ICS Systems, Inc.

Trademark Trial and Appeal Board

Feb 28, 2012

No. 77906086 (T.T.A.B. Feb. 28, 2012)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: February 28, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re ICS Systems, Inc.
________

Serial No. 77906086
_______

Brian Roffe of Law Office of Brian Roffe for ICS Systems,
Inc.

Thomas M. Manor, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
_______

Before Bucher, Cataldo and Ritchie,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

International Communication Services, Inc. filed an
application to register on the Principal Register the mark
ICS SYSTEMS, INC (in standard characters) for, inter alia,
the following services:
design, development and installation of computer
software; design, development and installation of
computer software for controlling operation of
equipment used to test electronic devices,
primarily automated testing apparatus for testing
analog, digital, video, mechanical, electro
optics, and radio-frequency electronic systems,
and of computer software for testing electronic
devices, primarily automated testing apparatus
Ser. No. 77906086
2
for analog, digital, video, mechanical, electro
optics and radio-frequency electronic systems;
technical support for trouble shooting computer
software; technical support for trouble shooting
computer software for controlling operation of
equipment used to test electronic devices,
primarily automated testing apparatus for testing
analog, digital, video, mechanical, electro
optics and radio-frequency electronic systems,
and computer software for testing electronic
devices, primarily automated testing apparatus
for analog, digital, video, mechanical, electro
optics and radio-frequency electronic systems

in International Class 42.1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, solely as used in connection with its
Class 42 services, so resembles the marks shown below,
previously registered on the Principal Register:
Registration No. 3274213 for the mark ICS (standard
characters), and
Registration No. 3297205 for the mark AUTONOMY ICS
(standard characters), both issued to Autonomy Corp., PLC
for, inter alia,
computer software design for others; installation
of computer software and programs for others

1 Application Serial No. 77906086 was filed on January 6, 2010,
based upon applicant’s assertion of November 1996 as a date of
first use of the mark in commerce. The application also
identifies goods in Class 9 and services in Class 41 that are not
subject to the instant refusal to register. In response to the
examining attorney’s requirement, applicant disclaimed SYSTEMS,
INC. apart from the mark as shown.

Ser. No. 77906086
3
in International Class 42;2 and
Registration No. 3049903 for the mark shown below

issued to Instrument Control Systems, Inc. for
technical support services for municipal and
industrial process control, namely
troubleshooting and backup of Programmable Logic
Controllers and computer hardware and software
systems

in International Class 423 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.
Preliminary Matter
In its brief, applicant lists 5 third-party
registrations, for ICS and ICS-formative marks. The list
consists of the registration numbers and the marks

2 The cited registrations, respectively issued on August 7, 2007
and September 25, 2007, also recite goods in International Class
9, services in International Classes 35 and 38, and numerous
additional services in International Class 42.
3 Issued on January 24, 2006 with a disclaimer of CERTIFIED
SYSTEMS SUPPORT.
Ser. No. 77906086
4
associated therewith. However, applicant did not make
copies of these third-party registrations of record during
prosecution of its application. To make a third-party
registration of record, a copy of the registration, either
a copy of the paper USPTO record, or a copy taken from the
electronic records of the Office, should be submitted. See
generally TBMP § 1208.02 (3d ed. 2011). See also In re
Duofold Inc., 184 USPQ 638 (TTAB 1974).
Because copies of these registrations were not made of
record, we are left with nothing more than the information
supplied by applicant. A mere listing of third-party
marks, without any accompanying indication of the goods
and/or services associated therewith, or any indication as
to whether the registrations are still valid and
subsisting, has virtually no probative value. See TBMP §
1208.02 (3d ed. 2011), and the authorities cited therein.
Likelihood of Confusion
Turning now to the matter under appeal, 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 outlined 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.
Ser. No. 77906086
5
2003). In any likelihood of confusion analysis, two key,
though not exclusive, considerations are the similarities
between the marks and the similarities between 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).
Registration No. 3274213
For purposes of our likelihood of confusion
determination, we will concentrate our discussion on cited
Registration No. 3274213 for the mark ICS because this mark
is most similar to the mark in the involved application,
and this registration (along with its companion
Registration No. 3297205) recites services most similar to
the services in the involved application. Thus, if a
likelihood of confusion is found with this registration,
there is no need to discuss the other two cited
registrations. Similarly, if a likelihood of confusion is
not found with Registration No. 3274213, we would not find
confusing similarity with the other two cited
registrations.
Similarity of the Services
Turning first to our consideration of the recited
services, we must determine whether consumers are likely to
Ser. No. 77906086
6
mistakenly believe that they emanate from a common source.
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 thereof are such that
they would or could be encountered by the same persons
under circumstances that could 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, applicant’s services identified as
“design … and installation of computer software” are
virtually identical to registrant’s “computer software
design for others; installation of computer software and
programs for others.” The mere qualification that
registrant’s services specify that they are rendered “for
others” does not serve to distinguish such services from
those of applicant inasmuch as all services, by their very
nature, are rendered to others.
Thus, we find that the recited services are legally
identical in part, for purposes of the second du Pont
factor. Because these services are legally identical, we
Ser. No. 77906086
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find that the second du Pont factor weighs heavily in
support of a conclusion that confusion is likely.4
Channels of Trade and Classes of Consumers
It is settled that in making our determination
regarding the relatedness of the parties’ services, we must
look to the services as identified in the involved
application and cited registration. See Octocom Systems,
Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990) (“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 particular channels of trade or the class of
purchasers to which the sales of goods [or services] are

