NFO, Inc.

Trademark Trial and Appeal Board

Nov 21, 2006

No. 78549135 (T.T.A.B. Nov. 21, 2006)

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re NFO, Inc.
________

Serial No. 78549135
_______

Garrett M. Weber of Lindquist & Vennum P.L.L.P. for NFO,
Inc.

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

Before Hohein, Hairston, and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

An application has been filed by NFO, Inc. to register
the mark MAXIMUM MARKETING for “business marketing and
consulting services in the field of grain trading and grain
market analysis.”1
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Lanham Act, 15
U.S.C. §1052(d). The Examining contends that applicant’s
mark, if applied to applicant’s services, so closely

1 Application Serial No. 78549135, filed on January 18, 2005,
based on a bona fide intention to use the mark in commerce.
THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B.
Serial No. 78549135
2
resembles the previously registered mark MAXIMUM for
“business marketing consulting services” as to be likely to
cause confusion.2
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs.
We affirm.
Applicant has argued that there is no likelihood of
confusion for the following reasons:
1. The marks are different (i.e., MAXIMUM MARKETING
is distinct from MAXIMUM);

2. There are numerous “Maximum” marks for business
consulting services and, therefore, “Maximum” is
a weak term entitled to only a narrow scope of
protection; and,

3. The services of the applicant and registrant are
different (i.e., applicant’s business marketing
and consulting services are restricted to grain
trading and marketing while the registrant’s
“general business marketing services . . . have
nothing to do with trading or grain marketing.”
Therefore, there is no overlap in the services).

With respect to its argument that there are numerous
“Maximum” marks, applicant has submitted copies of seven
(7) registrations consisting in part of the word “maximum”
for various marketing services. Applicant asserted that
when the Examining Attorney finds registrations for similar
marks owned by more than one registrant, the Examining

2 Registration No. 1,976,726, issued on May 28, 1996; renewed.
Serial No. 78549135
3
Attorney should consider the extent to which “dilution” may
indicate that there is no likelihood of confusion3 and that
the Examining Attorney failed to properly consider the
evidence.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d
1357, 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973). In the case
sub judice, the record consists of the application, the
cited registration, and the seven (7) third-party
registrations.
In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the services.
A. The Marks Are Confusingly Similar.
Applicant’s mark MAXIMUM MARKETING and registrant’s
mark MAXIMUM differ only by the generic term “marketing.”
Applicant posits that the addition of the word “marketing”
is a meaningful distinction. We disagree.
First, registrant’s MAXIMUM mark is inherently
distinctive and, therefore, entitled to trademark

3 TMEP §1207.01(d)(x).
Serial No. 78549135
4
protection without a showing of secondary meaning.
Moreover, the exclusive appropriation of “Maximum” as a
service mark in connection with business marketing
consulting services does not interfere with competitors’
use of the language because they may use the word “maximum”
in its ordinary descriptive sense (e.g. in the cited
registrations ACHIEVE THE MAXIMUM, MAXIMUM CAPACITY,
MAXIMUM CASH, etc., the word “Maximum” retains its
dictionary meaning). Accordingly, MAXIMUM when used in
connection with business marketing consulting services is
an inherently strong mark entitled to a broad scope of
protection.
Second, applicant’s mark incorporates the entirety of
registrant’s mark. Likelihood of confusion is often found
where the entirety of one mark is incorporated within
another. Johnson Publishing Co. v. International
Development Ltd., 221 U.S.P.Q. 155, 156 (T.T.A.B.
1982)(EBONY for cosmetics and EBONY DRUM for hairdressing
and conditioner); In re Denisi, 225 U.S.P.Q. 624, 626
(T.T.A.B. 1985) (PERRY’S PIZZA for restaurant services
specializing in pizza and PERRY’S for restaurant and bar
services); In re South Bend Toy Manufacturing Company,
Inc., 218 U.S.P.Q. 479, 480 (T.T.A.B. 1983) (LIL’ LADY
Serial No. 78549135
5
BUGGY for toy doll carriages and LITTLE LADY for doll
clothing).
Third, registrant’s addition of the generic term
“marketing” to applicant’s mark MAXIMUM does not avoid a
likelihood of confusion. In re Denisi, supra; In re South
Bend Toy Manufacturing Company, Inc., supra. While not
ignoring the caveat that marks must be considered in their
entireties when evaluating their similarity or
dissimilarity, where the applicant appropriates the entire
mark of a registrant, the addition of a descriptive or
generic term generally is not sufficient to change a
confusingly similar mark into a dissimilar mark. This is
sometimes referred to as the rule where the dominant
portion of a mark may be given greater weight than other
features: that is, likelihood of confusion generally
increases where, as here, the dominant portions of the
marks are the same. In re Denisi, supra. Moreover, the
Board has found a likelihood of confusion in the case of
marks with identical initial terms to which the junior user
has added a suffix. Presto Products Inc. v. Nice-Pak
Products Inc., 9 U.S.P.Q.2d 1895, 1897 (T.T.A.B. 1988) (“it
is often the first part of a mark which is most likely to
be impressed in the mind of a purchaser and remembered”).
Serial No. 78549135
6
For the preceding reasons, applicant’s mark MAXIMUM
MARKETING creates the same commercial impression as
registrant’s mark MAXIMUM and, therefore, is confusingly
similar.
B. Registrant’s Services Encompass Applicant’s
Services.

