Ebates Shopping.com, Inc.

Trademark Trial and Appeal Board

Mar 21, 2008

No. 75915782 (T.T.A.B. Mar. 21, 2008)

Mailed: March 21, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Ebates Shopping.com, Inc.
________

Serial No. 75915782
_______

R.J. Heher, Esq. And Hoang-chi Truong, Esq. for Ebates
Shopping.com, Inc.

Mary Boagni, Trademark Examining Attorney, Law Office 114 (K.
Margaret Le, Managing Attorney).
_______

Before Grendel, Holtzman and Taylor, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:
An application has been filed by Ebates Shopping.com, Inc.
(applicant) to register the mark EBATES (in standard character
format) for services ultimately identified as follows:1
Dissemination of advertising for others in the nature
of providing online non-downloadable shopper's guides
to provide information about the goods and services
of others that can be purchased online from Applicant
only by its registered members, excluding purchases
by consumers of products and services directly from
the manufacturers and suppliers thereof at a

1 Application Serial No. 75915782, filed February 9, 2000 based on an
allegation of a bona fide intention to use the mark in commerce.
THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Serial No. 75915782
2
predetermined discount selling price, in Class 35;
and

Administration of a member program that provides
rebates for the online sale of products and services
of participating businesses of others, excluding
discounts and other promotions relating to e-commerce
business to enable consumers to purchase said
products and services directly from the manufacturers
and suppliers thereof at a predetermined discount
selling price, in Class 36.

The trademark examining attorney has refused
registration under Section 2(d) of the Trademark Act on the
ground that applicant's mark, when applied to applicant's
services, so resembles the mark E-BATE PROGRAM in typed form
("Program" disclaimed) for the following services as to be likely
to cause confusion.2
Promoting Internet related products and services of
others by means of a preferred customer program
featuring discounts and other promotions relating to
e-commerce business to enable consumers to purchase
said products and services directly from the
manufacturers and suppliers thereof at a
predetermined discount selling price, in Class 35.

When the refusal was made final, applicant appealed. Briefs
have been filed.
Our determination under Section 2(d) is based on an analysis
of all of the probative facts in evidence that are relevant to
the factors bearing on the likelihood of confusion issue. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA

2 Registration No. 2733671, issued July 8, 2003.
Serial No. 75915782
3
1973). In any likelihood of confusion analysis, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the
goods or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
In determining the similarity or dissimilarity of marks, we
must consider the marks in their entireties in terms of sound,
appearance, meaning and commercial impression. See du Pont,
supra. See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
The test under this 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 similar in terms of
their overall commercial impressions 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). In addition, while
marks must be compared in their entireties, "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 consideration of the marks in
Serial No. 75915782
4
their entireties." In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985).
The marks as a whole are similar in sound and appearance.
Applicant's entire mark is the term EBATES. The virtually
identical term E-BATE is the dominant part of registrant's mark.
While the disclaimed word PROGRAM is not ignored in the analysis,
this word is descriptive if not generic for registrant's sales
promotion program, and it is therefore less significant in
creating the mark's commercial impression. See In re National
Data Corp., supra. It is the term E-BATE which is aurally and
visually the most significant portion of registrant's mark. The
fact that EBATES is the plural form of E-BATE "does not amount to
a material difference" in the marks. See In re Belgrade
Shoe, 411 F.2d 1352, 162 USPQ 227, 227 (CCPA 1969). Further, the
hyphen in registrant's mark would not be pronounced, and the
terms EBATES and E-BATE would sound essentially the same when
spoken. Neither of these features is likely to be remembered by
purchasers when seeing or hearing these marks at different times.
There is no difference in meaning between the marks to
distinguish them. As applicant states, and we agree, both marks
suggest a rebate or discounted sales program. (Brief at 7.) To
the extent that applicant is arguing that there is a meaningful
difference between a "rebate" and a "discount," applicant is
mistaken. These are very similar concepts. We take judicial of
Serial No. 75915782
5
the definition of "rebate" as meaning, 1. a return of part of a
payment: a tax rebate. 2. a deduction from a sum before payment;
a discount: a 10% rebate. The Penguin English Dictionary
(2000).3 Thus, the meaning of the two terms is essentially the
same. Further, the additional elements in registrant's mark do
not create a meaning that is new or different than EBATES and
they do not affect the commercial impression in any significant
way.
It is true, as applicant argues, that merely because the two
marks share a common word does not necessarily mean they are
confusingly similar. However, it is generally held that the
addition of descriptive matter to one of two otherwise
confusingly similar marks will not serve to avoid a likelihood of
confusion. See In re Equitable Bancorporation, 229 USPQ 709
(TTAB 1986). See also, e.g., Bellbrook Dairies, Inc. v. Hawthorn
Melody Farms Dairy, Inc., 253 F.2d 431, 117 USPQ 213 (CCPA 1958);
In re The Clorox Company, 198 USPQ 337 (C.C.P.A. 1978); and Henry
Siegel Co. v. M & R International Mfg. Co., 4 USPQ2d 1154 (TTAB
1987). An exception may be found in those cases where the shared
term is merely descriptive or has been frequently used by others
for similar goods or services. See In re Hunke & Jochheim, 185

