Teletech, Inc.v.TeleTech Holdings, Inc.

Trademark Trial and Appeal Board

May 7, 2010

No. 91174132 (T.T.A.B. May. 7, 2010)

Hearing: November 4, 2009 Mailed: May 7, 2010 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ______ Teletech, Inc. v. TeleTech Holdings, Inc. _____ Opposition No. 91174132 to application Serial No. 78719476 _____ Kathleen G. Mellon and Molly B. Markley of Young Basile Hanlon MacFarlane & Helmholdt, P.C. for Teletech, Inc. David L. Petitjean, Of Counsel of Chappano Wood PLL for TeleTech Holdings, Inc. ______ Before Hairston, Grendel and Cataldo, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Applicant, TeleTech Holdings, Inc., filed an application to register on the Principal Register the mark TELETECH in standard characters for the following goods and services: “Computer software for use in the provision of customer care and customer relationship management services, namely, for use in managing and accessing databases for receiving and responding to sales, service, technical support and general information inquiries of customers of others, and for use in enabling customers to integrate interaction and transaction handling THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Opposition No. 91174132 2 technologies and services to execute a complete customer service and back-office strategy including prioritizing interactions across multimedia, multisite, and multiskill customer care environments; computer software for workforce management applications including forecasting, scheduling and adherence functions to determine customer contact volume across multiple mediums in order to address the needs of customers of others; computer software which groups call systems and tools needed to address interactions with customers of others and directs call flow by appropriate scripts that may be downloaded from a global computer network; computer software for data capture and reporting to identify, trac[k] and act upon customer interaction trends that may be downloaded from a global computer network; computer software to track move/add/change requests made by others and provide issue resolution coordination that may be downloaded from a global computer network; computer software for automated root cause and trend analysis which compiles contact data, customer data and business process data for trend analysis within and across customer support systems of others” in International Class 9; “Customer relationship management services and customer care services for others, namely, managing databases and receiving and responding to sales, service, technical support and general information inquiries of customers through a variety of media, and enabling customers to integrate interaction and transaction handling technologies and services to execute a complete customer service and back-office strategy including prioritizing interactions across multimedia, multisite, and multiskill customer care environments, and providing customers with multicultural marketing solutions and speech-driven navigation tools; employment agency services; management of customer interaction management centers providing customer care and customer relationship management services” in International Class 35; “Telecommunication services, namely, providing telephone, electronic mail, and automated call services and providing multiple-user access to a global computer information network; advanced computer telephony integration for intelligent routing and operational efficiency across all media; and computer telephony integration including email, Opposition No. 91174132 3 chat and other custom media types” in International Class 38; and “Computer programming services for others, application service provider services, namely, designing, installing, integrating, networking, hosting, operating and maintaining computer software for others, namely, for use in enabling customers to integrate interaction and transaction handling technologies and services to execute a complete customer service and back-office strategy including prioritizing interactions across multimedia, multisite, and multiskill customer care environments; automated call center services; database development services in the field of customer care and customer relationship management which simplify workflow, consolidate legacy applications, and drive consistency of customer interactions; product research and development for others; computer telephony integration, namely, email and computer disaster recovery planning services” in International Class 42.1 Opposer, Teletech, Inc., opposed 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 applicant’s goods and services, so resembles opposer’s previously used and registered mark 2 1 Application Serial No. 78719476 was filed on September 23, 2005 based for all classes of goods and services upon applicant’s assertion of October 22, 1982 as the date of first use of the mark anywhere and in commerce. Applicant claims ownership of Registration Nos. 1996498; 2252044; and 2309496. 