Twenty-First Century Products, Inc.v.21st Century Marketing Group, Inc.

Trademark Trial and Appeal Board

Oct 21, 1999

No. 92026520 (T.T.A.B. Oct. 21, 1999)

Paper No. 13
DEB
THIS DISPOSITION IS NOT CITABLE AS PRECEDENT OF THE TTAB
OCT. 22, 1999
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Twenty-First Century Products, Inc.
v.
21st Century Marketing Group, Inc.
_____
Cancellation No. 26,520
_____
Arthur J. Greenbaum and Felicia G. Traub of Cowan Liebowitz &
Latman, P.C. for Twenty-First Century Products, Inc.
Joseph A. Tranfo of Tranfo & Tranfo, L.L.C. for 21st Century
Marketing Group, Inc.
_____
Before Simms, Chapman and Bucher, Administrative Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Twenty-First Century Products, Inc. (petitioner), a New York
corporation, seeks cancellation of three registrations owned by
21st Century Marketing Group, Inc. (respondent), a Connecticut
corporation. These registrations are as follows:
“TWENTY-FIRST CENTURY MARKETING GROUP,” for “public
relations services for corporations and businesses;
namely, finding sporting events and educational and
environmental causes for corporate sponsorship and
negotiating the terms of the corporate sponsorship
Cancellation No. 26,520
2
and coordinating the sponsorship activities,” in
International Class 35;1

1 Reg. No. 1,799,591 issued on October 19, 1993. This registration
matured from an application filed with the U.S. Patent and Trademark
Office on April 21, 1992, claiming first use dates of February 14, 1991.
The term “Marketing Group” is disclaimed.
Cancellation No. 26,520
3
“21ST CENTURY MARKETING GROUP,” for “public relations
services for corporations and businesses; namely,
finding sporting events and educational and
environmental causes for corporate sponsorship and
negotiating the terms of the corporate sponsorship
and coordinating the sponsorship activities,” in
International Class 35;2 and,
“21ST CENTURY MARKETING GROUP and design” (as shown
below), for “public relations services for
corporations and businesses; namely, finding
sporting events and educational and environmental
causes for corporate sponsorship and negotiating the
terms of the corporate sponsorship and coordinating
the sponsorship activities,” in International Class
35.3
As the basis for cancellation, petitioner alleges that it is
the owner of the mark “21ST CENTURY MARKETING” for “preparing
direct mail advertising for others, and gathering business
information; analyzing, evaluating, and planning direct marketing
programs, namely, consultation on the mailing list data base,
architecture, and merge/purge coordination of the programs; and

2 Reg. No. 1,820,089 issued on February 8, 1994. This registration
matured from an application filed with the U.S. Patent and Trademark
Office on April 22, 1991, claiming first use dates of February 14, 1991.
The term “Marketing Group” is disclaimed.
3 Reg. No. 1,838,064 issued on May 31, 1994. This registration
matured from an application filed with the U.S. Patent and Trademark
Office on April 22, 1991, claiming first use dates of February 14, 1991.
The term “Marketing Group” is disclaimed.
Cancellation No. 26,520
4
brokerage, consultation, and management services concerning
alternative media advertising, namely, advertising in package
inserts, ride-alongs, card decks, cooperative advertising, and
cable television inserts,” having commenced use thereof in
interstate commerce since at least as early as October 5, 1977;
that petitioner, on July 22, 1996, filed its pending application,
Serial Number 75/136,968, to register such mark for the services
recited above; and that its application presently stands refused in
view of the existence of the three registrations it seeks to
cancel.
Respondent, in its answer, denies the essential allegations of
the petition to cancel.
The record consists of the pleadings; the files of the
involved registrations; and, as petitioner's case-in-chief, the
August 5, 1998 testimony, with exhibits, of David O. Schwartz,
president of petitioner; a notice of reliance on the Patent and
Trademark Office file wrapper for petitioner’s application; a
notice of reliance on printed publications, and a notice of
reliance on certificates of incorporation. Respondent has
submitted no evidence in this proceeding. Only petitioner filed a
brief. An oral hearing was not requested.
Petitioner has established through official records from the
State of New York that “Twenty-First Century Products, Inc.” was
incorporated in October 1977, and recorded its assumed name with
the New York Secretary of State (“Twenty-First Century Products,
Cancellation No. 26,520
5
Inc. d/b/a Twenty-First Century Marketing”) in February 1980.4 The
testimony of Mr. Schwartz confirms these dates for petitioner’s
having adopted this trade name and service mark.5 Petitioner’s
services are listed, for example, in annual, printed publications,
such as the Standard Rate and Data Service (SRDS) Directory of
Mailing Lists for the years 1985 to 1992.6 The totality of the
evidence in the record demonstrates that petitioner has used the
mark “21ST CENTURY MARKETING” in connection with its mailing list
marketing and related services continuously since October 5, 1977.
This cumulative evidence supports petitioner’s claim that its mark
“21ST CENTURY MARKETING” was being used in connection with its
mailing list marketing services prior to respondent’s April 1991
filing dates, and, of course, respondent has failed to present any
evidence or arguments to the contrary. Accordingly, petitioner has
established prior and continuous use by a preponderance of the
evidence.
We turn next to likelihood of confusion. In the course of
rendering this decision, we have followed the guidance of In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1362, 177 USPQ 563,
567-68 (CCPA 1973), which sets forth the factors that should be
considered, if relevant, in determining likelihood of confusion.

