TharpeRobbins Company, Inc.

Trademark Trial and Appeal Board

Oct 23, 2012

No. 85266411 (T.T.A.B. Oct. 23, 2012)

Mailed: 10/23/2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re TharpeRobbins Company, Inc.
________

Serial No. 85266411
_______

Karl S. Sawyer, Jr. of K&L Gates LLP for TharpeRobbins Company,
Inc.

Laurie Mayes, Trademark Examining Attorney, Law Office 101
(Ronald R. Sussman, Managing Attorney).
_______

Before Quinn, Bucher and Lykos,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

TharpeRobbins Company, Inc. filed, on March 14, 2011, an
application to register the mark THE BUTTERFLY EFFECT (in
standard character form) for “providing employee recognition
programs to businesses to promote and reward job quality,
productivity, loyalty and longevity” in International Class 35.
The application alleges first use anywhere and first use in
commerce in May 2010.
The trademark examining attorney refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
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ground that applicant’s mark, when used in connection with
applicant’s services, so resembles the previously registered
mark BUTTERFLY FX (in standard character form) for “business
consulting services featuring professional consultations and
business planning” in International Class 35,1 as to be likely to
cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs. We affirm
the refusal for the reasons set forth below.
Applicant argues that the marks are different, specifically
that the “FX” portion of the registered mark is distinctly
different in appearance from the word “effects” and will be
pronounced as two distinct letters “F” and “X,” and not as the
word “effects.” Further, applicant urges, the letters “FX” have
numerous commonly understood meanings other than “effects.”
Applicant also states that the services are different and, even
if provided to the same company, are unlikely to be directed to
or encountered by the same individuals. In any event, applicant
claims that the relevant classes of purchasers of such services
are sophisticated and exercise a high level of care in making
their purchasing decisions.
The examining attorney maintains that both marks refer to
the “butterfly effect” theory, with the abbreviation “FX”

1 Registration No. 3266140, issued July 17, 2007.
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replacing “effect(s)” in registrant’s mark. According to the
examining attorney, the letter combination “FX” is commonly used
as an abbreviation for “effects” in various contexts, including
in the business field. The examining attorney also contends
that the services are similar, with registrant’s broadly worded
recitation of business consulting services encompassing the
implementation of employee recognition programs for businesses.
There is a presumed overlap in purchasers, according to the
examining attorney, due to the absence of any limitations
relating thereto in the respective recitations of services. In
support of the refusal, the examining attorney introduced
dictionary evidence, excerpts of numerous third-party websites,
and numerous third-party registrations.
Our determination of the issue of likelihood of confusion
is based on an analysis of all of the probative facts in
evidence that are relevant to the factors set forth in 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 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).
We first direct our attention to the du Pont factor of the
similarity/dissimilarity between the marks. We must compare the
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marks in their entireties as to appearance, sound, connotation
and commercial impression to determine the similarity or
dissimilarity between them. Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1690 (Fed. Cir. 2005), quoting In re E. I. du Pont
de Nemours & Co., 177 USPQ at 567. The test, under the first du
Pont factor, is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether the
marks are sufficiently similar in terms of their overall
commercial impression that confusion as to the source of the
goods and/or services offered under the respective marks is
likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
We find that applicant’s mark THE BUTTERFLY EFFECT and
registrant’s mark BUTTERFLY FX are similar in appearance and
sound. Although applicant concedes that “there may be some
nominal phonetic similarity,” it goes on to assert that “the
presentation of the two-letter term [in registrant’s mark]
directs a rational person’s attention away from any similarity
on verbalization.” (Brief, p. 4). We disagree. Both marks
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begin with the identical term “BUTTERFLY,”2 followed by a second
portion that, although visually different, are aurally similar.
Even if the letters “FX” in registrant’s mark are pronounced as
“F” and “X,” this portion sounds virtually identical to the
sound of the term “effect(s).” Any distinction in sound between
“EFFECT” and “FX,” even when articulated by a most careful
speaker and heard by a most careful listener, is so subtle as to
be likely not noticed or appreciated.
The marks as a whole are also identical in meaning. The
unitary term “butterfly effect” is “[t]he idea...that something
insignificant may have great ramifications, such as the beating
of a butterfly’s wings can transform atmospheric conditions and
may cause (or even prevent) a storm thousands of miles away.
Sometimes our own efforts appear futile or insignificant but may
in fact have important consequences.” (www.butterflyfx.net).
The “butterfly effect” is also described as follows:
In chaos theory, the butterfly effect is the
sensitive dependence on initial conditions,
where a small change at one place in a
nonlinear system can result in large
differences to a later state. The effect
derives its name from the theoretical

