Beth Stone, dba Pangaea Int’l. Consulting

Trademark Trial and Appeal Board

Jan 5, 2000

No. 75148916 (T.T.A.B. Jan. 5, 2000)

Paper No. 25
DEB
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JAN. 5, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Beth Stone DBA Pangaea International Consulting
________
Serial No. 75/148,916
_______
Patricia A. Wilczynski of Scully Scott Murphy & Presser for
Beth Stone DBA Pangaea International Consulting.
Gerald C. Seegars, Trademark Examining Attorney, Law Office
106 (Mary Sparrow, Managing Attorney).
_______
Before Quinn, Chapman and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Beth Stone, a citizen of the United States doing
business as Pangaea International Consulting, filed an
application for registration of the mark “PANGAEA” for
“marketing and management consulting services which are
totally unrelated to banking, finance and investments,
namely, conducting marketing research and feasibility
analysis, identifying global marketing opportunities,
providing cultural analyses, and other marketing-related
Serial Number 75/148,916
2
services in connection with the structuring and
implementation of global marketing strategies.”1
The Trademark Examining Attorney issued a final refusal
to register based upon Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d), on the ground that applicant's mark,
“PANGAEA” when used in conjunction with these marketing and
management consulting services, so resembles the registered
marks, “PANGAEA” and “PANGAEA PARTNERS, LTD.,” that are each
registered for “investment and financial services; namely,
investment and financial research, analysis, counseling and
portfolio management; financial counseling and consulting on
mergers, acquisitions, leveraged buyouts, tender offers,
start-ups, divestitures, joint-ventures, marketing or
distribution arrangements, private placements (of debt
and/or equity securities), project financings,
restructurings, capital markets activities and international
development; merchant and investment banking; providing
loans and loan services to corporations and governments;
trading of financial securities for others; [and] arranging

1 Serial No. 75/148,916, in International Class 35, filed
August 12, 1996, alleging dates of first use of April 1, 1993. At
applicant’s request, the application was divided, with the
“telecommunications services, namely, providing electronic-mail
services” portion of this application proceeding to issue on
December 1, 1998 as Reg. No. 2,207,357.
Serial Number 75/148,916
3
financing from investors and lenders for clients,”2 as to be
likely to cause confusion, or to cause mistake, or to
deceive.
Applicant has appealed the final refusal to register.
Briefs have been filed, but applicant did not request an
oral hearing. We reverse the refusal to register.
In the course of rendering this decision, we have
followed the guidance of In re E.I. du Pont de Nemours &
Co., 476 F.2d 1357, 1362, 177 USPQ 563, 567-68 (CCPA 1973),
that sets forth the factors which should be considered, if
relevant, in determining likelihood of confusion.
Under the first du Pont factor, we examine the
similarities or differences in sound, appearance, meaning
and overall commercial impression of the two marks. As the
Trademark Examining Attorney points out, applicant’s mark
(“PANGAEA”) is identical to one of registrant’s cited marks
(“PANGAEA”) and nearly identical to the second (“PANGAEA
PARTNERS, LTD.”). On this point alone, applicant seems to
have conceded as much. Hence, this du Pont factor supports
the refusal made by the Trademark Examining Attorney.

2 Reg. No. 1,865,956, for “PANGAEA,” issued on December 6,
1994. The registration sets forth dates of first use of October
17, 1989. Reg. No. 1,834,031, for “PANGAEA PARTNERS, LTD.,”
issued on May 3, 1994. This registration also sets forth dates of
first use of October 17, 1989. Both registrations are owned by
the same entity, Pangaea Partners, Ltd.
Serial Number 75/148,916
4
Applicant does focus on the number of “Pangaea” marks
allegedly in use in the United States. Based upon the
results of various automated trademark and trade name search
reports, applicant argues that the term “Pangaea” is a weak
mark.3 However, such search reports are of little probative
value in connection with a question of likelihood of
confusion in the absence of evidence of actual use of those
marks. Their appearance in these search results does not
prove that they are in use. Unless applicant establishes
that the third-party marks shown in these computerized
search results are being used, there is no way an assessment
can be made as to what, if any, impact those marks may have
made in the marketplace. See Seabrook Foods, Inc. v. Bar-
Well Foods, Limited, 568 F.2d 1342, 196 USPQ 289 (CCPA

