Information Builders Inc.

Trademark Trial and Appeal Board

Apr 30, 2020

87753964 (T.T.A.B. Apr. 30, 2020)

Mailed: April 30, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re Information Builders Inc.
————
Serial No. 87753964
————
Howard F. Mandelbaum of Mandelbaum Silfin Economou LLP,
for Information Builders Inc.
Cynthia R. Smith, Trademark Examining Attorney, Law Office 107,
Leslie Bishop, Managing Attorney.
————
Before Zervas, Wolfson, and Pologeorgis,
Administrative Trademark Judges.
Opinion by Pologeorgis, Administrative Trademark Judge:
Information Builders Inc. (“Applicant”) seeks registration on the Principal
Register of the composite mark for the following goods and
services, as amended:
Computer software for distributing and managing information from
databases, and for building decision support and business intelligence
applications, in International Class 9; and
THIS OPINION IS A
PRECEDENT OF THE TTAB
Serial No. 87753964
2
Computer system design services for building information systems with
data access and database management, and knowledge-based systems
in a wide variety of fields, in International Class 42.1

The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of
likelihood of confusion with the design mark registered on the Principal
Register for, inter alia,
Computer software platforms and applications for using and leveraging
data to better manage business and government operations; computer
software that provides real-time, integrated business management
intelligence by combining information from various databases and
presenting it in an easy-to-understand user interface; computer
software that provides interactive real time business data mining
capability in an easy to understand user interface, in International
Class 9; and

Computer software consultation; consulting services in the field of
design, selection, implementation and use of computer software systems
for others; computer software development; design, development and
implementation of software; installation of computer software;
maintenance of computer software; periodic upgrading of computer
software for others, in International Class 42.2

1 Application Serial No. 87753964, filed on January 12, 2018, based on an allegation of a bona
fide intention to use the mark in commerce under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b). The description of the mark reads as follows: “The mark consists of the
words ‘INFORMATION BUILDERS’ with the first ‘O’ in ‘INFORMATION’ consisting of a
design containing three parallel slanted lines projecting through diametrically opposite
openings in a broken circle.” Color is not claimed as a feature of the mark. Applicant has
submitted the following disclaimer: “No claim is made to the exclusive right to use
INFORMATION or BUILDERS apart from INFORMATON [sic] BUILDERS or apart from
the mark as shown.”
2 Registration No. 3707266; registered on November 10, 2009; renewed. The registration
includes the following description of the mark: “The mark consists of three diagonal bars
appearing one above the other and surrounded by a circle with two breaks, one break
appearing at the high end of the top diagonal bar and one break appearing at the low end of
Serial No. 87753964
3
Additionally, pursuant to Section 6(a) of the Trademark Act, 15 U.S.C. 1056(a), the
Examining Attorney refused registration for Applicant’s failure to comply with the
requirement to provide a disclaimer that comports with the standardized disclaimer
format.
When the refusals were made final, Applicant appealed and requested
reconsideration. When the request for reconsideration was denied, this appeal
resumed. The appeal is fully briefed. For the reasons explained below, we affirm both
refusals.3
I. Preliminary Matter - Evidentiary Objection
We first turn to an evidentiary objection lodged by the Examining Attorney
regarding evidence presented by Applicant for the first time with its appeal brief.
Specifically, the Examining Attorney objects to printouts of two registrations
submitted as part of Exhibit E of Applicant’s brief, namely, Registration Nos. 5477708
and 5481783.4 These printouts were purportedly submitted to support Applicant’s

the bottom diagonal bar.” Color is not claimed as a feature of the mark.
The cited registration also identifies services in International Class 35, namely, “business
consultation services.” The Examining Attorney’s Section 2(d) refusal, however, does not
concern the Class 35 services identified in the cited registration.
3 The TTABVUE and Trademark Status & Document Retrieval (“TSDR”) citations refer to
the docket and electronic file database for the involved application. All citations to the TSDR
database are to the downloadable .PDF version of the documents.
4 The evidence attached to Exhibits A-D of Applicant’s Brief and all other evidence provided
in Exhibit E (other than the two registrations subject to the Examining Attorney’s objection)
were previously and properly submitted during the prosecution of Applicant’s involved
application.
Exhibits to briefs that merely duplicate evidence already in the record are of little or no use
in an ex parte proceeding. They are neither a convenience, nor a courtesy. When considering
an appeal for final disposition, the entire record is readily available to the panel. Because we
Serial No. 87753964
4
argument concerning the alleged weakness of the cited mark.
It is well-settled that the record in an ex parte proceeding should be complete prior
to appeal. Trademark Rule 2.142(d); 37 C.F.R. § 2.142(d). Exhibits or other
evidentiary material that are attached to or included with a brief but not made of
record during examination are untimely, and will not be considered. See In re Fitch
IBCA, Inc., 64 USPQ2d 1058, 1059 n.2 (TTAB 2002); see also TRADEMARK TRIAL AND
APPEAL BOARD MANUAL OF PROCEDURE (TBMP) §§ 1203.02(e) and 1207.01 (2019).5
Accordingly, the Examining Attorney’s evidentiary objection is sustained, and we give
Registration Nos. 5477708 and 5481783 no further consideration in our analysis.
II. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973) (“DuPont”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each DuPont factor for
which there is evidence and argument of record. See In re Guild Mortg. Co., 912 F.3d
1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Varying weights may be assigned

