Pearce & Pearce

Trademark Trial and Appeal Board

Nov 7, 2007

No. 78769245 (T.T.A.B. Nov. 7, 2007)

Decision Mailed:
November 7, 2007
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Pearce & Pearce
________

Serial No. 78769245
_______

Derek P. Martin of Martin & Associates, LLC for Robert W. Pearce
and Erma Starlene Pearce.

Rebecca J. Povarchuk, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
_______

Before Hohein, Bucher and Grendel, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Applicants, Robert W. Pearce and Erma Starlene Pearce,
have filed an application to register on the Principal Register
in standard character form the mark "CENTSIBLE SAM" for "retail
department store services; [and] on-line retail department store
services" in International Class 35.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicants' mark, when applied to their services, so resembles

1 Ser. No. 78769245, filed on December 8, 2005, which is based on an
allegation of a bona fide intention to use such mark in commerce.

THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser. No. 78769245
2
the collective membership marks "CENTSIBLE DRUG"2 and "CENTSIBLE
DRUG" and design,3 which are owned by the same registrant and are
respectively registered on the Principal Register in standard
character form and as reproduced below

for, in each instance, "indicating membership in an organization
which is an alliance of independently owned drug and retail
stores" in International Class 200, as to be likely to cause
confusion, or to cause mistake, or to deceive.
Applicants have appealed and briefs have been filed.
We affirm the refusal to register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). See also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). However, as indicated in Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976), in
any likelihood of confusion analysis, two key considerations are
the factors of the similarity or dissimilarity in the services

2 Reg. No. 1,865,085, issued on November 29, 1994, which sets forth a
date of first use anywhere and in commerce of May 4, 1982; renewed.
The word "DRUG" is disclaimed.

3 Reg. No. 1,864,105, issued on September 16, 1993, which sets forth a
date of first use anywhere and in commerce of May 4, 1982; renewed.
The word "DRUG" is disclaimed.

Ser. No. 78769245
3
and collective membership at issue and the similarity or
dissimilarity of the respective marks in their entireties.4 See
also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1534 (Fed. Cir. 1997).
Moreover, contrary to applicants' argument that, in
light of the definitions of "service mark" and "collective mark"
set forth in Section 45 of the Trademark Act, 15 U.S.C. §1127,
"[t]he nature of the services in registrant's CENTSIBLE DRUG mark
are ... dissimilar to the nature of the services in applicants'
CENTSIBLE SAM mark due to the very difference in the types of
marks," it is pointed out that a finding of likelihood of
confusion between a collective membership mark and a service mark
is not based on confusion as to the source of any services which
may happen to be provided by the members of the collective
organization. Instead, as correctly noted by the Examining
Attorney, it is settled that the issue is whether relevant
persons (that is, those persons or groups of persons for whose
benefit the collective membership mark is displayed) are likely
to believe that an applicant's services emanate from, are
endorsed by, or are in some way associated with the collective
organization. See, e.g., In re Code Consultants Inc., 60 USPQ2d
1699, 1700-01 (TTAB 2001); In re National Novice Hockey League,
Inc., 222 USPQ 638, 640-41 (TTAB 1984); Allstate Life Insurance
Co. v. Cuna International, Inc., 169 USPQ 313, 316 (TTAB 1971);

4 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the ... [services and collective
membership,] and differences in the marks." 192 USPQ at 29.

