The Entrepreneur’s Source, Inc.Download PDFTrademark Trial and Appeal BoardJul 27, 2010No. 77416439 (T.T.A.B. Jul. 27, 2010) Copy Citation Mailed: July 27, 2010 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re The Entrepreneur’s Source, Inc. ________ Serial No. 77416439 _______ Raymond A. Nuzzo of Law Offices of Raymond A. Nuzzo, LLC for The Entrepreneur’s Source, Inc. Benji Paradewelai, Trademark Examining Attorney, Law Office 101 (Ronald R. Sussman, Managing Attorney). _______ Before Walters, Zervas and Cataldo, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: An application was filed by The Entrepreneur’s Source, Inc. to register in standard characters on the Principal Register the mark FRANCHISESOURCE.COM for the following services: “Providing business information via a global computer network about business marketing, business advising, business consulting, the franchise industry, franchise opportunities, business management services available for women-owned businesses, and business opportunities available for women-owned businesses” THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Ser No. 77416439 2 in International Class 35.1 The trademark examining attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark, as used in connection with its services, so resembles the mark FRANSOURCE, previously registered on the Principal Register in standard characters for “business franchise consulting services” in International Class 35,2 as to be likely to cause confusion. When the refusal was made final, applicant appealed. Applicant and the examining attorney filed briefs on the issue under appeal. Evidentiary Matter The examining attorney has objected to applicant’s reference in its brief to acronyms for the term FRAN, which applicant indicates it obtained from the Free Online Dictionary, an internet website.3 According to this website, FRAN is an acronym for Functional Reactive Animation; and Family Relations & Applied Nutrition. Applicant did not submit these definitions prior to the filing of its brief, and the internet website from which 1 Application Serial No. 77416439 was filed March 7, 2008, based upon applicant’s assertion of its bona fide intent to use the mark in commerce. 2 Registration No. 3407778 issued on April 8, 2008. 3 http://acronyms.thefreedictionary.com/FRAN Ser No. 77416439 3 the acronyms were obtained does not identify the source thereof. Because the source of these asserted acronyms cannot be verified, and further because there is no indication that the source of the acronyms is a widely- known reference that is readily available in denoted editions from the internet or CD-ROM, we will give them no consideration in our determination herein. See In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006); and In re Total Quality Group Inc., 51 USPQ2d 1471 (TTAB 1999). We further note, however, that inasmuch as the asserted acronyms for the term FRAN do not appear to be related in any way to the services recited in either the involved application or cited registration, they would appear to be of very limited probative value even if considered. Likelihood of Confusion 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, 567 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between Ser No. 77416439 4 the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 27 (CCPA 1976). See also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). The Services and Their Channels of Trade Turning first to our consideration of the recited services, we must determine whether consumers are likely to mistakenly believe that they emanate from a common source if sold under confusingly similar marks. It is not necessary that the services at issue be similar or competitive, or even that they move in the same channels of trade, to support a holding of likelihood of confusion. It is sufficient instead that the respective services 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 producer. See In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). In this case, we begin by observing that applicant does not present any arguments in its brief regarding the relatedness of the services. We further observe that Ser No. 77416439 5 applicant’s business information services in the fields of, inter alia, “business consulting, the franchise industry, franchise opportunities” appear to be related on their face to registrant’s recited “business franchise consulting services” in that both concern the provision of advice and information in the fields of business and franchising. The examining attorney further has submitted evidence from informational and commercial internet websites suggesting that both applicant’s types of services and registrant’s types of services may emanate from a common source. For example, the following websites offer, inter alia, franchise consulting and information on franchise opportunities: franassist.com; franchisebuilders.com; sunfranchising.com; frandocs.com; and franchiseconsultant.brandexpansion.com. The foregoing evidence suggests that services of the type offered by applicant as well as services of the type offered by registrant are offered by the same entities and are identified by the same marks. In view of the foregoing, and applying the applicable law to the evidence of record, we find that applicant’s business information services in the field of franchising