WWW-Winning-Enterprises

Trademark Trial and Appeal BoardJun 9, 2014

No. 85708928 (T.T.A.B. Jun. 9, 2014)

This Opinion is Not a Precedent of the TTAB Mailed: June 9, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re WWW-Winning-Enterprises _____ Serial No. 85708928 _____ Jenny Allenbaugh of The Law Offices of Jenny Allenbaugh, PLLC, for WWW-Winning-Enterprises. Sean Crowley, Trademark Examining Attorney, Law Office 116, Michael W. Baird, Managing Attorney. _____ Before Quinn, Kuhlke and Wolfson, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: WWW-Winning Enterprises (“Applicant”) seeks registration on the Principal Register of the mark PRODUCTIVITY MATURITY (in standard characters) for business consulting and information services in International Class 35.1 1 Application Serial No. 85708928 was filed on August 21, 2012, based on allegations of a bona fide intent to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). On March 22, 2013, Applicant filed an Amendment to Allege Use (AAU) based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as August 27, 2012. In his brief, the Examining Attorney states that he accepted the AAU on April 19, 2013. Serial No. 85708928 - 2 - The Examining Attorney has refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), having determined that Applicant’s mark so resembles the previously registered mark for a variety of “business consultancy” services, including “business research, in particular research with regard to economic data and information” in International Class 35,2 that use of Applicant’s mark in connection with Applicant’s services is likely to cause confusion, to cause mistake, or to deceive. After the Examining Attorney made the refusal final, Applicant appealed to this Board. We affirm the refusal to register. When the question is likelihood of confusion, we analyze the facts as they relate to the relevant factors set out 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 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). With regard to the services, we base our comparison of the services as they are identified in the Registration and application. In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 2 Registration No. 4004448 issued on August 2, 2011. Serial No. 85708928 - 3 - 1787 (Fed. Cir. 1990). Registrant’s identification covers a wide variety of business consulting services and is broadly worded. Registrant’s “organizational [sic], business, personnel and professional business consultancy, including operational analyses and business comparisons,” “professional business and business organisational [sic] consultancy during business start-ups for others,” “business organisation [sic] and management consultancy,” “business research, in particular research with regard to economic data and information,” and “business and personnel management consultancy, business and business organisational [sic] consultancy” are encompassed by Applicant’s broadly worded “business consulting and information services.” As such the services are legally identical. Further, in view of the identical nature of the services and because there are no limitations as to channels of trade or classes of purchasers in the descriptions of services in the Application and cited Registration, it is presumed that Applicant’s and Registrant’s services are offered in the same channels of trade and to the same classes of purchasers normal for those services. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (the Board may rely on this legal presumption in determining likelihood of confusion). See also 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); American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed Serial No. 85708928 - 4 - to travel in the same channels of trade, and be sold to the same class of purchasers.”). Applicant does not dispute these facts. In view thereof, the du Pont factors relating to the similarity of the services, channels of trade and classes of customers weigh heavily in favor of likely confusion. Turning to the factor of the similarity or dissimilarity of the marks, in making our determination, we compare the marks “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) quoting du Pont, 177 USPQ at 567. Moreover, because the services are identical, the degree of similarity necessary to find likelihood of confusion declines. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007). Finally, because Applicant seeks to register the mark in standard characters we must consider all depictions “regardless of font style, size, or color,” including the stylization used in Registrant’s mark. Citigroup Inc. v. Capital City Bank Group Inc., 637 F.2d 1344, 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011). The rights associated with a mark in standard characters reside in the wording and not in any particular display. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983); In re RSI Systems, LLC, 88 USPQ2d 1445, 1448 (TTAB 2008); In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988). Serial No. 85708928 - 5 - Applicant argues that the Board may only consider all “reasonable” displays and it is “unreasonable to consider that Applicant would display” its mark “in a manner that calls special attention to the internal aspect of ‘IT’ in the second term” because Applicant’s services do not include “information technology (commonly referred to as IT) services.” App. Reply Br. p. 4. Applicant relies on Board cases issued prior to the Citigroup decision of our primary reviewing court, the Court of Appeals for the Federal Circuit. Any limitation the wording “reasonable display” may have had in prior cases was curtailed by the Citigroup decision wherein the Court explained: Neither Phillips nor any other opinion of the United States Court of Customs and Patent Appeals, our predecessor court, or this court has endorsed the T.T.A.B.’s “reasonable manner” limitation of variations evaluated in the DuPont analysis. … The T.T.A.B.’s “reasonable manner” standard limits the range of marks considered in the DuPont analysis. If the registrant complies with Section 2.52 of the Rules of Practice in Trademark Cases and obtains a standard character mark without claim to “any particular font style, size or color,” the registrant is entitled to depictions of the standard character mark regardless of font style, size, or color, not merely “reasonable manners” of depicting its standard character mark. The consideration of only “reasonable” manners of depicting a standard character mark is unsupported by anything other than T.T.A.B practice. The T.T.A.B. should not first determine whether certain depictions are “reasonable” and then apply the DuPont analysis to only a subset of variations of a standard character mark. The T.T.A.B. should simply use the DuPont factors to determine the likelihood of confusion