Facts on File, Inc.v.Credit Bureau of Baton Rouge, Inc.

Trademark Trial and Appeal Board

Jan 12, 1998

No. 91092808 (T.T.A.B. Jan. 12, 1998)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JAN 12, 98
Paper No. 43
PTH
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Facts On File, Inc.
v.
Credit Bureau of Baton Rouge, Inc.
_____
Opposition No. 92,808
to application Serial No. 74/254,269
filed on March 11, 1992
_____
David A. Einhorn of Anderson, Kill & Olick, P.C. for Facts
On File, Inc.
Claude F. Reynaud, Jr. of Breazeale, Sachse & Wilson, L.L.P.
for Credit Bureau of Baton Rouge, Inc.
______
Before Simms, Quinn and Hairston, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by Credit Bureau of Baton
Rouge, Inc. to register the mark shown below
for “credit bureau or credit inquiry and consultation.”1

1 Application Serial No. 74/254,269 filed March 11, 1992;
alleging dates of first use of June 1, 1991. The application
Opposition No. 92,808
2
Registration has been opposed by Facts on File, Inc. on
the grounds that (1) applicant’s mark, when used in
connection with applicant’s services, so resembles opposer’s
previously used and registered mark shown below
for “reference books and periodical publications; namely,
encyclopedias, dictionaries, atlases, treatises and loose
leaf binders, in the fields of medicine, health, history,
current affairs, politics, business, finance, sports,
literature, language, travel, art, music, food, science,
nature, archaeology, entertainment, education, criminology,
religion, and child development”2 as to be likely to cause
confusion under Section 2(d) of the Trademark Act; and (2)
applicant is not the owner of mark sought to be registered
and, therefore, the application is void ab initio.3
Applicant, in its answer, denied the salient
allegations of likelihood of confusion. The answer was
deemed amended to deny the allegation that applicant is not
the owner of the mark sought to be registered.