Ser. No. 78769245
4
and Boise Cascade Corp. v. Mississippi Pine Manufacturers
Association, 164 USPQ 364, 367 (TTAB 1969).
The issue of likelihood of confusion in this case is
therefore whether ordinary consumers, who as members of the
general public plainly constitute the relevant persons herein as
customers of applicants' "CENTSIBLE SAM" retail department store
services and on-line retail department store services, would be
likely to believe that applicants, in view of such services, are
a member of, are endorsed by, or are in some other way associated
with registrant's organization as the owner of the "CENTSIBLE
DRUG" collective membership marks for indicating membership in an
alliance of independently owned drug and retail stores. Clearly,
inasmuch as registrant, which is an organization that consists of
an alliance of independently owned drug and retail stores, could
include among its members both retail department stores and on-
line retail department stores, the second du Pont factor of the
similarity or dissimilarity in the services and collective
membership at issue favors a finding of a likelihood of
confusion. The primary focus of our inquiry is accordingly on
the first du Pont factor of the similarities and dissimilarities
in the marks at issue and thus, as indicated above, whether
ordinary consumers, upon encountering applicants' "CENTSIBLE SAM"
mark in connection with retail department store services and on-
line retail department store services, would be likely to be
confused into thinking that applicants are a member of, are
endorsed by or are otherwise affiliated with registrant's
Ser. No. 78769245
5
"CENTSIBLE DRUG" alliance of independently owned drug and retail
stores" due to the similarities of the respective marks.
With respect thereto, applicants contend that their
"CENTSIBLE SAM" mark has a different appearance, sound,
connotation and commercial impression than registrant's
"CENTSIBLE DRUG" marks. Although conceding in their brief that,
in particular, "[i[t is true that CENTSIBLE is the dominant term
in registrant's CENTSIBLE DRUG mark[s]" due to the disclaimer of
the generic term "DRUG," applicants maintain that because the
term "CENTSIBLE" in their "CENTSIBLE SAM" mark is suggestive of
the word "sensible" while the term "SAM" therein is arbitrary or
fanciful, it is the latter term which constitutes the dominant
portion of their mark and which precludes a likelihood of
confusion. In this regard, applicants insist that:
The appearance of CENTSIBLE DRUG and
CENTSIBLE SAM is different. While the first
words are identical, the second words are
entirely different, not related, not even
close. The appearance of these two marks is
therefore different. The sound of CENTSIBLE
DRUG and CENTSIBLE SAM is different. Again,
the first word has an identical sound, but
the words "drug" and "sam" are very
dissimilar in sound. As a result, the sound
of these two marks is different. The
connotation of CENTSIBLE DRUG and CENTSIBLE
SAM is very different. The mark CENTSIBLE
DRUG brings to mind a drug store. The mark
CENTSIBLE SAM brings to mind a person named
Sam who is sensible. The connotation of the
two marks is therefore very different.

Considering, furthermore, that as to overall commercial
impression, the marks at issue must of course be considered in
their entireties, including any disclaimed matter, applicants
stress that:
Ser. No. 78769245
6
The word SAM in the mark CENTSIBLE SAM is
arbitrary or fanciful. Indeed, the word SAM
should be given greater weight in applicants'
mark than CENTSIBLE because CENTSIBLE is
pronounced the same as SENSIBLE, which can
describe a person or thing, and therefore may
be given less weight than the completely
arbitrary word SAM. The entire mark
CENTSIBLE SAM creates a unique commercial
impression that is significantly different
than CENTSIBLE alone and is drastically
different than [registrant's] CENTSIBLE DRUG
[marks].

We agree with the Examining Attorney, however, that the
marks at issue "are highly similar" due to the shared presence on
this record of the apparently coined or unique term "CENTSIBLE"
in each. The Examining Attorney, in this regard, argues in her
brief that "[t]he dominant term in each of the relevant marks is
the term 'CENTSIBLE.'" Such is certainly true--as conceded by
applicants--as to registrant's "CENTSIBLE DRUG" marks in view of
the genericness of the word "drug" with respect to indicating
membership in an organization which is an alliance of
independently owned drug and retail stores. However, we need not
determine whether the term "CENTSIBLE" constitutes the dominant
portion of applicants' mark. Rather, it is plain that, at the
very least, the term "CENTSIBLE" forms a significant source-
indicative element of applicants' "CENTSIBLE SAM" mark when such
mark is considered in its entirety, particularly given that, as
pointed out by the Examining Attorney:
As a general rule, consumers are more
inclined to focus on the first word, prefix
or syllable in any ... mark. See Palm Bay
Imps., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 1372,
73 USPQ2d 1689, 1692 (Fed. Cir. 2005); see
also Presto Prods., Inc. v. Nice-Pak Prods.,
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) ("it is
Ser. No. 78769245
7
often the first part of a mark which is most
likely to be impressed upon the mind of a
purchaser and remembered" when making
purchasing decisions).

