KB Consultants, Inc.

Trademark Trial and Appeal Board

Jul 18, 2001

No. 75564861 (T.T.A.B. Jul. 18, 2001)

Paper No. 10
BAC
7/18/01

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re KB Consultants, Inc.
________

Serial No. 75/564,861
_______

Bruce H. Little of Lindquist & Vennum P.L.L.P. for KB
Consultants, Inc.

Michael Webster, Trademark Examining Attorney, Law Office
102 (Thomas Shaw, Managing Attorney).
_______

Before Simms, Quinn and Chapman, Administrative Trademark
Judges.

Opinion by Chapman, Administrative Trademark Judge:

KB Consultants, Inc. has filed an application to
register the mark shown below (the term “systems” is
disclaimed)

for goods and services identified, as amended, as “computer
software for use in fund accounting applications used by
governmental units, municipalities, public school districts
and nonprofit organizations” in International Class 9; and
“advertising and marketing services, namely, services
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/564861
2
relating to computer software for use in fund accounting
applications used by governmental units, municipalities,
public school districts and nonprofit organizations” in
International Class 35.1
The Examining Attorney has refused registration for
both classes of goods and services under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the basis of
Registration No. 1,977,8332 for the mark shown below

for “banking and financial services, namely, bail-bonding,
financial clearing houses, credit bureaus, foreign money
exchanging services, financial management, issuing of
travellers’ checks, lease-purchase financing, financing
loans, mortgage banking, mutual funds, pawn-brokerage, safe
deposit services, surety services; insurance underwriting
services; stocks, bonds and securities brokerage house
services” in International Class 36. The Examining

