i.think inc.

Trademark Trial and Appeal Board

Oct 26, 2000

No. 75398920 (T.T.A.B. Oct. 26, 2000)

Paper No. 13
JQ
10/26/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re i.think inc.
________
Serial No. 75/398,920
_______
John P. Pinkerton of Worsham, Forsythe & Wooldridge for
applicant.
Michele-Lynn Swain, Trademark Examining Attorney, Law
Office 103 (Michael A. Szoke, Managing Attorney).
_______
Before Quinn, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by i.think inc. to
register the mark I.THINK INC. (“INC.” disclaimed) for
“market research services, namely market analysis, consumer
market research, advertising research, conducting marketing
studies, and market research conducted in whole or in part
via a worldwide computer network” (in International Class
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/398,920
2
35) and “research and development for new products and
services for others” (in International Class 42).1
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Act on the ground
that applicant’s mark, if used in connection with
applicant’s services, would so resemble the previously
registered mark THINK INC. (“INC.” disclaimed) for
“business management consulting in the area of facilitating
business innovation through organization and process
changes”2 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs. An
oral hearing was not requested.
Applicant contends that the marks are different in
sound, appearance and meaning. In particular, applicant
contends that its mark will be perceived and pronounced as
“I DOT THINK INC.” Applicant further claims that the cited
mark is weak and is entitled to a narrow scope of
protection. Applicant also asserts that the services are
not directly competitive and that even though the services

1 Application Serial No. 75/398,920, filed December 2, 1997,
alleging a bona fide intention to use the mark in commerce.
Counsel’s statements suggest that use has commenced, although
there is no evidence of record showing such use.
2 Registration No. 2,119,018, issued on December 9, 1997.
Ser No. 75/398,920
3
“may coexist, at least in part, in the same broad
industry,” the services “are not necessarily related.”
Applicant states that the channels of trade are different
inasmuch as its services will be offered via the Internet.
Applicant also points to the sophistication of the business
buyers of the services and that there have not been any
instances of actual confusion.
The Examining Attorney maintains that the marks are
similar in sound, appearance and overall commercial
impression. The services are related, according to the
Examining Attorney, and it is not uncommon for the same
entity to offer both market research and business
management consultation services. In this connection, the
Examining Attorney submitted third-party registrations and
excerpts retrieved from the NEXIS database.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion
issue. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
Ser No. 75/398,920
4
544 F.2d 1098, 192 USPQ 24 (CCPA 1976); and In re Azteca
Restaurant Enterprises Inc., 50 USPQ2d 1209 (TTAB 1999).
We first turn to consider the similarity between the
marks I.THINK INC. and THINK INC. Insofar as sound is
concerned, we are not convinced by applicant’s contention
that its mark will be pronounced as “I DOT THINK INC.”
There is no evidence on this point and, given the
construction of the mark and the nature of the services to
which the mark is applied (market research which generally
guages what people think), we view it just as likely that
the mark will be perceived and pronounced without the
“dot,” that is, as “I THINK INC.” The marks also are
similar in appearance inasmuch as THINK INC., the entirety
of registrant’s mark, is a significant feature of
applicant’s mark. The addition of the suggestive portion
“I.” (suggesting, according to applicant, the Internet) in
applicant’s mark does not sufficiently distinguish it from
registrant’s mark in overall commercial impression.3
In connection with its argument that the cited mark is
weak and is entitled to a narrow scope of protection,
applicant submitted, for the first time with its appeal