2 Registration No. 1427907 issued February 3, 1987 with dates of first use anywhere and in commerce of September 9, 1980 and a disclaimer of “INC.” Section 8 affidavit accepted; Section 15 affidavit acknowledged. Renewed. Opposition No. 91174132 4 for “engineering and consulting services in the field of telecommunications” in International Class 42, that confusion or reverse confusion is likely among consumers as to the source of the parties’ respective goods and services.3 Applicant, in its answer, denied the salient allegations in the notice of opposition.4 The record consists of the pleadings and the file of the involved application. In addition, during its assigned testimony period opposer took the testimony deposition of Mark W. Dobronski, its Chief Financial Officer, along with associated exhibits. Opposer and applicant further submitted notices of reliance.5 Both parties submitted briefs on the merits of the case, and opposer submitted a reply brief. In addition, counsel for both parties presented arguments at an oral hearing held before the Board on November 4, 2009. 3 In an order issued on January 31, 2009, the Board denied opposer’s motion to amend its notice of opposition to assert a claim of fraud and to reopen discovery in relation to that claim. Accordingly, opposer’s arguments in its brief (filed on January 2, 2009) with regard to such claim will be given no consideration. 4 In an order issued on May 20, 2008, the Board, inter alia, granted opposer’s motion for summary judgment with respect to all of applicant’s affirmative defenses. 5 We will refer to those portions of the testimony deposition of Mr. Dobronski and the parties’ notices of reliance that were submitted under seal as containing confidential information only in general terms. Opposition No. 91174132 5 Opposer’s Standing Because opposer has made its pleaded registration of record,6 we find that opposer has established its standing to oppose registration of applicant’s mark. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). Priority of Use In its notice of opposition, opposer makes the following allegation with regard to priority: Opposer has, since at least as early as 1980, used the mark TELETECH, INC. in connection with its engineering and consulting services in the field of telecommunications. Opposer is the owner of U.S. Registration No. 1,427,907 for the trademark TELETECH, INC. registered on February 3, 1987 for engineering and consulting services in the field of telecommunications in International Class 042 and is attached hereto as Exhibit A.7 Because opposer’s pleaded registration is of record,8 Section 2(d) priority is not an issue in this case as to the mark therein and the services covered thereby. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). In its brief on the case, opposer bases its claim of priority upon its pleaded registration.9 In its discussion 6 Opposer’s Notice of Reliance, Appendix B. 7 Notice of Opposition, para. 4. 8 Opposer’s Notice of Reliance, Appendix B. 9 Brief, p. 15, n. 2. Opposition No. 91174132 6 of standing, opposer asserts its “ownership of a prior registration (and also prior common law use) for essentially the same mark on overlapping goods and services”10 as bases for its standing to oppose. Applicant, for its part, discusses priority solely in the context of opposer’s pleaded registration and does not acknowledge any common law use on the part of opposer.11 In its reply brief, opposer asserts that it has priority based upon its pleaded registration, and also that it “is the common law senior user of the mark for engineering and consulting services in the telecommunications field with use dating back to September 9, 1980.”12 We construe the allegations in the pleadings to do substantial justice. See 37 CFR § 2.116(a); Fed. R. Civ. P. 8(f); and The Scotch Whiskey Association v. United States Distilled Products Co., 952 F.2d 1317, 21 USPQ2d 1145, 1147 (Fed. Cir. 1991). So construing the above allegations in the notice of opposition, it appears that opposer is asserting priority based upon its pleaded registration, and also asserting prior common law use of its mark in connection with “engineering and consulting services in the telecommunications field” since September 9, 1980. Thus, to the extent opposer’s pleading may be construed as including 10 Brief, p. 16. 11 Brief, p. 20. 12 Reply brief, p. 4. Opposition No. 91174132 7 a claim of common law priority, such a claim asserts use of the mark in its pleaded registration for essentially the same services recited therein as of the same date. As a result, to the extent opposer has made a proper pleading of common law priority, such claim asserts rights identical to those in its claim of priority based upon ownership of its pleaded registration. To be clear on this point, we do not construe opposer’s assertions in the section of its brief devoted to a discussion of the similarity between the parties’ goods and services that it “has offered and performed many different types of telecommunications services and provided extensive telecommunications equipment to various types of customers throughout the United States since 1980”13 as a claim of common law priority as to such services and equipment. Nor do we find that such a claim was tried by the implied consent of the parties. Indeed, applicant argues that opposer’s priority is limited “solely with respect to its Class 42 antenna construction, railroad signal installation, and related maintenance services - the basis of its U.S. Trademark Registration No. 1,427,907.”14 Accordingly, in light of the above discussion we view opposer’s assertions regarding its telecommunications services and equipment 13 Brief, p. 24. 