1 Application Serial No. 75/564,861, filed October 5, 1998, based
on applicant’s assertion of a bona fide intention to use the mark
in commerce. The acceptability of the recitation of services is
an issue in this appeal and will be fully addressed later in this
decision.
2 Registration No. 1,977,833, issued June 4, 1996, to
Kredietbank, N.V. The claimed date of first use and first use in
commerce is September 1977.
Ser. No. 75/564861
3
Attorney also required a more definite identification of
services for International Class 35.
When the requirement for a more definite
identification of services and the refusal to register were
made final, applicant appealed. Both applicant and the
Examining Attorney have filed briefs. Applicant did not
request an oral hearing.
Turning first to the question of the identification of
services, the Examining Attorney did not accept the
original identification of services “advertising and
marketing,” and suggested, if appropriate: “advertising
and marketing services, namely, [indicate more clearly the
type of services provided, e.g., providing television
advertising for others, conducting marketing studies].” In
response, applicant offered the following amendment to the
identification of services: “advertising and marketing
services, namely, services relating to computer software
for use in fund accounting applications used by
governmental units, municipalities, public school districts
and nonprofit organizations.” Applicant’s proposed
amendment to the identification of services has also been
rejected by the Examining Attorney as indefinite; and the
Examining Attorney suggested, if appropriate: “advertising
and marketing services, namely, [indicate more clearly the
Ser. No. 75/564861
4
type of advertising and marketing services provided, e.g.,
promoting the software of others in the field of fund
accounting] by means of [indicate how goods are promoted,
e.g., dissemination of printed material, preparing and
placing advertisements in an electronic magazine accessed
through a global computer network].”
Both applicant and the Examining Attorney argued the
issue of a proper identification of services based on the
proposed amended identification of services. Thus, our
decision relates to the question of the acceptability of
applicant’s proposed amended identification.
Section 1(b)(2) of the Trademark Act, 15 U.S.C.
§1051(b)(2), requires that the written application specify
the goods or services on or in connection with which
applicant intends to use the mark. Trademark Rule
2.32(a)(6) requires, in relevant part, that a trademark
application must set forth “the particular goods or
services” with which the mark is or will be used. See
also, Trademark Rule 2.33(b)(2). Further, the
identification of goods or services must be specific and
definite. See TMEP §§804.01 and 1301.05. It is within the
discretion of the United States Patent and Trademark Office
to require that the goods or services be specified with
particularity. See In re Societe Generale des Eaux
Ser. No. 75/564861
5
Minerales de Vittel S.A., 1 USPQ2d 1296, 1298 (TTAB 1986),
and cases cited therein, rev’d on other grounds, 824 F.2d
957, 3 USPQ2d 1450 (Fed. Cir. 1998).
The problem with applicant’s proposed identification
of services is that it does not identify applicant’s
advertising and marketing services with any specificity
whatsoever (i.e., “advertising and marketing services,
namely services...”). While it does indicate that the
services are related to fund accounting and it sets forth
the type of entities that may use fund accounting, the
identification of services does not state what applicant’s
advertising and marketing services are. It is clearly
insufficient to essentially state “services, namely
services....”
Moreover, the activity of “advertising and marketing”
by itself is generally unacceptable as constituting a
“service” because it is far too broad an identification,
and because these activities may refer to an applicant
merely advertising and marketing its own goods, which is
not a service. See TMEP §1301.01(a)(ii).
The Examining Attorney’s requirement for a more
definite identification of services is proper.
We turn now to the refusal to register on the ground
of likelihood of confusion, which we consider in light of
Ser. No. 75/564861
6
the Court’s guidance in In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
Essentially, the Examining Attorney argues that the
dominant portion of both marks is the identical letters
“KB” as the word “systems” in applicant’s mark and the
background circle design in the cited registrant’s mark are
each less significant portions of the repsective marks;
that the letters “KB” are arbitrary in the financial
services industry; that applicant’s computer software and
services, both specifically identified as relating to fund
accounting, are similar to or within the scope of
registrant’s “financial management” services; and that
although applicant’s identifications of goods and services
are limited as to types of purchasers, there is no
limitation in registrant’s services, thus encompassing all
normal channels of trade to all usual purchasers for
registrant’s services.
Applicant, on the other hand, argues that when
considered in their entireties, the marks are different and
distinct in appearance as applicant’s mark includes the
word “systems” with the letters “KB,” while registrant’s
mark is the letters “KB” appearing in a black circle
design; that the marks are different in connotation because
applicant’s mark KB SYSTEMS brings to mind applicant’s
Ser. No. 75/564861
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computer software systems and registrant’s mark “KB” merely
consists of the initials of registrant; that applicant’s
goods and services relate solely to computer software used
for fund accounting (a specific type of accounting) and are
used by governmental units, municipalities, public school
systems and nonprofit organizations, whereas registrant is
a bank which provides banking services to its customers;
and that the goods and services of applicant are not
marketed in such a way as to be encountered by the same
persons seeking registrant’s services.
Turning first to a consideration of the marks, we find
there is a strong similarity between the involved marks.
As to appearance, while there are clearly differences in
these respective marks (registrant’s includes a background
circle design and applicant’s includes the word “systems”),
it is not improper to give more weight to a dominant
feature of a mark. See In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); In re
Electrolyte Laboratories Inc., 913 F.2d 930, 16 USPQ2d 1239
(Fed. Cir. 1990); and In re Appetito Provisions Co. Inc., 3
USPQ2d 1553 (TTAB 1987). The letters “KB” are the dominant
portion of both marks. It is these letters which would be
utilized in calling for the goods and services, and the
