ProQuest Information and Learning Companyv.Jacques R. Island

Trademark Trial and Appeal Board

Feb 21, 2007

No. 91158016 (T.T.A.B. Feb. 21, 2007)

Mailed:
February 21, 2007
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

ProQuest Information and Learning Company
v.
Jacques R. Island
________

Opposition No. 91158016
against Serial No. 78111995
_______

Christina J. Hieber, Linda K. McLeod and David M. Kelly of
Finnegan Henderson Farabow Garrett & Dunner, L.L.P. for
ProQuest Information and Learning Company.

Yvonne Fournier-Ferrer for Jacques R. Island.
_______

Before Quinn, Bucher and Cataldo, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Jacques R. Island, a U.S. citizen, seeks registration
on the Principal Register of the mark INQUEST (in standard
character format) for goods recited in the application, as
amended, as follows:
“computer software for use by institutions
and individuals in the fields of business,
government, law and academia to conduct
research, namely, a database and filing
program for gathering and storing
information and bibliographical references,
THIS OPINION IS A
PRECEDENT OF THE TTAB
Opposition No. 91158016
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and provides functions for scanning or
downloading online information into the
database and for interchanging researched
data between the users’ personal computers,
desktop computers, servers and Internet-
based data storage sites; and to automate
reports, namely, to provide routines that
manipulate and compile stored data into
reports such as books, monographs, legal
briefs, essays, articles and theses in a
variety of grammatical styles” in
International Class 9.1
ProQuest Information and Learning Company has opposed
the application on the ground of likelihood of confusion,
alleging that applicant’s mark, when used in connection
with the identified goods, so resembles opposer’s
previously used mark, PROQUEST, also registered by opposer
as follows:
PROQUEST for “information retrieval systems; namely,
computer hardware and software for the retrieval
of textual and graphic materials, from
newspapers, periodicals, dissertations, and
other publications, and bibliographic citations
and abstracts relating thereto” in International
Class 9;2

1 Application Serial No. 78111995 was filed on March 1, 2002
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce.
2 Registration No. 1656697 issued on September 10, 1991
claiming first use anywhere and first use in commerce at least as
early as July 15, 1990; renewed.
Opposition No. 91158016
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PROQUEST for “computer assisted research services;
providing a wide range of news and research
information featuring articles, publications,
academic materials, and dissertations via a
global computer network; online services,
namely, providing computer databases containing
textual and graphic materials from newspapers,
periodicals, dissertations and other
publications and bibliographic citations and
abstracts relating thereto; consultation
services in the field of computer assisted
research; and support services rendered to
others in the field of computer assisted
research” in International Class 42;3 and
PROQUEST for “computer services, namely electronic
storage of textual and graphic materials from
newspapers, periodicals, journals, dissertations
and other publications” in International Class
39; and
“online services, namely, providing educational,
instructional, teaching, and general reference
materials for use by teachers and students at
the high school, college, and graduate
educational levels and by librarians, in [a]
wide variety of fields such as science, history,
business, literature, and humanities” in
International Class 41.4

as to be likely to cause confusion, to cause mistake or to
deceive under Section 2(d) of the Lanham Act, 15 U.S.C.

3 Registration No. 2468946 issued on July 17, 2001 claiming
first use anywhere and first use in commerce at least as early as
September 1995; Section 8 affidavit (six-year) accepted and
Section 15 affidavit acknowledged.
4 Registration No. 2751655 issued on August 19, 2003 claiming
first use anywhere and first use in commerce in International
Class 39 at least as early as July 1990, and claiming first use
anywhere and first use in commerce in International Class 41 at
least as early as December 1999.
Opposition No. 91158016
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§ 1052(d). Opposer also
claimed common law rights in
an unregistered design mark.

This stylized version of its PROQUEST mark includes
opposer’s “Q logo.” Opposer alleges that both the stylized
PROQUEST mark and the Q logo are used in connection with
all of opposer’s products and services. Opposer also
alleges that the Q logo alone is registered for goods and
services.5
Opposer also alleges, as a second ground for
opposition, that applicant’s mark so resembles opposer’s
mark as to cause dilution of the distinctive quality of
opposer’s mark, which was distinctive and became famous
before applicant filed the instant application.
Applicant, in his answer, has denied all of the
salient allegations in the notice of opposition.
The Record
By operation of the rules, the record includes the
pleadings and the file of the opposed application. In

5 Inasmuch as copies of U.S. Trademark Registration Nos.
2528947 and 2726294 were not made part of the record, we have
given these registrations no consideration.