14 Brief, p. 20. Opposition No. 91174132 8 solely as a clarification of the services offered under the mark in opposer’s pleaded registration. Likelihood of Confusion We now turn to the issue of likelihood of confusion between opposer’s mark and applicant’s mark as used on opposer’s services and applicant’s goods and services. Our likelihood of confusion determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). Strength of the Parties’ Marks We begin by addressing the strength of the parties’ marks. In particular, we turn to a consideration of the factor of fame, because this factor plays a dominant role in cases featuring a famous or strong mark. Kenner Parker Toys Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992). Opposer has neither argued nor introduced evidence that its mark is famous. Applicant argues that Opposition No. 91174132 9 opposer’s pleaded mark is not famous, and further asserts that the “TELETECH trademark is widely used by third parties unrelated to Opposer or Applicant, and thus Opposer’s mark is entitled to limited protection.”15 In support of this contention, applicant points to an Office action from the file history of one of its prior registrations,16 in which three third-party registrations, in addition to opposer’s pleaded registration, were cited as a bar to registration of the mark applied-for therein. Of these three registrations, Registration No. 1538062 for the mark TELETECH for “electronic computers” subsequently has been cancelled and is not evidence of anything except that it issued. See TBMP §704.03(b) (2d ed. rev. 2004) and cases cited therein. See also Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002). Any benefits conferred by the registration, including the evidentiary presumptions afforded by Section 7(b) of the Trademark Act were lost when the registration expired. See, e.g., Anderson, Clayton & Co. v. Krier, 478 F.2d 1246, 178 USPQ 46 (CCPA 1973). The remaining registrations are Registration No. 1571338 for the mark TELE-TECHNIQUES for “educational services, namely, training in customer services, secretarial, sales and management fields;” and Registration No. 1642386 for the mark TELTECH for “computer data base and literature 15 Brief, p. 27. Opposition No. 91174132 10 researching services; providing consultation services with technical and scientific experts.” We note, however that there is no evidence that either of these third-party registrations are for marks that are actually in use. As such, the probative value of these registrations is very limited. It is well settled that third-party registrations are not evidence of what happens in the marketplace or that the public is familiar with the use of the subject marks. See National Aeronautics & Space Administration v. Record Chemical Co., 185 USPQ 563, 567 (TTAB 1975). Thus, they are not evidence that customers are able to distinguish between similar marks based on only minor differences between them. See Smith Brothers Manufacturing Co. v. Stone Manufacturing Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973); Carl Karcher Enterprises Inc. v. Stars Restaurant Corp., 35 USPQ2d 1125, 1130-31 (TTAB 1995); and In re Hub Distributing, Inc., 218 USPQ 284, 285-86 (TTAB 1983). Applicant further asserts that opposer’s witness “testified that he was aware of at least three other entities which went by the trade name Teletech.”17 However, neither applicant nor opposer made any evidence regarding these purported uses of record, and therefore the mere assertion of such use has no probative value in our 16 Opposer’s Notice of Reliance, Appendix G. 17 Brief, p. 27, citing Applicant’s Notice of Reliance, Appendix E. Opposition No. 91174132 11 consideration of the relative strength of opposer’s mark. In the absence of any probative evidence of the relative strength or weakness of opposer’s mark, we accord it ordinary strength for such a mark as applied to the recited services. Turning to applicant’s TELETECH mark, applicant argues that its mark is famous based upon a District Court decision on a motion for preliminary injunction involving applicant and a third-party. TeleTech Customer Care Management (California), Inc. v. Tele-Tech Company, Inc., 977 F. Supp. 1407 (C.D.Ca. 1997). In addition, applicant asserts that it “is one of the world’s largest and most geographically diverse global providers of business process outsourcing services;”18 employing over 47,000 individuals in 33,600 workstations across 88 delivery centers in 17 countries;19 with annual revenues under its TELETECH mark of $1.2 billion in 200620 and annual promotional and advertising expenditures totaling millions of dollars.21 Opposer, for its part, acknowledges that applicant is a much larger entity than opposer. However, opposer does not concede the fame of applicant’s mark, but rather argues that applicant’s TELETECH mark is not famous; and further argues 18 Brief, p. 10. 