Ecogroup, Inc.

Trademark Trial and Appeal Board

Dec 10, 1997

No. 74636465 (T.T.A.B. Dec. 10, 1997)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC 10, 97
Paper No. 10
EWH/KP
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Ecogroup, Inc.
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Serial No. 74/636,465
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Richard R. Mybeck for Ecogroup, Inc.
Lori S. Schulman, Trademark Examining Attorney, Law Office
103 (Michael Szoke, Managing Attorney).
_______
Before Cissel, Hanak and Walters, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Ecogroup, Inc. (applicant) seeks registration of
BUSINESS EDGE in typed capital letters for “publications,
namely, customized reports which educate consumers regarding
their energy usage fluctuations” and for “business services,
namely, the accumulation of relevant data and the
preparation of a report based thereon to educate consumers
regarding their energy usage fluctuations.” The application
was filed on February 21, 1995 with a claimed first use date
Ser No. 74/636,465
2
for both the goods and the services of April 27, 1994. At
the request of the Examining Attorney, applicant disclaimed
the exclusive right to use the word BUSINESS apart from the
mark in its entirety.
The Examining Attorney refused registration pursuant to
Section 2(d) of the Lanham Trademark Act on the basis that
applicant’s mark, as used in connection with applicant’s
goods and services, is likely to cause confusion with the
mark BUSINESSEDGE, INC., previously registered in typed
capital letters for “business consulting services.”
Registration No. 1,658,490. The owner of this registration
disclaimed the exclusive right to use INC. apart from the
mark in its entirety.
When the refusal was made final, applicant appealed to
this Board. Applicant and the Examining Attorney filed
briefs. Applicant did not request a hearing.
In any likelihood of confusion analysis, two key
considerations are the similarities of the goods and
services and the similarities of the marks. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated
by Section 2(d) goes to the cumulative affect of differences
in the essential characteristics of the goods [and services]
and differences in the marks.”).
Ser No. 74/636,465
3
Considering first the marks, we find that they are
nearly identical. The only differences are the applicant
depicts BUSINESS EDGE as two words whereas registrant
depicts it as one word, and registrant’s mark includes the
non-source identifying INC.. Applicant itself has
acknowledged “the ‘near identicality’ of the marks in this
case.” (Applicant’s brief page 3).
Turning to a consideration of registrant’s services and
applicant’s goods and services, two propositions must be
kept in mind. First, when “the marks are the same or almost
so [as is the case here], it is only necessary that there be
a viable relationship between the goods or services in order
to support a holding of likelihood of confusion.” In re
Concordia International Forwarding, 222 USPQ 355, 356 (TTAB
1983). See also 3 J. McCarthy, McCarthy on Trademarks At
Unfair Competition Section 23:20 at page 23-46 (4th ed.
1997).
Second, it must be remembered that “the question of
likelihood of confusion must be determined based on an
analysis of the mark as applied to the goods and/or services
recited in applicant’s application vis-a -vis the goods
and/or services recited in [the] registration, rather than
what the evidence shows the goods and/or services to be.”
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813, 1815 (Fed. Cir. 1987).
Ser No. 74/636,465
4
The Examining Attorney has made of record excerpts from
the NEXIS database showing that the term “business
consulting services” (registrant’s services) is broad enough
to include consulting services related to energy issues, and
in particular, energy usage. One such excerpt is from the
Los Angeles Times of January 29, 1996, and it reads, in
part, as follows: “The energy company will also announce
the creation of a new unregulated subsidiary, Edision
Source, to provide business consulting services about energy
efficiency and environmental matters.”
In addition, the Examining Attorney has made of record
copies of third-party registrations showing that business
consulting services have been identified as specifically
relating to energy issues, including energy usage.
In response, applicant has acknowledged that “a great
deal of ‘evidence’ was submitted [by the Examining Attorney]
to show that business consultation services are being
performed by multiple third parties in relation to energy
use. Appellant does not dispute such third party services,
nor that ‘business consulting can also focus on one
particular industry or issue such as energy use.’”
(Applicant’s brief page 5). However, applicant “does
dispute the notion that general business consultation
services necessarily involve consultation on energy use.”
(Applicant’s brief page 5).
Ser No. 74/636,465
5
The problem with applicant’s argument is that the
services of the cited registration are described quite
broadly as simply “business consulting services” without any
limitation. Thus, as described, registrant’s services are
broad enough to encompass applicant’s services. Moreover,
when registrant’s services are so broadly described (see
Canadian Imperial), said services are very closely related
to applicant’s goods.
Given the “near identicality” of applicant’s mark and
registrant’s mark and the fact that registrant’s services,
as set forth in the registration, are broad enough to
encompass applicant’s services and are very closely related
to applicant’s goods, we find that the use of applicant’s
mark is likely to result in confusion.
Decision: The refusal to register is affirmed.
R. F. Cissel
E. W. Hanak
C. E. Walters
Administrative Trademark
Judges, Trademark Trial
and Appeal Board