Star Group Services

Trademark Trial and Appeal BoardJul 27, 2007

No. 78702942 (T.T.A.B. Jul. 27, 2007)

Mailed: July 27, 2007 GDH/gdh UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Star Group Services ________ Serial No. 78702942 _______ Michael Cerrati and John Alumit of Patel & Alumit, P.C. for Star Group Services. Paula B. Mays, Trademark Examining Attorney, Law Office 106 (Mary I. Sparrow, Managing Attorney). _______ Before Hohein, Hairston and Cataldo, Administrative Trademark Judges. Opinion by Hohein, Administrative Trademark Judge: Star Group Services has filed an application to register on the Principal Register in standard character form the mark "Star Group Services" for "private investigation" services in International Class 45.1 Registration has been finally refused under Section 2(d) of the Trademark Act, 15 U.S.C. Â§1052(d), on the ground that 1 Ser. No. 78702942, filed on August 29, 2005, which alleges a date of first use of the mark anywhere of September 22, 2004 and a date of first use thereof in commerce of January 1, 2005. As noted later in this opinion, the application is deemed to be amended as by Examiner's Amendment to include a required disclaimer of the words "Group Services." THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser. No. 78702942 2 applicant's mark, when applied to its services, so resembles the mark "S.STAR," which is registered on the Principal Register in standard character form for, inter alia, the following services in International Class 42,2 as to be likely to cause confusion, or to cause mistake, or to deceive:3 Investigations services, namely, detective investigations, private investigations, missing persons investigations, and pre-employment background investigations, and surveillance services related to all of the foregoing; detective investigations involving claims of sexual harassment, workers compensation, employment discrimination and insurance claims; national security background investigations; compiling inventories of personal items for individuals for insurance purposes; personal inventorying by means of videotaping and household items 2 Reg. No. 2,643,150, issued on October 29, 2002, which sets forth a date of first use of the mark anywhere and in commerce of December 31, 1998. Such registration also sets forth "computer systems comprised of computer hardware, peripherals and computer programs and related printed documentation in the field of investigations for use in employment background screening, searching credit and financial information, performing business and individual identification and verification, and searching federal, state and county court records" in International Class 9, with December 31, 1998 set forth as a date of first use of the mark anywhere and in commerce for such services. 3 Although registration was also finally refused based upon applicant's failure to comply with the requirement for a disclaimer of the words "Group Services" pursuant to Section 6(a) of the Trademark Act, 15 U.S.C. Â§1056(a), applicant, in response to the Examining Attorney's brief concerning the propriety of such a disclaimer, offered the following disclaimer in its reply brief: As a preliminary matter, Applicant hereby disclaims the wording "GROUP SERVICES" in Applicant's Mark. Accordingly, no claim is made to the exclusive right to use "GROUP SERVICES" apart from the mark as shown. In view thereof, and because the Examining Attorney, in both her initial and final Office Actions, advised applicant that "[a] properly worded disclaimer should read as follows: No claim is made to the exclusive right to use 'Group Services' apart from the mark as shown," the application is deemed to be amended as by Examiner's Amendment, see TMEP Section 707 (4th ed. 2005), and the final refusal based on the requirement for a disclaimer of the words "Group Services" is considered moot. Ser. No. 78702942 3 for security and insurance purposes; undercover investigation and related consultation in the field of retail store operations; investigation and related consultation in the field of the level of security of businesses; design of electronic security systems for others; administering polygraph tests for others; [and] reviewing standards and practices to ensure compliance with securities, environmental, immigration, insurance, gaming industry and transportation laws and regulations. Applicant has appealed and briefs have been filed. We affirm the refusal to register. Our determination under Section 2(d) is based on an analysis of all of the facts in evidence which are relevant to the factors bearing on the issue of whether there is a likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion analysis, two key considerations are the similarity or dissimilarity in the goods and/or services at issue and the similarity or dissimilarity of the respective marks in their entireties.4 Here, inasmuch as it is clear that registrant's services are in part legally identical to applicant's services in that the recitations of services respectively set forth "private investigations" and "private investigation" services, and hence such services would be rendered through the same channels of 4 The court, in particular, pointed out that: "The fundamental inquiry mandated by Â§2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [and/or services] and differences in the marks." 192 USPQ at 29. Ser. No. 78702942 4 trade to the same classes of customers,5 the primary focus of our inquiry is accordingly on the similarity or dissimilarity of the respective marks. Turning, therefore, to consideration of such issue, we note as a preliminary matter that, "[w]hen marks would appear on virtually identical ... services, the degree of similarity [of the marks] necessary to support a conclusion of likely confusion declines." Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992), cert. denied, 506 U.S. 1034 (1994). See also ECI Division of E- Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443, 449 (TTAB 1980). Applicant, in its main brief, nonetheless contends that while both its mark and registrant's mark "relate to investigative services and both contain the word 'star,' ... there is still no likelihood of confusion." Citing In re Hearst Corp., 982 F.2d 493, 25 USPQ2d 1238 (Fed. Cir. 1992), applicant argues that: 5 It is noted that because it is well settled that a refusal under Section 2(d) is proper if there is a likelihood of confusion involving the services listed in the application and any of the goods and/or services identified in the cited registration, it is unnecessary to rule as to whether the other goods and/or services set forth in the cited registration are so related to the services listed in the application that, if rendered under the same or similar marks, confusion would be likely. See, e.g., Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) and Shunk Mfg. Co. v. Tarrant Mfg. Co., 318 F.2d 328, 137 USPQ 881, 883 (CCPA 1963). Accordingly, not only will we not consider further whether any of the other services set forth in International Class 42 of the cited registration are commercially or otherwise sufficiently related to applicant's services, but we will not decide whether any of the goods listed in International Class 9 of the cited registration, and for which the Examining Attorney has notably not furnished any evidence with respect thereto, are in fact commercially or otherwise sufficiently related to applicant's services as to be likely, if marketed under the same or similar marks, to cause confusion. Ser. No. 78702942 5 The facts of this case are nearly identical to In re Hearst Corp. Applicant's Mark is Star Group Services. While "Group Services" may be disclaimed as descriptive, the Examining Attorney cannot ignore it even if it is less significant. Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976); In re El Torro Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986). Consequently, the Examining Attorney may not diminish the contribution of the "Group Services" portion when comparing Applicant's Mark to Registrant's Mark. Pursuant to In re Hearst Corp. above, a comparison of merely the word "star" in Applicant's Mark to the wording "S.STAR" in Registrant's Mark is improper. As will be shown below, the appearance, sound, meaning and commercial impression of Applicant's Mark derive significant contribution from the "Group Services" component. Thus, when all of these considerations are given fair weight, confusion with Registrant's Mark becomes less likely. Applicant, with respect to the particular differences in the respective marks, further contends in its main brief that: When viewed in their entirety, Applicant's Mark and Registrant's Mark clearly do not have a similar appearance. The first and most obvious distinction between Applicant's Mark, Star Group Services, and Registrant's Mark, S.STAR, is their length. Applicant's Mark is comprised of three (3) words, as compared with one (1) word in Registrant's Mark, giving it a much longer appearance. The inclusion of the "S" at the beginning of Registrant's Mark that is absent in Applicant's Mark is another distinguishing feature. This additional letter alters the look of Registrant's Mark so as to not appear identical to the first word of Applicant's Mark. Additionally, the marks at issue differ in connotation. Registrant's Mark contains a consonant followed by a period, as if the consonant indicates the first initial of a person's name and the word "star" indicates their surname. This, however, is in stark contrast to Applicant's Mark which ... uses Ser. No. 78702942 6 the word "star" as suggestive of the outstanding abilities of the investigators and services offered by Applicant. Last, is the disparity in the sound when comparing Applicant' Mark to Registrant's Mark. The additional wording--Group Services--in Applicant's Mark give it a noticeably different phonetic quality than Registrant's Mark. Applicant thus concludes that "[a]ll of these components--length, number of words and lack of additional letters on similar words-- contribute to the appearance, sound and connotation of Applicant's Mark, giving it a commercial impression quite distinct and dissimilar than Registrant's Mark." Lastly, applicant maintains in its main brief that "[t]he Examining Attorney should not attribute too much weight to the word 'star' in determining whether there would be a likelihood of confusion," arguing that "the word 'star' is entitled to only a narrow scope of trademark protection due to the existence of additional third-party registrations that bear this mark in connection with investigative services." Applicant notes in support thereof that it has submitted copies of "two (2) third-party registrations indicating that the word 'star' is used by a least two (2) other people in the field of investigative services" as specifically indicated below: The first is NORTHSTAR LEARNING (Registration No. 2,693,665) in connection with software and educational services in the field of investigation techniques. The second is MOVISTAR (Registration No. 3,045,306) in connection with detective investigations. Applicant consequently insists that, "[g]iven that the overall impressions imparted by Applicant's Mark and Registrant's Mark Ser. No. 78702942 7 are different, that the disclaimed wording assists in creating this difference, and that the word 'star' should not be given a broad scope of protection, ... there is no likelihood of confusion." We agree with the Examining Attorney, however, that confusion is likely. As our principal reviewing court has noted, while marks must be considered in their entireties, including any descriptive or other disclaimed matter therein, it is also the case that, in articulating reasons for reaching a conclusion on the issue of likelihood of confusion, "there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided [that] the ultimate conclusion rests on consideration of the marks in their entireties." In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). For instance, according to the court, "[t]hat a particular feature is descriptive ... with respect to the involved ... services is one commonly accepted rationale for giving less weight to a portion of a mark ...." Id. Finding that both applicant's "Star Group Services" mark and registrant's "S.STAR" mark are dominated by the word "star," she contends with respect to applicant's mark that, "[i]n the mind of consumers, the term 'Group Services,' has a much less significant position in the mark and is not likely the portion of the mark that will be recalled by consumers," while asserting as to registrant's mark that "[t]he term 'S' is innocuous" in that it is essentially lacking in service mark significance when joined with the term "STAR." Applicant's detailed analysis of Ser. No. 78702942 8 the