19 Applicant’s Notice of Reliance, Appendix J. 20 Id. 21 Applicant’s Notice of Reliance, Appendix G. Opposition No. 91174132 12 that fame of applicant’s mark would support a finding of likelihood of confusion inasmuch as it would create reverse confusion with opposer’s mark. Based upon the evidence of record, we find that while applicant has enjoyed considerable success in terms of revenue under its TELETECH mark and expended considerable sums in marketing its services under that mark, applicant provides no context for those numbers such that we may determine its market share of such services. Nor has applicant provided evidence of media recognition of its services under the TELETECH mark such that we could gauge the public’s exposure thereto. Compare Kenner Parker Toys Inc. v. Rose Art Industries Inc., supra at 22 USPQ2d 1453, 1455; and Motion Picture Association of America, Inc. v. Respect Sportswear Inc., 83 USPQ2d 1555 (TTAB 2007). Accordingly, we find on this record that the evidence falls short of establishing that applicant’s TELETECH mark is famous for purposes of our likelihood of confusion or reverse confusion determination. Cf. Dreamwerks Production Group, Inc. v. SKG Studio, 142 F.2d 1127, 46 USPQ2d 1561 (9th Cir. 1998). The Marks We turn then to the first du Pont factor, i.e., whether applicant’s TELETECH mark and opposer’s Opposition No. 91174132 13 mark are similar or dissimilar when viewed in their entireties in terms of appearance, sound, connotation and overall commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot, supra. In comparing the parties’ marks, we find that TELETECH is the dominant element of opposer’s mark, and accordingly it is entitled to more weight in our analysis. It is a well-established principle that, in articulating reasons for reaching a conclusion on the issue of likelihood of confusion, 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 a consideration of the marks in their entireties. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In opposer’s mark, the term INC. is a disclaimed, generic entity designation and clearly has no source distinguishing quality. Further, the atom design in opposer’s mark is less significant than the wording. This is because if a mark comprises both a word and a design, then the word is normally accorded greater weight because it would be used by purchasers to request the goods or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). For these reasons, we consider TELETECH to be the dominant feature of opposer’s mark. Opposition No. 91174132 14 Based upon the above analysis, we find that applicant’s TELETECH mark is highly similar to opposer’s mark in that the dominant feature of opposer’s mark, i.e., TELETECH, is identical in spelling and sound and nearly identical in appearance to the entirety of applicant’s mark. Further, to the extent that these marks have any particular connotation as used in connection with the parties’ goods and services, for example, suggesting their application to telecommunications technology, there is no reason why the marks’ connotation would not be the same. In view of the foregoing, we find that the parties’ marks are highly similar in appearance, sound and connotation and that the marks, when viewed as a whole, convey highly similar commercial impressions. Accordingly, this du Pont factor favors opposer. The Goods and Services With respect to the parties’ goods and services, it is well established that the goods or services of the parties need not be similar or competitive, or even offered through the same channels of trade, to support a holding of likelihood of confusion. It is sufficient that the respective goods or services of the parties are related in some manner, and/or that the conditions and activities surrounding the marketing of the goods or services are such that they would or could be encountered by the same persons Opposition No. 91174132 15 under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same source. See Hilson Research, Inc. v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993); and In re International Telephone & Telephone Corp., 197 USPQ 910, 911 (TTAB 1978). We base our determination of the similarity or dissimilarity between the parties’ respective goods and services, as we must, upon the goods and services recited in the involved application and the services recited in opposer’s pleaded registration. See 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.”) As a result, we are not persuaded by applicant’s arguments that opposer’s services are actually limited to antenna construction, railroad signal installation, and related maintenance services.22 Rather, we base our determination upon the “engineering and consulting services in the field of telecommunications” recited in opposer’s pleaded registration and for which opposer has also established common law priority. In light of the above, we first turn to applicant’s “Computer software for use in the provision of customer care and customer relationship management services, 22 Brief, p. 20. Opposition No. 91174132 16 namely, for use in managing and accessing databases for receiving and responding to sales, service, technical support and general information inquiries of customers of others, and for use in enabling customers to integrate interaction and transaction handling technologies and services to execute a complete customer service and back-office strategy including prioritizing interactions across multimedia, multisite, and multiskill customer care environments; computer software for workforce management applications including forecasting, scheduling and adherence functions to determine customer contact volume across multiple mediums