D. L. Ryan Companies, Ltd.

Trademark Trial and Appeal Board

Jan 8, 2009

No. 78690250 (T.T.A.B. Jan. 8, 2009)

Hearing: Mailed:
Nov. 19, 2008 Jan. 8, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re D.L. Ryan Companies, Ltd.
________

Serial No. 78690250
_______

Norman H. Zivin of Cooper & Dunham LLP for D.L. Ryan
Companies, Ltd.

Paul E. Fahrenkopf, Trademark Examining Attorney, Law
Office 101 (Ronald R. Sussman, Managing Attorney).
_______

Before Grendel, Drost and Mermelstein, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark RYAN iDIRECT (in standard character form) for
services identified in the application as “promoting goods
and services of others by direct marketing techniques and
use of computer database information.”1

1 Serial No. 78690250, filed on August 11, 2005. The application
is based on applicant’s alleged bona fide intention to use the
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 78690250
2
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark on
the ground that the mark, as applied to applicant’s
services as recited in the application, so resembles the
mark IDIRECT, previously registered (in standard character
form) for services identified in the registration as
“marketing and advertising services, namely promoting the
goods and services of others by direct mail campaigns,”2 as
to be likely to cause confusion, to cause mistake, or to
deceive. Trademark Act Section 2(d), 15 U.S.C. §1052(d).
The appeal is fully briefed. An oral hearing was held
on November 19, 2008. After careful consideration of the
evidence of record and the arguments of counsel, we affirm
the Section 2(d) refusal to register.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.

mark in commerce. Trademark Act Section 1(b), 15 U.S.C.
§1051(b). In the application, applicant claims ownership of
prior Reg. Nos. 1836347, 2509877, 2652532 and others. Applicant
has voluntarily disclaimed “iDIRECT” apart from the mark as
shown.

2 Registration No. 3199984, issued on January 23, 2007.
Ser. No. 78690250
3
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
We begin our likelihood of confusion analysis in this
case with the second du Pont factor, under which we
determine the similarity or dissimilarity of applicant’s
services as identified in the application and the services
identified in the cited registration. It is settled that
it is not necessary that the services be identical or even
competitive in order to find that they are related for
purposes of our likelihood of confusion analysis. That is,
the issue is not whether consumers would confuse the
services themselves, but rather whether they would be
confused as to the source of the services. See In re Rexel
Inc., 223 USPQ 830 (TTAB 1984). It is sufficient that the
services be related in some manner, or that the
circumstances surrounding their use be 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
Ser. No. 78690250
4
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); and In re International Telephone & Telegraph Corp.,
197 USPQ 910 (TTAB 1978).
The services identified in applicant’s application are
“promoting goods and services of others by direct marketing
techniques and use of computer database information.” The
services identified in the cited registration are
“marketing and advertising services, namely promoting the
goods and services of others by direct mail campaigns.”
We find that applicant’s and registrant’s identified
services are legally identical for purposes of the second
du Pont factor because applicant’s services, as identified
in the application, encompass the services identified in
the cited registration. First, we find that the “direct
mail campaigns” identified in the cited registration are a
species of the “direct marketing techniques” identified in
applicant’s application. A direct mail campaign is a
direct marketing technique. We further find that, in
today’s direct marketing industry, “direct mail campaigns”
undoubtedly could and would involve the “use of computer
database information” for purposes such as creating and
maintaining lists of potential recipients of the direct
Ser. No. 78690250
5
mail advertisements and their mailing addresses. Nothing
in the record suggests otherwise.
Applicant contends that its services are “different
from” and do not encompass registrant’s services because

...the use of “database marketing” is
considered a unique form of direct marketing. It
is a highly specialized and complex computer tool
which involves gathering all available customer,
lead, and prospect information into a central
database and using statistical techniques to
develop models representing customer behavior.
Those models are analyzed to identify those
particular customers who fit specific,
predetermined criteria to receive the marketing
communications.
As compared to an ordinary direct marketing
campaign, Applicant’s database marketing tool is
more costly and requires substantial and unique
efforts, including developing the target customer
specifications, collecting and inputting data,
developing the statistical model and, finally,
data analysis, all prior to implementing the
marketing campaign. This is a very different
service from a basic direct mail campaign.

