International Business Machines Corp

Trademark Trial and Appeal Board

Feb 6, 2009

No. 78897884 (T.T.A.B. Feb. 6, 2009)

Mailed:
February 6, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re International Business Machines Corp
________

Serial No. 78897884
_______

Gina M. Lyons, Esq., in-house counsel for International
Business Machines Corp

Myriah A. Habeeb, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Kuhlke, Mermelstein, and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
International Business Machines Corp, applicant, filed
an application to register the mark GLOBAL BUSINESS
SERVICES (in standard character form) for goods ultimately
identified as “printed matter, namely, brochures and
written presentations in the field of utilizing computer
hardware and computer software, information technology, and
electronic business transactions via computer networks,
intranets and internets to improve business functions and
THIS OPINION
IS NOT A PRECEDENT
OF THE TTAB
Serial No. 78897884
2
performance” in International Class 16, as well as certain
services in International Classes 35 and 42.1 The
application contains a disclaimer of the phrase BUSINES
SERVICES.
The examining attorney has refused registration of
applicant's mark (solely as to the goods in International
Class 16) pursuant to Section 2(d) of the Trademark Act, 15
U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the following two registered marks:2
GLOBAL SERVICES (in standard characters) and

Both registrations cover the following goods and
services:

“publications, namely magazines, newsletters,
brochures, programs and posters in the fields of
business management, outsourcing, news and information
technology, high technology, business technology and
human resources” in International Class 16;

“arranging and conducting trade shows, business
conferences and exhibitions in the fields of business
management, outsourcing, news and information
technology, high technology, business technology and
human resources” in International Class 35; and

1 Application Serial No. 78897884, as amended, seeks registration
of applicant’s mark on the Supplemental Register and is based on
an allegation of use in commerce filed under Section 1(a) of the
Trademark Act. Applicant claims a priority filing date of April
11, 2006, based on a foreign application under Section 44(d).
2 Registrations Nos. 3204771 and 3204770 issued on the
Supplemental Register on January 30, 2007, but have a priority
filing date of January 31, 2006.
Serial No. 78897884
3
“arranging and conducti[ng] educational seminars in
the fields of business management, outsourcing, news
and information technology, high technology, business
technology and human resources; provision of general
news and information via a global computer network” in
International Class 41.