Opposition No. 91158016
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support of its case, opposer made of record the testimony
declaration of Scott Hirth, Vice President Finance and
Chief Financial Officer for ProQuest Information and
Learning Company, with Exhibits 1-18, filed on February 8,
2005 (submitted pursuant to the parties’ joint stipulation
for declaration testimony); and evidence under four
separate Notices of Reliance, all filed on February 8,
2005: Notice of Reliance No. 1 having certified status and
title copies of opposer’s valid and subsisting pleaded U.S.
Trademark Registrations for the PROQUEST mark; Notice of
Reliance No. 2 consisting of certain of applicant’s
responses to opposer's First Set of Interrogatories and
certain of applicant’s Supplementary Responses to opposer’s
First Set of Interrogatories; Notice of Reliance No. 3
consisting of certain of applicant’s Responses to opposer’s
First Set of Requests for Admissions and copies of
confidential documents produced by applicant in response to
opposer’s Document Request No. 7;6 and Notice of Reliance

6 In its response to opposer’s Request for Admission No. 1,
applicant admitted that all documents it produced in response to
opposer’s discovery requests were authentic for purposes of
admission into evidence during the testimony period in this
opposition proceeding. During its testimony period, opposer
filed a notice of reliance, pursuant to 37 CFR § 2.120(j)(3)(i),
on the request for admission, the exhibits thereto, and its

Opposition No. 91158016
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No. 4 consisting of a representative sample of articles
from printed publications available to the general public
from a search conducted in the NEXIS database.
Applicant made of record the testimony declaration of
applicant, Jacques R. Island, filed on April 15, 2005,
(which as noted previously, was submitted pursuant to the
parties’ joint stipulation that testimony could be
submitted by declaration testimony); and evidence under two
separate Notices of Reliance, also both filed on April 15,
2005, containing portions of opposer’s Notice of Reliance
No. 3 and the confidential documents attached thereto and
exhibits to the testimony declaration of Scott Hirth
(already submitted as part of opposer’s testimony).7
Opposer then made of record the rebuttal testimony
declaration of Mr. Hirth, with Exhibits 19-20, filed on
June 23, 2005. The parties have fully briefed the case.

adversary’s response. See TBMP § 403.05(b) (2d ed. Rev. 2004);
see also Fed. R. Civ. P. 36.
7 Applicant suggests a stipulation by the parties when it
refers to the confidential documents as being “jointly
submitted.” However, it was unnecessary for applicant to submit
a notice of reliance on the Hirth exhibits as opposer had
previously made them of record, and once of record they can be
relied on by either party.
Opposition No. 91158016
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Preliminary matters
Opposer has raised objections to those portions of the
testimony declaration of applicant, Jacques R. Island, that
discuss opposer’s products and services. Opposer argues
that applicant lacks competence to testify about opposer’s
products and services, that his testimony is self-serving
argument and lacks foundation, and that it mischaracterizes
the testimony of Mr. Hirth. We agree with opposer that,
insofar as Mr. Island’s offers his characterization of the
products and services offered under the PROQUEST mark, the
evidence suffers from foundation problems. While we do not
find it necessary to exclude his entire declaration, we
have accorded limited probative value to those portions of
Mr. Island’s brief testimony where he is offering his
characterization of the products and services offered under
the PROQUEST mark. Our understanding of opposer’s goods
and service is based much more heavily upon the thousands
of pages of ProQuest exhibits that opposer has placed into
this most extensive record.
Secondly, while conceding neither a close relationship
of the goods herein nor the ultimate issue of likelihood of
confusion, applicant seems to argue in the alternative, for
the first time in his brief, that the Board could, sua
Opposition No. 91158016
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sponte, narrow applicant’s identification of goods under
Section 18 of the Trademark Act to avoid any likelihood of
confusion herein.
Applicant is correct that Section 18 of the Lanham Act
authorizes this Board to limit, or otherwise modify, the
goods or services in a registration or application during
an opposition proceeding. 15 U.S.C. § 1068; Trademark Rule
2.133(b), 37 CFR 2.133(b). However, as argued by opposer,
we will only exercise this authority where the issue of
restriction has been raised in either the pleadings or by
motion (or if it is clear that the issue has been tried,
such that the pleadings can be deemed to be amended
pursuant to FRCP 15(b)), and the possible restriction has
been stated with precision such that the issue is properly
framed for trial. See Aries Sys. Corp. v. World Book Inc.,
23 USPQ2d 1742, 1748 (TTAB 1992); Personnel Data Sys., Inc.
v. Parameter Driven Software Inc., 20 USPQ2d 1863, 1865
(TTAB 1991); and Space Base, Inc. v. Stadis Corp., 17
USPQ2d 1216 (TTAB 1990). Opposer was never put on notice
of a possible restriction or “limitation” either before or
during the trial period, and applicant has failed to state
with precision how the application should be restricted.
Accordingly, to the extent that applicant’s remarks may be
Opposition No. 91158016
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construed as a request for a Section 18 restriction, this
request is denied.
The Parties
The record shows that the involved application was
filed by an individual, Jacques R. Island, who also happens
to be president of Inquesta Corporation,8 located in Coral
Gables, Florida. Applicant has been developing his INQUEST
software application to help researchers and investigators
manage large amounts of information. Mr. Island describes
this as “a software application dedicated to storing,
sorting, organizing and producing a variety of report
products [drafts, monographs, articles or books] from a
multi-source database of records defined and gathered by
the researchers themselves.” Island declaration, ¶¶ 12 and
13. Opposer alleges in its Notice of Opposition that based
on the grounds of likelihood of confusion and dilution, it
would be damaged by the registration of applicant’s INQUEST
mark. This is true, according to opposer, inasmuch as
ProQuest provides electronic and digital information