3 Applicant states that the “I.” portion of its mark conveys an
“Internet-based business” and “clearly evidences the channel of
trade in which the applicant’s mark is used.” (brief, p. 7)
Ser No. 75/398,920
5
brief, a list of third-party registrations and applications
for marks which include the word “think.” The Examining
Attorney, in her brief, neither objected to the untimely
submission nor commented on the evidence so as to indicate
that she was treating the evidence to be of record.
As a general rule, evidence submitted with an appeal
brief is untimely. Trademark Rule 2.142(d). “Evidence
submitted after appeal may be considered by the Board,
despite its untimeliness, if the nonoffering party (1) does
not object to the new evidence, and (2) discusses the new
evidence or otherwise affirmatively treats it as being of
record.” Trademark Trial and Appeal Board Manual of
Procedure, §1207.03 [emphasis in original]. In the present
case, in view of the untimely submission and the fact that
the Examining Attorney did not affirmatively treat the
evidence as being of record, the list does not form part of
the appeal record. Further, and in any event, the mere
listing of third-party registrations and applications are
insufficient to make such registrations and applications of
record. See, e.g., In re Consolidated Cigar Corp., 35
USPQ2d 1290, 1292 (TTAB 1995) at n. 3; In re Smith &
Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) at n. 3; and In
re Melville Corp., 18 USPQ2d 1386, 1388-89 (TTAB 1991) at
n. 2.
Ser No. 75/398,920
6
Even if the third-party registrations and applications
sought to be relied upon by applicant were properly of
record, it is pointed out that such evidence is entitled to
little weight in evaluating whether there is a likelihood
of confusion. See, e.g., AMF Inc. v. American Leisure
Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA
1973); and In re Hub Distributing, Inc., 218 USPQ 284, 285-
86 (TTAB 1983). We particularly point out here that none
of the listed third-party marks includes the goods and/or
services for which the marks are registered. Accordingly,
even if we were to consider the list attached to
applicant’s brief, the probative value is so limited that
it would not change the result in this case.
In sum, we view the marks as sufficiently similar
that, if related services were rendered thereunder,
confusion would be likely to occur in the marketplace. In
reaching this conclusion, we have kept in mind the
fallibility of human memory over time and the fact that
purchasers usually retain a general rather than a specific
impression of marks encountered in the marketplace.
With respect to the services, it is not necessary that
they be similar or competitive, or even that they move in
the same channels of trade to support a holding of
likelihood of confusion. It is sufficient that the
Ser No. 75/398,920
7
respective services are related in some manner, and/or that
the conditions and activities surrounding the marketing of
the services are such that they would or could be
encountered by the same person under circumstances that
could, because of the similarity of the marks, give rise to
the mistaken belief that they originate from the same
source. In re International Telephone & Telegraph Corp.,
197 USPQ 910, 911 (TTAB 1978).
In the present case, applicant recognizes that the
involved services “may coexist, at least in part, in the
same broad industry.” Although applicant goes on to argue
that the similarities end there, we agree with the
Examining Attorney that the services are sufficiently
related that, when rendered under similar marks, confusion
is likely to occur. The results of market reasearch can be
used in business consulting, and thereby facilitate
innovation and changes (including development of new
products and services) to meet customers’ needs as shown by
the research. It may well be, as the Examining Attorney
suggests, that purchasers will view applicant’s mark as
identifying related, albeit different, services offered on
the Internet from registrant. That is to say, purchasers
will view applicant’s mark as identifying market research
services offered by registrant via the Internet, the
Ser No. 75/398,920
8
results of which would then be incorporated into
registrant’s business consulting.
In finding that applicant’s and registrant’s services
are related, we have considered the third-party
registrations which the Examining Attorney has submitted.
The registrations show marks which are registered for both
types of services as those involved here. Although these
registrations are not evidence that the marks shown therein
are in use or that the public is familiar with them, they
nevertheless have probative value to the extent that they
serve to suggest that the goods and services listed therein
are of a kind which may emanate from a single source. See,
e.g., In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-86 (TTAB 1993); and In re Mucky Duck Mustard Co. Inc.,
6 USPQ2d 1467, 1470 at n. 6 (TTAB 1988).
We also have considered the NEXIS excerpts introduced
by the Examining Attorney. The gist of the articles is
that a single entity may offer business management, market
research and/or research and development services.
Inasmuch as there are no limitations in the cited
registration, the identified services must be assumed to
move through all the normal channels of trade for such
services, and would be offered to all types of business
customers. Octocom Systems Inc. v. Houston Computer
Ser No. 75/398,920
9
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1788 (Fed.
Cir. 1990). Thus, in the present case, registrant’s
services are broad enough to include those types of
services rendered on the Internet. Further, as applicant
acknowledges (brief, p. 8), the services of applicant and
registrant are directed to the same classes of purchasers,
namely businesses. The fact that some businesses may be
sophisticated weighs in applicant’s favor. This factor,
however, is clearly outweighed by the other factors bearing
on the relatedness of the services.
In sum, we are persuaded that market research is
related to business management consultation services of the
type listed in the cited registration.
Our conclusion in this case is not diminished by
applicant’s unsupported assertion that it has not
encountered any instances of actual confusion between its
mark and registrant’s mark. While the absence of any
instances of actual confusion over a significant period of
time is a factor indicative of no likelihood of confusion,
it is a meaningful factor only where the record
demonstrates appreciable and continuous use by the
applicant of its mark in the same markets as those served
by the registrant under its mark. Gillette Canada Inc. v.
Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). It is not a
Ser No. 75/398,920
10
mitigating factor where, as here, the record is devoid of
information concerning the nature and extent of the
marketing activities of applicant and registrant under
their respective marks during the asserted period of
contemporaneous use.
Lastly, to the extent that any of the points argued by
applicant cast doubt on our ultimate conclusion on the
issue of likelihood of confusion, we resolve that doubt, as
we must, in favor of the prior registrant. In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed.
Cir. 1988); and In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
We conclude that consumers familiar with registrant’s
business management consulting services in the area of
facilitating business innovation through organization and
process changes offered under the mark THINK INC. would be
likely to believe, upon encountering applicant’s mark
I.THINK INC. for market research services, namely market
analysis, consumer market research, advertising research,
conducting marketing studies, and market research conducted
in whole or in part via a worldwide computer network, and
research and development for new products and services for
others, that the services originated with or are somehow
associated with or sponsored by the same entity.
Ser No. 75/398,920
11
Ser No. 75/398,920
12
Decision: The refusal to register is affirmed.
T. J. Quinn
P. T. Hairston
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
Ser No. 75/398,920
13