HSB Solomon Associates LLC

Trademark Trial and Appeal Board

Aug 9, 2016

No. 86454836 (T.T.A.B. Aug. 9, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: August 9, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re HSB Solomon Associates LLC
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Serial No. 86454836
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George R. Schultz of Schultz & Associates, P.C.,
for HSB Solomon Associates LLC.
Andrew Leaser, Trademark Examining Attorney, Law Office 117,
Hellen M. Bryan-Johnson, Managing Attorney.
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Before Quinn, Bergsman, and Shaw,
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
HSB Solomon Associates LLC (“Applicant”) seeks registration on the Principal
Register of the mark PURSUIT OF EXCELLENCE,1 in standard characters, for
“business consulting services, namely, benchmarking analysis, production analysis,
and forecasting analysis in the fields of chemical refineries, petroleum refineries,
petroleum production, petroleum pipelines, petroleum transportation and petroleum

1 Application Serial No. 86454836, filed on November 14, 2014, based on Applicant’s
allegation of an intent to use the proposed mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
Serial No. 86454836
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storage and natural gas refineries, natural gas production, natural gas pipelines,
natural gas transportation and natural gas storage,” in International Class 35.
Registration has been refused under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground that Applicant’s mark, when used with the identified
services, is to be likely to cause confusion, mistake or deception with the mark
PURSUIT OF EXCELLENCE,2 in standard characters, for goods and services
identified as:
Printed circuit boards; printed circuit boards for electronics
containing integrated circuits; circuit boards; computer
application software for use in designing the layout of
printed circuit board assemblies; electronic circuit boards;
electronic circuit cards; integrated circuits; large scale
integrated circuits; printed electronic circuits for
apparatus and cards bearing integrated circuits; computer
memory hardware; memory cards; integrated circuit
modules power supplies; transformers; industrial process
control software, in International Class 9;
Business consulting, management, planning and
supervision; business management consultancy as well as
development of processes for the analysis and
implementation of strategy plans and management
projects; business planning; consultancy services regarding
business strategies; cost price analysis; distributorships in
the field of electronics; inventory management in the fields
of transportation, defense, medicine, safety, security,
electronics, industrial controls, telecommunications,
computers and multi-media; organizational services for
business purposes; transportation logistic services,
namely, planning and scheduling shipments for users of
transportation services, in International Class 35;
Supply chain logistics and reverse logistic services,
namely, storage, transportation and delivery of documents,
packages, raw materials and other freight for others by air,