must determine whether such attachments are properly of record, citation to the attachment
requires examination of the attachment and then an attempt to locate the same evidence in
the record developed during prosecution, requiring more time and effort than would have
been necessary if citations were directly to the prosecution record. Cf. Life Zone Inc. v.
Middleman Grp., Inc., 87 USPQ2d 1953, 1955 n.4 (TTAB 2008).
5 To the extent Applicant wished to introduce additional evidence after its appeal had been
filed, Applicant should have filed a written request with the Board to suspend the appeal and
remand the application for further examination pursuant to Trademark Rule 2.142(d), 37
C.F.R. § 2.142(d). Applicant did not do so.
Serial No. 87753964
5
to each DuPont factor depending on the evidence presented. See Citigroup Inc. v.
Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011);
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“[T]he
various evidentiary factors may play more or less weighty roles in any particular
determination.”).
In any likelihood of confusion analysis, however, two key considerations are the
similarities between the marks and the similarities between the goods or services.
See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
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 [or services] and
differences in the marks.”); see also In re i.am.symbolic, LLC, 866 F.3d 1315, 123
USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers
all DuPont factors for which there is record evidence but ‘may focus … on dispositive
factors, such as similarity of the marks and relatedness of the goods [or services].’”)
(quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375,
1380 (Fed. Cir. 2002)).
A. Similarity of the Goods and Services
We initially turn to the comparison of the goods and services under the second
DuPont factor. In making our determination regarding the relatedness of the goods
and services, we must look to the goods and services as identified in Applicant’s
application and the cited registration. See Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting
Serial No. 87753964
6
Octocom Sys., Inc. v. Hous. Computs. 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 [or
services] set forth in the application regardless of what the record may reveal as to
the particular nature of an applicant’s goods [or services], the particular channels of
trade or the class of purchasers to which the sales of goods [or services] are
directed.”)); see also In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011).
Moreover, registration must be refused in a particular class if Applicant’s mark for
any of its identified goods or services in that class is likely to cause confusion with
the Registrant’s mark for any of its identified goods or services. See SquirtCo v. Tomy
Corp., 697 F.2d 1038, 216 USPQ 937, 938-39 (Fed. Cir. 1983) (holding that a single
good from among several may sustain a finding of likelihood of confusion); Tuxedo
Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981) (likelihood of confusion must be found if there is likely to be confusion with
respect to any item that comes within the identification of goods or services in the
application).
Applicant’s Class 9 goods are identified as “computer software for distributing
and managing information from databases, and for building decision support and
business intelligence applications.” Registrant’s Class 9 goods are identified as
“Computer software platforms and applications for using and leveraging data to
better manage business and government operations; computer software that provides
real-time, integrated business management intelligence by combining information
Serial No. 87753964
7
from various databases and presenting it in an easy-to-understand user interface;
computer software that provides interactive real time business data mining
capability in an easy to understand user interface.” Although the identifications of
Applicant’s and Registrant’s Class 9 goods are not identically worded, Applicant’s
more broadly defined computer software and Registrant’s computer software
essentially serve the same function and purpose and, therefore, are goods that are
legally identical in part. For example, Applicant’s “computer software for building
decision support” broadly encompasses Registrant’s “Computer software platforms
and applications for using and leveraging data to better manage business and
government operations.”6
Applicant’s Class 42 services are identified as “Computer system design services
for building information systems with data access and database management, and
knowledge-based systems in a wide variety of fields.” Registrant’s Class 42 services
include “design, development and implementation of software.” As such, we find that
Registrant’s broadly worded Class 42 computer software design services are
encompassed by Applicant’s “computer system design services for building
information systems with data access and database management, and knowledge-