(Applicant’s main brief at 13-14.)
This argument is unpersuasive for at least three
reasons. First, as noted above, the issue under the second
du Pont factor is not whether applicant’s services are
“different from” the services identified in the cited
registration; the issue is whether the respective services
are sufficiently related that source confusion is likely to
result from the use of confusingly similar marks. Second,
Ser. No. 78690250
6
there is no evidence in the record to support applicant’s
mere argument that “...‘database marketing’ is considered a
unique form of direct marketing.” Third, even if applicant
had shown that “database marketing” is considered in the
industry to be a unique form of direct marketing, and even
if we were to assume that relevant consumers would not be
likely to believe that there is any source connection
between a provider of “database marketing” services and a
provider of “direct mail campaigns” services, it would
avail applicant nothing because applicant’s identification
of services is not limited to any such specialized
“database marketing.” Indeed, “database marketing” is not
specified or even mentioned in applicant’s identification
of services. Instead, the identification of services
expansively covers any “direct marketing technique” which
involves the “use of computer database information.” As
discussed above, registrant’s “direct mail campaigns,”
which today undoubtedly would involve the “use of computer
database information,” fall squarely within applicant’s
identification of services.
For these reasons, we find that the services
identified in applicant’s application are similar to, and
indeed legally identical to, the services identified in the
Ser. No. 78690250
7
cited registration. The second du Pont factor weighs in
favor of a finding of likelihood of confusion.
Under the third du Pont factor, we determine the
similarity or dissimilarity of trade channels. Neither
applicant’s nor registrant’s identification of services
contains any restrictions or limitations as to trade
channels or purchasers, and we therefore presume that the
respective services are marketed in all normal trade
channels for such services and to all normal classes of
purchasers of such services. In re Elbaum, 211 USPQ 639
(TTAB 1981). We find that the identified services in
applicant’s application and the legally identical services
identified in the cited registration would be marketed in
the same channels of trade and to the same classes of
purchasers. In re Smith and Mehaffey, 31 USPQ2d 1531, 1532
(TTAB 1994)(“Because the goods are legally identical, they
must be presumed to travel in the same channels of trade,
and be sold to the same class of purchasers”). These
purchasers would include businesses, both large and small,
that seek to promote, advertise and market their goods
and/or services to the public. The third du Pont factor
weighs in favor of a finding of likelihood of confusion.
Under the fourth du Pont factor (conditions of
purchase), we are not persuaded by applicant’s contention
Ser. No. 78690250
8
that the business owners who are the purchasers of the
recited promotional and marketing services necessarily are
knowledgeable, careful or sophisticated purchasers. As
they are identified in the application and in the cited
registration, the promotional and marketing services
offered by applicant and registrant would be rendered not
just to large businesses with sophisticated marketing
personnel. They also would be provided to owners of small
businesses, who are not necessarily so sophisticated or
knowledgeable that they would be immune to source confusion
when encountering applicant’s and registrant’s recited
services marketed under the marks at issue here. For these
reasons, we find that the fourth du Pont factor weighs in
favor of a finding of likelihood of confusion in this case,
or at the very least is neutral in our analysis.
We turn next to the first du Pont factor, which
requires us to determine the similarity or dissimilarity of
applicant’s mark, RYAN iDIRECT, and registrant’s mark,
IDIRECT, when they are viewed in their entireties in terms
of appearance, sound, connotation and commercial
impression. Palm Bay Imports, Inc., supra. The test,
under the first du Pont factor, is not whether the marks
can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
Ser. No. 78690250
9
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. The focus
is on the recollection of the average purchaser, who