4 Because we find that applicant’s “design … and installation of
computer software” services are legally identical to registrant’s
“computer software design for others; installation of computer
software and programs for others,” we need not also determine the
similarity or dissimilarity of registrant’s services to the other
Class 42 services identified in the application. Similarity as
to any of the services identified in the application and/or the
cited registration will suffice as a basis for finding the
respective services to be similar for purposes of the second du
Pont factor. See Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re Max
Capital Group Ltd., 93 USPQ2d 1243, 1244; In re Davey Products
Pty Ltd., 92 USPQ2d 1198, 1202; and In re Jump Designs LLC, 80
USPQ2d 1370, 1374 (TTAB 2006).

Ser. No. 77906086
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directed.”) See also Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973)
(“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective
descriptions of goods [or services].”)
In this case, there are no restrictions in either
applicant’s or registrant’s recitation of services as to
the channels of trade in which the “design … and
installation of computer software” on the one hand and
“computer software design for others; installation of
computer software and programs for others” on the other may
be encountered, or type or class of customer to which the
services are marketed. As a result, these services are
presumed to move in all normal channels of trade and be
available to all classes of potential consumers, including
consumers of each other’s services. See In re Elbaum, 211
USPQ 639, 640 (TTAB 1981). As a result, this du Pont
factor also favors a finding of likelihood of confusion.
Similarity of the Marks
We now consider the similarity of the marks, noting
initially that, "[w]hen marks would appear on virtually
identical ... services, the degree of similarity [of the
marks] necessary to support a conclusion of likely
confusion declines." See Century 21 Real Estate Corp. v.
Ser. No. 77906086
9
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed.
Cir. 1992), cert. denied, 506 U.S. 1034 (1994). See also
ECI Division of E-Systems, Inc. v. Environmental
Communications Inc., 207 USPQ 443, 449 (TTAB 1980).
In comparing applicant’s ICS SYSTEMS, INC mark and
registrant’s ICS mark, we first note that applicant has
incorporated the registered mark in its entirety. In cases
such as this, a likelihood of confusion has frequently been
found. “When one incorporates the entire arbitrary mark of
another into a composite mark, the inclusion of a
significant, nonsuggestive element will not necessarily
preclude a likelihood of confusion. [Internal citations
omitted]. An inclusion of a merely suggestive or
descriptive element, of course, is of much less
significance in avoiding a likelihood of confusion.” The
Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194
USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer
design is similar the mark CONCEPT). See also Coca-Cola
Bottling Co. v. Seagram & Sons, Inc., 526 F.2d 556, 188
USPQ 105, 106 (CCPA 1975) (BENGAL LANCER and Bengal Lancer
soldier design is similar to the mark BENGAL); and In re
Bissett-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA
1973) (E-CELL is similar to the mark E).
Ser. No. 77906086
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In this case, there is no evidence of record that ICS
has any meaning in connection with applicant’s or
registrant’s services.5 As such, ICS appears to be
arbitrary as applied to both. As for the disclaimed terms
SYSTEMS, INC in applicant’s mark, SYSTEMS merely describes
a feature of applicant’s services and INC is a generic term
for a corporation. Although we must compare the marks in
their entireties, one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, (Fed.
Cir. 1985) (“There is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate
conclusion rests on consideration of the marks in their
entireties.”). For instance, “that a particular feature is
descriptive or generic with respect to the involved goods
or services is one commonly accepted rationale for giving
less weight to a portion of a mark….” Id. at 224 USPQ at
751. In this case, SYSTEMS, INC in applicant’s mark