3 From the website www.credoreference.com. The Board may take judicial
notice of dictionaries, including online dictionaries, which exist in
printed format. See, e.g., 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); and In re CyberFinancial.Net
Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002).
Serial No. 75915782
6
USPQ 188 (TTAB 1975) and Jean Patou, Inc. v. Jacqueline Cochran,
Inc., 133 USPQ 242 (SDNY 1962), aff'd, 312 F.2d 125, 136 USPQ 236
(2nd Cir. 1963.). The exceptions do not apply here. The shared
term may be suggestive, but it is not descriptive; and there is
no evidence of third-party use or registration of the term.
We also point out that none of the cases relied on by
applicant compel a finding that the marks in this case are not
likely to cause confusion. For example, in In re Hearst Corp.,
982 F.2d 493, 25 USPQ2d 1238, 1239 (Fed. Cir. 1992), the Court,
in its finding that VARGAS and VARGA GIRL (both for calendars)
were not confusingly similar, specifically noted that "The
appearance, sound, sight, and commercial impression of VARGA GIRL
derives significant contribution from the component 'girl.'"
Unlike that case, in the present case we have found that the
added word PROGRAM does not contribute anything significant to
the commercial impression of registrant's mark as a whole. The
other cases cited by applicant are similarly distinguishable on
their facts. Indeed, the Court in Hearst even "illustrate[d] the
fact-dependency" of determining whether non-identical marks are
sufficiently similar by listing cases falling on both sides.
We turn next to the services. The examining attorney argues
that the respective services are related in that both applicant
and registrant "are ultimately promoting other parties' goods to
enable discounted shopping...by the participants"; and that
Serial No. 75915782
7
"despite the fact that the services are conducted in slightly
different manners, the objective of providing well priced goods
is the same." Describing registrant's services as providing
"Internet related promotional services which feature discounts
and promotions for businesses," the examining attorney maintains
that both applicant's and registrant's services are promotional
or marketing type services which "are encountered by consumers in
the same channels of trade or used by similar consumers in need
of on-line advertising or marketing or similar promotional
services."
Applicant argues that the services cannot be considered
related merely because the services are offered in the same broad
field; and that the "nature and means" of providing the
respective services are different. As described by applicant,
its services involve providing consumers with shoppers' guides
and rebates for the purchase of third party goods and services
online directly from applicant and the rebates are received after
the purchase. In contrast, according to applicant, registrant's
services are not online services but instead are "personal
services"; registrant's services are directed to businesses; and
they enable consumers to purchase the products and services
directly from manufacturers and suppliers thereof at a
predetermined discount selling price at the time of the purchase.
Applicant contends that the examining attorney has misconstrued
Serial No. 75915782
8
the phrase "Internet related" in registrant's recitation to refer
to how registrant provides its services. Pointing to a printout
from registrant's website, and relying on In re Trackmobile Inc.,
15 USPQ2d 1152 (TTAB 1990), as permitting applicant to consider
extrinsic evidence to clarify this "ambiguous" wording, applicant
argues that although registrant promotes "Internet related"
products and services, applicant claims that registrant does not
provide its services on the Internet, but instead offers the
services through "personal appearances." Applicant concludes
that the respective services are not related, and that the trade
channels for the services are not the same. Applicant also
contends that the purchasers for the services are not the same,
arguing that registrant's customers are sophisticated business
owners whereas applicant's customers are online shoppers seeking
general consumer products.
Applicant is reminded that the question of likelihood of
confusion must be decided on the basis of the services set forth
in the application and registration, without limitations as to
the actual nature of the services, their channels of trade and/or
classes of purchasers that are not reflected therein. See J & J
Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 1464, 18
USPQ2d 1889 (Fed. Cir. 1991); and Octocom Systems Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 942, 16 USPQ2d 1783 (Fed.
Cir. 1990). Where the services in an application or registration
Serial No. 75915782
9
are broadly described and there are no limitations as to their
nature, channels of trade or classes of purchasers, it is
presumed that the application or registration encompasses all
services of the nature described, that the services move in all
channels of trade that would be normal for such services and that
the services would be purchased by all potential customers. See
In re Elbaum, 211 USPQ 639 (TTAB 1981).
