Catapult Integrated Services Inc.

Trademark Trial and Appeal Board

Oct 10, 2008

No. 78736592 (T.T.A.B. Oct. 10, 2008)

Hearing: Mailed:
July 23, 2008 October 10, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Catapult Integrated Services Inc.
________

Serial No. 78736592
_______

Norman H. Zivin and Tonia A. Sayour of Cooper & Dunham LLP
for Catapult Integrated Services Inc.

Angela Micheli, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Seeherman, Walters and Taylor, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Catapult Integrated Services Inc. has appealed from
the final refusal of the Trademark Examining Attorney to
register CATAPULT and design, as shown below, for
“advertising, marketing and promotion services, namely,
brand strategy services, national consumer promotion
services, customer marketing services, retail marketing
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78736592
2
services, and integrated communication services.”1 The
application includes, as a description of the mark: “The
mark consists of a stylized letter A, second occurrence.”

Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that applicant’s mark so resembles the mark CATAPULT DIRECT
MARKETING, with DIRECT MARKETING disclaimed, previously
registered for the services set forth below,2 that when used
in connection with applicant’s identified services it is
likely to cause confusion or mistake or to deceive.

1 Application Serial No. 78736592, filed October 19, 2007,
asserting first use and first use in commence as of September 28,
2005.
2 Registration No. 2552359, issued March 26, 2002; Section 8
affidavit accepted; Section 15 affidavit received.
The Examining Attorney originally refused registration on the
basis of Registration No. 2443912 as well. This registration,
owned by a third party, is for DIGITAL CATAPULT for, inter alia,
“dissemination of advertising for others via a global
communications network,” and was cancelled on January 19, 2008
for failure to file a Section 8 affidavit of use. The Examining
Attorney withdrew the refusal based on that registration in her
appeal brief. Further, as a point of clarification, we note that
in the first Office action the Examining Attorney listed three
registrations as the basis for refusing registration, i.e., Nos.
2552359 and 2443912, referred to above, and No. 2840737.
However, the Examining Attorney neither discussed the latter
registration in any Office action, nor did she include a copy of
the registration in the first Office action, although she did
include copies of the two cited registrations. Accordingly, we
conclude that the listing of Registration No. 2840737 was in
error.
Ser No. 78736592
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Direct marketing advertising for
others, preparation of advertisements
for others, advertising services,
namely rental of direct marketing
mailing and distribution lists,
advertising services, namely acquiring
advertising space in periodicals for
others, agency for advertising time and
space, business marketing consulting
services.

The appeal has been fully briefed, and an oral hearing
was held.
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 set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis, two
key 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 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
Turning first to the services, applicant argues that
they are dissimilar and do not compete with each other.
However, as identified, applicant’s services include
Ser No. 78736592
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“customer marketing services” and “retail marketing
services,” while the registrant’s identified services
include “direct marketing advertising for others.” These
services must be considered to be legally identical, as
applicant’s marketing services, as identified, would
include direct marketing advertising. In re Dixie
Restaurants Inc., 41 USPQ2d at 1534, quoting Canadian
Imperial Bank v. Wells Fargo Bank, N.A., 811 F.2d 1490,
1493, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987) “Likelihood of
confusion must be determined based on an analysis of the
mark as applied to the ... services recited in applicant's
application vis-a-vis the ... services recited in [a] ...
registration, rather than what the evidence shows the ...
services to be.”
Further, because the services must be considered
legally identical in part, to this extent they must be
deemed to be offered in the same channels of trade.
With respect to the marks, applicant argues that the
marks are different because the cited mark includes the
words DIRECT MARKETING and has no design element, while its
mark has a design element and a “stylized ‘A’ appearing as
a second occurrence in the mark that does not include the
usual horizontal line (so that it appears to be the Greek
letter lambda).” Brief, p. 6. We agree with applicant
Ser No. 78736592
5
that the marks have these differences. However, they are
not sufficient to distinguish them. The question is not
whether the marks can be distinguished when they are
compared side-by-side, but whether the marks convey the
same commercial impression, such that consumers will view
the marks as indicating services emanating from the same
source.
In making this determination, 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). Applying this principle to the case at hand,
we think it appropriate to give less weight to the words
DIRECT MARKETING in the cited registration. These words,
which have been disclaimed, are descriptive or generic for
the registrant’s services. Accordingly, they have little
or no source-identifying significance. It is to the word
CATAPULT that consumers will look to identify the source of
the services. As for applicant’s mark, although it
contains a stylized “A,” the letter will clearly be
Ser No. 78736592
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understood to be an “A” rather than the Greek letter
lambda. Applicant itself stated in its application that
“the literal element of the mark consists of CATAPULT.”
Further, the specimen it submitted with its application
devotes the second page to the import of its name, and
shows that there is no question that the mark will be
perceived as the word CATAPULT.

