Clear Blue LLC

Trademark Trial and Appeal Board

Mar 23, 2005

No. 76282838 (T.T.A.B. Mar. 23, 2005)

Mailed:
23 March 2005
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Clear Blue LLC
________

Serial No. 76282838
_______

Jeffrey P. Thennisch of Dobrusin & Thennisch PC for Clear
Blue LLC.

Kelley L. Wells, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Walters, Holtzman, and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On July 11, 2001, Clear Blue, LLC (applicant) applied
to register the mark CLEAR!BLUE (in typed form) on the
Principal Register for services ultimately identified as
“communication services provided to others; namely,
delivering and transmitting live event content and streamed
sound and audio-visual recordings via live presentations,
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 76282838
2
remote video conferencing, webcasting, and the Internet for
strategic events” in Class 38.1
The examining attorney2 has refused to register
applicant’s mark under Section 2(d) of the Trademark Act
(15 U.S.C. § 1052(d)) because of two registrations for the
mark CLEAR BLUE, one in typed form,3 and the other with the
design shown below.4

While the image as reproduced above is not as clear as the
Office’s electronic records, we note that the registration
does contain the following statement: “The mark consists
of blue sky with white clouds within a circle, and the
superimposed words ‘Clear Blue.’ The stippling shown in
the drawing is a feature of the mark and not intended to
indicate color.”
The services in both registrations are identical:
“advertising agency services” in International Class 35.

1 Serial No. 76282838. The application claims a date of first
use and first use in commerce of August 2, 2000.
2 The current examining attorney was not the original examining
attorney in this case.
3 Registration No. 2,629,966, issued October 8, 2002.
4 Registration No. 2,629,967, issued October 8, 2002.
Ser No. 76282838
3
The examining attorney argues that the “literal
portion of the applicant’s mark CLEAR!BLUE is identical in
sound, meaning, and appearance. The only difference
between the marks is the exclamation point between the
words CLEAR and BLUE in the applicant’s mark.” Brief at 3.
Regarding the services, the examining attorney determined
(Brief at 5 and 6) that:
{A]ll of the information provided in the applicant’s
specimens shows that the applicant’s identified
services are a small part of an overall marketing
service. All of the services provided by the
applicant, including the service identified in the
application, are all advertising/marketing services.
One purpose of the applicant’s services is to
advertise, market or promote its clients' goods and
services….

The applicant’s event and communication services are
related to traditional advertising services. They may
be an additional or new way of promoting or
advertising clients’ products but it is clear from the
evidence of record and from the applicant’s specimens
that the purpose of the applicant’s events and
communications is to promote or advertise the client’s
product.

Specifically, the examining attorney points out (Brief
at 6) that applicant’s specimen “shows that the applicant
refers to some of its work product as infomercials. The
applicant refers to the ‘Mercedes Benz reveal’5 as a live
infomercial. This is clearly a type of advertising.”

