The Cadence Group, Inc.v.Cadence Media Group, L.C. (L.L.C.)

Trademark Trial and Appeal Board

Mar 16, 2004

No. 91151811 (T.T.A.B. Mar. 16, 2004)

Mailed:
March 16, 2004
Paper No. 6
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
The Cadence Group, Inc.
v.
Cadence Media Group, L.C. (L.L.C.)
_____
Opposition No. 91151811
to application Serial No. 76115714
filed on August 24, 2000
_____
Edmund B. Burke for The Cadence Group, Inc.
Wade R. Budge of Snell & Wilmer for Cadence Media Group,
L.C. (L.L.C.).
______
Before Quinn, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
In the above-referenced application, applicant seeks
registration on the Principal Register of the mark CADENCE
MEDIA GROUP (in typed form) for services recited in the
application (as amended) as “graphic art design; multimedia
and graphic art design and development services, namely,
designing and developing websites, e-commerce businesses,
closed-computer networks, extranets, and on-line stores for
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91151811
2
others,” in Class 42. Applicant has disclaimed the
exclusive right to use MEDIA GROUP apart from the mark as
shown.
Opposer has opposed registration of applicant’s mark,
alleging as grounds therefor that applicant’s mark, as
applied to applicant’s services, so resembles opposer’s mark
CADENCE GROUP, previously used in connection with and
registered for “business management and consultation,
business research, temporary employment and job placement,
and general information clearinghouse services” in Class 35;
“document and message retrieval and delivery by non-
electronic means” in Class 39, and “computer consulting,
library consultation services and legal research services,
excluding design of new products for others in the field of
electronics, and excluding consulting services in the field
of electronic product design and electronic product
implementation” in Class 42, as to be likely to cause
confusion, to cause mistake, or to deceive. See Trademark
Act Section 2(d), 15 U.S.C. §1052(d).
Applicant filed an answer by which it denied the
salient allegations of the notice of opposition.
The evidence of record includes the file of applicant’s
involved application,1 the pleadings herein, and a status
1 However, any factual allegations in the application which were
made by applicant during ex parte prosecution of the application
Opposition No. 91151811
3
and title copy of opposer’s pleaded Registration No.
2,354,530 of the mark CADENCE GROUP (in typed form) for the
above-quoted services, which opposer made of record via
notice of reliance. The registration was issued on June 6,
2000, and it includes a disclaimer of the exclusive right to
use GROUP apart from the mark as shown.
Opposer filed a brief on the case, but applicant did
not. No oral hearing was requested.
Because opposer has made of record a status and title
copy of its pleaded registration, and because its likelihood
of confusion claim is not without merit, we find that
opposer has established its standing to oppose registration
of applicant’s mark. See, e.g., Lipton Industries, Inc. v.
Ralston Purina Company, 670 F.2d 1024, 213 USPQ 185 (CCPA
1982). Additionally, because opposer has made its pleaded
registration of record, priority is not an issue in this
case with respect to the mark and services identified
therein. See King Candy Co., Inc. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Therefore,
the only issue to be decided is whether opposer has
established that a likelihood of confusion exists.
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the probative facts
in evidence that are relevant to the likelihood of confusion
are not deemed to be evidence of record in this proceeding. See
Opposition No. 91151811
4
factors set forth in In re E.I. du Pont de Nemours and Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In considering the
evidence of record on these factors, we keep in mind that
“[t]he fundamental inquiry mandated by §2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
We turn first to a determination of whether applicant’s
mark and opposer’s registered mark, when compared in their
entireties in terms of appearance, sound and connotation,
are similar or dissimilar in their overall commercial
impressions. The test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression that confusion
as to the source of the services offered under the
respective marks is likely to result. See Sealed Air Corp.
v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore,
although the marks at issue must be considered in their
entireties, it is well-settled that 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
TBMP §704.04 (2d ed. June 2003).
Opposition No. 91151811
5
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
Applying these principles in the present case, we find
that applicant’s mark and opposer’s mark are quite similar
when viewed in their entireties in terms of appearance,
sound, connotation and overall commercial impression.
Indeed, the marks are identical but for the presence of the
descriptive word MEDIA as the second word in applicant’s
mark. Both marks begin with the word CADENCE and end with
the word GROUP. The dominant feature in both marks is the
first word CADENCE, which appears to be arbitrary or at most
only slightly suggestive as applied to the respective
services. The strength of the term CADENCE in opposer’s
mark is further established by the absence of any evidence
of third-party use of CADENCE or similar marks on or in
connection with the services at issue herein. The remaining
wording in each mark, i.e., MEDIA GROUP and GROUP,
respectively, is descriptive matter. We find that any
dissimilarities between the marks which result from the
presence of the word MEDIA in applicant’s mark and the
absence of that word from opposer’s mark are greatly
outweighed by the similarity which results from the fact
that both marks start with the word CADENCE and end with the
word GROUP.
Opposition No. 91151811
6
We turn next to a determination of the similarity or
dissimilarity of the services recited in applicant’s
application and opposer’s registration, respectively. It is