in order to address the needs of customers of others; computer software which groups call systems and tools needed to address interactions with customers of others and directs call flow by appropriate scripts that may be downloaded from a global computer network; computer software for data capture and reporting to identify, trac[k] and act upon customer interaction trends that may be downloaded from a global computer network; computer software to track move/add/change requests made by others and provide issue resolution coordination that may be downloaded from a global computer network; computer software for automated root cause and trend analysis which compiles contact data, customer data and business process data for trend analysis within and across customer support systems of others” in Class 9. As identified, applicant’s Class 9 computer software is used to provide various aspects of customer service, particularly in the field of call centers. These goods, on their face, do not appear to be related to opposer’s telecommunications engineering and consulting. While opposer’s witness, Mr. Dobronski, testified that opposer provides computer software in the field of customer care, as discussed above opposer has not demonstrated that it has made prior use of its pleaded mark on any such goods. As a result, even if we accept Mr. Dobronski’s statement Opposition No. 91174132 17 that opposer provides such goods, opposer has neither pleaded nor proven prior use thereof. Opposer further argues that its telecommunications engineering and consulting services encompass applicant’s call center and customer care software. However, the only support for such contention is the discovery and testimony depositions of its witness, Mr. Dobronski.23 Opposer has not introduced any testimony or evidence to support a finding that it is customary for telecommunications engineering and consulting services to include the provision of applicant’s software. Nor has opposer introduced any testimony or evidence to suggest that its services are otherwise related to applicant’s goods beyond the very broad association that both involve communications by telephone. As a result, on this record we find the asserted relationship between opposer’s services and applicant’s type of computer software too tenuous to support a finding that they are related for purposes of our likelihood of confusion analysis. We turn next to applicant’s “Customer relationship management services and customer care services for others, namely, managing databases and receiving and responding to sales, service, technical support and general information inquiries of customers through a variety of media, and enabling customers to integrate interaction and transaction handling technologies and services to execute a 23 Applicant’s Notice of Reliance, Appendix E; Dobronski Testimony, p. 131-139. Opposition No. 91174132 18 complete customer service and back-office strategy including prioritizing interactions across multimedia, multisite, and multiskill customer care environments, and providing customers with multicultural marketing solutions and speech-driven navigation tools; employment agency services; management of customer interaction management centers providing customer care and customer relationship management services” in Class 35. Similarly, these services are not related on their face to the telecommunications engineering and consulting services for which opposer has pleaded and proven priority of use. Further, the only support in the record for opposer’s assertion regarding the relationship between these services is the somewhat speculative statements of opposer’s witness, Mr. Dobronski.24 Such statements are insufficient to support a finding that such services are related or complementary. In addition, opposer has failed to introduce testimony or evidence that it is customary to provide or market opposer’s services and applicant’s Class 35 services under the same mark. As a result, on this record we find the asserted relationship between opposer’s services and applicant’s Class 35 services too tenuous to support a finding that they are related for purposes of our likelihood of confusion analysis. Turning next to applicant’s “Telecommunication services, namely, providing telephone, electronic mail, and automated call services and providing multiple-user access to a global computer information network; advanced computer telephony 24 Dobronski Testimony, p. 129, 131; Applicant’s Notice of Reliance, Appendix E. Opposition No. 91174132 19 integration for intelligent routing and operational efficiency across all media; and computer telephony integration including email, chat and other custom media types” in Class 38. These services would appear to be related on their face to opposer’s telecommunications engineering and consulting services in that opposer’s broadly worded services may encompass engineering and consulting in the fields of providing telephone, electronic mail, automated calling, multiple-user access to the Internet, and computer telephony integration. In other words, opposer’s services are broad enough to encompass engineering and consulting in all aspects of telecommunications, including those provided by applicant. In addition, opposer has introduced testimony that one of the telecommunications engineering and