We now direct our attention to a consideration of the
services:
“business marketing and consulting
services in the field of grain trading
and grain market analysis” for
applicant

vs.

“business marketing consulting
services” for registrant.

It is well settled that the issue of likelihood of
confusion between applied-for and registered marks must be
determined on the basis of the goods or services as they
are identified in the involved application and cited
registration, rather than on what any evidence may show as
to the actual nature of the services, their channels of
trade and/or classes of purchasers. Canadian Imperial Bank
of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1
U.S.P.Q.2d 1813, 1815 (Fed. Cir. 1987); In re Elbaum, 211
U.S.P.Q. 639 (T.T.A.B. 1981). Accordingly, applicant’s
argument that there is no overlap between its services and
Serial No. 78549135
7
registrant’s services is not persuasive because there is no
restriction in the identification of services as to the
registrant’s channels of trade. We must therefore consider
the registrant’s services as if they were being rendered in
all of the normal channels of trade to all of the normal
purchasers for such services. Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, supra; Toys R Us, Inc. v.
Lamps R Us, 219 U.S.P.Q. 340, 343 (T.T.A.B. 1983).
Registrant’s business marketing consulting services, as
identified, is broad enough to encompass marketing
consulting services in the field of grain trading and grain
market analysis. Absent any limitation in the cited
registration as to whether registrant’s services exclude
the grain industry, we cannot infer that such a limitation
exists. In re Denisi, supra.

C. No Inferences Can Be Drawn From The Third-Party
Registrations.

Finally, we turn to applicant’s argument that the
“numerous” third-party registrations including the word
“maximum” demonstrate that registrant’s mark is entitled to
only a narrow scope of protection. Essentially, applicant
is arguing that the following inferences should be drawn
from the seven (7) registrations it submitted:

Serial No. 78549135
8
1. The registrant does not believe that there is a
likelihood of confusion between these marks for
the listed services;

2. The third-party registrants were satisfied to
register their marks side-by-side with other
existing registrations for business marketing
services; and,

3. A number of different trademark owners have
believed that that various “Maximum” marks can be
used and registered side-by-side without causing
confusion provided that there are minimal
differences between the marks or their services.

Plus Products v. Natural Organics, Inc., 204 U.S.P.Q. 773,
779 (T.T.A.B. 1979); Jerrold Electronics Corp. v. The
Magnavox Company, 199 U.S.P.Q. 751, 757-758 (T.T.A.B.
1978).
Under the circumstances of this case, we decline to
draw those inferences. First, the third-party
registrations simply demonstrate that their owners believe
that the term “maximum” is appropriate for a service mark
used in connection with business marketing services. The
question still remains whether the applicant’s mark and the
registrant’s mark viewed as a whole are confusingly
similar. The existence of third-party registrations of
other “Maximum” marks has very little weight in this regard
because such registrations are not evidence of what happens
in the marketplace or that customers are familiar with
their use. Moreover, the existence of other confusingly
Serial No. 78549135
9
similar marks already on the register will not aid an
applicant to register another confusingly similar mark.
AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403,
177 U.S.P.Q. 268, 269 (C.C.P.A. 1973); Lilly Pulitzer, Inc.
v. Lilli Ann Corporation, 376 F.2d 324, 153 U.S.P.Q. 406,
407 (C.C.P.A. 1967); In re Total Quality Group, Inc., 51
U.S.P.Q.2d 1474, 1477 (T.T.A.B. 1999).
Second, third-party registrations of similar marks for
similar services is relevant to show that the mark is
relatively weak and entitled to only a narrow scope of
protection. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin, 396 F.3d 1369, 73 U.S.P.Q.2d 1689, 1693 (Fed.
Cir. 2005). However, the probative value of third-party
marks depends on their usage because such use conditions or
educates consumers to distinguish between different marks
on the bases of minimal differences. Id., citing Scarves
by Vera, Inc. v. Todo Imports, Ltd., 544 F.2d 1167, 1173,
192 U.S.P.Q. 289 (2nd Cir. 1976)(“The significance of third-
party trademarks depends wholly upon their usage.
Defendant introduced no evidence that these trademarks were
actually used by third parties, they were well promoted or
that they were recognized by consumers.”). In the case sub
judice, applicant did not submit any evidence of third-
party use of the “Maximum” marks. Therefore, the third-
Serial No. 78549135
10
party registrations are not evidence that the public is
aware of the marks. Absent any evidence of actual use of
any of the registered third-party “Maximum” marks, the
probative value of the registrations is minimal. Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin, supra; Han
Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1338, 57
U.S.P.Q.2d 1557 (Fed. Cir. 2001).
Finally, as we indicated previously, MAXIMUM and
MAXIMUM MARKETING when used in connection with business
marketing consulting services (with or without reference to
the grain industry) are essentially the same mark because
the word “marketing” is generic for marketing services.
Thus, even assuming that marks consisting of the word
“Maximum” may be weak marks, this does not aid applicant
because the commercial impression created by both marks is
the same.
In view of the foregoing, there is insufficient
evidence to undermine the strength of the registrant’s
mark.
We find that there is a likelihood of confusion
between MAXIMUM MARKETING proposed for use in connection
with “business marketing and consulting services in the
field of grain trading and grain market analysis” and
Serial No. 78549135
11
MAXIMUM used in connection with “business marketing
consulting services”.
Decision: The refusal to register is affirmed.