UMI Co.

Trademark Trial and Appeal Board

Aug 5, 1999

No. 75003713 (T.T.A.B. Aug. 5, 1999)

Paper No. 15
BAC
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT OF THE TTAB AUG 5, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re UMI Company
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Serial No. 75/003,713
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Richard A. Gaffin of Miller, Canfield, Paddock and Stone,
P.L.C. for UMI Company
Julia S. Shields, Trademark Examining Attorney, Law Office
109 (Ronald R. Sussman, Managing Attorney)
_______
Before Cissel, Walters and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
An application has been filed by UMI Company (a
corporation of Delaware) to register the mark INFOSTORE for
“obtaining article reprints, reports, documents and
government records in an expedited manner, in subject areas
requested by the customer.”1

1 Application Serial No. 75/003,713, filed October 6, 1995. The
claimed date of first use is April 27, 1995. Applicant claimed
ownership of Registration No. 1,399,896, issued July 1, 1986,
Section 8 accepted, Section 15 acknowledged, for the mark THE
INFORMATION STORE for “document retrieval services,” with a
Ser. No. 75/003,713
2
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d), on the ground that applicant’s mark, when
used in connection with its identified services, so
resembles the registered mark shown below
for “pickup, storage and delivery services for documents,
files and computer media,”2 as to be likely to cause
confusion, mistake or deception.
When the refusal was made final, applicant appealed.
Briefs have been filed, but an oral hearing was not
requested.
We affirm. In reaching this conclusion, we have
followed the guidance of the Court 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, two key
considerations are the similarities between the marks and
the similarities between the goods and/or services. See

claimed date of first use of January 19, 1979. The term
“information” is disclaimed.
2 Reg. No. 1,514,878, issued November 29, 1988, Section 8
affidavit accepted, Section 15 affidavit acknowledged.
Ser. No. 75/003,713
3
Federated Food, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
The Examining Attorney contends that the word feature
is dominant in both marks; that the slightly different
spellings are phonetic equivalents; that applicant has
simply adopted the word portion of the registered mark in
its mark; and that as applicant’s mark INFOSTORE is
presented for registration in typed form, applicant could
alter the actual presentation of the mark at any time in
other ways that emphasize the two syllables. The Examining
Attorney further contends that the services, as identified,
are similar and overlapping; and that it is presumed that
the registrant’s broad identification of services
encompasses all types of pickup, storage and delivery of
documents, including those covered by applicant’s more
specific recitation of services; and that the services must
be presumed to travel through all normal channels of trade
and are available to all potential consumers.3

3 Applicant essentially objected to the excerpted Nexis stories
submitted by the Examining Attorney on the basis that these
stories are incomplete and are hearsay. Applicant’s objection is
not well taken because applicant was at liberty to investigate
and file any additional portions of the stories it found
beneficial, and because the excerpted stories are considered only
in that they show the terms appeared in the articles, not for the
truth of the matters asserted therein. See In re Murphy Door Bed
Company, Inc., 223 USPQ 1030, footnote 9 (TTAB 1984).
Ser. No. 75/003,713
4
Applicant contends that the marks present different
connotations, specifically, registrant’s mark connotes
“storage” while the applicant’s connotes “store”; that the
registered mark includes a significant design; that the
registrant’s services, as shown on the specimens of record
in the application which matured into the registration, are
essentially a document storage service, whereas applicant
has shown that it offers a research service which locates,
copies and provides third-party material to its customers;
and that within the broad category of information
management, there should be no per se rule of a finding of
likelihood of confusion.4
Turning first to a consideration of the respective
marks, we find there is a strong similarity between the
marks. It is clear that registrant’s mark includes a
design feature. However, it is not improper to give more
weight to a dominant feature of a mark, in this instance,
the word portion of the mark. See In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); and