consulting activities it provides under its mark is building call centers.25 These activities clearly are complementary to applicant’s automated call center services in that opposer’s services include building call centers of a type used by applicant in provision of its Class 38 services. As a result, we find that applicant’s Class 38 services are inherently complementary and related to opposer’s services. See, e.g., In re Hyper Shoppes, 6 USPQ2d 1025 (Fed. Cir. 1988). Finally, we turn to applicant’s 25 Dobronski Testimony, p. 118-9. Opposition No. 91174132 20 “Computer programming services for others, application service provider services, namely, designing, installing, integrating, networking, hosting, operating and maintaining computer software for others, namely, for use in enabling customers to integrate interaction and transaction handling technologies and services to execute a complete customer service and back-office strategy including prioritizing interactions across multimedia, multisite, and multiskill customer care environments; automated call center services; database development services in the field of customer care and customer relationship management which simplify workflow, consolidate legacy applications, and drive consistency of customer interactions; product research and development for others; computer telephony integration, namely, email and computer disaster recovery planning services” in Class 42. Again, applicant’s automated call center services and computer telephony integration would appear to be related on their face to opposer’s telecommunications engineering and consulting services in that opposer’s broadly worded services may encompass engineering and consulting in the fields of automated calling and computer telephony integration. In addition, opposer has introduced testimony that that among the telecommunications engineering and consulting activities it provides under its mark is building call centers and integrating computer, telephone, email and internet communications.26 These activities are complementary to applicant’s automated call center and computer telephony integration services in that opposer’s services include building such call centers and integrating 26 Dobronski Testimony, p. 118-9; Applicant’s Notice of Reliance, Appendix E. Opposition No. 91174132 21 the various communications therefor. As a result, we find that applicant’s Class 42 services are inherently complementary and related to opposer’s services. See In re Hyper Shoppes, supra. Thus, based upon the testimony and evidence of record, opposer has shown that it has made prior use of its mark in connection with services that are related to the services recited in Classes 38 and 42 of the involved application. On the other hand, there is no evidence of a connection between applicant’s goods and services in Classes 9 and 35 and opposer’s services such that purchasers would necessarily view the goods and services as having a common source. Based only on the mere conclusory statements of opposer’s witness, we see the likelihood of confusion claim as to these goods and services as amounting to only a speculative, theoretical possibility. Language by our primary reviewing court is helpful in resolving the likelihood of confusion issue in this case: We are not concerned with mere theoretical possibilities of confusion, deception, or mistake or with de minimis situations but with the practicalities of the commercial world, with which the trademark laws deal. Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992), citing Witco Chemical Co. v. Whitfield Chemical Co., Inc., Opposition No. 91174132 22 418 F.2d 1403, 1405, 164 USPQ 43, 44-45 (CCPA 1969), aff'g 153 USPQ 412 (TTAB 1967). In view of the foregoing, we find that the du Pont factor of similarity between the parties’ respective goods and services favors opposer as to applicant’s services in Classes 38 and 42; and favors applicant as to its goods and services in Classes 9 and 35. Channels of Trade Because of our finding that the opposer’s services and applicant’s services in Classes 38 and 42 are related, and because there are no recited restrictions as to the channels of trade or classes of purchasers in the involved application or pleaded registration, we must assume that these services are available in all the normal channels of trade to all the usual purchasers for such services, and that the channels of trade and the purchasers for the parties’ services would, at a minimum, overlap. See Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910 (TTAB 2000). See also Paula Payne Products v. Johnson Publishing Co., supra. We find that, as a result of the foregoing, this du Pont factor also favors opposer as to the services in Classes 38 and 42. Opposition No. 91174132 23 Conditions of Sale The next du Pont factor discussed by the parties is conditions of sale. Applicant contends that its goods and services are marketed to executives of large corporations and that, as a result, its customers are sophisticated. We note, however that even assuming that purchases of applicant’s goods and services would involve a deliberate decision, this does not mean that the purchasers are immune from confusion as to the origin of the respective goods or services, especially when, as we view the present case, the close similarity of the marks and opposer’s services and applicant’s Class 38 and 42 services outweigh any sophisticated purchasing decision. See HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) [similarities of goods and marks outweigh sophisticated purchasers, careful purchasing decision, and expensive goods]. See also In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), citing Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) [“Human memories even of discriminating purchasers...are not infallible.”]