5 Further, and in accordance with our discussion above of
applicant’s proffered listing of third-party registrations, there
is no evidence that the term ICS is weak as used in association
with the services at issue.
Ser. No. 77906086
11
clearly has little source-identifying significance as
compared to ICS.
Based upon the foregoing, we find that when
encountering applicant’s ICS SYSTEMS INC mark and
registrant’s ICS mark in connection with services that are
identical in part, consumers are likely to view both marks
as variations of each other, and therefore as indicators of
a single source. Thus, despite the fact that the
applicant’s mark includes additional, non-distinctive
wording, the marks are much more similar than dissimilar in
appearance, sound, connotation and commercial impression.
Accordingly, this du Pont factor favors a finding of
likelihood of confusion.
Actual Confusion and Applicant’s Prior Registration
Finally, applicant argues at length that its mark has
been in continuous use since November 1996 and was
previously registered from April 2002 until its
cancellation in January 2009.6 Applicant contends that the
period of co-existence of the applied-for mark
and the registered marks, coupled with the
continuous use of the applied-for mark from the
date of first use in commerce that preceded

6 Registration No. 2557584 for the mark ICS SYSTEMS, INC.,
identifying goods and services essentially identical to those
recited in the involved application, issued to applicant on April
9, 2002, and was cancelled under Section 8 of the Trademark Act
on January 17, 2009.

Ser. No. 77906086
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registration of the registered marks and thus
during the period of co-existence, evidences lack
of actual confusion as to whether people will
believe that the services identified by the marks
come from the same source, and this lack of
actual confusion should supersede a mere
supposition or allegation of likelihood of
confusion and remove the bar to registration of
the applied-for mark.7

First, we do not accord significant weight to
applicant's contention, unsupported by any evidence, that
there have been no instances of actual confusion despite
contemporaneous use of the respective marks. The Federal
Circuit has addressed the question of the weight to be
given to an assertion of no actual confusion by an
applicant in an ex parte proceeding:
With regard to the seventh DuPont factor, we
agree with the Board that Majestic's
uncorroborated statements of no known instances
of actual confusion are of little evidentiary
value. See In re Bissett-Berman Corp., 476 F.2d
640, 642, 177 USPQ 528, 529 (CCPA 1973) (stating
that self-serving testimony of appellant's
corporate president's unawareness of instances of
actual confusion was not conclusive that actual
confusion did not exist or that there was no
likelihood of confusion). A showing of actual
confusion would of course be highly probative, if
not conclusive, of a high likelihood of
confusion. The opposite is not true, however.
The lack of evidence of actual confusion carries
little weight, [citation omitted], especially in
an ex parte context.

Majestic Distilling, 65 USPQ2d at 1205. Accordingly, while
examples of actual confusion may point toward a finding of

7 Applicant’s brief, p. 4.
Ser. No. 77906086
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a likelihood of confusion, an absence of such evidence is
not as compelling in support of a finding of no likelihood
of confusion. Thus, we cannot conclude from the lack of
instances of actual confusion that confusion is not likely
to occur. Furthermore, applicant cites to no authority for
its apparent position that an asserted lack of actual
confusion under these circumstances should “supersede” a
finding of likelihood of confusion. To the contrary, it is
settled that it is not necessary to show actual confusion
in order to establish likelihood of confusion. See Weiss
Associates Inc. v. HRL Associates Inc. 902 F.2d 1546, 223
USPQ 1025 (Fed. Cir. 1990).
Second, the existence of applicant’s earlier,
cancelled registration does not persuade us to reach a
different result with respect to the present application.
We are not unsympathetic toward applicant who, having
previously registered its mark now faces a refusal to
register the same mark based upon subsequently issued
registrations. Nonetheless, we are not required to allow
the instant application to register, particularly in light
of the intervening registrations, simply because applicant
previously obtained an earlier, now cancelled, registration
therefor. See In re Davey Products Pty Ltd., 92 USPQ2d
1198, 1206 (TTAB 2009) (“applicant is not automatically
Ser. No. 77906086
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entitled to a return to the status quo...the Board is not
bound by the decision of the prior trademark examining
attorney”). See also In re Nett Designs Inc., 236 F.3d
139, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
Summary
In summary, weighing all of the relevant du Pont
factors, we find that a likelihood of confusion exists.
Moreover, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. See In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 165, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal to register is affirmed.