not necessary that the respective services be identical or
even competitive in order to support a finding of likelihood
of confusion. Rather, it is sufficient that the services
are related in some manner, or that the circumstances
surrounding their marketing are such, that they would be
likely to be encountered by the same persons in situations
that would give rise, because of the marks used thereon, to
a mistaken belief that they originate from or are in some
way associated with the same source or that there is an
association or connection between the sources of the
respective services. See In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984);
In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In re
International Telephone & Telegraph Corp., 197 USPQ2d 910
(TTAB 1978). Moreover, the greater the degree of similarity
between applicant’s mark and opposer’s mark, the lesser the
degree of similarity between applicant’s services and
opposer’s services that is required to support a finding of
likelihood of confusion. See In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re Concordia
International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
Opposition No. 91151811
7
Opposer argues that the “computer consulting” services
identified in its registration are similar to and related to
the “designing and developing websites, e-commerce
businesses, closed-computer networks, extranets, and on-line
stores for others” recited in applicant’s application.
Opposer contends that these services of applicant’s all
“involve the design and development of computer programs,
based on a consulting project commissioned by the customer.
As such, they are no more than a form of computer
consulting.” (Brief at 4.) Opposer continues:
“Computer consulting” involves assisting a
customer in achieving a result desired, using
computer technology, whereby the consultant
applies skill and expertise to achieve a desired
end. Opposer’s mark is registered for this
service. The service claimed by Applicant
logically entails the performance of this very
service, as none of the activities claimed by
Applicant could be carried out without
substantial work in consulting on the computer
implementation of the work.
(Brief at 5.)
We find that the services recited in applicant’s
application are sufficiently related to the services recited
in opposer’s registration that confusion is likely to result
from the parties’ use of the similar marks involved herein.
The “designing and developing websites, e-commerce
businesses, closed-computer networks, extranets, and on-line
stores for others” recited in applicant’s application are
Opposition No. 91151811
8
encompassed within the “computer consulting” services
recited in opposer’s registration. This is especially so
with respect to applicant’s design and development of
“closed-computer networks” and “extranets.”2 Moreover, the
“business management and consultation” services recited in
opposer’s registration encompass applicant’s services of
designing and developing “e-businesses” and “on-line
stores.” Although the scope and focus of applicant’s
services is narrowed by the prefatory language in
applicant’s recitation of services, i.e., “multimedia and
graphic art design services, namely,” applicant’s services
still are within the ambit of opposer’s recited services.
We also find that the parties’ respective services are
likely to be marketed in the same trade channels and to the
same classes of purchasers, i.e., companies large and small
which utilize computer intranets and extranets, as well as
the World Wide Web, to conduct their businesses. Although
the parties’ respective services are likely to be purchased
with some degree of care, we cannot conclude that the degree
2 “Extranet” is defined as “an intranet (internal TCP/IP network)
that has been selectively opened to a firm’s suppliers, customers
and strategic allies” (Webster’s New World Dictionary of Computer
Terms (8th ed. 2000)), and as “an extension of a corporate
intranet using World Wide Web technology to facilitate
communication with the corporation’s suppliers and customers. An
extranet allows customers and suppliers to gain limited access to
a company’s intranet in order to enhance the speed and efficiency
of their business relationship” (Microsoft computer Dictionary
(5th ed. 2002)). The Board may take judicial notice of dictionary
definitions. See, e.g., University of Notre Dame du Lac v. J. C.
Opposition No. 91151811
9
of such care would be so great that it negates the
likelihood of confusion as to source, sponsorship or
affiliation which would be caused by the use of these highly
similar marks.
In summary, we find that applicant’s mark and opposer’s
mark are confusingly similar because they both start with
the arbitrary word CADENCE and end with the word GROUP.
Indeed, the marks are identical but for the presence of the
descriptive word MEDIA in applicant’s mark. Even assuming
that purchasers are able to perceive and recall this sole
point of distinction between the marks, the parties’
services are sufficiently related that purchasers are likely
to assume that a source, sponsorship or other relationship
exists. Purchasers aware of CADENCE GROUP and its computer
consulting and business management consulting services, upon
encountering the mark CADENCE MEDIA GROUP used in connection
with the design and development of websites, e-commerce
businesses, closed-computer networks, extranets and online
stores, are likely to assume that CADENCE MEDIA GROUP is an
affiliate or division of CADENCE GROUP which specializes in
these particular computer- and multimedia-based development
and design services.
Having carefully considered all of the relevant du Pont
factors, we conclude that a likelihood of confusion exists.
Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703
Opposition No. 91151811
10
Any doubt as to this result must be resolved against
applicant. See In re Hyper Shoppes (Ohio) Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); In re Martin’s Famous
Pastry Shoppe, Inc., supra.
Decision: The opposition is sustained.
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); see also TBMP §712.01.