We turn first to a comparison of registrant's services with
the services in Class 36 of the application. These services, as
identified, are not merely offered in the same broad field, as
applicant contends. Instead, they are closely related, if not
directly competitive, services. Both applicant and registrant
are engaged in promoting the sale of online goods and services of
others through programs that enable consumers to purchase the
goods and services at a reduced price. The reduction in price
takes the form of a "rebate" in applicant's promotional program
and a "discount" in registrant's program. It is clear from the
dictionary definitions noted earlier that a "rebate" is a form of
a discount; and that both rebates and discounts may be given at
the time of payment. In any event, applicant is drawing a hair-
splitting distinction between the two terms. It is
inconsequential whether the reduction in price is taken at the
time of the sale or after the sale. The fact remains that the
underlying services remain essentially the same.
Serial No. 75915782
10
For this reason, among others, the "discount" exclusion in
applicant's recitation of services does not effectively
differentiate the services. Furthermore, to the extent that
applicant is arguing that, unlike registrant's program where
purchases are made directly from the manufacturers and suppliers,
applicant, in contrast, administers the program for its clients
by selling the goods and services on their behalf, and its
services exclude purchases made directly from manufacturers and
suppliers, this argument is unpersuasive as well. While the
differences in the way the incentives are provided and the manner
in which the programs are operated may affect a customer's
decision to select one sales promotion program over the other,
such differences would not affect a customer's perception that
the two programs are related.
There is no question that these very similar services would
come to the attention of the same purchasers in the same channels
of trade. The purchasers for registrant's promotional services
are businesses and, in particular, "manufacturers" and
"suppliers" who sell their goods and services over the Internet.
Applicant's promotional services are similarly offered to
business customers who sell their goods and services over the
Internet. Applicant's recitation of services does not specify
any particular class of online business customer, and accordingly
applicant's customers are deemed to include manufacturers and
Serial No. 75915782
11
suppliers. See Octocom, supra. Thus, to the extent that both
services are directed to manufacturers and suppliers who sell
their goods and services over the Internet, the purchasers
overlap. The restriction in applicant's recitation of services
excludes discounts obtained directly from the manufacturers and
suppliers. It does not exclude manufacturers and suppliers from
the class of potential customers for applicant's services. Both
applicant and registrant are competing for the same businesses.
These businesses could approach either applicant or registrant
for a sales promotion program.
As for the channels of trade, applicant states that its
services are provided over the Internet. The registration,
however, contains no limitations on the channels of trade.
Therefore, we must presume that the channels of trade for
applicant's and registrant's services are the same to the extent
that they may both be offered and provided over the Internet.
See Octocom, supra. A manufacturer or supplier in its search on
the Internet for a company to devise a sales promotion program
for its business may encounter both applicant's and registrant's
services at the same time.
Applicant may not rely on registrant's website information
to limit the scope of the registration either as to the nature of
the services, or as to the particular channels of trade or
Serial No. 75915782
12
classes of purchasers.4 Contrary to applicant's contention,
Trackmobile does not apply here. There is no language in
registrant's identification of services that requires
clarification. See In re Continental Graphics Corp., 52 USPQ2d
1374, 1376 (TTAB 1999). Furthermore, there is nothing in the
identification to restrict registrant's promotional services to
those that are conducted through "personal appearances."
Nevertheless, even if we considered this website evidence we
would still find the services to be closely related, and the
channels of trade as well as the purchasers to be the same. The
web page shows that registrant is doing exactly what is stated in
the recitation, promoting the sale of online goods and services
of manufacturers and suppliers. It is not at all clear from the
website information as applicant claims that the services are
only offered through registrant's "in person" contacts with the
online businesses. Further, the very fact that the extrinsic
evidence consists of a web page describing registrant's services
to potential customers shows that registrant's services are
offered or conducted at least in part over the Internet. The
evidence also shows that this is a "business to business" type
service, that is, registrant is promoting the sale of said goods
and services to other online businesses, and not to the general