between depictions of standard character marks that vary in font style, size, and color and the other mark. Citigroup, 98 USPQ2d at 1258-59. See also Viterra Inc., 101 USPQ2d at 1909-10. Serial No. 85708928 - 6 - In view thereof, we include the possibility that Applicant’s mark could highlight the IT in MATURITY. As to the “unreasonableness” of such a presumption, Applicant’s identification is broadly worded and could include the subset of business consultancy on information technology or for information technology clients. However, our ultimate determination does not depend on such a possibility. The Examining Attorney argues that the word MATURITY is the dominant portion in Applicant’s and Registrant’s marks, dominating over the additional word PRODUCTIVITY and the stylization, respectively. He asserts that the word PRODUCTIVITY is “weak and highly suggestive when used in connection with applicant’s services.” Ex. Att. Br. p. 5. In support of this position, the Examining Attorney points to Applicant’s specimen of use wherein Applicant uses the term to describe what is essentially the subject matter of the services, i.e., business consultancy to enhance productivity. A few examples are set forth below: Improve the value of your enterprise through proven productivity practices; Fortune 1000 enterprises, and privately owned businesses can increase the value (market cap) and competitiveness of their business by implementing strong productivity programs; … resulting in a specific multi-year pipeline of productivity initiatives including economics; and The second step in building out an effective enterprise- wide productivity program is to understand your business. One of the major components outlined in this step is to complete a productivity maturity™ assessment, specifically where you stand today in managing productivity. Ex. Att. Br. p. 6. Serial No. 85708928 - 7 - The Examining Attorney asserts that both marks “present the overall commercial impression of services, or a provider of services, that is mature, sensible or fully developed” and the mere addition of the word PRODUCTIVITY does not create a distinct commercial impression between the marks. Ex. Att. Br. p. 7. Rather, the Examining Attorney contends that the addition of the word PRODUCTIVITY does not “change the commercial impression of the mark but merely adds to it by informing consumers that it provides mature, sensible or fully developed services in the productivity field.” Id. Applicant argues that the word PRODUCTIVITY is the dominant element in its mark because it is the first word in its mark and has a greater impact on the “overall commercial impression as the difference in the first terms to be pronounced or heard lessens the likelihood of confusion.” App. Br. p. 6. As a result, the marks are different in sound, appearance, connotation and commercial impression. Applicant points to the same excerpts from its specimen of use arguing that while PRODUCTIVITY is suggestive of the services, it is not descriptive or highly suggestive of the services as PRODUCTIVITY is not “something that can be provided to a customer of the services. Rather, what’s provided are business audits, training and counseling as evidenced by the very same examples cited by the Examining Attorney.” App. Reply Br. p. 2. Applicant continues that even if considered highly suggestive, it remains sufficient to distinguish the marks and the term MATURITY “standing alone is not entitled to the broad scope of protection that has been granted to it by the Examining Attorney.” App. Reply Br. p. 3. Serial No. 85708928 - 8 - The term PRODUCTIVITY is clearly suggestive of Applicant’s services. Moreover, there is no evidence of record to diminish the relative strength of the term MATURITY in connection with these services. To that extent, we view the word MATURITY as being imbued with a stronger source identifying nature in Applicant’s mark. With regard to Applicant’s argument that the word PRODUCTIVITY is the dominant element because it is the first term in its mark, Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988), we find that the addition of the suggestive term PRODUCTIVITY is not sufficient to distinguish the marks, but more likely to be viewed as a variation or subset of the business consulting services provided by the source identified as MATURITY. As to the stylization in the cited Registration, while it is possible some purchasers would perceive the framing of the letters IT to connote “information technology” this perception would not occur if the business consultancy involved other aspects of the business and Registrant’s identification encompasses more than just “information technology” (regardless of what Registrant’s actual services encompass) and Applicant’s services encompass the subset of business consulting in the field of “information technology.” Therefore, even giving the stylization some weight in our analysis does not serve to act as a distinction in the overall commercial impression or connotation between the marks. In sum, we find that the additional word PRODUCTIVITY in Applicant’s mark and the stylization in Registrant’s mark are not sufficient to avoid a likelihood of confusion, when the marks are viewed in their entireties, because Applicant’s mark Serial No. 85708928 - 9 - incorporates the entirety of Registrant’s mark and the common element MATURITY is the more distinctive element in Applicant’s mark. Because the more distinctive element in Applicant’s mark is legally identical to the entirety of Registrant’s mark, the similarities outweigh the dissimilarities of the marks, creating a similar overall commercial impression; in particular, where, as here, the services are legally identical. We find that Applicant’s mark PRODUCTIVITY MATURITY is similar to Registrant’s mark , and this factor also weighs in favor of finding a likelihood of confusion. Applicant also argues that the purchasers of its services are sophisticated. There is no evidentiary support for Applicant’s position; however, the inherent nature of the services would indicate they would be purchased with a higher level of care than an impulse purchase item. Nonetheless, without more, we cannot make a determination as to the nature of the conditions of purchase, and if they are such to outweigh the other du Pont factors that weigh heavily in favor of likely confusion. See Elec. Design & Sales, Inc. v. Elec. Data Sys. Corp., 954 F.2d 713, 21 USPQ2d 1388 (Fed. Cir. 1992). In view thereof, we find this factor to be neutral. In conclusion, because the marks are similar, the services are legally identical, and the channels of trade and consumers are the same, confusion is likely between Applicant’s mark PRODUCTIVITY MATURITY and the mark in the cited Registration. Decision: The refusal to register Applicant’s mark PRODUCTIVITY MATURITY is affirmed.