HSB Solomon Associates LLC

Trademark Trial and Appeal Board

Aug 10, 2016

No. 86404377 (T.T.A.B. Aug. 10, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 10, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re HSB Solomon Associates LLC
_____
Serial No. 86404377
_____

George R. Schultz of Schultz & Associates, PC
For HSB Solomon Associates LLC

Laura Golden, Trademark Examining Attorney, Law Office 103,
Michael Hamilton, Managing Attorney.
_____
Before Cataldo, Adlin and, Lynch
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

Background

HSB Solomon Associates LLC (“Applicant”) seeks registration on the Principal
Register of the mark MEI, in standard characters, for “Business consulting services,
namely, benchmarking forecasting, and formulation of best practices in the oil, gas,
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chemical, refining and power generation industries” in International Class 35.1 The
Examining Attorney refused registration under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), on the ground that use of Applicant’s mark is likely to cause
confusion with the following two registered marks, owned by different entities:2

Registration No.
3973148
(‘148 Registration)

Advertising and
marketing consultancy;
Assistance, advisory
services and consultancy
with regard to business
planning, business
analysis, business
management, and
business organization;
Business administration
consultancy; Business
consultation; Business
consultation services;
Business consulting
services in the field of
entrepreneurship (Class
35)

Registration No.
4095620
(‘620 Registration)
Business management
consulting services
(Class 35)

1 Application Serial Number 86404377, was filed September 24, 2014, based on intent to use
under Section 1(b) of the Trademark Act, 15 USC § 1051(b).
2 Registration No. 3973148 issued June 7, 2011; Section 8 and Section 15 affidavits filed.
Registration No. 4095620 issued February 7, 2012.
Serial No. 86404377
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After the Examining Attorney made the refusal final, Applicant appealed and
requested reconsideration. The Examining Attorney denied the request for
reconsideration, and the appeal resumed. We affirm the refusal to register as to the
‘620 Registration, and reverse as to the ‘148 Registration.
The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, hereinafter referred to as “du Pont factors”); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the relatedness of the services. See In re Chatam Int’l Inc., 380 F.2d
1340, 71 USPQ2d 1944 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the [services] and differences in the marks.”).
We must focus on the services as identified in the application and registration, not
on extrinsic evidence of actual use. Stone Lion Capital Partners, LP v. Lion Capital
LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Systems, Inc.
v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990). The identifications of services in the subject application and both cited
registrations all relate to business consulting services. While Applicant limits its
business consulting services to forecasting, benchmarking and the formulation of best
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practices in the particular industries of chemical refining and power generation, the
cited registrations have broader recitations. The ‘148 Registration’s recitation of
“[b]usiness consultation” contains no restrictions, and the ‘620 Registration identifies
“[b]usiness management consulting” without further limitation. Applicant’s own
identification makes clear that benchmarking, forecasting, and the formulation of
best practices are types of business consultation services, which therefore would be
encompassed within the ‘148 Registration’s identification. Applicant offers no
argument on this du Pont factor as to the ‘148 Registration, and we find the services
legally identical.
Although Applicant contends that the “business management consulting” in the
‘620 Registration “excluded Applicant’s services to the energy industry,”3 we disagree.
We note that Applicant never argued this distinction in the nature of the services to
the Examining Attorney, and tellingly, when submitting third-party registrations to
show the alleged weakness of MEI, as discussed infra, Applicant included
registrations with business consultation and with business management
consultation, and characterized the third-party registrations as having “directly
overlapping and often identical services.”4 Applicant’s “forecasting” services involve
predicting future business outcomes,5 and its “benchmarking” services involve

3 6 TTABVUE 14.
4 December 22, 2015 Request for Reconsideration at 6-8.
5 June 23, 2015 Office Action at 23-37. We have not relied on the dictionary definitions
from British English or U.K. versions of online dictionaries that the Examining Attorney
included in the record. See In re Manwin/RK Collateral Trust, 111 USPQ2d 1311, 1313
n.18 (TTAB 2014).
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comparing performance metrics of businesses.6 “Management,” as set forth in the ‘620
Registration, means “the act or skill of controlling and making decisions about a
business, department, sports team, etc.”; “the act or art of managing: the conducting
or supervising of something (as a business).”7 Thus, “business management
consulting,” as recited in the ‘620 Registration, could include any forecasting and
benchmarking necessary to consult on strategic decisions about the business. Or, the
conducting or supervising of a business could include formulating best practices for
it. Thus, we also find that the services in the ‘620 Registration encompass Applicant’s
services. See In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992) (Unrestricted
and broad identifications are presumed to encompass all goods of the type described);
In re Elbaum, 211 USPQ 639, 640 (TTAB 1981) (“Thus, where the goods in a cited
registration are broadly described and there are no limitations in the identification
of goods as to their nature, type, channels of trade or classes of purchasers, it is
presumed that the scope of the registration encompasses all goods of the nature and
type described”).
Thus, Applicant’s services overlap at least in part with those in each of the cited
registrations, and this overlap renders the services legally identical in part. See Inter
IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014) (It is sufficient