normally retains a general rather than a specific
impression of trademarks. 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
Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944
(Fed. Cir. 2004); In re National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985). Finally, in cases such as
this, where the applicant’s services are legally identical
to the services recited in the cited registration, the
degree of similarity between the marks which is required to
support a finding of likelihood of confusion is less than
it would be if the services were not identical. Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698 (Fed. Cir. 1992).
Applying these principles in the present case, we find
as follows.
Ser. No. 78690250
10
The cited registered mark is IDIRECT, depicted in
standard character form. Applicant’s mark is RYAN iDIRECT,
also depicted in standard character form.
Initially, we reject applicant’s argument that the
cited registered mark, IDIRECT, is “weak and not entitled
to a broad scope of protection.” (Applicant’s main brief
at 10.) Applicant contends that “[t]he mark is at least
highly suggestive of direct marketing services. The term
‘direct’ suggests a method of marketing and promoting goods
through direct mail, and the prefix ‘I’ is understood by
purchasers to signify the Internet. In this case, the
combination of these terms renders the entire mark at least
highly suggestive.” (Applicant’s main brief at 10-11.) We
are not persuaded.
Even if we assume for purposes of this case that
“DIRECT” is highly suggestive or descriptive of the direct
marketing services identified in the cited registration,
the record does not establish that the prefix “I” in the
cited registered mark results in a mark that is highly
suggestive of the identified services. Applicant has
presented no evidence to support its mere speculation that
“I” would readily be perceived as a reference to “the
Internet.”
Ser. No. 78690250
11
Applicant relies on In re Zanova Inc., 59 USPQ2d 1300
(TTAB 2001). In that case, the Board found ITOOL to be
merely descriptive of goods and services identified in the
application as “computer software for use in creating web
pages,” and “computer services, namely, providing custom
services for web sites and design of web sites for others.”
Contrary to applicant’s argument, Zanova does not stand for
the proposition that the prefix “I” in a mark always stands
for and would be perceived as referring to the Internet.
The Board found that the “I” in ITOOL, as applied to the
identified goods and services, would be understood to refer
to “Internet” because the identified goods and services
specifically and directly involved the Internet, i.e.,
software for creating Internet web pages and custom design
of Internet web sites. The Board’s finding that the “I” in
ITOOL would be understood to refer to “Internet” also was
based on evidence showing third-party non-trademark use of
the term “Internet tool” in connection with the applicant’s
goods and services. There is no equivalent evidence in our
case of any third-party use of “Internet direct” or
“Internet direct marketing” which might lead purchasers to
understand that the “I” in registrant’s mark means
“Internet.”
Ser. No. 78690250
12
Additionally, the ITOOL case is distinguishable from
our case because in that case there was evidence of third-
party non-trademark use of “ITOOL” in connection with the
applicant’s web-related goods and services. There is no
equivalent evidence in our case of any third-party use of
IDIRECT in connection with the direct mail services
identified in the cited registration.
In this regard, applicant has made of record two
third-party registrations of marks which consist of or
include the term IDIRECT.3 Third-party registrations may be
used in the manner of dictionary evidence to demonstrate
the common usage of and the meaning of a term in the
relevant field. See, e.g., Knight Textile Corp. v. Jones
Investment Co., 75 USPQ2d 1313 (TTAB 2005)(twenty-three
third-party registrations of clothing marks including the
word ESSENTIALS is evidence of weakness of that term as
applied to clothing). However, the services covered by the
third-party IDIRECT registrations submitted by applicant
(financial investment services and underwriting of health
insurance, respectively) are far afield from the direct
marketing services covered by the cited registration in
this case. They therefore are not evidence that IDIRECT

