Frangeli Consulting, Inc.

Trademark Trial and Appeal Board

Oct 17, 2011

No. 77684564 (T.T.A.B. Oct. 17, 2011)

THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.

Mailed: October 17, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Frangeli Consulting, Inc.
________

Serial No. 77684564
_______

Michael F. Morano of F. Chau & Associates, LLC for Frangeli
Consulting, Inc.

Linda E. Blohm, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
_______

Before Mermelstein, Wolfson, and Kuczma, Administrative
Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:

Frangeli Consulting, Inc. (“applicant”) has filed an
application for the design mark shown below:

Serial No. 77684564

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for the following services in Classes 35, 37, and 42.

Class 35: Providing cost estimations to
legal professionals and life care planners
for proposed home modifications, namely,
accessible home modifications to make homes
accessible for persons with special needs;

Class 37: Construction services, namely,
completing accessible home construction
projects for profit to make existing homes
accessible for persons with special needs;
remodeling and renovation of homes for
profit to make homes accessible for persons
with special needs; and

Class 42: Architectural design consultation
services, namely, providing accessible home
design solutions to architects, builders,
insurance companies and trustees of special
needs trusts for making homes accessible for
persons with special needs; residential
building design services, namely providing
accessible residential building design
solutions to architects, builders, insurance
companies and trustees of special needs
trusts for making residential buildings
accessible for persons with special needs.1

The examining attorney has refused registration of
applicant’s mark under Section 2(d) of the Trademark Act, 15
U.S.C. §1052, having determined that registration would lead
to a likelihood of confusion in view of the services recited
in the following registrations, which are owned by the same
entity:

1 Filed March 5, 2009, on the basis of applicant’s bona fide
intent to use the mark in commerce.
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Registration No. 33426042 for the mark
for “building construction and repair;
building restoration; charitable services, namely,
renovating and constructing homes for low income families;”
and Registration No. 35117533 for the mark
for “building construction and repair.”
We affirm.
I. Applicable Law
Our determination under Trademark Act § 2(d) is based
on an analysis of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973); see also Palm Bay

2 Registered November 27, 2007; first use and first use in
commerce claimed as of March 1, 1987. The colors red and white
are claimed as features of the mark.
3 Registered October 7, 2007; first use and first use in commerce
claimed as of January 14, 2005. Color is not claimed as a
feature of the mark.
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Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003); and In re Dixie Rests. Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering
the evidence of record on these factors, we keep in mind
that “[t]he fundamental inquiry mandated by Section 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); see also
In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB
1999).
II. Discussion
A. Similarity or Dissimilarity of the Marks in Their
Entireties

In a likelihood of confusion analysis, we compare the
marks for similarities and dissimilarities in appearance,
sound, connotation and commercial impression. Palm Bay, 73
USPQ2d at 1692. When comparing design marks, the key
factor is visual appearance. See Diamond Alkali Co. v.
Dundee Cement Co., 343 F.2d 781, 145 USPQ 211,
213 (CCPA 1965)(“When symbol marks such as these are being
considered, appearance is most significant. ‘Symbols of
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this kind do not sound,’” citing Columbian Steel Tank Co.
v. Union Tank & Supply Co., 277 F.2d 192, 196, 125 USPQ
406, 409 (CCPA 1960)); see also General Foods Corp. v. Ito
Yokado Co. Inc., 219 USPQ 822, 828 (TTAB 1983) (the
comparison of design marks comes down to a “subjective ‘eye
ball’ reaction,” citing Long John Silver’s Inc., v. Lou
Scharf Inc., 213 USPQ 263, 267 (TTAB 1982)(visual
comparison of pirate design marks)). To the extent the
marks may be verbalized, no evidence of a settled
pronunciation for any of the marks has been presented.
The marks at issue are arbitrary designs. They share
several identical design features: a white cross with arms
of equal length, superimposed against a dark background;
placement of the cross inside a house design; and the house
design being that of a simple iconic house with a peaked
roof and a chimney on the right side.4 Applicant argues
that the stylized house designs of each mark are “not
subtle and create different commercial impressions in the
mind of a consumer.” Applicant’s Brief at 10. We
disagree. The cross in each party’s mark, which