6 Software for building decision support is defined as “a “[software] application that collects,
organizes and analyzes business data to facilitate quality business decision-making for
management, operations and planning”). See www.technopedia.com/definition. The Board
may take judicial notice of information from dictionaries, encyclopedias and other standard
reference works. In re United Trademark Holdings, Inc., 122 USPQ2d 1796, 1798 n.8 (TTAB
2017) (citing B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727, 6 USPQ2d
1719, 1721 (Fed. Cir. 1988) (“dictionaries and encyclopedias may be consulted”)); see also
Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921,
1934 n.61 (TTAB 2011) (encyclopedias); In re Broyhill Furniture Indus. Inc., 60 USPQ2d
1511, 1514 n.4 (TTAB 2001) (dictionary entries and other standard reference works).
Serial No. 87753964
8
based systems in a wide variety of fields” because Applicant’s identified services
include computer software design. Thus, we find that Applicant’s and Registrant’s
computer software design services are also legally identical in part.
The Examining Attorney submitted excerpts from both Applicant’s website and
Registrant’s website that corroborate our finding that Applicant’s and Registrant’s
goods and services overlap.7 We finally note that Applicant does not contest the legal
identity of the parties’ respective goods and services.
Thus, the second DuPont factor strongly favors a finding of likelihood of
confusion.
B. Similarity of Trade Channels and Classes of Purchasers
Next we consider established, likely-to-continue channels of trade, the third
DuPont factor. Because we have found that Applicant’s and Registrant’s goods and
services are legally identical in part, we must presume that these goods and services
travel through the same channels of trade and are offered or rendered to the same or
overlapping classes of purchasers. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal presumption
in determining likelihood of confusion); In re Yawata Iron & Steel Co., 403 F.2d 752,
159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the
channels of trade and classes of purchasers are considered to be the same).
Thus, the third DuPont factor also weighs in favor of finding a likelihood of
confusion.

7 November 8, 2018 Final Office Action, TSDR pp. 23-30.
Serial No. 87753964
9
C. Sophistication of Consumers
Under the fourth DuPont factor, we consider “[t]he conditions under which and
buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.”
DuPont, 177 USPQ at 567.
Applicant argues that its target consumers, namely, information technology
professionals, are sophisticated consumers who can differentiate between the goods
and services provided by Applicant under its involved mark as compared to those
offered under the cited mark.8
Applicant does not elaborate on the identity of the “information technology
professionals” who allegedly purchase the goods and services. Based on the lack of
limitation in either identification of goods and services, there may be individuals with
information technology expertise that constitute Applicant’s relevant consumers, but
there also may be others who are not proficient in information technology who may
purchase computer-related goods and services on behalf of their businesses. See Stone
Lion Capital Partners, L.P., 110 USPQ2d at 1163 (where the purchaser class is mixed,
the Board considers the likelihood of confusion from the perspective of “the least
sophisticated potential purchasers”).
However, without an explanation, supported by evidence, of how the goods and
services are purchased and by whom, we cannot give much credence to Applicant’s
suggestion that conditions of sale mitigate any likelihood of confusion. That said, even
if Applicant’s unsupported argument is credited, purchaser sophistication does not

8 Applicant’s Appeal Brief, p. 5, 9 TTABVUE 9.
Serial No. 87753964
10
always result in a finding that confusion is unlikely, especially where legally identical
in part goods and services are involved and, as explained below, the marks are
similar. Weiss Assocs. v. HRL Assocs., 902 F.2d 1546, 14 USPQ2d 1840, 1841-42 (Fed.
Cir. 1990) (similarities of goods and marks outweighed sophisticated purchasers,
careful purchasing decision, and expensive goods); Wincharger Corp. v. Rinco, Inc.,
297 F.2d 261, 132 USPQ 289, 292 (CCPA 1962). “That the relevant class of buyers
may exercise care does not necessarily impose on that class the responsibility of
distinguishing between similar trademarks for similar goods [or services]. ‘Human
memories even of discriminating purchasers . . . are not infallible.”’ In re Research &
Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (quoting Carlisle
Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112
(CCPA 1970)).
Notwithstanding the foregoing, we do note that in light of the inherent nature of
the goods and services involved, some degree of purchasing care may be exercised by
Applicant’s potential or actual consumers. On balance, we find this factor slightly
favors a finding that confusion is not likely.
D. Similarity of the Marks
We next consider the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. See Palm Bay Imps.,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 369 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005). “The proper test is not a side-by-side comparison of the
marks, but instead whether the marks are sufficiently similar in terms of their
commercial impression such that persons who encounter the marks would be likely
Serial No. 87753964
11
to assume a connection between the parties.” In re i.am.symbolic, LLC, 123 USPQ2d
at 1748 (quoting Coach Servs. Inc., 101 USPQ2d at 1721 (internal quotation marks
omitted)).
For convenience, we repeat that Applicant’s mark is and
the cited mark is . The Examining Attorney argues that because the design
of the letter “O” in Applicant’s mark is highly similar to the entirety of Registrant’s
mark, the marks as a whole may be easily confused.9 The Examining Attorney
maintains that both designs are plain line circles broken in the upper right and lower
left, with three parallel bars predominantly circumscribed therein.10 In addition, the
Examining Attorney argues that the individual terms INFORMATION and
BUILDERS are highly descriptive in relation to Applicant’s identified goods and
services which relate to building business intelligence applications and systems.
In support of her argument, the Examining Attorney relies, in part, on evidence
submitted with a Letter of Protest Memorandum associated with Applicant’s involved
application that identifies the cited registration as a basis for the letter of protest.11