5 “Reveal” is apparently used as a term of art to describe the
“revealing” or “introduction” of a product to the public.
Ser No. 76282838
4
In response, applicant argues that registrant’s marks
“cannot be regarded as particularly strong marks entitled
to broad protection.” Brief at 7. In addition, applicant
argues that “‘advertising agency services’ are NOT
identical to the Applicant’s amended recitation of services
clause.” Brief at 8. “Applicant’s services are directed
to providing solutions for such matters as how thousands of
individuals across the country can technically view a live
speech or discussion in real time, such as a business
meeting, earnings/sales reports, etc.” Reply Br. at 3.
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000). In considering the
evidence of record on these factors, we must 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 [or services] and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
Ser No. 76282838
5
We begin our discussion by considering the
similarities and dissimilarities of the marks in the
application and registrations. We agree with the examining
attorney that the literal portions of the marks are the
identical words, CLEAR BLUE. The marks would be pronounced
identically and they would have the same meaning and
commercial impression. Regarding the two typed drawing
marks, they would appear very similar but for the
exclamation point separating the words in applicant’s mark.
While we consider this point, we cannot see that it
substantially differentiates the appearance of the marks.
Slight differences in the stylization of identical marks
are unlikely to result in confusion becoming unlikely. CBS
Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir.
1983) “([M]inor design features do not necessarily obviate
likelihood of confusion arising from consideration of the
marks in their entireties. Moreover, in a composite mark
comprising a design and words, the verbal portion of the
mark is the one most likely to indicate the origin of the
goods to which it is affixed”).
Regarding registrant’s design mark with the words
CLEAR BLUE, we note that the registration describes the
mark as consisting of “blue sky with white clouds within a
circle, and the superimposed words ‘Clear Blue.’” Thus,
Ser No. 76282838
6
the design in this registration emphasizes the “Clear Blue”
wording of the mark and it would not serve to distinguish
the marks. See Wella Corp. v. California Concept Corp.,
558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA
CONCEPT and surfer design likely to be confused with
CONCEPT for hair care products).
More significant than the exclamation point in
applicant’s mark and the blue sky design in one of
registrant’s marks is the fact that the words in the
application and registration are identical. “Without a
doubt the word portion of the two marks are identical, have
the same connotation, and give the same commercial
impression. The identity of the words, connotation, and
commercial impression weighs heavily against the
applicant.” In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1688 (Fed. Cir. 1993).
Applicant also refers to several registrations for the
words CLEAR BLUE, and it argues that the term has a
suggestive or descriptive connotation that entitles it to a
more narrow scope of protection.6 When we consider the

6 Actually, applicant attached an electronic printout of a list
of 31 applications and registrations along with printouts of
eight of the items on the list. We note that 24 items on this
list are simply indicated to be pending or abandoned applications
which are not evidence of anything other than the application was
filed. Olin Corp. v. Hydrotreat, Inc., 210 USPQ 62, 65 n.5 (TTAB
1981) (“Introduction of the record of a pending application is
Ser No. 76282838
7
copies of the four registrations of record, one is for “in
vitro diagnostic reagents for the detection of pregnancy;”7
two are owned by the same party for motion picture film
productions8 and financing motion pictures for others;9 and
the fourth is for a wide variety of consumer items and
services, e.g., toys, computer and video games, tableware,
and retail stores.10
While third-party registrations may be used to
demonstrate that a portion of a mark is suggestive or
descriptive, they cannot be used to justify the
registration of another confusingly similar mark. In re
J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987).
Therefore, the few registrations that applicant has made of
record hardly support applicant’s claim the words “Clear
Blue” are entitled to a narrow scope of protection. Nor,
we add, are the facts that “clear blue” is not an arbitrary
term and that it has been used by some on the Internet
sufficient to diminish its scope of protection. There is
no argument that the term CLEAR BLUE is a unique or coined

competent to prove only the filing thereof”). Of the remaining
eight registrations, three do not use the words CLEAR BLUE in the
mark. Therefore, the number of relevant registrations is hardly
overwhelming.
7 Registration No. 1,492,770.
8 Registration No. 2,311,262.
9 Registration No. 2,376,724.
10 Registration No. 2,329,366.
Ser No. 76282838
8
term. Therefore, while “Clear Blue” is not a weak mark, it
is also not entitled to an unusually broad scope of
protection.
Next, we look at whether the services are related,
which is the major point of contention between applicant
and the examining attorney. It “has often been said that
goods or services need not be identical or even competitive
in order to support a finding of likelihood of confusion.
Rather, it is enough that goods or services are related in
some manner or that circumstances surrounding their
marketing are such that they would be likely to be seen by
the same persons under circumstances which could 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 producer or that there is an association between
the producers of each parties' goods or services.” In re
Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). See also
Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650,
1661 (TTAB 2002). Therefore, the test is not whether
registrant’s services are broad enough to include
applicant’s communication services but whether purchasers
would encounter both services and assume that there is some
relationship between them.
Ser No. 76282838
9
Here, registrant’s services are advertising agency
services and applicant’s services involve “delivering and
transmitting live event content and streamed sound and
audio-visual recordings via live presentations, remote
video conferencing, webcasting, and the Internet for
strategic events.” Applicant has submitted specimens and
literature that provide extensive information about
applicant’s services.
The first page of applicant’s specimen reads as
follows:
EVENTKNOWLEDGE
True creativity is smart creativity… that is why
Clear!Blue combines the communication power of the
Internet with state-of-the-art database management
strategies to offer EventKnowledge: a targeted
solution to help you build stronger, one-to-one
relationships with your target audience.