4 We note that Reg. No. 3342604 contains a color claim, but Reg.
No. 3511753 does not. The designs are otherwise identical.
Moreover, applicant has not claimed color in its application.
Both parties are thus entitled to use any color scheme in
representing their marks; and applicant is not precluded from
using a red-and-white color scheme in its mark.
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prominently appears as the central design element, is
proportionally the same. The outline shapes of the house
designs, which form the immediately recognizable, overall
design of each party’s mark, are virtually identical.
Although the cross in applicant’s mark is set on a
contrasting circular background that is situated inside the
house design, the circular design merely creates a
different background for the prominent cross inside the
house. Overall, the marks create the same commercial
impressions. Moreover, although the differences in the
patterns of each mark may be seen when the marks are
compared side-by-side, 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 similar in terms of their
overall commercial impression that confusion as to the
source of the goods or services offered under the
respective marks is likely to result. Under actual
marketing conditions, consumers do not necessarily have the
luxury of making side-by-side comparisons between marks,
and must rely upon their imperfect recollections. See
Dassler KG v. Roller Derby Skate Corp., 206 USPQ 255, 259
(TTAB 1980). The average purchaser normally retains a
general rather than a specific impression of trademarks.
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See H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1727
(TTAB 2008); and Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975). Here, consumers are likely to
remember a white cross set against a dark background being
situated inside a house; they are less likely to recall
whether the cross is contained within a circle or not.
Applicant’s reliance on Red Carpet Corp. v. Johnstown
American Enterprises Inc., 7 USPQ2d 1404 (TTAB 1988), is
misplaced. There, the Board compared two designs whose
overall commercial impressions were substantially
different, despite the fact that both designs were
representations of pentagonal “house designs.” The Board
recognized that such five-sided figures were commonly
described as “house designs,” but nonetheless held that
“although the designs in question may both be characterized
as stylized houses, they are so different visually it is
not even accurate to describe them as [having] ‘common
elements.’ The suggestive connotation of the two different
designs may be common, but this is quite different from
concluding that they share a common design element.” Red
Carpet, 7 USPQ2d at 1406.
In contrast, the marks in this case share common
design elements, and these elements are the prominent
features of both parties’ marks. Accordingly, the marks
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are similar in appearance and overall commercial
impression.
B. Similarity of the Services
Applicant intends to use its mark in association with
the following services:
Class 35: Providing cost estimations to legal
professionals and life care planners for proposed
home modifications, namely, accessible home
modifications to make homes accessible for
persons with special needs;

Class 37: Construction services, namely,
completing accessible home construction projects
for profit to make existing homes accessible for
persons with special needs; remodeling and
renovation of homes for profit to make homes
accessible for persons with special needs; and

Class 42: Architectural design consultation
services, namely, providing accessible home
design solutions to architects, builders,
insurance companies and trustees of special needs
trusts for making homes accessible for persons
with special needs; residential building design
services, namely providing accessible residential
building design solutions to architects,
builders, insurance companies and trustees of
special needs trusts for making residential
buildings accessible for persons with special
needs.

