applicant’s identification limits purchasers to
those in the food and beverage industries, purchasers in
those two particular industries are encompassed within
Ser. No. 78147137
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registrant’s identified services. Thus, we must find that
the classes of purchasers are at least overlapping.
Assuming arguendo that these advertising and market
analysis services are purchased with care by experienced
and knowledgeable business people, these purchasers are not
immune from confusion as to the source of services,
particularly when they are sold under virtually identical
marks. See Wincharger Corporation v. Rinco, Inc., 297 F.2d
261, 132 USPQ 289 (CCPA 1962); and In re Decombe, 9 USPQ2d
1812 (TTAB 1988).
Suffice it to say that the facts in Electronic Design
& Sales Inc. v. Electronic Data Systems Corp., 954 F.2d
713, 21 USPQ2d 1388 (Fed. Cir. 1992), heavily relied on by
applicant, are readily distinguishable from those in this
ex parte appeal.
In view of the virtually identical marks, the
relatedness of the services, and the same or overlapping
channels of trade and purchasers, we find that applicant’s
mark SPI, if used by applicant, for its identified services
is likely to cause confusion with the registered mark SPI
(stylized lettering) for market analysis services.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.