9 Examining Attorney’s Brief, p. 6, 11 TTABVUE 7.
10 Id.
11 March 13, 2018 Letter of Protest Memorandum, TSDR pp. 1-51. Section 1715.02(b) of the
TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) (Oct. 2018) provides that the
“prosecution history of an application will reflect the acceptance of a letter of protest and a
memorandum accepting the letter of protest and all relevant evidence will be added to the
electronic file record.” Accordingly, we treat the evidence submitted with the Letter of Protest
Memorandum and relied upon by the Examining Attorney as automatically made of record
Serial No. 87753964
12
The evidence submitted with the Letter of Protest Memorandum includes, among
other things: (1) a dictionary definition of the term “builder” which is defined as “a
person or thing that creates or develops a particular thing,” (2) screenshots from
various third-party websites discussing “application builders,” and (3) screenshots of
educational course materials discussing “building information systems.” In view of
the foregoing, the Examining Attorney maintains that the inclusion of the descriptive
terms INFORMATION and BUILDERS in Applicant’s mark fails to create a
sufficiently distinguishable overall commercial impression of the mark as a whole to
avoid a likelihood of confusion.12
In challenging the refusal, Applicant argues that because the dominant portion of
its mark is the wording INFORMATION BUILDERS, such wording gets greater
attention than the design functioning as the first letter “O” in the term
INFORMATION because the verbal portion of its applied-for mark is most likely to
indicate the origin of its identified goods and services and, therefore, confusion with
the cited design mark is unlikely.13 Nonetheless, Applicant contends that the stylized
letter “O” in its mark is easily distinguishable from the cited mark. Applicant argues
that the differences between the respective designs of the cited mark and the “O” in

via the Memorandum. See also In re Urbano, 51 USPQ2d 1776, 1778 n.5. (TTAB 1999). To be
clear, the evidence submitted with the Letter of Protest Memorandum does not carry any
more weight than the other evidence submitted during prosecution. In other words, we have
considered each piece of evidence, including the evidence submitted with the Letter of Protest
Memorandum, for whatever probative value it merits.
12 Id.
13 Applicant’s Appeal Brief, p. 6, 9 TTABVUE 10.
Serial No. 87753964
13
Applicant’s composite mark are at least as significant as the similarities and make
them readily distinguishable and unlikely to be confused.14
Specifically, Applicant maintains that, in the cited mark, the top and bottom bars
extend through an opening in the circle but the center bar does not approach either
arc of the circle.15 In the stylized letter “O” in Applicant’s involved mark, Applicant
asserts that each of the bars extends beyond an arc of the circle and by different
degrees.16 Applicant further contends that the design element in its applied-for mark
consists of two of the bars that extend through the upper opening, one more than the
other, and the third bar extends through the lower opening.17 Applicant concludes
that the respective designs make very different impressions due to the vertical
alignment and thickness of the identical bars in the cited design versus the thinner,
unequal and misaligned bars in Applicant’s stylized letter “O.”18
Additionally, Applicant contends that even if Applicant’s and Registrant’s designs
are similar, Applicant’s mark may still be registered because marks with similar
designs have been registered. In re Guild Mortgage Co., 2020 USPQ2d 10279 (TTAB
2020) (appropriate to consider scope of protection of a mark or component thereof in
analysis of similarity or dissimilarity of the marks). In support of its argument,

14 Id. at p. 11, 9 TTABVUE 15.
15 Id.
16 Id.
17 Id.
18 Id.
Serial No. 87753964
14
Applicant submitted copies of the following third-party registrations:19
Reg. No. Mark Relevant
Identification of
Goods and Services
2766379

Electronic locks,
namely, computer
locks, computer keys
and computer
hardware, in Class 9.
3312576

Industrial grade
electrical flush
receptacles, in Class
9.
4858062

Computer software
for processing
electronic payments
and for transferring
funds to and from
others; Computer e-
commerce software to
allow users to
perform electronic
business transactions
via a global computer

19 October 16, 2018 Response to Office Action, TSDR pp. 55-68.
Applicant also submitted a copy of Registration No. 4367092. This registration, however, has
been cancelled. A cancelled registration is only evidence that the registration issued and it
does not carry any of the legal presumptions under Section 7(b) of the Trademark Act, 15
U.S.C. § 1057(b). See Bond v. Taylor, 119 USPQ2d 1049, 1054-55 (TTAB 2016); In re Kysela
Pere et Fils Ltd., 98 USPQ2d 1261, 1264 (TTAB 2011) (“‘dead’ or cancelled registrations have
no probative value at all.”). As such, we have given no consideration to this particular
registration.
Additionally, Applicant submitted a copy of Registration No. 5066427. However, this
registration issued under Section 66(a) of the Trademark Act. As such, we have not given any
consideration to this registration because it does not demonstrate exposure of the mark prior
to registration through use in commerce and, therefore, has no probative value. Calypso
Tech., Inc. v. Calypso Capital Mgmt., LP, 100 USPQ2d 1213, 1221 (TTAB 2011); In re
Princeton Tectonics, Inc., 95 USPQ2d 1509, 1511 (TTAB 2010).
Serial No. 87753964
15
Reg. No. Mark Relevant
Identification of
Goods and Services
network, in Class 9;
and