4 We note that the website printout is dated March 1, 1999, and
applicant apparently obtained the printout, not from registrant's
website, but from the file of the cited registration.
Serial No. 75915782
13
public. However, the primary purchasers for both applicant's and
registrant's services remain the same, i.e., manufacturers and
suppliers, and moreover there is no restriction as to the
ultimate users of applicant's rebates. Such users could include
online business purchasers as well as members of the general
public.
In any event, regardless of whether registrant's business is
conducted "in person" or whether the discounts are offered to
business purchasers would not affect our determination that the
services are related and that they would ultimately come to the
attention of the same customers. The very same manufacturers and
suppliers who previously engaged registrant under the E-BATE
PROGRAM mark to promote their online goods and services to other
businesses may also be selling or may decide to sell their goods
and services to the general public, and they would then encounter
applicant's sales promotion services under a highly similar mark.
We turn to a consideration of applicant's Class 35 services.
These services involve "dissemination of advertising for others"
in the nature of an online shopper's guide for consumers with
information about the goods and services that consumers can
purchase online from applicant. This advertising service is
complementary to applicant's sales promotion program, and it is
therefore likely to be rendered as part of registrant's sales
promotion program as well. In addition, the examining attorney
Serial No. 75915782
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has submitted a number of use-based, third-party registrations
showing, in each instance, a mark which is registered for the
same or similar advertising and promotional services as those of
the applicant and registrant in this case. Although third-party
registrations are not evidence of use of the marks in commerce,
they serve to suggest that the respective goods are of a type
which may emanate from the same source. See In re Albert Trostel
& Sons Co., 29 USPQ2d 1783 (TTAB 1993) and In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988). It seems clear that
applicant's services are directed in part to the general public.
However, the trade channels and purchasers for applicant's and
registrant's services overlap to the extent that the advertising
service itself is directed to the same manufacturers and
suppliers that would purchase applicant's rebate sales program
and registrant's discount sales program.
It is reasonable to assume that the purchasers of
applicant's and registrant's advertising and promotional services
would be more sophisticated and discriminating than the general
public. However, even knowledgeable and careful purchasers can
be confused as to source where, as here, very similar marks are
used in connection with closely related, if not competitive,
services. See In re Research Trading Corp., 793 F.2d 1276, 230
USPQ 49, 50 (Fed. Cir. 1986) citing Carlisle Chemical Works, Inc.
v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA
Serial No. 75915782
15
1970) ("Human memories even of discriminating purchasers...are
not infallible."). We find that the factors strongly favoring
likelihood of confusion, including the similarities in the marks
and the similarities in the services, outweigh the sophistication
of the purchasers. See Weiss Associates, Inc. v. HRL Associates,
Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1841-42 (Fed. Cir. 1990)
(similarities in marks and products overshadowed sophistication
of purchasers and careful purchasing decision).
As a final matter, we note that applicant has submitted
portions of the file history for the cited registration, arguing
that a statement made by registrant during prosecution of its
underlying application "is tantamount to an admission that [the
marks herein] are not confusingly similar." In that application,
registrant responded to the examining attorney's reference to
three pending applications (now abandoned) as potential cites
against registrant's application with the statement: "It is
believed that the applicant's services under E-BATE PROGRAM are
distinguishable from the services listed in the applications."
Applicant reasons that the services in those pending applications
are competitive with applicant's services herein, and that
therefore, registrant's "admission" that there was no likelihood
of confusion as to those applications is probative evidence that
there is no likelihood of confusion in this case.
Serial No. 75915782
16
Applicant's argument has no merit. Registrant is not a
party to this proceeding, and therefore any asserted statements,
arguments or admissions made by registrant in support of
registration are not evidence in the case before us, and they
have no bearing on our determination of whether the marks and
services in this case are likely to cause confusion. See, e.g.,
In re First Draft Inc., 76 USPQ2d 1183, 1187 (TTAB 2005). Even
if registrant's statement were admissible and considered an
admission of fact, it would not be binding. While an admission
of fact may be considered as "illuminative of shade and tone in
the total picture" confronting the Board, "[u]nder no
circumstances may a party's opinion, earlier or current, relieve
the decision maker of the burden of reaching his own ultimate
conclusion on the entire record." Interstate Brands Corp. v.
Celestial Seasonings, Inc., 576 F.2d 926, 928, 198 USPQ 151, 154
(CCPA 1978).
In view of the foregoing, and because very similar marks are
used in connection with very similar or closely related services,
we find that confusion is likely.
Decision: The refusal to register based upon Section 2(d)
of the Trademark Act is affirmed as to both classes.