In addition, as noted by the Examining Attorney, on
this record the term "CENTSIBLE," while virtually the phonetic
equivalent of the word "sensible," is at most suggestive of low
cost retailers or retailing "and as such ... engenders a wider
scope of protection than descriptive or weak terms."5
Specifically, she observes that:
It is worth noting that while applicants have
referred to third[-]party registrations, they
have not made of record, nor professed, the
existence of a single mark for retail store
services using either "centsible" or the
phonetically similar "sensible." Applicants'
and registrant's marks impart very unique
commercial impressions stemming from the use
of the identical term "CENTSIBLE," replacing
"sens-" in "sensible" with the similar
sounding "cent-." Using "cent" to refer to
the smallest denomination of U.S. currency,
"CENTSIBLE" suggests the "sensible" quality
of being wise or careful with money. In
connection with retail services, "CENTSIBLE"
invokes the commercial impression of value or
bargains for the money-wise consumer.

Accordingly, just as the term "CENTSIBLE DRUG" in
registrant's marks would bring to mind a group of drug and other
retail stores which are "sensible" to patronize due to the low
cost merchandise or bargains available to money-wise consumers,

5 Although no copies thereof were attached, of the list of 14 third-
party registrations included by applicants with their request for
reconsideration of the final refusal, only one is indicated to be for
the mark "CENTSIBLE," which is assertedly registered for "lint
removing brushes, lint removing rollers and refills therefor, line
[sic] roller handles, and adhesive lint remover." The 13 others are
listed as being for marks which consist of or include the word
"sensible" and, while applicants contend that such registrations "show
that the term SENSIBLE is a very common term for products sold in
retail department and drug stores," none lists any retail services.
Ser. No. 78769245
8
applicants' mark "CENTSIBLE SAM" would bring to mind a department
store retailer, or perhaps even a mascot or character for such a
retailer, which is likewise "sensible" in that it offers frugal
buyers inexpensive items or special values. Given that both
applicants and registrant employ the unique term "CENTSIBLE" in
their respective marks as a play on this notion of "sensible"
retailing which offers consumers savings of money or cents on
merchandise which they purchase, and in view of the fact that
such term constitutes the first and thus a prominent portion of
the marks at issue, it is plain that when considered in their
entireties, applicants' "CENTSIBLE SAM" mark and registrant's
"CENTSIBLE DRUG" marks are substantially similar in appearance,
sound, connotation and commercial impression. Even among those
consumers who notice the differences respectively provided by the
elements "SAM" and "DRUG," such consumers would still be likely
to believe, due to the substantial overall similarities in the
"CENTSIBLE SAM" mark and "CENTSIBLE DRUG" marks, that applicants
are a member of, are endorsed by or are otherwise affiliated with
registrant's alliance of independently owned drug and retail
stores. This would especially be the case if applicants, since
they are seeking registration for their "CENTSIBLE SAM" mark in
standard character form, were to elect to display their mark in a
manner similar to registrant's "CENTSIBLE DRUG" and design mark,
in which the term "CENTS" stands out due to the use of the cents
sign (¢) for the letter "C" which is connected to an elongated
letter "S." See, e.g., Phillips Petroleum Co. v. C. J. Webb,