Developing and
hosting a server on a
global computer
network for the
purpose of facilitating
e-commerce via such
a server; Platform as
a service (PAAS)
featuring computer
software platforms for
use in payment
screen management,
payment information
management and
payment processing
management;
Software as a service
(SAAS) services
featuring software for
processing payments;
Providing temporary
use of on-line non-
downloadable
software for
processing electronic
payments, in Class
42.
4996659

Engineering design
services, in Class 42.
Serial No. 87753964
16
Reg. No. Mark Relevant
Identification of
Goods and Services
5026347

Computer network
design for others; IT
consulting services;
technical support,
namely, monitoring
technological
functions of computer
network systems;
computer network
support consulting;
design of multiline
telecommunications
systems, namely,
VOIP systems, Class
42.
5047788

Computer software
for use in processing
semiconductor wafers,
in Class 9; and

custom design and
development of
testing equipment for
processing
semiconductor wafers
and integrated
circuits; design and
development of
automated controller
systems, namely,
temperature,
humidity and
electrical controllers;
design and
development of
internal cooling
apparatus for
electronic parts;
developing quality
control standards for
integrated circuits
and semiconductor
wafers; design of
integrated circuit
sockets; research and
Serial No. 87753964
17
Reg. No. Mark Relevant
Identification of
Goods and Services
development of new
products for others, in
Class 42.
5101445

Computer game
software; Computer
programs for video
and computer games;
Video game software;
Downloadable video
game software and
downloadable
computer game
software; Computer
game software for use
on mobile and cellular
phones, in Class 9.