2 Registration No. 4344934, issued June 4, 2013.
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rail, ship or truck; warehousing services; distribution
services, namely, delivery of manufactured electronic
products, in International Class 39;
Contract manufacturing in the field of electronics;
manufacture of general product lines in the field of
electronics to the order and specification of others;
manufacturer of electronics to order and/or specification of
others; manufacturing services for others in the field of
electronics, in International Class 40; and
Technical support services, namely, troubleshooting of
industrial process control computer software problems,
design and testing for new product development; design
and testing of new products for others; product
development in the field of transportation, defense,
medicine, safety, security, electronics, industrial controls,
telecommunications, computers and multi-media; design
for others in the field of transportation, defense, medicine,
safety, security, electronics, industrial controls,
telecommunications, computers and multi-media; design
for others of integrated circuits and integrated circuit cores
for use in wireless communications and wireless
communication equipment and apparatus and digital
signal processors (DSP); design for others in the fields of
machines, mechanisms and instruments in the fields of
transportation, defense, medicine, safety, security,
electronics, industrial controls, telecommunications,
computers and multi-media; development of technologies
for the fabrication of circuits for wireless communication,
electronic data processing, consumer electronic,
automotive electronics; materials testing and analyzing;
technical support services, namely, troubleshooting of
industrial process control computer software problems;
design and testing of new products for others, in
International Class 42.
When the refusal was made final, Applicant appealed and requested
reconsideration. The Examining Attorney denied the request for reconsideration and
the appeal resumed. The case is fully briefed. We affirm the refusal to register.
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Analysis
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence relevant to the factors set forth in In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations are the similarities between
the services and the similarities between the marks. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental
inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”).
A. The similarity of the marks
We begin with the first du Pont factor and consider the similarity of the marks,
comparing them for similarities and dissimilarities in appearance, sound,
connotation and commercial impression. See Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). Applicant’s mark, PURSUIT OF EXCELLENCE, in standard characters, is
identical in all respects to Registrant’s mark, PURSUIT OF EXCELLENCE, also in
standard characters. This du Pont factor heavily favors a finding of likelihood of
confusion.
B. The similarity or dissimilarity of the services, trade channels, and classes of
consumers.
We next consider the second and third du Pont factors and look at the relationship
between the services at issue, the channels of trade in which they travel and the
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classes of consumers. We keep in mind that the greater the degree of similarity
between the marks at issue, the lesser the degree of similarity between the respective
services that is required to support a finding of likelihood of confusion. See In re Opus
One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001). If the marks are identical, as in this
case, it is only necessary that there be a viable relationship between the services in
order to support a finding of likelihood of confusion. See In re Concordia Int’l
Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). The issue remains, of course,
not whether purchasers would confuse the services, but rather whether there is a
likelihood of confusion as to their source. In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
Additionally, the law is clear that the question of likelihood of confusion must be
determined based on the identification of services in the application and cited
registration, regardless of what the record may reveal as to the actual nature of the
services, the particular channels of trade or the class of purchasers to which the
services are directed. Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the
question of registrability of an applicant’s mark must be decided on the basis of the
identification of goods [and services] set forth in the application [and registration].”).
Applicant’s services are “business consulting services, namely, benchmarking
analysis, production analysis, and forecasting analysis in the fields of chemical
refineries, petroleum refineries, petroleum production, petroleum pipelines,
petroleum transportation and petroleum storage and natural gas refineries, natural
gas production, natural gas pipelines, natural gas transportation and natural gas
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storage.” Applicant’s and Registrant’s services are, in part, identical inasmuch as
Registrant’s broadly-worded “business consulting” encompasses Applicant’s more
narrowly-worded “business consulting services” in the chemical, petroleum natural
gas industries. See In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992); In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981). In addition, Registrant’s services of
“business management consultancy as well as development of processes for the
analysis and implementation of strategy plans and management projects; [and] cost
price analysis” are closely related to Applicant’s services of “benchmarking analysis,
production analysis, and forecasting analysis” inasmuch as Registrant’s services
include analysis of businesses generally without limitation as to industry. Moreover,
Applicant does not dispute that the services are not, in part, identical or otherwise
closely related.
Turning to the trade channels and classes of consumers, since Registrant’s
services are, in part, identical to Applicant’s services and unrestricted, they are
presumed to move in all channels of trade normal for such services and are available
to all potential classes of ordinary consumers, including those of Applicant. See In re
Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (Absent
restrictions in an application or registration, identical services are “presumed to
travel in the same channels of trade to the same class of purchasers.”) (quoting
Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005
(Fed. Cir. 2002)).
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Accordingly, the du Pont factors relating to similarity of the services, similarity of
established, likely to continue channels of trade, and classes of consumers favor a
finding of likelihood of confusion.
C. The conditions under which and buyers to whom sales are made, i.e. “impulse”
vs. careful, sophisticated purchasing
We next consider to the fourth du Pont factor, the conditions under which and
buyers to whom sales are made, i.e., “impulse” versus careful, sophisticated
purchasing. Du Pont, 177 USPQ at 567.
Applicant relies upon Elec. Design & Sales, Inc. v. Elec. Data Sys. Corp., 954 F.2d
713 , 21 USPQ2d 1388 (Fed. Cir. 1992) in support of its argument that its services
are the subject of careful purchase and, therefore, consumers are unlikely to confuse
the source of the respective services. Applicant argues that “[i]f the consumers at
issue are sophisticated, knowledgeable about the goods and services, and take care in
making purchasing decisions, there is no likelihood of confusion, regardless of other
similarities.”3 This argument is unpersuasive. In Electronic Design, the Court did not
base its determination solely on consumer sophistication. The court also found that
“differences in purchasers, channels of trade, and what [goods or services] each
company sold” had not been properly assessed by the Board in its decision. Electronic
Design, 21 USPQ2d at 1389. Accordingly, we do not read Electronic Design to stand
for the proposition that consumer sophistication must outweigh a finding of identical

3 Applicant’s Br., p. 3.
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marks, identical and closely-related services, identical trade channels, and identical
classes of consumers.
In this case, the identity of the marks and the identity of the services outweigh
any sophisticated purchasing decision. See HRL Associates, Inc. v. Weiss Associates,
Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL Associates,
Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks
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 Chemical 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.”).
We conclude that purchasers familiar with Registrant’s business consulting and
analysis services offered under the mark PURSUIT OF EXCELLENCE would be
likely to mistakenly believe, upon encountering Applicant’s identical mark,
PURSUIT OF EXCELLENCE, for “business consulting services, namely,
benchmarking analysis, production analysis, and forecasting analysis in the fields of
chemical refineries, petroleum refineries, petroleum production, petroleum pipelines,
petroleum transportation and petroleum storage and natural gas refineries, natural
gas production, natural gas pipelines, natural gas transportation and natural gas
storage” that the services originated from or are associated with or sponsored by the
same entity.
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Decision: The refusal to register under Section 2(d) of the Trademark Act is
affirmed.