6 June 23, 2015 Office Action at 5-8, 15-19. See footnote 4, supra.
7 Merriam-Webster Dictionary online, entry for “management,” http://www.merriam-
webster.com/dictionary/management. The Board may take judicial notice of dictionary
definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that
exist in printed format or have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d
1375, 1377 (TTAB 2006).
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for a refusal based on likelihood of confusion that relatedness is established for a
service in each class).
Turning to the marks, we must compare them “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). The test assesses
not whether the marks can be distinguished in a side-by-side comparison, but rather
whether their overall commercial impressions are so similar that confusion as to the
source of the services offered under the respective marks is likely to result. Coach
Services Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed.
Cir. 2012); see also Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB
2012).
‘620 Registration
Applicant’s proposed mark is MEI, and the mark in the ‘620 Registration is

. The marks share a significant visual and phonetic similarity
because of the common literal component, MEI, the only literal element in both
marks. In the ‘620 Registration, we find that the letters dominate the mark. While
this mark also includes a design, generally “the verbal portion of the mark is the one
most likely to indicate the origin of the goods to which it is affixed.” Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGaA v. New Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015), citing CBS Inc. v. Morrow, 708
F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983). Greater weight is often given to the
Serial No. 86404377
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literal element of a mark because that is what purchasers would use to refer to or
request the goods or services. See, e.g., In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1911 (Fed. Cir. 2012). In addition, the lettering in the registered mark is bold
and prominent in comparison to the design, which wraps around the last letter so
that the partial penguin design appears to be in the background. In considering the
marks in their entireties, visually, they share the key similarity of the dominant MEI
component, and Applicant’s standard character mark could be presented in any font
style or size, including in the same form used in the registered mark. See Viterra, 101
USPQ2d at 1909; see also 37 C.F.R. § 2.52(a). This dominant feature also creates an
identical sound between the marks, and strongly contributes to a similar commercial
impression. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985). (While marks must be compared in their entireties, “there is nothing improper
in stating that, for rational reasons, more or less weight has been given to a particular
feature of the mark, provided the ultimate conclusion rests on a consideration of the
marks in their entireties”).
Applicant contends that the inclusion of the penguin design in the registered mark
does create a distinct commercial impression because the penguin figure supposedly
refers to “‘Tux, the mascot for the most widely-used computer server operating
system, Linux.”8 Looking past the recitation of services for “business management
consulting” in the ‘620 Registration, Applicant claims that the owner of the ‘620
Registration “offers computer programming and software development services,” and

8 6 TTABVUE 9.
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the penguin design therefore will give the commercial impression of “the registrant’s
connection with Linux-based platforms for its software development and
programming services.”9
Applicant’s argument runs afoul of the settled principle that “the identification of
goods/services statement in the registration, not the goods/services actually used by
the registrant, frames the issue.” Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1846 (Fed. Cir. 2000). Thus, we reject Applicant’s proposal to consider
the commercial impression of the registered mark in connection with different
services than those recited in the ‘620 Registration. In addition, even if we were to
consider Applicant’s speculative arguments in this regard, they would fail for lack of
evidentiary support. First, Applicant points to no direct evidence that the owner of
the ‘620 Registration uses the Linux platform or has a connection to Linux. Second,
Applicant’s supporting evidence regarding Linux’s “Tux” mascot consists of a
Wikipedia entry that displays images of numerous “Tux variants.”10 Notably, none of
these more cartoonish images, such as the image below, resembles the more realistic
and sleek penguin design in the registered mark.