includes the following statement: “The drawing is lined for the
colors yellow and red.”
2 Registration No. 1,721,863, issued October 6, 1992. A
certified copy of opposer’s pleaded registration was attached to
the notice of opposition.
3 The notice of opposition was deemed amended to include this
additional ground. Also, by way of a consented motion to amend,
opposer amended the notice of opposition to assert that
applicant’s services were not rendered in interstate commerce
prior to the filing date of the involved application and that,
therefore, the application is void ab initio. Summary judgment
was granted in applicant’s favor on this claim.
Opposition No. 92,808
3
At the outset, we should point out that the parties,
through their attorneys, stipulated (1) to the authenticity
of all documents produced during the course of discovery and
(2) that testimony could be submitted by affidavit. The
parties reserved the right to object to any testimony,
exhibits or documents on the grounds of relevance and
materiality. In this regard, we note that each party has
objected to certain of the other party’s testimony and
exhibits as irrelevant, hearsay, stating legal conclusions,
etc. We have reviewed these objections and given them such
consideration and weight, if any, as we considered to be
warranted, noting that in no case would the inclusion or
exclusion of such testimony be critical to our decision in
this opposition. Several specific objections, however,
require discussion.
Opposer submitted under notice of reliance copies of a
personal service contract between applicant and a third-
party APPRO Systems, Inc., and an agreement between
applicant and its executive officers Kenneth and Steve
Uffman. Copies of the contract and agreement were produced
by applicant in response to opposer’s request for production
of documents. It is applicant’s position that documents
which are obtained in response to a request for production
of documents, may not be made of record by notice of
reliance. A party which has obtained documents under Fed.
Opposition No. 92,808
4
R. Civ. P. 34 may serve upon its adversary requests for
admission of the authenticity of the documents, and then,
during its testimony period, file a notice of reliance,
under Trademark Rule 2.120(j)(3)(i), on the request for
admission, the exhibits thereto, and its adversary’s
admissions. In this case, since the parties’ stipulation to
the authenticity of documents produced during the course of
discovery is in effect, an admission of the authenticity of
documents, the contract and agreement may be submitted by
opposer under notice of reliance.
Applicant also submitted under notice of reliance a
copy of the U.S. Patent and Trademark Office ORBIT Trademark
Retrieval System TMARK User Guide. This guide is used by
Trademark Examining Attorneys to conduct searches of marks
in the Office’s Trademark Automated Search System
(T-Search). One of the categories of designs in the guide
is “check marks” and applicant has submitted the guide to
show that marks comprising check marks are weak marks.
However, as opposer correctly points out, this guide is not
a printed publication or an official record within the
meaning of Trademark Rule 2.122(e). Thus, opposer’s
objection to the guide is well taken and the guide will be
given no consideration in our decision herein.
Finally, opposer has objected to portions of the
affidavits of applicant’s witnesses which concern ownership
Opposition No. 92,808
5
of the mark sought to be registered. Opposer contends that
this testimony is barred by the parole evidence rule because
it is clear from the above mentioned contract and agreement
that applicant is not the owner of the mark sought to be
registered. We believe that the language of the contract
and agreement is ambiguous, and therefore we have considered
the statements in the affidavits which concern ownership of
the mark.
Thus, the record in this case consists of the
pleadings; the file of the involved application; a certified
copy of opposer’s pleaded registration; the affidavit of
opposer’s witness Beverly Balaz (with exhibits); opposer’s
notice of reliance on applicant’s responses to discovery
requests; the affidavits of applicant’s witnesses John
Albert, Kenneth Uffman, and Steven Uffman (with exhibits);
and applicant’s notice of reliance on, inter alia, copies of
third-party registrations.
Opposer publishes and distributes books, periodical
publications and CD-ROMS in a wide range of fields,
including the business and financial field. According to
opposer’s president, Beverly Balaz, opposer has used its
check mark design since 1975 on all of its books, electronic
products, periodical publications, catalogs, and
Opposition No. 92,808
6
advertising. According to Ms. Balaz, the check mark design
trademark appears on over 3,000,000 items annually.
Opposer’s annual advertising expenditures total 1.5 million
dollars and its sales approximately fifteen million dollars.
Opposer has customers in all fifty states ranging from
individual consumers, school and public libraries to
government agencies. Opposer’s books are available through
wholesalers, retail book stores and book clubs.
Applicant, through its Checkfax division, provides
check authorization services and recovery systems. This
service allows a business to inquire into the check writing
history of a particular customer. The response from the
system will allow a business to determine whether to accept
a check or not. According to Mr. Albert, applicant has been
operating this system since 1975. The record contains no
details as to sales or promotional expenditures and
activities for applicant’s services.
Inasmuch as a certified copy of opposer’s pleaded
registration is of record, there is no issue with respect to
opposer’s priority. King Candy Co., Inc. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
We turn then to the issue of likelihood of confusion.
Our determination of likelihood of confusion under Section
2(d) must be based on an analysis of all of the probative
facts in evidence that are relevant to the factors bearing
Opposition No. 92,808
7
on the likelihood of confusion issue. In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
Insofar as the parties’ respective goods and services
are concerned, we start with the premise that they need not
be competitive to support a holding of likelihood of
confusion. It is sufficient that the goods/services are
related or that conditions surrounding their marketing are
such that they are encountered by the same persons who,
because of the relatedness of the services and similarities
of the marks, would believe mistakenly that the
goods/services originate from or are in some way associated
with the same producer. Hercules Inc. v. National Starch
and Chemical Corp., 223 USPQ 1244, 1247 (TTAB 1984). We