4 The Examining Attorney, citing TBMP §1208, objected to all four
exhibits submitted by applicant on the basis that they were not
accompanied by an authenticating affidavit or declaration. We
find the Examining Attorney’s reading of the TBMP too strict.
There is no requirement that every item of evidence submitted by
the applicant in an ex parte case must be verified by affidavit
or declaration. We have considered applicant’s exhibits for
whatever probative value, if any, they have.
Ser. No. 75/003,713
5
In re Appetito Provisions Co. Inc., 3 USPQ2d 1553 (TTAB
1987). Applicant’s word mark is identical in sound to the
word portion of the cited registrant’s mark. The inclusion
of the silent letter “E” in applicant’s mark is
insignificant regarding the pronunciation.
The design feature of registrant’s mark does not serve
to distinguish the marks because purchasers are unlikely to
remember some differences between the marks. Under actual
market conditions, consumers generally do not have the
luxury of making side-by-side comparisons. See Puma-
Sportschuhfabriken Rudolf Dassler KG v. Roller Derby Skate
Corporation, 206 USPQ 255, 259 (TTAB 1980). The emphasis
in determining likelihood of confusion is not on a side-by-
side comparison of the marks, but rather must be on the
recollection of the average purchaser, who normally retains
a general, rather than a specific, impression of the many
trademarks encountered; that is, the purchaser’s
fallibility of memory over a period of time must also be
kept in mind. See Grandpa Pidgeon’s of Missouri, Inc. v.
Borgsmiller, 477 F.2d 586, 177 USPQ 573 (CCPA 1973); and
Edison Brothers Stores v. Brutting E.B. Sport-
International, 230 USPQ 530 (TTAB 1986).
The words INFOSTOR and INFOSTORE are also similar, if
not identical, in connotation. Applicant’s argument that
Ser. No. 75/003,713
6
the syllable “STORE” in its mark suggests “a retail entity
for finding information” (brief, p. 6), whereas “STOR” in
the registrant’s mark suggests “storage,” is not
persuasive. First, this is merely argument by applicant’s
attorney, as there is no evidence of record that the
purchasing public would draw these distinctions. Moreover,
we take judicial notice of The American Heritage Dictionary
definition of “store” which includes not only “a place
where merchandise is offered for sale,” but also “to
receive or put away for future use.”5 That is, the word
“store” relates not only to retail stores but also to
storing items someplace.
We find that applicant’s mark and the registrant’s
mark are substantially similar in sound, pronunciation,
connotation, and overall commercial impression.
Turning next to a consideration of the involved
services, applicant’s services are “obtaining article
reprints, reports, documents and government records in an
expedited manner, in subject areas requested by the
customer,” and the services in the cited registration are
“pickup, storage and delivery services for documents, files
and computer media.” Clearly both identifications refer to
delivery of documents services. We are aware that

5 See TBMP §712.01, and cases cited therein.
Ser. No. 75/003,713
7
applicant strongly contends that in the actual marketplace
(as evidenced by e.g., a specimen of use from the cited
registration, a specimen of use from applicant’s
application and one other brochure by applicant),
registrant is in the business of traditional record storage
services for businesses who have the registrant pickup and
store documents and then deliver back any requested
records; whereas applicant is a research service which
locates and provides copies of third-party articles to its
customers. The problem we have with applicant’s argument
is that the cited registrant’s identification of services
is not limited solely to the storage of documents, as
applicant contends. Likewise, applicant’s identification
of services is not limited to conducting research and
providing the documents therefrom. Rather, the cited
registration has a broad identification which includes
delivery of documents, and the applicant identified its
services as obtaining documents for its customers.
Of course, the Board is constrained to compare the
services as identified in the application with the services
as identified in the cited registration. If the
registrant’s services and the applicant’s services are
described so as to encompass or overlap, then applicant
cannot properly argue that, in reality, the actual services
Ser. No. 75/003,713
8
of the applicant and registrant are not similar. See
Canadian Imperial Bank of Commerce, National Association v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987); In re Trackmobile Inc., 15 USPQ2d 1152 (TTAB 1990);
and Peopleware Systems, Inc. v. Peopleware, Inc., 226 USPQ
320 (TTAB 1985).
In its reply brief, applicant cites the Trackmobile
case, supra, arguing that in the current case, the
extrinsic evidence could be considered to the extent there
is ambiguity in the meaning of the identification of
services. We do not find the identifications of services
are ambiguous. Registrant’s identification may be broad,
and applicant’s identification may not be precisely worded
to refer to applicant’s actual research services, but
neither identification is ambiguous or unclear.
Moreover, it is well settled that services need not be
identical or even competitive to support a finding of
likelihood of confusion. It is sufficient that the
services are related in some manner or that the
circumstances surrounding their marketing are such that
they would likely be encountered by the same persons under
circumstances that could give rise to the mistaken belief
that they emanate from or are associated with the same
source. See In re Peebles Inc., 23 USPQ2d 1795, 1796 (TTAB
Ser. No. 75/003,713
9
1992); and Monsanto Co. v. Enviro-Chem Corp., 199 USPQ 590,
596 (TTAB 1978).
Inasmuch as neither applicant’s nor the cited
registrant’s identification of services is restricted as to
trade channels or purchasers, the Board must consider that
the parties’ respective services could be offered and sold
to the same class of purchasers through all normal channels
of trade for such services. See In re Smith and Mehaffey,
31 USPQ2d 1531 (TTAB 1994); and In re Elbaum, 211 USPQ 639
(TTAB 1981).
We find that the same person may seek applicant’s and
the cited registrant’s services; and upon seeing the
substantially similar marks INFOSTOR (and design) and
INFOSTORE for the respective services, may believe the
services emanate from or are otherwise sponsored by or
affiliated with the same source.
Finally, any doubt on the question of likelihood of
confusion must be resolved against the newcomer as the
newcomer has the opportunity of avoiding confusion, and is
obligated to do so. See In re Hyper Shoppes (Ohio) Inc.,
837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and Hilson
Research Inc. v. Society for Human Resource Management, 27
USPQ2d 1423, at 1440 (TTAB 1993).
Ser. No. 75/003,713
10
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.
R. F. Cissel
C. E. Walters
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal Board