are related to registrant’s business franchise consulting Ser No. 77416439 6 services, and this du Pont factor favors a finding of likelihood of confusion. Furthermore, because there are no restrictions in either applicant’s or registrant’s identification of services as to the channels of trade in which the services may be encountered, or type or class of customer to which the services are marketed, both applicant’s and registrant’s services must be presumed to move in all normal channels of trade and be available to all classes of potential consumers, including those of each other’s services. See In re Elbaum, supra. In consequence thereof, this du Pont factor further favors a finding of likelihood of confusion. The Marks We now consider the similarity of the marks. In determining the similarity or dissimilarity of marks, we must consider the marks in their entireties in terms of sound, appearance, meaning and commercial impression. See du Pont, supra. See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). In this case, applicant’s mark, FRANCHISESOURCE.COM is similar to the registered mark FRANSOURCE in that both include the identical term SOURCE; and further in that the Ser No. 77416439 7 term FRANCHISE in applicant’s mark is similar to the term FRAN in registrant’s mark. We take judicial notice of the following definition of “.com” as “ABBREVIATION: commercial organization (in Internet addresses).”4 We further take judicial notice of the following definition of “TLD” as “(Top-Level-Domain) The Highest level domain category in the Internet domain naming system. There are two types, the generic top-level domains, such as .com, .org, and .net….”5 The term “.com,” in itself, has no source-identifying significance. See In re Hotels.com, L.P., 87 USPQ2d 1100 (TTAB 2008). Rather, it serves only to signify that the user of the domain name is a commercial entity, and that the goods or services offered by the entity involve use of the Internet. See Id. See also In re Oppendahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004). When viewed as a whole, we find that FRANCHISESOURCE.COM is highly similar to FRANSOURCE in appearance and sound in that applicant’s mark wholly incorporates the term SOURCE in registrant’s mark and that the term FRAN in registrant’s mark is more similar than 4 The American Heritage Dictionary of the English Language, (4th Ed. 2000). 5 McGraw Hill Computer Desktop Encyclopedia (9th ed. 2001). Ser No. 77416439 8 dissimilar to the word FRANCHISE in applicant’s mark. With regard to meaning, we find that FRANCHISESOURCE.COM suggests an internet based source for franchise information and related services. While we agree with applicant that FRANSOURCE has no readily apparent meaning in the context of the identified services, we find that registrant’s mark may also suggest a source for franchise-related information and services. Thus, to the extent that registrant’s mark may have a recognized connotation, that connotation would be similar to that of applicant’s mark. As discussed above, the term .COM in applicant’s mark has no source- identifying significance and does not serve to distinguish applicant’s mark from that of registrant. Thus, we find that, when viewed in their entireties, the similarities between FRANCHISESOURCE.COM and FRANSOURCE outweigh their dissimilarities. Consumers who are familiar with the mark, FRANSOURCE, used in connection with registrant’s services, who then see the mark FRANCHISESOURCE.COM used in connection with applicant’s related services, are likely to assume that the owner of the FRANSOURCE mark expanded FRAN to FRANCHISE and added .COM to its mark to identify additional internet- based services such as those identified in the involved application. In other words, consumers are likely to view Ser No. 77416439 9 both marks as variations of each other, and therefore as indicators of a single source. It is settled that under actual marketing conditions, consumers do not necessarily have the luxury of making side-by-side comparisons between marks, and must rely upon their imperfect recollections. Dassler KG v. Roller Derby Skate Corporation, 206 USPQ 255 (TTAB 1980). Accordingly, this du Pont factor favors a finding of likelihood of confusion. Sophistication of Purchasers Applicant also contends that purchasers of the involved services are sophisticated. Even assuming arguendo that purchases of applicant’s and registrant’s services would involve a deliberate decision, this does not mean that the purchasers are immune from confusion as to the origin of the respective services, especially when, as we view the present case, the similarity of the marks and the similarity between the services outweigh any 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]. See also In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 Ser No. 77416439 10 (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.”]. This du Pont factor also favors a finding of likelihood of confusion. Summary In light of the foregoing, and resolving any doubt as we must in favor of the prior registrant, we find that a likelihood of confusion exists between the applied-for mark and the mark in the cited registration. See Hewlett- Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988). Decision: The refusal of registration is affirmed. 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