. As a result, we find this du Pont factor to be, at best, neutral or to slightly favor opposer. Opposition No. 91174132 24 Actual Confusion Another du Pont factor discussed by the parties is the presence or absence of actual confusion among consumers as to the goods and services under the parties’ marks. Opposer’s witness, Mr. Dobronski, testified that opposer has experienced numerous incidents of actual confusion, mostly involving personnel and customer service matters.27 Applicant, on the other hand, argues that the parties have co-existed for 25 years, and that only two of the incidents involve customers of opposer.28 Further, on cross- examination Mr. Dobronski admitted that he was not a party to one of the telephone calls assertedly involving its customer.29 In that regard, we note that the testimony of record is not clear as to how many of the asserted instances of actual confusion involved the parties’ respective goods or services under its marks. Nonetheless, applicant acknowledges that at least two such incidents involved customers of opposer, which may be presumed to involve its pleaded mark and services. As a result, we find this du Pont factor to slightly favor opposer. We further observe that, in any event, it is not necessary to prove actual confusion in order to support a finding of likelihood of confusion. 27 Dobronski Testimony, p. 59-105. 28 Brief, p. 29. 29 Applicant’s Notice of Reliance, Appendix F. Opposition No. 91174132 25 Applicant’s Prior Statements Regarding Likelihood of Confusion Finally, opposer asserts that applicant sent cease and desist letters to opposer in 2003 and 2004 in which applicant stated its belief that opposer’s use of its TELETECH mark, its trade name, Teletech, Inc., and the domain name, TELETECHINC.COM, infringed, caused actual confusion, and “is likely to induce further confusion, or mistake, or deception” with applicant’s TELETECH mark.30 In addition, opposer asserts that applicant stated in an arbitration proceeding under ICANN’s Uniform Domain Name Resolution Policy its belief that opposer’s use of the TELETECHINC.COM domain name is confusingly similar to applicant’s TELETECH mark, and is used on confusingly similar goods and services in identical trade channels.31 Applicant argues in response that its previous statements do not involve opposer’s pleaded registration, but rather a domain name issued to Mr. Dobronski; and that applicant did not admit a likelihood of confusion but merely expressed its concern that such confusion might occur between Mr. Dobronski’s TELETECHINC.COM domain name and applicant’s TELETECH mark. 30 Dobronski Testimony, p. 68-75, Exhibit 11. 31 Dobronski Testimony, p. 75, Exhibit 11; Opposer’s Notice of Reliance, Appendix A. Opposition No. 91174132 26 We do not view these statements as binding admissions on the part of applicant, particularly inasmuch as it is not clear from the record that such statements involve the mark and services in opposer’s pleaded registration. Nonetheless, such statements may be considered to have some probative value as an additional du Pont factor for consideration in our likelihood of confusion analysis. In this case, applicant’s statements in its cease and desist letters and prior arbitration proceeding are not sufficient to support a likelihood of confusion where they are not supported by the other du Pont factors. However, they do provide further support for a finding of likelihood of confusion as to those services, namely, applicant’s services in Classes 38 and 42, in which opposer has demonstrated that the other du Pont factors, particularly those concerning the similarity of the marks and services, favor opposer. Summary We have carefully considered all of the evidence pertaining to priority of use and the relevant du Pont factors, as well as all of opposer’s arguments with respect thereto, including any evidence and arguments not specifically discussed in this opinion. Opposition No. 91174132 27 We conclude that opposer has established its standing to bring this proceeding; its priority of use; and that a likelihood of confusion exists between its mark and applicant’s involved mark, as used in connection with opposer’s services and applicant’s closely related services in Classes 38 and 42. To the extent there exists any doubt about our conclusion, we resolve such doubt on the issue of likelihood of confusion in favor of the prior user and against the newcomer. See San Fernando Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 2 (CCPA 1977). DECISION: The opposition is sustained in part on the ground of priority and likelihood of confusion, and registration to applicant is refused as to the services recited in Classes 38 and 42 of the involved application. The opposition is dismissed in part as to the goods and services recited in Classes 9 and 35 of the involved application.