Consulting Services Int’l. Inc.

Trademark Trial and Appeal Board

Oct 3, 2003

No. 76376622 (T.T.A.B. Oct. 3, 2003)

Mailed:
Oct. 3, 2003
Paper No. 12
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Consulting Services International Inc.
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Serial No. 76376622
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Richard A. Zachar of Vedder, Price, Kaufman & Kammholz for
Consulting Services International Inc.
Marlene Bell, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
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Before Hairston, Walters and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark CRMS (in typed form) for services recited in
the application, as amended, as “providing an on-line
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76376622
2
database in the field of ocean shipping contract carrier
rates to subscribers,” in Class 39.1
Applicant has appealed the Trademark Examining
Attorney’s final refusal to register applicant’s mark. The
refusal was made under Trademark Act Section 2(d), 15
U.S.C. §1052(d), on the ground that applicant’s mark, as
applied to applicant’s services, so resembles the mark
CRMS, previously registered for “software, namely, software
for locating, controlling and scheduling the use of
electronic resources that are used to receive and transmit
information and data, the information and data including
video signals, audio signals and human and machine-readable
data,” in Class 9,2 as to be likely to cause confusion, to
cause mistake, or to deceive.
The appeal has been fully briefed, but applicant did
not request an oral hearing. We reverse the refusal to
register.
1 Serial No. 76376622, filed February 27, 2002. The application
is based on use in commerce under Trademark Act Section 1(a), 15
U.S.C. §1051(a), and January 15, 2002 is alleged in the
application as the date of first use of the mark anywhere and the
date of first use of the mark in commerce. In response to the
Trademark Examining Attorney’s inquiry, applicant asserted that
CRMS has no known significance in the relevant trade or industry
or as applied to the services. It appears from applicant’s
specimen that applicant uses CRMS as an acronym for “contract
rate management system.”
2 Registration No. 2,392,299, issued October 3, 2000.
Ser. No. 76376622
3
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 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 find, first, that applicant’s mark and the cited
registered mark are identical in terms of appearance,
sound, connotation and overall commercial impression. This
fact weighs in favor of a finding of likelihood of
confusion.
We turn next to the issue of the similarity or
dissimilarity of applicant’s and registrant’s respective
goods and services, trade channels, and classes of
purchasers. It is not necessary that the respective goods
or services be identical or even competitive in order to
support a finding of likelihood of confusion. Rather, it
is sufficient that the goods or services are related in
Ser. No. 76376622
4
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 goods or 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 the applicant’s mark and the cited
registered mark, the lesser the degree of similarity
between the applicant’s goods or services and the
registrant’s goods or services that is required to support
a finding of likelihood of confusion; where the applicant’s
mark is identical to the registrant’s mark, as it is in
this case, there need be only a viable relationship between
the respective goods or services in order to find that a
likelihood of confusion exists. 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).
Ser. No. 76376622
5
Applying these principles to the present case, we find
that the Trademark Examining Attorney has failed to
establish that applicant’s services and registrant’s goods
are similar or related in any way which would result in
source confusion, even if they are marketed under their
identical CRMS marks. Indeed, the Trademark Examining
Attorney has submitted no evidence at all on this issue,
but merely asserts in a conclusory manner that “[c]onsumers
in a wide variety of fields, including Applicant’s defined
field and industry, often use software to locate, control
and schedule the use of electronic resources that are used
to receive and transmit information and data, and, as such,
are likely to encounter the Registrant’s mark for said
goods.” (Brief, p. 5.) There is no evidence to support
this assertion.
In particular, there is no evidence that purchasers or
users of applicant’s “on-line database in the field of
ocean shipping contract carrier rates” would also be
purchasers or users of registrant’s software, which is used
to “locate, control and schedule the use of electronic
resources that are used to receive and transmit information
and data.” The respective goods and services, as
identified, do not appear to be identical, competitive, or
complementary, and there simply is no evidence in the
Ser. No. 76376622
6
record on which we might base a finding that the goods and
services are otherwise related in any way. The respective
goods and services, as identified, each appear to have
fairly particular, specialized applications and functions,
and the “ocean shipping contract carrier rates” to which
applicant’s database pertains would appear to have nothing
to do with software which is used to locate, control and
schedule “electronic resources that are used to receive and
transmit information and data.”3 There is no evidence that
they are marketed in the same trade channels or to the same
classes of purchasers, and there is no basis in the record
for concluding that they would ever be encountered by the
same purchasers in circumstances which might give rise to a
likelihood of confusion.
The Trademark Examining Attorney bears the burden of
presenting evidence to support the refusal. Where (as in
this case) the respective goods and services, on their
face, do not appear to be similar or related, it is
incumbent on the Trademark Examining Attorney to present
3 We base this statement not on the evidence applicant has
submitted from registrant’s website and specimen, which show that
registrant’s goods are used in the education field in connection
with audio-visual and other classroom electronic equipment.
Registrant’s identification of goods is not limited to any
particular field. Nonetheless, it appears from the language of
the identification of goods itself that registrant’s goods have a
specialized function and application which, on this record, have
no apparent relationship to applicant’s services.
Ser. No. 76376622
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evidence establishing such similarity or relationship.
Mere argument and conclusory assertions do not suffice.
In summary, we find that there is no likelihood of
confusion here. On this record, applicant’s services and
registrant’s goods, as well as the trade channels and
classes of purchasers for those respective services and
goods, appear to be too dissimilar and unrelated for any
confusion to be likely, even if they are marketed under the
same mark. We might reach a different conclusion on a
different, more complete evidentiary record, but on this
record, we cannot find that confusion is likely.
Decision: The refusal to register is reversed.