The recitation of services in registration No. 3342604
is “building construction and repair, building restoration;
charitable services, namely, renovating and constructing
homes for low income families.” The recitation of
services in registration No. 3342604 reads: “building
construction and repair.” It is well settled that the
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question of likelihood of confusion must be determined
based on an analysis of the goods recited in applicant’s
application vis-à-vis the goods identified in the cited
registration(s). See In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687, 1690 n. 4 (Fed. Cir. 1993); Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1783 (Fed. Cir. 1992); and Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973)
(“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective
descriptions of goods.”).
We compare the recitation of services in the three
international classes in applicant’s application with those
of the cited registrant’s registrations. “Likelihood of
confusion may be found based on any item that comes within
the identification of goods [or services] in the involved
application and registration. … An applicant may not
restrict the scope of the goods covered in the cited
registration by argument or extrinsic evidence.” In re La
Peregrina Ltd., 80 USPQ2d 1645, 1646-7 (TTAB 2008).
We first note that both parties offer “construction
services” in Class 37. While applicant has narrowed the
scope of its construction services to “completing
accessible home construction projects for profit to make
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existing homes accessible for persons with special needs,”
these services are encompassed by registrant’s broadly
worded recitation of “building construction services.”
We therefore must construe the services as being legally
identical.
Applicant’s services also include Class 42 services,
namely, “architectural design consultation services,
namely, providing accessible home design solutions to
architects, builders, insurance companies and trustees of
special needs trusts for making homes accessible for
persons with special needs.” The examining attorney has
made of record seven third-party registrations, based on
actual use in commerce, that list “architectural design
services” and “building construction services” as part of
their recitations of services. This evidence is probative
to show that consumers would likely perceive both
architectural design and building construction services as
being services performed by a single company, and that a
company such as registrant, offering building construction
services, would be likely to provide architectural design
services as well. See In re Infinity Broad. Corp. of
Dallas, 60 USPQ2d 1214, 1217-18 (TTAB 2001); and In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
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Thus, these services are construed as being closely
related.
Likewise, several of the third-party registrations, in
addition to architectural design and construction services,
also recite business services in Class 35, such as “project
management services,” “start-up support,” “business
management” and “business consulting.” This suggests that
consumers have come to expect that building construction
companies may also provide business services. The business
services identified in the third-party registrations are
sufficiently related to applicant’s cost estimation
services to further suggest that consumers are likely to
believe that cost estimation services are also available
from a building construction company. The fact that
applicant has limited its cost estimation services to
“legal professionals and life care planners for proposed
home modifications, namely, accessible home modifications
to make homes accessible for persons with special needs” is
unavailing. Applicant has not shown that building
construction companies do not provide cost estimation
services, or that the market for accessible home
modifications excludes companies providing, as does
registrant, “building construction and repair; building
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restoration; charitable services, namely, renovating and
constructing homes for low income families.”
Accordingly, based on the recitations in the cited
registrations and the evidence of record suggesting that
services provided by both registrant and applicant may
emanate from a single source, we find that applicant’s
services are identical or related to the services recited
in both of the cited registrations.
C. Channels of Trade and Classes of Purchasers
It is settled that in making our determination
regarding the channels of trade, we must look to the
services as identified in the involved application and
cited registrations. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990); and Paula Payne, 177 USPQ at 77. Where
the goods in the application at issue and/or in the cited
registration are broadly identified as to their nature and
type, such that there is an absence of any restrictions as
to the channels of trade and no limitation as to the
classes of purchasers, it is presumed that in scope the
identification of goods encompasses not only all the goods
of the nature and type described therein, but that the
identified goods are offered in all channels of trade which
would be normal therefor, and that they would be purchased
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by all potential buyers thereof. In re Jump Designs, LLC,
80 USPQ2d 1370, 1374 (TTAB 2006); see also In re Elbaum,
211 USPQ 639, 640 (TTAB 1981). Because applicant’s
construction services have been found to be legally
identical to registrant’s building construction services,
and there are no limitations or restrictions as to trade
channels or class of consumers in the cited registrations
with respect to registrant’s building construction
services, such services are presumed to move in the same
channels of trade and be encountered by the same classes of
purchasers as are applicant’s more narrowly defined
construction services. Moreover, inasmuch as registrant’s
building construction services are not limited as to trade
channels or purchaser classes, they may be offered to the
more narrow class of consumer mentioned as the target
customers for applicant’s architectural design and cost
estimation services, namely, “legal professionals and life
care planners” and “architects, builders, insurance
companies and trustees of special needs trusts.”
D. Buyer Sophistication
Applicant contends that purchasers of the services
recited in its application are sophisticated, and that
“[i]t is well understood that services such as building
construction and remodeling and renovation of homes comes
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with a high price tag, and consumers will often research
and take many estimates prior to engaging a contractor.”
Applicant’s Appeal Brief at 13. Even assuming arguendo
that purchasers of such services would carefully deliberate
before making a purchasing decision, this does not mean
that they are immune from confusion as to the origin of the
respective services. See HRL Assoc., Inc. v. Weiss Assoc.,
Inc., 12 USPQ2d 1819 (TTAB 1989), aff'd, 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and
marks can outweigh sophisticated purchasers, careful
purchasing decision, and expensive goods). See also In re
Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50
(Fed. Cir. 1986), citing Carlisle Chem. Works, Inc. v.
Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112
(CCPA 1970) (“Human memories even of discriminating
purchasers … are not infallible.”).
Moreover, given that some of the services, as
identified, are identical, and others are closely related
in that they are competitive or complementary, “the degree
of similarity between the marks necessary to support a
finding of likelihood of confusion declines.” Hunt
Control Sys. Inc. v. Koninklijke Philips Elec. N.V., 98
USPQ2d 1558, 1566 (TTAB 2011), citing Century 21 Real
Estate v. Century Life, 970 F.2d 874, 23 USPQ2d 1698 (Fed.
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Cir. 1992). Even sophisticated consumers may view the
marks as variations on a theme intended to differentiate
related services having a common source or sponsorship.
III. Conclusion
We have carefully considered the entire record, all
arguments, and the evidence submitted by the examining
attorney. We conclude, in light of the similarity of the
marks at issue, the related services, classes of customers,
and channels of trade, that use of applicant’s mark in
association with the identified services is likely to cause
confusion with the marks in the cited registrations.

Decision: The refusal to register under Trademark Act
§ 2(d) is accordingly affirmed both as to the mark in
Registration No. 3342604 and as to the mark in Registration
No. 3511753.