Can you really have one-to-one relationships with an
audience of thousands or more?

You can…
By addressing each one of them individually…
By suppling [sic] exactly the information they want
exactly when they ask for it…
And by not wasting their time with confusing,
misdirected or unwanted messages.

Clear!Blue can help build and manage those
communications tools for you while extracting and
interpreting the valuable information you need to
speak intelligently to your audience. Meanwhile,
you’re free to focus on the other important tasks
within your marketing strategy, campaign or event.

Ser No. 76282838
10
The specimen on page 2 then asks the question: “What
does EventKnowledge look like? To which the answer is:
“You! We’ll match all EventKnowldege communications to
your brand, using colors, layouts, fonts and logos that
match your company or campaign look.” Also, applicant’s
“e-mail platform is linked directly to our marketing
database platform, drawing out customized information to
speak more directly to each individual.”
Applicant’s overall services are demonstrated in its
slides entitled “Our Successes.” These examples include:
SEMA Las Vegas, NV October 30, 2000
Custom Pt Cruisers on display and reveal of Setzer
Cruiser
The last party at the Rat Pack Bungalow … before it
was demolished forever
Unforgettable atmosphere and live music by Bryan
Setzer
Chrysler stole the show … without a show sponsorship
or an all-new product

Los Angeles Auto Show January 4, 2001
Dodge Powerbox Reveal
Simple, creative, effective
Perfect, white reflective stage
A photo studio reveal resulting in breathtaking images
for the press

Detroit North American International Auto Show January
2001
Jeep Liberty Reveal
Ken Kersey narration about the roads less traveled
A drive down a steep, 30-foot mountain in Cobo Hall
Shook the bag with a production vehicle reveal on
concept car day – and got noticed

Ser No. 76282838
11
After reviewing applicant’s literature, it is clear
that at least some of applicant’s strategic events include
the unveiling of new products and the promotion of products
already on the market. Applicant’s services involve the
designing or staging of these “strategic events.” However,
applicant is not seeking registration for marketing
services. Instead, applicant’s seeks registration for only
delivering and transmitting live event content and streamed
sound and audio-visual recordings via live presentations,
remote video conferencing, webcasting, and the Internet for
strategic events.
While there is evidence that advertising agency
services and marketing services are overlapping services
and that the same entities provide both services, there is
no evidence that applicant’s communication services are
provided by advertising agencies. It is also not apparent
that advertising agencies would provide these types of
communication services. For example, as part of
advertising a client’s product, an advertising agency may
hire a musical band or a caterer, but this would not
establish that entertainment services or food services are
related to advertising agency services. Here, to the
extent that communication services are likely to be viewed
as technical services not directly associated with
Ser No. 76282838
12
advertising agency services, we are not persuaded that a
purchaser of advertising agency services would assume that
the source of applicant’s communication services are
related or associated.
Furthermore, purchasers of advertising agency services
and communication services involving transmitting and
delivering strategic events are not ordinary or impulse
purchasers. The fact that the purchasers would be
professional purchasers exercising more than ordinary care
in purchasing these services supports a conclusion that
confusion is not likely.
Decision: The examining attorney’s refusal to
register applicant’s mark under Section 2(d) of the
Trademark Act is reversed.