Ser. No. 78769245
9
Inc. 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971) [a mark ... in
typed or standard character form is not limited to the depiction
thereof in any special form]; and INB National Bank v. Metrohost
Inc., 22 USPQ2d 1585, 1588 (TTAB 1992) ["[a]s the Phillips
Petroleum case makes clear, when [an] applicant seeks a typed or
block letter registration of its word mark, then the Board must
consider all reasonable manners in which ... [the word mark]
could be depicted"]. The first du Pont factor of the similarity
or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression thus
favors a finding of a likelihood of confusion.
As noted earlier, the second du Pont factor favors a
finding of a likelihood of confusion. Moreover, as to the
related third and fourth du Pont factors of, respectively, the
similarity or dissimilarity of established, likely to continue
trade channels and the conditions under which and buyers to whom
sales are made, that is, "impulse" versus careful, sophisticated
purchasing, applicants admit in their brief--and we agree--that
these factors favor a finding of a likelihood of confusion. In
particular, applicants concede as to the third du Pont factor
that:
Because the CENTSIBLE DRUG mark is used
to indicate membership in an organization
which is an alliance of independently owned
drug and retail stores, the trade channel for
the CENTSIBLE DRUG mark is to shoppers in the
independently owned drug and retail stores
that use its mark. The trade channels for
applicants' CENTSIBLE SAM mark are to
shoppers in retail department stores that use
the mark and online retail department stores
that use the mark. Due to the similarity of
the trade channels of the two marks, the
Ser. No. 78769245
10
third factor in the DuPont analysis favors
refusing registration of applicants' mark.

In the same vein, applicants admit as to the fourth du Pont
factor that:
The buyers for the CENTSIBLE DRUG mark
are shoppers in independently owned drug and
retail stores. The buyers for applicants'
CENTSIBLE SAM mark are shoppers in retail
department stores and online retail
department stores. The conditions under
which the sales are made are therefore
similar. As a result, the fourth factor in
the DuPont analysis favors refusing
registration of applicants' mark.

With respect to the fifth du Pont factor of the fame of
the prior mark, applicants argue that registrant's "CENTSIBLE
DRUG mark has not achieved widespread fame"6 and that such factor
therefore "favors registration of applicants' mark." However,
even if registrant's mark were considered as not being famous, it
is settled that, especially in an ex parte context, a lack of

6
Applicants premise such argument on the basis that the record
allegedly shows that any use of registrant's marks "has been confined
to the Chicago, Illinois area." Specifically, referencing both an
article retrieved on March 17, 2007 from Drug Store News which is
dated June 17, 1996 and states in pertinent part that "[t]here are
approximately 40 Centsible pharmacies (independents participating in
the voluntary program of wholesaler Dik Drug) in the Chicagoland
market" and a list of the results from a June 12, 2007 search of the
term "centsible drug" using the "GOOGLE" search engine which located
various excerpts that refer to a single "Centsible Drug" at 208 South
Hale St., Wheaton, Illinois 60187, applicants contend that:

Only one CENTSIBLE DRUG store can be found on this simple
Google search. If ... the referenced article and Google
search are accurate, this means the fame of the CENTSIBLE
DRUG mark has diminished over the past 10+ years from 40
stores in the Chicago area to only one store. .... While
applicants do not have any information regarding the sales
and advertising for CENTSIBLE DRUG, the length of use, the
limited use in only the Chicago area, and the diminishing
use over the past 10 years shows the fame of the CENTSIBLE
DRUG mark is small. ....