Further, the line design element in the mark will be
viewed either as suggesting the action of a catapult, and
thereby reinforcing the meaning of the word, or it will be
seen as merely a curved line that has no source-indicating
significance. In either case, it does not make a separate
Ser No. 78736592
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commercial impression in terms of conveying an idea
different from that of the word CATAPULT.
Accordingly, when the marks are compared in their
entireties, and giving appropriate weight to the dominant
elements in each, we find that the marks are highly similar
in appearance, virtually the same in pronunciation and
connotation, and that they convey the same commercial
impression.
Applicant has argued that the term CATAPULT has a
suggestive significance, and is therefore not entitled to a
broad scope of protection. In support of this argument,
applicant points to five third-party registrations, owned
by different entities, for marks which contain the word
CATAPULT or a variation thereof, namely:

MARK

SERVICES

REGISTRATION
NUMBER

CATAPULT

Educational services, namely,
providing training in the
interpretation of statistical
market analysis, market research
and business consultation in the
field of improving quality of
customer services, business
operations and workplace
satisfaction using online
interactive business services via
a Web site

2870924
Ser No. 78736592
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CATAPULT

Business consulting services,
namely a software development
methodology targeted to
information technology
professionals to assist them in
defining business requirements
and translating those
requirements into a computer
software/technology solution

2922364

CATAPULT
THINKING

New retail product, industrial
and packaging design for others;
and website design and
development for others

2538822

CATAPULT
CONSULTANTS

Providing web development
services, namely website design,
development and maintenance to
nonprofit organizations and small
to medium size businesses

2870808

CATAPULTA

Business consultation; business
planning, namely, development of
business plans and business
strategies, including plans and
strategies for enhancing and
supporting operational and
employee efficiency and
productivity and for business
development; and personnel
placement and recruitment for
businesses

2665191

Third-party registrations are not evidence that the
marks are in use, but they can be used in the manner of
dictionary definitions, to show that a term has a
significance in a particular industry. See Mead Johnson &
Ser No. 78736592
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Company v. Peter Eckes, 195 USPQ 187 (TTAB 1977). First,
we note that the services recited in the third-party
registrations are only tangential to applicant’s and the
registrant’s services, so that it is not clear that they
show that the term has a particular significance in the
advertising industry. Even if we accept that the
registrations are for services in the same industry, they
show that “catapult” has a somewhat laudatory suggestion
based on the dictionary meaning of “to become catapulted;
spring up abruptly,”3 a suggestion referenced by applicant
itself in its “What’s in a Name” page, reproduced above.
However, we cannot conclude that the term CATAPULT is so
highly suggestive that the addition of the descriptive or
generic wording DIRECT MARKETING in the registrant’s mark,
or the stylized “A” and curved line in applicant’s mark,
are sufficient to distinguish these marks when they are
used in connection with services that are, in part,
identical.
Applicant has also made of record evidence of
third-party use of CATAPULT marks. The Examining Attorney
has characterized this evidence as consisting of pages from

3 The American Heritage Dictionary of the English Language
© 1970. The Board may take judicial notice of dictionary
definitions. University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser No. 78736592
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only two third-party websites, the third website being that
of the owner of the cited registration. Further, the
Examining Attorney has stated that one of these websites is
for a retail automation system, while the other is for an
advertising and marketing company. Although applicant does
not dispute these characterizations, it appears to us that
the webpages show four third-party uses. One is for
CATAPULT MAKETING GROUP, LLC and design, for a company
which is described as doing qualitative research (“Whether
you want to learn about the behaviors, motivations, or
perceptions of customers, patients, physicians, executives,
customers, or B2B decision-makers, Calpult [sic] delivers a
customized solution to meet your needs”),
http://catapultmarketinggroup.com; the second is for
CATAPULT and design for promotional products (“Catapult
Sales & Marketing Inc. is dedicated to offering our
customers the highest standard of service in the sourcing,
pricing and fulfillment of their promotional needs”),
http://www.catapultsales.com; the third is for CATAPULT
DATA SERVICES for data processing services,
http://www.edatadirect.com; and the fourth is for CATAPULT
Retail Enterprise Automation and Catapult University for
retail automation systems, http://www.ecrsoftware.com.
Three of these third-party uses are unrelated to the
Ser No. 78736592
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services identified in applicant’s application and the
cited registration. We cannot conclude from the limited
evidence of third-party use, and particularly the lack of
evidence of third-party use for services that are the same
or closely related to those at issue herein, that consumers
would distinguish between applicant’s mark CATAPULT and
design and the registrant’s mark CATAPULT DIRECT MARKETING,
when used for identical services, based on the non-
distinctive other elements in the marks. Compare In re
Broadway Chicken, Inc., 38 USPQ2d 1559, in which there were
more than 500 company names containing the term “Broadway”
listed in the Dun & Bradstreet database for restaurants or
related services; there were 80 listings for “Broadway”
marks for food or restaurant places in telephone
directories; and there were more than 575 listings of
“Broadway” company names in the American Business Directory
for restaurants or related goods and services.
Finally, applicant has argued that the customers of
its services and those of the registrant are sophisticated
purchasers who would choose the services with care. We do
not dispute this contention, but because the marks are so
similar, and the services are in part legally identical,
even sophisticated and careful purchasers are not likely to
distinguish the marks based on the slight differences
Ser No. 78736592
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between them. As we stated previously, even if consumers
note the differences in the marks, they are likely to
believe that the marks identify services emanating from a
single source.
Both applicant and the Examining Attorney have limited
their arguments to the du Pont factors discussed above.
Because of this, and because no evidence has been submitted
on other factors, we, too, have limited our discussion to
these factors. To the extent that any other factors are
applicable, we treat them as neutral.
After considering all the relevant du Pont factors, we
find that applicant’s use of its mark for its identified
services is likely to cause confusion with the cited
registration.
Decision: The refusal of registration is affirmed.