We find Applicant’s arguments unpersuasive. As previously noted, we must base
our determination regarding the similarity of the marks on a consideration of the
marks in their entireties. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212
USPQ 23, 234 (CCPA 1981). However, 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 a consideration of the marks as a whole. In
re Nat’l Data Corp., 224 USPQ at 751; see also Price Candy Co. v. Gold Medal Candy
Corp., 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955).
It is clear Applicant’s mark and the cited design mark are not identical because
the literal portion of Applicant’s mark, i.e., the wording INFORMATION BUILDERS,
is absent from the cited mark. However, even if we were to assume the wording
INFORMATION BUILDERS constitutes the dominant portion of Applicant’s mark,
Serial No. 87753964
18
the design functioning as the letter “O” is nonetheless a salient, distinctive feature of
Applicant’s mark which must be given due consideration. The design in Applicant’s
mark forms an integral part of the mark. It functions as the letter “O” but in a way
that would be viewed by consumers as a distinct design and not simply as a stylized
letter “O”. When comparing the design which functions as the letter “O” in Applicant’s
mark with the cited mark, we are of the opinion that the two designs have substantial
visual similarities. We note particularly that both designs consist of a broken circle
with three parallel lines or bars emanating from the top right of the circle to the
bottom left of the circle. Accordingly, when encountering Applicant’s mark,
consumers, given their general rather than specific impressions of marks, may
mistakenly believe Registrant’s design mark is being used in Applicant’s mark.
While we recognize that a side-by-side comparison is not the proper manner in
which to evaluate the similarities of the marks at issue, there is no doubt that if the
two designs were to be placed side-by-side, certain differences between them
including those specifically enumerated by Applicant would be discernible. However,
in the normal environment of the marketplace where purchases are actually made,
purchasers and prospective purchasers would not usually have the opportunity for a
careful examination of these marks in minute detail, even if such consumers are
sophisticated as suggested by Applicant. See Grandpa Pidgeon’s of Mo., Inc. v.
Borgsmiller, 477 F.2d 586, 177 USPQ 573, 574 (CCPA 1973) (differences in marks not
likely to be recalled by consumers at spaced intervals; purchasers do not engage in
trademark dissection).
Serial No. 87753964
19
An individual relies on the recollection of the various marks that he or she has
previously seen in the marketplace, see, e.g., Franklin Mint Corp., 212 USPQ at 234
(“Those who comprise the purchasing public for these goods ordinarily must depend
upon their past recollection of marks to which they were previously exposed.”)
(citation omitted), and, more frequently than not, such recollection is not enhanced
with minute details or specific characteristics of the marks, but is determined by an
overall or general impression of the many and various marks that exist in the
marketplace. Viewing the respective marks of Applicant and Registrant from this
standpoint, it is apparent, as discussed above, that there are important resemblances
in the overall design format and especially in the commercial impression which they
convey to customers.
In addition, the record demonstrates that the terms “INFORMATION” and
“BUILDERS” individually are descriptive in relation to Applicant’s goods and
services, which relate to building information systems, and fail to create a
meaningful, distinguishable overall commercial impression to avoid a finding of
likelihood of confusion. We further note that after the Examining Attorney imposed
a disclaimer requirement for the phrase “INFORMATION BUILDERS,” Applicant
responded with a disclaimer of the terms “INFORMATION or BUILDERS” apart
from the mark as shown. By doing so, Applicant concedes that the terms
INFORMATION and BUILDERS, when considered individually, are merely
descriptive of Applicant’s identified goods and services. Disclaimed, generic or
descriptive matter generally has less significance in likelihood of confusion
Serial No. 87753964
20
determinations. See In re Nat’l Data Corp., 224 USPQ at 752; see also Cunningham
v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (quoting In
re Nat’l Data Corp., 224 USPQ at 752 (“Regarding descriptive terms, this court has
noted that the descriptive component of a mark may be given little weight in reaching
a conclusion on the likelihood of confusion”)); In re Dixie Rests. Inc., 105 F.3d 1405,
41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d
1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the
mark’s commercial impression”). Accordingly, the inclusion of the descriptive terms
INFORMATION and BUILDERS in Applicant’s involved mark is insufficient to
distinguish Applicant’s mark from the cited mark.
We recognize that greater weight is often given to the wording in a mark because
it is the wording that purchasers often use to refer to or request the goods or services.
See In re Viterra, Inc., 101 USPQ2d at 1911. Here, as noted above, the design in
Applicant’s mark is not separate and apart from the literal wording. Instead, it is
centrally placed and forms an integral part of the term INFORMATION. As such,
when a consumer reads the literal portion of Applicant’s mark, and encounters the
distinct design in the term, they will have to realize that the design functions as the
letter “O.” For that reason, we find the general tendency of the literal portion of a
mark to weigh more heavily in a likelihood of confusion analysis inapplicable under
these circumstances. Cf. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA
v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 U.S.P.Q.2d 1129, 1135 (Fed.
Cir. 2015) (in appropriate circumstances, the Board can give greater weight to a
Serial No. 87753964
21
design component of a composite mark); see also In re Electrolyte Labs. Inc., 913 F.2d
930, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990) (“There is no general rule as to whether
letters or design will dominate in composite marks.”). Further, although there is no
explicit rule that marks are automatically similar where the junior mark contains a
highly similar version of the entirety of the cited mark, here, the cited mark is
inherently distinctive and Applicant has not submitted any evidence of third-party
use of similar marks for similar goods and services to demonstrate that it is
commercially weak.
With regard to the seven third-party registrations submitted by Applicant that we
may consider, five of them, i.e., Registration Nos. 2766379, 3312576, 4996659,
5047788, and 5101445, do not identify goods and services related to the goods and
services at issue here and, therefore, have no bearing on the scope of protection to be
accorded to Registrant’s design mark. See In re Thor Tech, Inc., 90 USPQ2d 1634,
1639 (TTAB 2009) (third-party registrations found to be of limited value because
goods identified in the registrations appeared to be in fields which were far removed
from the involved products).
The remaining two registrations, i.e., Registration Nos. 4858062 and 5026347, for
the design marks and , respectively, do involve computer
goods and services arguably related to those identified in the cited registration.
However, neither of these marks is as close to the cited mark as the design in
Applicant’s mark, and therefore we find these two registrations do not diminish the
Serial No. 87753964
22
distinctiveness of the cited mark or its entitlement to protection against Applicant’s
mark. See, e.g., Palisades Pageants, Inc. v. Miss Am. Pageant, 442 F.2d 1385, 169
USPQ 790, 793 (CCPA 1971) (discounting the probative value of third-party
registrations where “appellant’s mark is closer to appellee’s than even the closest of
the third-party registrations”). In fact, there is no evidence of record that the cited
mark has any non-source identifying meaning with respect to Registrant’s identified
goods and services. 20
In sum, we find that the record does not demonstrate that the cited mark has been
diluted by third-party registrations. Rather, we find that, based on the record, the
Registrant’s mark is inherently distinctive for the goods and services identified in the
cited registration and accord it the normal scope of protection to which inherently
distinctive marks are entitled. Moreover, the fact that a highly similar version of
Registrant’s mark is subsumed by Applicant’s mark only increases the similarity
between them, especially where, as here, the marks are used on goods and services
that are legally identical in part.
Viewing the marks in their entireties and given that the individual words in
Applicant’s mark are merely descriptive of Applicant’s identified goods and services,
we find the visual resemblances and highly similar commercial impressions between
Applicant’s mark and the cited mark to cause purchasers and prospective purchasers,
including those described by Applicant as sophisticated, who have become familiar

20 As noted, Applicant did not submit any evidence demonstrating third-party use of marks
identical or similar to the cited mark for identical or similar goods or services to those recited
in the cited registration.
Serial No. 87753964
23
with either Applicant’s or Registrant’s goods and services, and who then encounter
the other’s mark on the other’s goods and services, to mistakenly believe that these
products and services originate from or are sponsored by the same entity. Cf. Phillip
Morris Inc. v. Rothmans of Pall Mall Ltd., 180 USPQ 592 (TTAB, 1973) and cases
cited therein.
Accordingly, we find that the marks are sufficiently similar that the first DuPont
factor favors a finding of likelihood of confusion.
E. Thirteenth DuPont Factor - Applicant’s Claim of Prior Registrations
The thirteenth DuPont factor is “any other established fact probative of the effect
of use.” DuPont, 177 USPQ at 567. Presumably under this factor, Applicant claimed
ownership of four registrations, copies of which were submitted by Applicant.21 The
registrations are identified below.
• Registration No. 1881342 for the standard character mark
INFORMATION BUILDERS (INFORMATION disclaimed) for
“computer programs for building and operating information systems,
data access, data base management, and knowledge-based systems
in a wide variety of fields” in Class 9;