3 Registration Nos. 2546702 and 3134289.

Ser. No. 78690250
13
stands for “Internet direct” as applied to registrant’s
direct marketing services.4 The third-party registrations
are of little or no probative value in this case.
For all of these reasons, we reject applicant’s
contention that the cited registered mark IDIRECT is
entitled to only a narrow scope of protection because it is
highly suggestive or otherwise weak as applied to
registrant’s services. Rather, we accord to registrant’s
mark the normal scope of protection to which distinctive
marks are entitled.
Relatedly, we reject applicant’s argument that because
the term “iDIRECT” in applicant’s own mark is descriptive
or otherwise weak, it is applicant’s house mark RYAN which
dominates the commercial impression of applicant’s mark for
purposes of our comparison of applicant’s and registrant’s
marks under the first du Pont factor. Instead, we find
that “iDIRECT” is entitled to at least as much weight as
the surname RYAN in our determination of the commercial
impression of applicant’s mark. Applicant’s voluntary
disclaimer of “iDIRECT” does not alter that finding, nor
does it affect our comparison of applicant’s and

4 Indeed, they are not even evidence that IDIRECT stands for
“Internet direct” when used in connection with the investment and
insurance services identified in the respective third-party
registrations.

Ser. No. 78690250
14
registrant’s marks. See In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re National Data
Corp., supra.
We turn now to our comparison of applicant’s mark RYAN
iDIRECT and the cited registered mark IDIRECT. We find
that the two marks are highly similar and indeed legally
identical in terms of appearance, sound, connotation and
overall commercial impression to the extent that the term
IDIRECT or iDIRECT appears in both. Both marks are
depicted in standard character form, and we therefore must
presume that applicant and registrant could display this
term in any reasonable manner, including in the same or a
highly similar manner. See ProQuest Information and
Learning Co. v. Island, 83 USPQ2d 1351 (TTAB 2007). We
further find that applicant’s mark and the cited registered
mark are similar in terms of appearance, sound, connotation
and overall commercial impression but for the fact that
applicant’s house mark RYAN appears in applicant’s mark but
not in the cited registered mark. In sum, we find that the
only significant distinction between applicant’s mark and
the cited registered mark is the presence of applicant’s
RYAN house mark in applicant’s mark.
Ser. No. 78690250
15
Applicant argues that the presence of its RYAN house
mark in its RYAN iDIRECT mark suffices to distinguish its
mark from registrant’s IDIRECT mark.
Under our case law, the presence of a house mark
generally will not suffice to distinguish two otherwise
similar product marks, unless there are recognizable
differences in the product marks, or unless the shared
product mark is highly suggestive as applied to the
parties’ goods and/or services. See In re Fiesta Palms
LLC, 85 USPQ2d 1360 (TTAB 2007)(confusion not avoided by
applicant’s addition of house mark CLUB PALMS to shared
product mark VIP in absence of evidence that MVP is highly
suggestive of casino services); compare Knight Textile
Corp. v. Jones Investment Co., supra (confusion avoided by
applicant’s addition of house mark NORTON McNAUGHTON to
shared product mark ESSENTIALS where evidence (dictionary
definition, twenty-three third-party registrations of
ESSENTIALS for clothing) established that ESSENTIALS is
highly suggestive for clothing).
We find that neither of the exceptions to the house
mark rule (that the addition of a house mark will not avoid
confusion) is applicable here. First, as discussed above,
we find that applicant’s product mark “iDIRECT” and
registrant’s product mark IDIRECT are essentially
Ser. No. 78690250
16
identical. Second, as discussed above, we find that
IDIRECT/iDIRECT is not highly suggestive or otherwise weak
as applied to the direct marketing services identified in
the application and the registration.
In these circumstances, we find that the presence in
applicant’s mark of its house mark RYAN fails to
distinguish applicant’s and registrant’s marks, when the
marks are viewed in their entireties.
For the reasons discussed above, we find that
applicant’s mark and the cited registered mark are similar,
and that the first du Pont factor accordingly weighs in
favor of a finding of likelihood of confusion. This is
especially so given the legally identical nature of the
services identified in the application and cited
registration, respectively. Century 21 Real Estate Corp.
v. Century Life of America, supra.
Applicant’s additional arguments against a finding of
likelihood of confusion are not persuasive.
Applicant argues that confusion is unlikely because
applicant owns a family of RYAN marks, and that its RYAN
iDIRECT mark will be seen as another member of that family.
As a matter of law, however, the “family of marks” doctrine
Ser. No. 78690250
17
is unavailable to an applicant in an ex parte proceeding.5
The sole issue before us is whether there is a likelihood
of confusion between the mark applicant now seeks to
register and the cited registered mark, and applicant’s
asserted ownership of any other marks is irrelevant to that
determination. See In re U.S. Plywood-Champion Papers,
Inc., 175 USPQ 445 (TTAB 1972); In re Ald, Inc., 148 USPQ
520 (TTAB 1965).6
Applicant next argues that it is entitled to
registration of its RYAN iDIRECT mark because it already
owns a registration (Reg. No. 1836347) of the mark RYAN

5 Indeed, a family of marks claim is unavailable to an applicant
as defendant in an inter partes proceeding. See, e.g., Baroid
Drilling Fluids Inc. v. Sun Drilling Products, 24 USPQ2d 1048
(TTAB 1992). A fortiori, it is unavailable to an applicant in an
ex parte proceeding.