2 In saying this, we recognize, of course, that applicant’s mark begins
with the word “THE.” The definite article “THE” at the beginning of a
mark, however, does not generally affect or otherwise diminish the
overall similarity between two marks. See In re Thor Tech, 90 USPQ2d
1634, 1635 (TTAB 2009) (the addition of the word “THE” at the
beginning of the registered mark does not have any trademark
significance); and In re The Place Inc., 76 USPQ2d 1467, 1468 (TTAB
2005) (definite article “THE” is a non-distinctive term that adds no
source-indicating significance to the mark as a whole).
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example of a hurricane’s formation being
contingent on whether or not a distant
butterfly had flapped its wings several
weeks before.

The butterfly effect is a common trope in
fiction when presenting scenarios...with
“what if” cases where one storyline diverges
at the moment of a seemingly minor event
resulting in two significantly different
outcomes.

The phrase refers to the idea that a
butterfly’s wings might create tiny changes
in the atmosphere that may ultimately alter
the path of a tornado or delay, accelerate
or even prevent the occurrence of a tornado
in another location. The flapping wing
represents a small change in the initial
condition of the system, which causes a
chain of events leading to large-scale
alterations of events (compare: domino
effect). Had the butterfly not flapped its
wings, the trajectory of the system might
have been vastly different. While the
butterfly does not “cause” the tornado in
the sense of providing the energy for the
tornado, it does “cause” it in the sense
that the flap of its wings is an essential
part of the initial conditions resulting in
a tornado, and without that flap that
particular tornado would not have existed.
(www.wikipedia.com)

Thus, the term “butterfly effect” has a similar meaning in the
contexts of business consulting services and planning, and
employee recognition programs. Applicant’s specimen states the
following:
Welcome to the Butterfly Effect.
Can the flap of a butterfly’s wings in
Brazil set off a tornado in Texas? Welcome
to the Butterfly Effect, where each act of
appreciation, no matter how minor, can set
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off a chain of events that has the power to
change the outcome of your talent’s
experience. When accumulated over time,
these acts will make a difference by keeping
your talent loyal, motivated and engaged.
TharpeRobbins...where recognition changes
everything.