• Registration No. 1884268 for the composite mark
(INFORMATION disclaimed) for “computer
programs for building and operating information systems, data
access, data base management, and knowledge-based systems in a
wide variety of fields” in Class 9;

• Registration No. 2475662 for the standard character mark
INFORMATION BUILDERS (INFORMATION disclaimed) for
“computer software for database management; computer software for
use in decision support systems; computer software for use in

21 October 16, 2018 Response to Office Action, TSDR pp. 17-21.
Serial No. 87753964
24
enterprise reporting and analysis systems and for building
applications for the management and tracking of data for enterprise
reporting systems; computer database programs and data access
systems for use in connection with decision support, analysis, and
reporting programs; computer software development tools for use in
developing decision support, analysis, and reporting systems and
applications; computer software, namely, client/server reporting,
analysis and decision support tools; computerized database,
reporting, and analysis systems for use on corporate intranet web
sites; enterprise server software for use in web based data
publishing, reporting, and analysis solutions; computer software for
accessing databases by means of global computer networks to
generate reports; software development tools for making reporting
and analysis available through global computer network worldwide
websites and for extending the functionality of enterprise reporting
and analysis systems on to global computer networks; and computer
software for accessing and updating databases through global
computer networks” in Class 9; and
• Registration No. 2552546 for the standard character mark
INFORMATION BUILDERS (INFORMATION disclaimed) for
“training in the use and operation of computer software, and
education services in the nature of computer training” in Class 41.

Applicant argues that these four registrations demonstrate that its applied-for
mark is unitary.22 The alleged unitary nature of Applicant’s involved mark, however,
does not call into question the Section 2(d) refusal. Three of the four prior
registrations do not include a design element and, therefore, are not relevant to our
Section 2(d) analysis. The only prior registration which includes a design element is

22 With regard to the disclaimer refusal, Applicant makes the similar argument that the
wording INFORMATION BUILDERS, as a whole, is allegedly unitary. See Applicant’s Brief,
pp. 7-9, 9 TTABVUE 11-13. As discussed below, however, the Examining Attorney altered
the disclaimer refusal in her denial of Applicant’s request for reconsideration to only require
a disclaimer of “INFORMATION or BUILDERS;” that is, of the words individually. Thus,
Applicant’s unitary argument vis-à-vis the disclaimer refusal is moot.
Serial No. 87753964
25
the registration for the composite mark for goods that are
identical to the Class 9 goods identified in Applicant’s involved application.
Even assuming the imperfect recollection of relevant consumers, we find that the
design which functions as the letter “O” in this particular prior registration is
sufficiently dissimilar from that of the cited mark in this case to allow both
registrations to co-exist on the Principal Register. Specifically, the design comprising
the letter “O” in Applicant’s prior registration features a solid circle with five parallel
lines or bars of varying length featured in negative space emanating from the circle’s
lower left side for the first “O” in “INFORMATION,” whereas Registrant’s mark is a
plain line circle, broken in the upper right and lower left, with three stacked parallel
lines or bars predominantly circumscribed therein, nearly identical to the design
functioning as the letter “O” featured in Applicant’s applied-for involved mark.
For these reasons, Applicant’s prior registrations are not probative on the issue of
likelihood of confusion in this appeal under the thirteenth DuPont factor.23
F. Conclusion
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein. We have found that: (1) the marks are similar in

23 The circumstances here differ from those addressed in our decision in In re Strategic
Partners, Inc., 102 USPQ2d 1397 (TTAB 2012). In Strategic Partners, we reversed a Section
2(d) refusal based, in part, upon our finding that the applicant owned a registration for a
substantially similar mark that had co-existed with the cited registration for over five years.
As noted, Applicant’s prior registration with a design element is not sufficiently similar to
the cited registration nor is it sufficiently similar to its involved applied-for mark.
Serial No. 87753964
26
appearance and overall commercial impression; (2) Applicant’s and Registrant’s
identified goods and services are legally identical in part; (3) the parties’ respective
goods and services are presumed to move in identical or overlapping trade channels
and would be offered to the same or overlapping classes of purchasers; (4) Applicant
has not demonstrated that the scope of protection of the cited mark has been lessened
by the existence of prior third-party registrations; and (5) while the goods and
services at issue may be purchased by information technology professionals, any
weight this adds to a finding of no confusion is outweighed by the similarity of the
marks, the legally identical in part goods and services, and the other factors
discussed. In view thereof, we conclude that Applicant’s
mark, as used in connection with the goods and services identified in its involved
application, so resembles the cited mark for Registrant’s identified Class
9 goods and Class 42 services as to be likely to cause confusion or mistake, or to
deceive under Section 2(d) of the Trademark Act.
III. Disclaimer Requirement
In the initial and final office actions, the Examining Attorney required Applicant
to disclaim the wording INFORMATION BUILDERS apart from the mark as shown
on the ground that the wording, in its entirety, is merely descriptive of Applicant’s
identified goods and services. Applicant did not provide the disclaimer as required.
Instead, Applicant provided the following disclaimer:
Serial No. 87753964
27
No claim is made to the exclusive right to use “INFORMATION” or
“BUILDERS” apart from INFORMATON [sic] BUILDERS or apart from
the mark as shown.”