4 Notice of Reliance on Certificates of Incorporation, of August 14,
1998, under Trademark Rule 2.122(e).
5 Testimony Deposition of David O. Schwartz, pp. 11-12.
6 Notice of Reliance on Printed Publications, of August 13, 1998,
under Trademark Rule 2.122(e), Exhibits 1 and 9.
Cancellation No. 26,520
6
When focusing on the similarity or dissimilarity of the marks
in their entireties as to appearance, sound, connotation and
commercial impression, it is clear immediately that the marks
herein are substantially identical. Respondent’s marks, “TWENTY-
FIRST CENTURY MARKETING GROUP” and “21ST CENTURY MARKETING GROUP”
(with “Marketing Group” disclaimed in all three registrations),
differ from petitioner’s mark, “21ST CENTURY MARKETING” (with
“Marketing” disclaimed) only with the addition of the final word
“Group.” In the context of a trade name and/or service mark for an
organization doing marketing, the word “group” follows the word
“marketing” so naturally and effortlessly one hardly notices it.
Accordingly, we conclude that compared with the source-indicating
value of the shared words herein, “21ST CENTURY MARKETING,” the
difference created by adding the word “group” is not significant.
Finally, while Reg. No. 1,838,064 contains a large “21” and two
rectangular design features, this presentation merely serves to
accentuate the “21ST CENTURY” component of the mark.
We turn next to the similarity in the nature of the services
as described in respondent’s registrations and in connection with
which petitioner’s prior mark is in use. Respondent’s particular
niche is helping companies whose marketing strategy includes “event
marketing” (e.g., in association with sporting events, educational
forums, community festivals, charitable fundraisers, etc.).
Petitioner is involved with managing and brokering mailing lists,
preparing direct mail advertising, gathering business information,
analyzing, evaluating, and planning direct marketing programs, and
Cancellation No. 26,520
7
providing brokerage, consultation, and management services dealing
with alternative media advertising. While these are different
types of marketing activities, they do represent alternative ways
that companies (i.e., the clients of these respective marketing
firms) may choose to promote their businesses. In this sense,
petitioner’s array of services, including that of brokering mailing
lists and pushing alternative media, might well compete with
respondent’s event marketing for a share of any company’s marketing
budget. We believe that a corporate purchaser who is aware of
petitioner’s direct mail, promotional services offered under the
mark “21ST CENTURY MARKETING,” who also encounters respondent’s
nearly identical mark “21ST CENTURY MARKETING GROUP” used in
connection with finding events for corporate sponsorship, would be
likely to believe that these services come from the same source.
Decision: The petition to cancel is granted and Registration
Numbers 1,799,591, 1,820,089, and 1,838,064 will be cancelled
in due course.
R. L. Simms
B. A. Chapman
D. E. Bucher
Administrative Trademark Judges,
Trademark Trial and Appeal Board