9 Id.
10 May 25, 2015 Response to Office Action at 18-25.
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Thus, nothing about the penguin design in the registered mark results in such a
different commercial impression that confusion with Applicant’s MEI mark would be
unlikely. We find the overall commercial impressions of the marks similar.
‘148 Registration
The mark in the ‘148 Registration is . While this mark also
contains the letters MEI, it includes the additional wording
“MULTICULTURAL ENTREPRENEURIAL INSTITUTE” as well as design
elements described in the registration as “a yellow sun design,” and “[a] yellow and
black curved underline design element.”11 The additional wording creates a
somewhat different look and sound, and it especially impacts the commercial
impression. The additional wording in the ‘148 Registration has been disclaimed as
descriptive, but it informs the consumer of the significance of the letters MEI in the
mark, an acronym for “Multicultural Entrepreneurial Institute.” Thus, although the
MEI lettering is larger, the wording contributes substantially to the commercial
impression of the mark by conveying to consumers that the business consulting
services offered under the mark likely have a multicultural and entrepreneurial
perspective. Also, the use of “Institute” brings to mind an organization with an
educational character as the source of the services.12 These provide points of
distinction from Applicant’s MEI mark, which would be encountered in connection

11 November 26, 2014 Office Action at 5-6 (attachment of the ‘148 Registration).
12 We take judicial notice of the entry for “institute” in the Merriam-Webster Dictionary
online, http://www.merriam-webster.com/dictionary/institute: “an educational institution
and especially one devoted to technical fields.”
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with services for the chemical refining and power generation industries. Consumers
in these industries would be unlikely to presume that such services offered under the
mark MEI come from a “Multicultural Entrepreneurial Institute,” or any entity with
an educational character. Thus, the commercial impressions of Applicant’s mark and
the mark in the ‘148 Registration differ significantly.
We next consider the third and fourth du Pont factors relating to trade channels
and purchaser sophistication. Based on the partial overlap in services between the
application and both cited registrations, it follows that the classes of purchasers and
channels of trade for such services also would overlap and must be considered legally
identical. See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the
in-part identical and in-part related nature of the parties’ goods, and the lack of any
restrictions in the identifications thereof as to trade channels and purchasers, these
clothing items could be offered and sold to the same classes of purchasers through the
same channels of trade.”); see also In re Smith and Mehaffey, 31 USPQ2d 1531, 1532
(TTAB 1994) (“Because the goods are legally identical, they must be presumed to
travel in the same channels of trade, and be sold to the same class of purchasers.”).
The recitations in both registrations are unrestricted, and we presume that the
consulting services in the cited registrations are marketed in all usual trade channels
and to all normal classes of purchasers, including in the chemical refining and power
generation industries that are the focus of Applicant’s business consulting services.
Cunningham 55 USPQ2d at 1846 (affirming Board finding that where the
identification is unrestricted, “we must deem the goods to travel in all appropriate
Serial No. 86404377
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trade channels to all potential purchasers of such goods”); In re Wilson, 57 USPQ2d
1863, 1865 (TTAB 2001).
Applicant argues that its customers must be considered sophisticated because
they “are responsible for the operation of huge power plants and refineries in the
energy industry.”13 Applicant further alleges that its services cost hundreds of
thousands of dollars, on average, involve extensive communication, and are time-
consuming, such that consumers would be informed as to the source.14 However, these
arguments are not persuasive because Applicant’s identification of services controls,
rather than Applicant’s characterization in its brief of the services as actually offered
in the marketplace. See e.g., Stone Lion Capital Partners110 USPQ2d at 1162-63
(“Stone Lion effectively asks this court to disregard the broad scope of services recited
in its application, and to instead rely on the parties’ current investment practices …
the Board properly considered all potential investors for the recited services,
including ordinary consumers seeking to invest in services with no minimum
investment requirement.”) (emphasis in original); Cunningham, 55 USPQ2d at 1846;
see also Octocom Systems, 16 USPQ2d at 1787 (“The authority is legion that the
question of registrability of an applicant’s mark must be decided on the basis of the
identification of goods [or services] set forth in the application regardless of what the
record may reveal as to the particular nature of an applicant’s goods [or services], the