find opposer’s proofs to be totally lacking in this regard.
Opposer contends that confusion is likely because
applicant’s services, i.e., credit bureau or credit inquiry
and consultation services, are financial in nature and thus
related to opposer’s publications in the business and
financial field. Also, opposer argues that since its
registration and the involved application contain no
restrictions as to purchasers or trade channels, it must be
assumed that both opposer’s goods and applicant’s services
travel in the same channels of trade to the same purchasers.
In support of its position, opposer relies on Conde
Nast Publications, Inc. v. Vogue Travel, Inc., 205 USPQ 579
Opposition No. 92,808
8
(TTAB 1979) [Defendant’s use of VOGUE and design for travel
agency services likely to cause confusion with plaintiff’s
registered mark VOGUE for a fashion magazine] and Triangle
Publications, Inc. v. Rohrlich, et al., 77 USPQ 196 (2d Cir.
1948) [Defendant’s use of SEVENTEEN for girdles likely to
cause confusion with plaintiff’s registered mark SEVENTEEN
for a girl’s fashion magazine]. Each of these cases,
however, is distinguishable. In Conde Nast, the Board held
that there was a connection between defendant’s travel
agency services and plaintiff’s well known fashion magazine
because the magazine regularly featured a travel section;
and in Triangle Publications, there was a connection between
defendant’s girdles and plaintiff’s girls’ fashion magazine
because the magazine permitted tie-ins by advertisers of
wearing apparel. In this case, there is no evidence that
opposer’s books or periodicals feature information about
credit bureaus or credit inquiry and consultation, or that
opposer does tie-ins with providers of such services.
Here, applicant’s credit bureau or credit inquiry and
consultation services are readily distinguishable from
opposer’s books and periodicals. Applicant’s services are
very specialized in nature and are utilized by businesses
seeking information concerning an individual’s credit
history. The record is entirely devoid of any probative
evidence to show why purchasers would be likely to assume
Opposition No. 92,808
9
that such services and books and periodicals, including
those in the business and financial field, emanate from the
same source.
Also, while there are no restrictions in either
opposer’s registration or the involved application with
respect to purchasers and trade channels, the specialized
nature of applicant’s services is such that the services are
directed to business owners and retailers, and not the
general public. These individuals would be fairly
sophisticated business people who would be able to
distinguish between the two sources based on differences in
the goods and services offered thereunder.
Here, opposer’s claim of likelihood of confusion
essentially fails for lack of proof. Notwithstanding the
strength of opposer’s mark, and any similarities between the
parties’ marks by virtue of the check mark designs,
opposer’s claim of likelihood of confusion essentially fails
for lack of proof with respect to the relatedness of
applicant’s credit bureau or credit inquiry and consultation
services and opposer’s books and periodicals.
We turn next to the issue of whether applicant is the
owner of the involved mark. In support of its contention
that applicant is not the owner of the mark, opposer relies
on the previously mentioned personal service contract dated
April 1, 1987 between applicant and APPRO Systems, Inc. and
Opposition No. 92,808
10
an agreement (undated) between applicant and Kenneth and
Steve Uffman. Opposer contends that it is clear from the
terms of this contract and agreement that applicant is not
the owner of the mark sought to be registered. In
particular, opposer points to the following terms of the
personal service contract as evidence that APPRO, and not
applicant, controls the nature and quality of the services
rendered under the mark.
Section 2.04: . . . APPRO shall have the
right to determine and make sure that the
services covered under this agreement are
performed in a competent, efficient and
satisfactory manner.
Section 2.06: . . . CREDIT BUREAU shall
ensure that all of its undertakings
hereunder are performed to the entire
satisfaction of APPRO.
Further, opposer points to the following terms of the
agreement as evidence that applicant has retained the right,
as a licensee, to market services under the involved mark
only within certain areas of the state of Louisiana.
WHEREAS, except for the financial backing of
the Bureau, the Bureau has no claim or interest
to the Checkfax and APPRO systems
. . .
Credit Bureau retains the right to market the
Checkfax and APPRO systems in its operational
area, which is defined to be:
East Baton Rouge West Baton Rouge
Livingston Ascension
Iberville Point Coupee
West Feliciana East Feliciana
Lafourche St. Mary
Terrebonne Tangipahoa
Opposition No. 92,808
11
Assumption St. Helena
Washington
It is the intention of paragraphs (1) and
(2) that the new corporation to be formed
will have the exclusive rights to the
ownership and marketing of the Checkfax
and APPRO systems, reserving to Credit
Bureau the full and complete right to
market said systems within the territorial
limit described above.
Applicant argues that, if anything, the contract and
agreement are ambiguous, and that the testimony of
applicant’s witnesses make clear that applicant is indeed
the owner of the mark sought to be registered. According to
the testimony of these witnesses, and as confirmed by the
terms of the personal service contract, APPRO Systems, Inc.
is a corporation created in 1982 by applicant and its
executive officers, Kenneth and Steve Uffman. Applicant
owns 20% of APPRO and the Uffmans own the remaining 80%.
Kenneth and Steve Uffman testified that APPRO is a related
company which applicant has licensed to sell subscriptions
for applicant’s services in certain regions. Moreover, Mr.
Albert testified that applicant has customers not only in
Louisiana, but in Mississippi, North Carolina, and Alabama.
Applicant made of record a copy of a license between it and
Credit Bureau of Greensboro, North Carolina.
In this case, opposer is required to prove by a
preponderance of the evidence that applicant is not the
owner of the mark sought to be registered. We agree with
Opposition No. 92,808
12
applicant that the contract and agreement are ambiguous with
respect to the issue of ownership, particularly inasmuch as
neither even mentions the mark sought to be registered.
Under the circumstances, and in view of the testimony of
applicant’s witnesses, we cannot say that opposer has met
its burden of establishing by a preponderance of the
evidence that applicant is not the owner of the mark.
Decision: The opposition is dismissed.
R. L. Simms
T. J. Quinn
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial and
Appeal Board