respective marks "with regard to the number of words and their connotations," she maintains, "is an exercise in futility" inasmuch as "[i]t is not likely that consumers will perform these machinations when considering the ... services" involved in this appeal. She also sufficiently distinguishes In re Hearst Corp., supra, in which the Federal Circuit found no likelihood of confusion from the use in connection with calendars of the marks "VARGA GIRL" and "VARGAS" by arguing that: There is no comparison between the Hearst case and the present case. In that case, the dominant term "Varga," was not identical to the registered mark "Vargas." Second, it was arguable that the term "Girl," especially as combined with the term "Varga," creates a mark with a different commercial impression. .... In the present case, however, the dominant term of the marks is "Star." The term "Star" is the same and is dominant in both marks. Thus the present case is distinct from Hearst. We concur with the Examining Attorney that, when considered in their entireties, the descriptive term "Group Services" in applicant's mark, like the term "S." in registrant's mark, contributes relatively little of service mark significance compared to the word "star," which forms the dominant and distinguishing element of each of the respective marks. While applicant is correct that differences in the marks at issue, in terms of sound, appearance and connotation, are apparent from a side-by-side comparison thereof,6 it is nonetheless the case that 6 Such a comparison, of course, is not the proper test to be used in determining the issue of likelihood of confusion since it is not the ordinary way that consumers will be exposed to the marks. Rather, it is the similarity of the general overall commercial impression engendered by the marks which must determine, due to the fallibility of memory and the consequent lack of perfect recall, whether confusion Ser. No. 78702942 9 the shared word "star" not only creates certain similarities between the marks in sound, appearance and connotation, but such word principally provides, in each instance, the marks' source distinguishing significance. Thus, even if, as contended by applicant, customers for private investigation services were to regard registrant's "S.STAR" mark as the personal name of a private investigator or the titular head of an agency which renders such services, it is likely that the same consumers would view applicant's "Star Group Services" mark as identifying and distinguishing the same or an affiliated private investigations agency as that designated by respondent's "S.STAR" mark, due to the substantially similar general overall commercial impression imparted by the dominant core word "star" in each mark. See, e.g., Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1311 (Fed. Cir. 2002) ["The Board itself, other courts and this court have been confronted frequently with situations similar to this one, in which a competing mark shares a core portion of senior marks, and in which the competing mark was found too similar to the other mark to earn mark status for itself"]. The substantial similarity in general overall commercial impression of the respective marks, together with their similarities in sound, appearance and connotation, as to source or sponsorship is likely. The proper emphasis is accordingly on the recollection of the average purchaser, who normally retains a general rather that a specific impression of trademarks or service marks. See, e.g., Grandpa Pidgeon's of Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573, 574 (CCPA 1973); In re United Service Distributors, Inc., 229 USPQ 237, 239 (TTAB 1986); In re Solar Energy Corp., 217 USPQ 743, 745 (TTAB 1983); Envirotech Corp. v. Solaron Corp., 211 USPQ 724, 733 (TTAB 1981); and Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Ser. No. 78702942 10 consequently favor a finding of likelihood of confusion, especially when such marks are used in connection with legally identical services. As to applicant's argument that the marks at issue are nonetheless weak and, hence, the cited registrant's mark is entitled to only a narrow scope of protection, the Examining Attorney correctly observes that: The applicant's argument is not persuasive. Even if applicant had shown that the cited mark is "weak," which it did not [as explained below], such marks are still entitled to protection against registration by a subsequent user of the same or similar mark for the same ... services. [S]ee Hollister Incorporated v. Ident A Pet , Inc. 193 USPQ 439 (TTAB 1976) and cases cited therein. Furthermore, the term must be considered in the context of the ... [respective services]. The applicant has presented scant evidence that the term "star," is weak as applied to [private] investigative services .... The applicant has [only] provided copies of registrations for the term "Movistar" and "NorthStar Learning." Third-party registrations, by themselves, are entitled to little weight on the question of likelihood of confusion, see In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983)[,] because they are not evidence of what happens in the marketplace or that the public is familiar with the use of those marks. In re Comexa Ltda, 60 USPQ2d 1118 (TTAB 2001); National Aeronautics and Space Admin. V. Record Chem. Co., 185 USPQ 563 (TTAB 19765); TMEP Â§1207.01(d)(iii). The evidence is of even less probative value in this instance. The term "Movistar" is very distinct from the mark ... "S.Star," and the term "NorthStar Learning" bears no resemblance to the marks at hand. Thus such evidence does little to settle the issue of likelihood of confusion in this case. Ser. No. 78702942 11 Accordingly, we conclude that consumers and prospective customers who are familiar or otherwise acquainted with registrant's "S.STAR" mark for its services of "private investigations" would be likely to believe, upon encountering applicant's substantially similar "Star Group Services" mark for its legally identical "private investigation" services, that such services emanate from, or are otherwise sponsored by or affiliated with, the same source. Clients for such services, in particular, could reasonably believe that applicant's "Star Group Services" private investigation services are a branch or other affiliate of registrant's "S.STAR" private investigations. Decision: The refusal under Section 2(d) is affirmed.