13 6 TTABVUE 16.
14 Id. at 17.
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particular channels of trade or the class of purchasers to which the sales of goods [or
services] are directed”).
While Applicant alleges its actual customers are only large-scale power plants,
Applicant’s recited business consultation services are not so limited. They may be
offered to all types of power-generation or chemical-refining businesses, including
small businesses whose decision-making personnel may vary widely in terms of
experience, care and sophistication. Applicant submitted no evidence on the nature
of the industries suggesting otherwise. Thus, while we acknowledge a slight
sophistication inherent in the industries identified in Applicant’s identification, this
factor is not as compelling as Applicant contends, particularly as the record contains
no support for its claims regarding the relevant consumer.
Applicant’s reliance on Electric Design & Sales, Inc. v. Electric Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388 (Fed. Cir. 1992) for its customer sophistication
argument is misplaced. The pleaded registration in Electric Design & Sales, from
which the Court inferred customer sophistication, covered “the design,
implementation and management of electronic data processing programs and
telecommunications services.” Id. at 1389. The Court also noted “Opposer sells its
computer services to customers in the medical, automotive, merchandising,
communications and other fields. Its customers are mostly large corporations such as
Blue Cross and Blue Shield, General Motors, Sears, Roebuck & Co., and International
Business Machines.” Id. In this case and on this record, Applicant’s recited
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formulation of best practices, benchmarking, and forecasting services are not
inherently so complex.
Citing Jack Wolfskin, 116 USPQ2d at 1136, Applicant argues that the du Pont
factor focusing on the number and nature of similar MEI marks in use on similar
services means that MEI must be considered weak. Even where the record lacks proof
of actual third-party use and its extent, third-party registration evidence may show
that a term carries a highly suggestive connotation in the relevant industry and
therefore may be considered somewhat weak. Juice Generation, Inc. v. GS Enterprises
LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015). Applicant’s third-party
registration evidence consists of: a registration for MEI in standard characters for,
inter alia, “promotional, incentive and marketing services”; three registrations
containing MEI for “business consulting services,” “business administration
consultancy,” and “business management and consultation”; and 11 registrations
that include as part of the mark three-letter formulations beginning with “M” and
ending with “I” but with a letter other than “E” in the middle, for various types of
business consulting or management services.15
First, Applicant correctly points out that the third-party MEI registration for
promotional, incentive and marketing services coexists with the cited ‘148
Registration that includes marketing services (in addition to business consultation
services). However, the probative value of that coexistence to show weakness as to
the business consulting services at issue here is dubious. Second, the three third-

15 December 22, 2015 Request for Reconsideration at 11-39.
Serial No. 86404377
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party registrations containing MEI for the relevant services are small in number and
different in commercial impression from the cited marks. The “MEI & MARK” mark
gives the impression that MEI either is a name or a spelling variant of “me.”
According to the registration for “MEI-XIN,” the mark is foreign wording that
translates to “pretty heart.” The third registered mark includes cartoon animal
designs and presents the wording in stylized lettering as “Mei,” unlike the use of MEI
as an acronym in large capitalized block lettering. Third, turning to the third-party
registrations of other three-letter marks, we do not agree with Applicant that these
different marks, that do not consist of or include “MEI,” are similar or show that
“MEI” is weak, though they do suggest that consumers may make distinctions among
three-letter marks in the industry, particularly when the various marks include
stylization or other additional distinguishing matter. Finally, we note the coexistence
of the MEI marks in the ‘148 Registration and the ‘620 Registration, for overlapping
business consulting services.
Overall, while the record includes some probative evidence on this factor for the
likelihood of confusion analysis, we find the evidence here less probative and less
voluminous than that in Juice Generation or Jack Wolfskin.16 Thus, while we do not
find MEI to be weak, the evidence suggests that MEI is not particularly strong, either.

16 Juice Generation involved 26 uses or registrations of the same phrase for restaurant
services. Juice Generation, 115 USPQ2d at 1675. Neither the Court nor the Board in Jack
Wolfskin provided a number of registrations or uses under consideration, though the Court
referred to the evidence as “voluminous.” Jack Wolfskin, 116 USPQ2d at 1136.
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Conclusion
Balancing the relevant du Pont factors, based on the overlap of the services and
trade channels, and the similarity of the marks, regardless of the minimal consumer
sophistication and number and nature of similar marks in use on identical or similar
services, confusion between Applicant’s standard character mark, MEI, and the mark
in the ‘620 Registration, , is likely.
However, confusion between Applicant’s mark and the mark in the ‘148
Registration, , is unlikely because of the differences between the marks and
their commercial impressions discussed above.
Decision: The refusal to register Applicant’s mark is affirmed in part and
reversed in part.