Ser. No. 78769245
11
fame for such mark must be treated as neutral rather than as a
factor which weighs in favor of applicants. See, e.g., In re
Thomas, 79 USPQ2d 1021, 1027 n.11 (TTAB 2006) ["It appears that
applicant contends that the absence of evidence of fame of the
registrant's mark should be treated as a factor in applicant's
favor. Because this is an ex parte proceeding, we would not
expect the examining attorney to submit evidence of fame of the
cited mark. This du Pont factor, as is normally the case in ex
parte proceedings, must be treated as neutral"]. The fifth du
Pont factor is thus neutral in this case rather than indicative
of a lack of a likelihood of confusion.
Similarly, as to the remaining du Pont factors, such
factors are neutral inasmuch as there is simply no evidence which
is of record which is probative with respect thereto. While, in
particular, applicants maintain that the 14 third-party
registrations referred to previously (consisting of a single
registration of the mark "CENTSIBLE" and the rest involving
registrations for marks which consist of or include the term
"SENSIBLE") demonstrate that the sixth du Pont factor of the
number and nature of similar marks in use on similar goods favor
registration of applicants' mark, it is well settled that third-
party registrations are not evidence of use of the marks shown
therein or that the public is aware of them. See, e.g., Olde
Tyme Foods, Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542,
1545 (Fed. Cir. 1992); Smith Bros. Mfg. Co. v. Stone Mfg. Co.,
476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973); and AMF Inc. v.
American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269
Ser. No. 78769245
12
(CCPA 1973). Thus, in the absence of probative evidence of
third-party use, the sixth du Pont factor is neutral. Moreover,
as to applicants' apparent conflation of the ninth du Pont factor
with the sixth such factor by their reliance on the same third-
party registrations as support for the contention that the ninth
du Pont factor of the variety of goods on which a cited
registrant's mark is or is not used (e.g., house mark, "family"
mark or product mark) favors applicants, suffice it to say that
the ninth du Pont factor focuses solely on the manner of the use
of the cited registrant's mark. Consequently, even if the record
contained proof of third-party use of the marks which are the
subjects of the third-party registrations, such evidence would
plainly be irrelevant to the manner of how the cited registrant's
mark is used. The ninth du Pont factor is therefore neutral.
Applicants, furthermore, admit in their briefs--and we
concur--that "[b]ecause applicants' CENTSIBLE SAM mark is based
on applicants' intent to use the mark in commerce" rather than
actual use, the following du Pont factors are neutral because
there is no evidence with respect thereto: the seventh du Pont
factor as to the nature and extent of any actual confusion; the
eight du Pont factor concerning the length of time during and
conditions under which there has been contemporaneous use without
evidence of actual confusion; the tenth du Pont factor with
respect to the market interface between applicants and the owner
of the CENTSIBLE DRUG marks; and the thirteenth du Pont factor
pertaining to any other established facts probative of the effect
of applicants' use of [the mark] CENTSIBLE SAM. Although
Ser. No. 78769245
13
applicants curiously concede that there is "no right [by
applicants as yet] to exclude others from use of ... [their]
CENTSIBLE SAM mark for the recited services, so the eleventh
DuPont factor favors refusal of applicants' mark," we find that
in the absence of evidence with respect thereto that such factor
is instead neutral. Finally, while applicants assert that the
twelfth du Pont factor is in their favor in that the extent of
potential confusion is de minimis rather than substantial due to
the claimed decline in use of registrant's mark in the Chicago
area during the past ten years, suffice it to say that in view of
the nationwide scope of registrant's cited registrations, any
evidence, even if such were probative, of the extent of actual
use of registrant's marks is irrelevant and, hence, the twelfth
du Pont factor is at best neutral instead of indicative of an
absence of a likelihood of confusion.
In balancing the du Pont factors discussed above, we
note that several favor a finding of a likelihood of confusion
and the remainder are neutral; none favors a determination of no
likelihood of confusion. We accordingly conclude that because of
the substantial similarities between the respective marks and the
fact that applicant's "CENTSIBLE SAM" retail department store
services and on-line retail department store services are
encompassed by the drug and retail store services rendered by
members of registrant's "CENTSIBLE DRUG" alliance of
independently owned drug and retail stores," we conclude that the
relevant purchasing public, namely, ordinary consumers would be
likely to believe that applicants are a member of, endorsed by or
Ser. No. 78769245
14
otherwise affiliated with registrant's organization of
independently owned drug and retail stores when in fact such is
not the case. This likelihood of confusion as to affiliation
bars registration of applicants' mark.
Decision: The refusal under Section 2(d) is affirmed.