3 These alleged, third-party registrations were not properly
made of record. In order to make third-party registrations of
record, soft copies of the registrations or photocopies of the
appropriate U.S. Patent and Trademark Office electronic printouts
should be submitted. See Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230
(TTAB 1992). This was not done. Furthermore, the printouts of
the search results were merely an exhibit attached to applicant’s
appeal brief. Copies of the registrations are to be made part of
the record prior to the time of the appeal. See, 37 CFR 2.142(d);
In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994).
Nonetheless, in his appeal brief, the Trademark Examining Attorney
treated these registrations as if of record. In his appeal brief,
he commented on the substance of this evidence without objection.
Although applicant did not comply with the established rules as to
the form and timing for the submission of the evidentiary record
in an application, the Trademark Examining Attorney appears to
have waived his right to object thereto. Accordingly, we have
considered this evidence in reaching our decision.
Serial Number 75/148,916
5
1977). Furthermore, as the Trademark Examining Attorney
points out, none of these third-party registrations recites
services similar in any way to the services at issue herein.
Thus, even if there were proof of use of the third-party
marks highlighted by applicant, any actual uses on
dissimilar goods or services in unrelated fields would be
irrelevant. See Sheller-Globe Corporation v. Scott Paper
Company, 204 USPQ 329 (TTAB 1979) and Charrette Corp. v.
Bowater Communication Papers Inc., 13 USPQ2d 2040 (TTAB
1989).
As to the origins of this word, the application and the
cited registrations note that “Pangaea” comprises two
separate Greek terms, “Pan” meaning “all,” and “Gaea”
meaning “earth.” Applicant volunteered that this “refers to
the original supercontinent which existed on earth before
the continental drift broke up the land mass into Asia,
Europe, Africa, etc.” One could conclude that this term is
somewhat suggestive for companies that want to stress their
involvement in the global marketplace.4 Accordingly, while
applicant argues that this mark is relatively weak, we
conclude that the record does not demonstrate that “Pangaea”
is a weak mark as applied to the services of either

4 Applicant’s logo, as shown on its web pages of record, also
has the tagline, “…we’re putting the continents back together.™”
Serial Number 75/148,916
6
applicant or registrant, and this du Pont factor is largely
neutral.
Given the fact that these respective marks are
substantially identical, the question of likelihood of
confusion turns principally on the relationship between the
services herein. We need to ask whether the circumstances
surrounding their marketing are such that they would be
likely to be encountered by the same persons under
situations that would give rise to the mistaken belief that
they are in some way associated with the same provider.
See, e.g., Monsanto Co. v. Enviro-Chem Corp., 199 USPQ 590,
595-96 (TTAB 1978); and In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
We note from registrant’s recitation of services that
it is an international investment banker that specializes in
providing investment and financial services. In addition to
providing consultation, registrant manages large
international projects, operates securities brokerage firms
in national markets, etc. By contrast, applicant’s
recitation of services is explicit in pointing out that her
expertise is not in banking, finance or investments, but
rather lies in providing marketing and management consulting
services to her members. Her emphasis is also on the
electronic tools made available on the Internet.
Serial Number 75/148,916
7
In reviewing closely the context for these two types of
services as recited above and examining the balance of the
record,5 we see that both registrant and applicant do share a
strong focus on emerging markets in the developing nations
of the world.
On the other hand, there is nothing in the record
showing that international investment bankers also provide
the kind of marketing consultancy services being offered by
applicant. As applicant noted, the Trademark Examining
Attorney seems to have latched onto two words (“consulting”

5 From applicant’s web pages (specimens of record), we see that
“PANGAEA, International Consultants is a global marketing
consulting firm working with multinational or soon-to-be
multinational companies exploring business opportunities
abroad. We analyze country and industry trends to aid our
clients with global launch programs, market entry strategies
and feasibility analysis. Our country/industry overviews,
consumer insight analyses, evaluation of consumer receptivity
and market trends, as well as pricing and promotion
opportunities in key markets enables our clients to make
confident global business decisions with foresight and
knowledge. Through our analytical and progressive techniques,
we help our clients with global business, marketing and
advertising strategy development and local tactical
implementation to compete effectively in the global and local
marketplace.
“We have built a strong network comprised of independent
consultants and long-established companies in more than 50
markets around the world who bring local market insights and
business acumen to each consulting engagement.
“In summary, PANGAEA provides clients with the tools and
guidance to open new markets through thoughtful planning to
execute global strategy development and local tactical
implementation.”
Applicant has also included information from registrant’s web
page confirming that
“Pangaea Partners provides expert investment banking and
financial consulting services in emerging markets…”
Serial Number 75/148,916
8
and “marketing”) found in the respective recitations of
services. In the absence of a lack of proof of the
relatedness of these specifically different types of
services, this simply is too tenuous a connection on which
to base a finding of likelihood of confusion. Hence, on the
instant record, this du Pont factor supports the position of
applicant that there is no likelihood of confusion.
Furthermore, we agree with applicant that both
applicant and registrant would be targeting their respective
services to fairly sophisticated customers. Hence, this
du Pont factor also supports the position of applicant that
there is no likelihood of confusion.
In conclusion, given our perceptions of the differences
between registrant’s and applicant’s services and their
respective customers’ needs, we find that this record does
not demonstrate that the sophisticated customers involved
herein would assume international investment bankers are
involved in marketing and management consulting services.
We find this outweighs the fact that we are faced with
substantially identical marks in a larger context where
applicant and registrant have a similar emphasis on
developing global markets.
Serial Number 75/148,916
9
Decision: The refusal to register is reversed.
T. J. Quinn
B. A. Chapman
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial and
Appeal Board