The two cited registrations are owned by the same
entity, are on the Supplemental Register and contain a
disclaimer of the word SERVICES.
Applicant concurrently appealed the final refusal and
filed a request for reconsideration. After the request for
reconsideration was denied by the examining attorney,
briefs were filed by applicant and the examining attorney.
We affirm the refusal to register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are 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,
however, two key, although not exclusive, considerations
are the similarities between the marks and the similarities
between the goods and/or services. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976).
Serial No. 78897884
4
We initially note that applicant seeks registration of
its mark on the Supplemental Register and the two cited
registrations are on the Supplemental Register; we may
therefore presume that the marks are merely descriptive of
the identified goods and/or services. Nevertheless, as the
predecessor to our principal reviewing court held in In re
The Clorox Co., 578 F.2d 305, 198 USPQ 337, 341 (CCPA
1978), “a mark registered on the Supplemental Register can
be used as a basis for refusing registration to another
mark under §2(d) of the Act.” Moreover, there is no
“requirement that citation of marks on the Supplemental
Register under § 2(d) be limited to marks identical to that
sought to be registered....No reason exists, however, for
the application of different standards to registrations
cited under §2(d). The level of descriptiveness of a cited
mark may influence the conclusion that confusion is likely
or unlikely,...but that fact does not preclude citation
under §2(d) of marks on the Supplemental Register.” Id.
With the above in mind, we first consider the du Pont
factors regarding the goods, trade channels and classes of
purchasers. In an ex parte appeal, likelihood of confusion
is determined on the basis of the goods as they are
identified in the application and the cited registration.
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261,
Serial No. 78897884
5
62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Elbaum, 211
USPQ 639, 640 (TTAB 1981); In re William Hodges & Co.,
Inc., 190 USPQ 47, 48 (TTAB 1976).
Applicant argues that its printed goods are
“peripheral to and relate to the sale of Applicant’s
computer hardware, computer software and computer services
and solutions.” Brief, (unnumbered) p. 4. However, based
on the identifications of goods upon which we must base our
decision, applicant and registrant’s goods in International
Class 16 are legally identical in part. They cover
“brochures...in the field of...information technology” and
there is no language in the involved application limiting
the information technology as meaning pertaining only to
applicant’s own computer-related goods. Even if
applicant’s identification of goods was limited in the
manner that applicant argues, and it is not, the
registrant’s information technology brochures are not
limited to technology or goods produced by any one
manufacturer. Thus, registrant’s information technology
brochures may cover technology utilizing applicant’s
computer hardware or software.
Because applicant’s and registrant’s identified goods
are identical, in part, this factor weighs strongly in
favor of finding a likelihood of confusion.
Serial No. 78897884
6
Because the goods in the application and the cited
registration are, in part, identical, we must presume that
the channels of trade and classes of purchasers at least in
part are the same. Genesco Inc. v. Martz, 66 USPQ2d 1260,
1268 (TTAB 2003) (“Given the in-part identical and in-part
related nature of the parties’ goods, and the lack of any
restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
the same channels of trade”); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of
purchasers”). Thus, the du Pont factors involving trade
channels and classes of purchasers also favor a finding of
likelihood of confusion.
Applicant argues that confusion is not likely because
its goods involve computer hardware, software and
technology “to improve business functions and performance”
and therefore “suggest that applicant’s consumers are in
fact sophisticated ‘business’ consumers.” Brief,
(unnumbered) pp. 7-8. While business owners may be the
consumers of applicant’s (and registrant’s for that matter)
goods, this does not necessarily remove the likelihood of
Serial No. 78897884
7
confusion where the goods are identical and the marks are
extremely similar. See In re Wilson, 57 USPQ2d 1863, 1865-
66 (TTAB 2001)(where marks are very similar and goods
related, confusion may be likely even among sophisticated
purchasers); In re Decombe, 9 USPQ2d 1812, 1814-1815 (TTAB
1988)(“Being knowledgeable and/or sophisticated in a
particular field does not necessarily endow one with
knowledge and sophistication in connection with the use of
trademarks.”). Moreover, we note that where the goods are
identical in part, i.e., brochures in the field of
information technology, we do not find that these goods are
so expensive that consumers would expend an inordinate
amount of care when making their decision to purchase.
This brings us to the similarity of the marks. We
keep in mind that when marks would appear on identical
goods, as they partially do here, the degree of similarity
necessary to support a conclusion of likely confusion
declines with respect to that class of goods (in this case,
International Class 16). Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992). Our focus is on whether the marks are
similar in sound, appearance, meaning, and commercial
impression. Palm Bay Imports Inc. v. Veuve Clicquot
Serial No. 78897884
8
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005).
In the present case, again, the marks are applicant’s
GLOBAL BUSINESS SERVICES and registrant’s GLOBAL SERVICES
(stylized in one registration and in typed characters in
the second registration). Thus, the only difference
between applicant’s mark and registrant’s non-stylized mark
is applicant’s insertion of the word BUSINESS. Given that
the marks are descriptive, it is difficult to discern which
element, if any, is more dominant in the marks.
Nevertheless, we find the term GLOBAL, given that it
appears first in each mark, is most likely to be impressed
upon the mind of a purchaser and will be remembered and
used when calling for the goods. See Presto Products, Inc.
v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB
1988). Because the term BUSINESS is sandwiched between
GLOBAL and SERVICES, it may have even less significance for
purposes of purchasers being able to distinguish between
the marks.
The addition of the term BUSINESS in applicant’s mark
does very little, if anything, to change the overall
commercial impression or connotation of applicant’s mark.
Instead, consumers will perceive all three marks as
suggesting universal (“global”) services, or to the extent
Serial No. 78897884
9
that the term “global” is intended to suggest a global
computer network, such a connotation will be the same for
all marks.
Accordingly, we find that the du Pont factor of the
similarities of marks weighs strongly against applicant.
Upon consideration of the record and the relevant
likelihood of confusion factors, we conclude that, when
potential purchasers of applicant and registrant’s goods
encounter the marks GLOBAL SERVICES (stylized or not) and
GLOBAL BUSINESS SERVICES, respectively, for goods that are,
in part, identical, they are likely to believe that the
sources of these goods are in some way related or
associated.
We make our decision with full awareness of the
inherent weakness of the two cited registered marks. It
also can be usefully added that, as stated by the court in
King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108, 109 (CCPA 1974):
Confusion is confusion. The likelihood thereof is to
be avoided, as much between “weak” marks as between
“strong” marks, or as between a “weak” and a “strong”
mark.

The goods identified in the application are, in part,
legally identical to goods in the cited registrations and
as a result, there is a likelihood of confusion.
Serial No. 78897884
10

DECISION: The refusal to register the mark under
Section 2(d) of the Trademark Act in view of Registrations
Nos. 3204770 and 3204771 is affirmed.