The same connotation would apply to registrant’s marks as used
in connection with business consultation services, namely that
implementation of small changes may create large effects.
We are not persuaded in the least by applicant’s argument
that the letters “FX” have a variety of meanings and, thus,
consumers would not view the letters as the phonetic equivalent
of “effect(s).” Applicant relies on meanings such as “foreign
exchange,” “navigational fix” and “field exercise.” As pointed
out by the examining attorney, however, there is evidence
showing that “FX” is an abbreviation for “effects,” especially
as used with “sound” and “special.”
(www.acronyms.thefreedictionary.com). Further, the record shows
actual use of “FX” as an alternative for “effect(s)” in various
contexts. More significantly, applicant’s argument ignores the
fact that the cited mark is not “FX” standing alone. Rather,
the unitary mark BUTTERFLY FX has its own unique meaning
(namely, “butterfly effect(s)”) when the mark is considered in
its entirety. Given the meaning of “butterfly effect” relating
to small changes that eventually lead to large effects,
consumers are likely to view registrant’s mark BUTTERFLY FX as a
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variation of “butterfly effect(s),” and not attribute any other
far less relevant meaning to the “FX” portion of registrant’s
mark.
When the marks THE BUTTERFLY EFFECT and BUTTERFLY FX are
compared in their entireties, we find that the marks are similar
in sound, appearance and meaning. Because of the similarities
between the marks, the marks engender similar overall commercial
impressions. The similarity between the marks weighs in favor
of a finding of likelihood of confusion.
We next turn to consider the second du Pont factor
regarding the similarity/dissimilarity between the services. It
is well settled that the services of the parties need not be
identical or competitive, or even offered through the same
channels of trade, to support a holding of likelihood of
confusion. It is sufficient that the respective services of the
parties are related in some manner, and/or that the conditions
and activities surrounding the marketing of the services are
such that they would or could be encountered by the same persons
under circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they originate from
the same source. See Hilson Research, Inc. v. Society for Human
Resource Management, 27 USPQ2d 1423 (TTAB 1993); and In re
International Telephone & Telegraph Corp., 197 USPQ 910, 911
(TTAB 1978). The issue, of course, is not whether purchasers
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would confuse the services, but rather whether there is a
likelihood of confusion as to the source of the services. In re
Rexel Inc., 223 USPQ 830 (TTAB 1984).
We make our determination regarding the similarities
between the services, channels of trade and classes of
purchasers based on the services as they are identified in the
application and registration, respectively. Octocom Systems
Inc. v. Houston Computers Services, Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). Where the services in a
cited registration are broadly identified as to their nature and
type, as is the case herein, such that there is an absence of
any restrictions as to the channels of trade and no limitation
as to the classes of purchasers, it is presumed that in scope
the recitation of services encompasses all the services of the
nature and type described therein, that the identified services
are offered in all channels of trade which would be normal
therefor, and that they would be purchased by all potential
buyers thereof. Paula Payne Products Co. v. Johnson Publishing
Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973); Kalart Co. v.
Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958); and
In re Elbaum, 211 USPQ 639 (TTAB 1981).
Registrant’s broadly worded recitation, that is, “business
consulting services featuring professional consultations and
business planning,” is construed to encompass all such types of
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consultations and planning, including those involving employee
recognition programs. Applicant’s and registrant’s recitations
are presumed to be rendered through the same trade channels to
similar classes of purchasers, namely businesses, both large and
small. The evidence showing that business consulting services
routinely cover employee recognition employee programs (see
infra), coupled with the absence of any limitations in the
respective recitation of services, diminish applicant’s argument
that its services are directed predominantly to human resources
departments within companies, whereas registrant’s services are
targeted to management level individuals in the companies. We
agree with the examining attorney’s assessment that human
resource issues are a major part of business planning, and it is
no surprise that business planning consultations include
consulting related to human resources.
The examining attorney submitted, in an attempt to show
that the services are related, numerous use-based third-party
registrations showing that the same entity has registered the
same mark for the types of services involved in this appeal,
namely business consulting services and human resource services
such as employee recognition programs to promote loyalty,
longevity and productivity. “Third-party registrations which
cover a number of differing goods and/or services, and which are
based on use in commerce, although not evidence that the marks
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shown therein are in use on a commercial scale or that the
public is familiar with them, may nevertheless have some
probative value to the extent that they may serve to suggest
that such goods or services are of a type which may emanate from
a single source.” In re Mucky Duck Mustard Co., 6 USPQ2d 1467,
1470 n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988). See
also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86
(TTAB 1993).
The examining attorney also introduced numerous excerpts of
third-party websites showing that the same entities commonly
offer business consultation services and, as part and parcel
thereof, offer the implementation of employee recognition
programs to foster employee loyalty, career growth,
productivity, etc. This evidence further supports a finding
that consumers are likely to believe that applicant’s and
registrant’s services emanate from the same source.
Thus, the factors of the similarity between the services,
and the overlap in trade channels and classes of purchasers
weigh in favor of a finding of likelihood of confusion.
Applicant argues that the purchase of applicant’s and
registrant’s services “involve careful, long-term planning and
forethought by an informed business customer,” and that
“relevant consumers make informed decisions after careful study
and deliberation and therefore are unlikely to be confused by
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any similarity between the [marks].” (Brief, p. 7). First,
applicant has failed to support this argument with any evidence.
Second, the recitations of services are broad enough to cover
one-time consultations, short term programs and otherwise
relatively inexpensive consultations that may be offered to
small enterprises. In any event, even assuming that businesses
are discriminating when it comes to management planning and
human resources decisions, it is settled that even sophisticated
purchasers are not immune from source confusion, especially in
cases such as the instant one involving very similar marks and
closely 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.”). See also In
re Decombe, 9 USPQ2d 1812 (TTAB 1988). We find that the
similarities between the marks and the services sold thereunder
outweigh any presumed sophisticated purchasing decision. See
HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819
(TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL Associates,
Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990)
(similarities of goods and marks outweigh sophisticated
purchasers, careful purchasing decision, and expensive goods).
Thus, this factor is neutral.
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We conclude that consumers familiar with registrant’s
“business consulting services featuring professional
consultations and business planning” offered under the mark
BUTTERFLY FX would be likely to believe, upon encountering
applicant’s mark THE BUTTERFLY EFFECT for “providing employee
recognition programs to businesses to promote and reward job
quality, productivity, loyalty and longevity,” that the services
originated with or are somehow associated with or sponsored by
the same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6
USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.