6 Even if the family of marks doctrine were available to
applicant in this case, we would find that applicant has failed
to prove that it owns a family of marks, i.e., that it has used
and promoted its marks together in such a way that they would be
perceived by relevant purchasers as a family of marks with a
common surname indicating a common source. See J&J Snack Foods
Corp. v. McDonald’s Corp., 932 F.2d 1450, 18 USPQ2d 1889 (Fed.
Cir. 1991); Truescents LLC v. Ride Skin Care LLC, 81 USPQ2d 1334,
1338 (TTAB 2006). Applicant’s only evidence in support of its
family of marks claim is printouts of its six prior registrations
of RYAN marks for the same or similar services as those
identified in its current application. Those prior registered
marks are RYAN DIRECT, RYAN INTERACTIVE, RYAN PARTNERSHIP, RYAN
PERFORMANCE MEDIA, RYAN PROMOTIONAL AGENCY, and RYAN RETAIL ZONE
(Reg. Nos. 1836347, 2509877, 1812369, 2878843, 1812370 and
2652532.) Mere use of the various marks, or mere ownership of
registrations of the various marks, does not suffice to establish
a family of marks. See J&J Snack Foods Corp. v. McDonald’s
Corp., supra; Nike Inc. v. WNBA Enterprises LLC, 85 USPQ2d 1187
(TTAB 2007); Truescents LLC v. Ride Skin Care LLC, supra.
Ser. No. 78690250
18
DIRECT (DIRECT disclaimed) for services identical to those
identified in its current application.7 In support of this
argument, applicant specifically cites Morehouse Mfg. Corp.
v. J. Strickland & Co., 407 F.2d 881, 166 USPQ 715 (CCPA
1969), for the proposition that “an opposer cannot be
damaged by the issuance to an applicant of a second
registration where the applicant already has an existing
registration for a nearly identical mark for the same goods
or services.” (Request for reconsideration at 4.)
Applicant argues that “... Applicant is seeking to register
its own prior registered mark with the addition of the
letter “i” to reflect the expansion of its services into
the Internet realm,” and that “It would be unfair to
prevent Applicant from obtaining a registration for its own
previously registered mark with the addition of a highly
suggestive prefix “i”. (Reply brief at 3.)
Applicant is attempting to assert the prior
registration, or Morehouse, defense. However, the
Morehouse defense is unavailable to applicant in this ex
parte proceeding. The Morehouse defense is an equitable
affirmative defense, in the nature of laches or
acquiescence, which in appropriate circumstances may be

7 Applicant has made a printout of this registration of record.

Ser. No. 78690250
19
asserted by a defendant/applicant in an inter partes
opposition proceeding. It is based on the principle that
“[a]n opposer cannot be ‘damaged’ within the meaning of
Lanham Act §13 by registration of a mark for particular
goods or services if applicant owns an existing
registration for the same or substantially identical mark
for the same or substantially identical goods.” J.T.
McCarthy, McCarthy on Trademarks and Unfair Competition (4th
ed. 2008) at §20:38. See O-M Bread Inc. v. United States
Olympic Committee, 65 F.3d 933, 36 USPQ2d 1041 (Fed Cir.
1995); Green Spot (Thailand) Ltd. v. Vitasoy International
Holding Ltd., 86 USPQ2d 1283 (TTAB 2008); Teledyne
Technologies Inc. v. Western Skyways Inc., 78 USPQ2d 1203
(TTAB 2006). Morehouse is wholly irrelevant in an ex parte
proceeding.8 As noted above in connection with applicant’s
“family of marks” argument, the sole issue before us is
whether there is a likelihood of confusion between the mark
applicant now seeks to register and the cited registered
mark, and applicant’s asserted ownership of any other marks
is irrelevant to that determination. See In re U.S.

8 Even if the Morehouse defense were relevant in this ex parte
proceeding, we would find that the defense is unavailing to
applicant here because applicant’s previously-registered RYAN
DIRECT mark is not the same or substantially identical mark as
the RYAN iDIRECT mark it now seeks to register.
Ser. No. 78690250
20
Plywood-Champion Papers, Inc., supra; In re Ald, Inc.,
supra.
Considering all of the evidence of record as it
pertains to the relevant du Pont likelihood of confusion
factors, and for the reasons discussed above, we find that
a likelihood of confusion exists. Applicant’s arguments to
the contrary are not persuasive.

Decision: The refusal to register is affirmed.