In doing so, Applicant argues that the wording INFORMATION BUILDERS is
unitary in nature and, therefore, a disclaimer of INFORMATION BUILDERS is
inappropriate.24 However, in the denial of Applicant’s request for reconsideration, the
Examining Attorney altered the requirement so that Applicant need only disclaim
INFORMATION or BUILDERS apart from the mark as shown, instead of the
wording in its entirety.25 (emphasis added).
Further, the Examining Attorney maintained that Applicant’s submitted
disclaimer would be acceptable but for the addition of “apart from INFORMATON
[sic] BUILDERS” which the Examining Attorney contends is extraneous matter and
nevertheless misspells the word INFORMATION.26 In view of the foregoing, the
Examining Attorney made final the requirement to provide a disclaimer that
comports with the standardized disclaimer format which should read as follows: “No
claim is made to the exclusive right to use INFORMATION or BUILDERS apart from
the mark as shown.”27
TMEP Section 1213.08(a)(i) provides, in relevant part, as follows:
Where … adjacent components that do not form a grammatically or
otherwise unitary expression must be disclaimed, the following format
is suggested:

24 Applicant’s Appeal Brief, pp. 7-9, 9 TTABVUE 11-13.
25 June 10, 2019 Denial of Request for Reconsideration, 5 TTABVUE 3.
26 Id.
27 Id.
Serial No. 87753964
28
No claim is made to the exclusive right to use “________” and “________”
apart from the mark as shown.

While the “and” connector is preferred, the USPTO will also accept a
statement that “no claim is made to the exclusive right to use “________”
or “________” apart from the mark as shown.”

By allowing Applicant to disclaim the terms INFORMATION and BUILDERS
individually, it appears that the Examining Attorney is no longer taking the position
that the literal phrase INFORMATION BUILDERS is a unitary expression that is
merely descriptive of Applicant’s identified goods and services. That being said, we
agree with the Examining Attorney that the disclaimer provided by Applicant is
inappropriate. First, as noted by the Examining Attorney, Applicant has misspelled
the term INFORMATION. Second, and more importantly, Applicant seeks to add
extraneous matter to the disclaimer, namely, that it is not disclaiming rights to
INFORMATION BUILDERS.
Under Section 6 of the Trademark Act, “[t]he Director may require the applicant
to disclaim an unregistrable component of a mark.” 15 U.S.C. § 1056 (emphasis
added). Therefore, “[w]ording that claims matter, rather than disclaims it, is not
acceptable. A disclaimer should be no more than a statement that identifies matter
to which the applicant may not have exclusive rights apart from what is shown on
the drawing.” TMEP § 1213.08(a)(ii); see also Textron Inc. v. Pilling Chain Co., 175
USPQ 621, 621-22 (TTAB 1972). As that section makes clear, “statements that the
applicant ‘claims’ certain matter [shown in the mark] are not acceptable. The
examining attorney must require correction of this wording and of variations that
amount to the same thing.” (emphasis added).
Serial No. 87753964
29
Here, Applicant’s proposed disclaimer essentially seeks to claim rights to the
literal wording INFORMATION BUILDERS standing alone, i.e., without the stylized
letter “O” in the term INFORMATION. This is tantamount to claiming matter shown
in the mark, although the wording “INFORMATION BUILDERS” itself, without the
design, is not Applicant’s applied-for mark. Accordingly, the requirement to disclaim
the terms INFORMATION or BUILDERS disjunctively apart from the mark as
shown and without referring to the disclaimer as not including a term that is not at
issue is affirmed.

Decision: The refusals to register Applicant’s mark under Section 2(d) of the
Trademark Act and on the ground that Applicant failed to comply with the Examining
Attorney’s requirement to provide a proper disclaimer are affirmed.
However, if Applicant submits the required, properly worded disclaimer to the
Board within 30 days from the date of this decision and prior to filing any appeal of
this decision, the requirement for the disclaimer will have been met. Trademark Rule
2.142(g), 37 C.F.R. § 2.142(g); TBMP § 1218. The disclaimer should read as follows:
“No claim is made to the exclusive right to use INFORMATION or BUILDERS apart
from the mark as shown.” TMEP § 1213.08(a)(i). The submission of the required
disclaimer, however, will not overcome the refusal to register under Section 2(d) of
the Trademark Act and does not serve to toll the time to appeal the Board’s decision.