letters would most likely be impressed in the purchaser’s
Ser. No. 75/564861
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memory and serve as the indication of origin. See
Consumers Building Marts, Inc. v. Mr. Panel, Inc., 196 USPQ
510 (TTAB 1977). That is, the differences are not likely
to be recalled by purchasers seeing the marks at separate
times. The emphasis in determining likelihood of confusion
is not on a side-by-side comparison of the marks, but
rather must be on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of the many trademarks encountered; the
purchaser’s fallibility of memory over a period of time
must also be kept in mind. See Grandpa Pidgeon’s of
Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573
(CCPA 1973); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d
1467 (TTAB 1988); and Edison Brothers Stores v. Brutting
E.B. Sport-International, 230 USPQ 530 (TTAB 1986).
The dominant portion of applicant’s mark “KB” is
identical in sound to the spoken portion of the cited
registrant’s mark. Moreover, there is no evidence that the
combination of the letters “KB” have any special meaning,
aside from trademark significance, to purchasers of the
involved goods and services. “KB” is unpronounceable
except as the separate letters, and would be more difficult
to remember, and thus, more susceptible of confusion, or
mistake. Applicant’s addition of the descriptive term
Ser. No. 75/564861
9
“systems” simply does not serve to distinguish its mark
from registrant’s mark. See Weiss Associates, Inc. v. HRL
Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir.
1990) (confusion found likely in contemporaneous use of TMM
and TMS on computer software).
The marks, KB SYSTEMS and KB and design, are very
similar in sound, somewhat similar in appearance, and
create similar commercial impressions.
With respect to the goods and services, we must
consider the services in the cited registration vis-a-vis
both applicant’s goods and services. Regarding applicant’s
goods, “computer software for use in fund accounting
applications used by governmental units, municipalities,
public school districts and nonprofit organizations,” the
Examining Attorney has not established a prima facie
showing of the relatedness of these computer software goods
to the cited registrant’s various “banking and financial
services” and specifically its “financial management”
services. The Examining Attorney made of record five
third-party registrations, all based on use in commerce,
which indicate that entities have registered a single mark
for both accounting services and financial consulting
services, but only one of these five third-party
registrations also includes computer programs in the field
Ser. No. 75/564861
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of accounting, auditing, and tax and management consulting.
The Examining Attorney’s argument that “applicant’s ‘fund
accounting’ software and services may be provided by banks
or other financial institutions” (final Office action, p.
3) is simply not supported in the record with regard to
applicant’s computer software.
Regarding the relatedness of registrant’s “financial
management” services and applicant’s quite indefinite
“advertising and marketing services, namely, services
relating to computer software for use in fund accounting
applications used by governmental units, municipalities,
public school districts and nonprofit organizations,” we
find that the record sufficiently establishes the
relatedness between these services. Specifically,
registrant’s financial management services, as identified,
would encompass the broad (and indefinite) services set
forth by applicant which “relate to” fund accounting. Of
course, services need not be identical or even competitive
to support a finding of likelihood of confusion; it is
sufficient that the services are related in some manner or
that the circumstances surrounding their marketing are such
that they would likely be encountered by the same persons
under circumstances that could give rise to the mistaken
belief that they emanate from or are associated with the
Ser. No. 75/564861
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same source. See In re Peebles Inc., 23 USPQ2d 1795 (TTAB
1992); and Monsanto Co. v. Enviro-Chem Corp., 199 USPQ 590
(TTAB 1978).
Further, the Board must determine the issue of
likelihood of confusion on the basis of the goods and
services as identified in the application and the
registration. See Canadian Imperial Bank of Commerce,
National Association v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813 (Fed. Cir. 1987); and The Chicago Corp. v.
North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
In this case, applicant’s goods and services are both
limited by identifying the customers as “governmental
units, municipalities, public school districts and
nonprofit organizations.” In the context of applicant’s
services this limitation is of little assistance to
applicant in view of the otherwise related and/or
overlapping nature of the identified services, and the
indefiniteness of applicant’s identified services.
However, with respect to the trade channels and
purchasers of applicant’s goods vis-a-vis registrant’s
services, not only are applicant’s goods limited within
applicant’s identification of goods, but also the record
includes the declaration of Kevin Brown, applicant’s
president, averring that applicant provides no banking or
Ser. No. 75/564861
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financial services, but rather applicant sells computer
software tailored to a specific type of accounting and a
specific market for that software. We cannot find on this
ex parte record that applicant’s goods and registrant’s
services are sold through the same or similar channels of
trade to the same or similar classes of purchasers.
Considering all of the relevant du Pont factors, we
conclude that consumers familiar with registrant’s
financial management services sold under the mark KB and
design would be likely to believe, upon encountering
applicant’s mark, KB SYSTEMS, for advertising and marketing
services relating to fund accounting, that both originated
with or were somehow associated with or sponsored by the
same entity. However, this ex parte record does not
establish the same conclusion with regard to applicant’s
goods.
Decision: The requirement for a more definite
identification of services in International Class 35 is
affirmed; the refusal to register under Section 2(d) is
affirmed as to applicant’s International Class 35 services;
and the refusal to register under Section 2(d) is reversed
as to applicant’s International Class 9 goods. (In due
course, the application file will be forwarded to the
Examining Attorney for appropriate action in approving the
Ser. No. 75/564861
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application for publication on the International Class 9
goods.)