8 Although Mr. Island testifies that the INQUEST software
application is part of Inquesta’s family of products, and will be
marketed by Inquesta Corporation, the record does not make clear
why Mr. Island, the individual, rather than Inquesta Corporation,
is the applicant herein. Opposer, however, has not raised any
issue relating to ownership of the applied-for mark.
Opposition No. 91158016
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solutions and educational resources to institutions and
individuals. Opposer has used the PROQUEST mark since at
least as early as July 1990 to identify its electronic
databases and reference sources offered on CD-ROM. The
PROQUEST brand has evolved to encompass a wide variety of
research and learning products and services, including CD-
ROM and online versions of PROQUEST database and reference
products, dissertation abstracts, digital dissertations,
custom publishing services, and specialized educational
products and curriculum tools. These products and services
are software applications that contain databases featuring
information from a variety of sources as well as tools that
allow users to access and search that information and to
control and manage the research data they collect.
According to Mr. Hirth, ProQuest’s information
resources include current and past issues of 7,000
newspapers, more than 20,000 periodicals and magazines,
approximately 2,000,000 dissertations, 150,000 out-of-print
books, 550 research collections, more than 15,000,000
proprietary abstracts, and a wide range of other content,
all totaling more than 5.5 billion pages of information.
Opposition No. 91158016
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Standing and Priority:
Applicant has conceded that opposer has standing and
priority of use, and we agree that the record establishes
this.
Analysis: Likelihood of Confusion
Our determination under Section 2(d) is based upon an
analysis of all of the 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 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the relationship of the
goods and/or services. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
The Goods and Services
Opposer describes itself as “a global leader in
providing electronic and digital information solutions and
educational resources to institutions and individuals.”
Opposer’s brief, p. 4. We find that the evidence of record
establishes the accuracy of this claim. Given the range of
opposer’s products and services, we will summarize them
briefly as drawn from thousands of pages of exhibits
retrieved from online sources, newspaper articles,
Opposition No. 91158016
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opposer’s promotional materials and other corporate
records:
1. PROQUEST CD-ROM Products – In 1990, opposer’s
disc products included periodicals, newspaper and
dissertation abstracts, and other information. Given the
technology at that time, opposer offered workstations and
multi-user access systems for one-stop search and retrieval
of material from all types of written or published
materials in every subject. These CD-ROMs contained
requisite software applications to run, access, and search
databases and proprietary content including abstracts and
indexes, and to download, save and print research results.
These CD-ROM products continue to be available for
installation on the computer systems of those who purchase
them.
2. PROQUEST online services – In 1995, opposer
launched an online version of its database and reference
products. In 1996, this changed from Windows-based access
to selected databases from secure locations, to
accessibility with a user-friendly, web interface over the
Internet. In addition to accessing and searching the
content of large databases, Internet users are also able to
use proprietary software tools that opposer has designed to
Opposition No. 91158016
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be used with and integrated into its online services.
These software applications make searching easier and allow
users to manage research data and to store their results.
In addition to tools like keyword searching, researchers
can download results in a variety of formats, and even
create bibliographic citations using third-party
bibliographic-management software applications such as End
Note and Reference Manager. Finally, users are able to
create a summary web page (“My Research”) having
customizable fields that are unlimited in size, with the
ability to further manipulate the downloaded materials in
word-processing, citation, spreadsheet or database
programs. All of these capabilities have been available
under the PROQUEST mark since well prior to March 2002.
3. Proprietary PROQUEST databases – Since 1990,
opposer has offered proprietary database products. For
example, since 2001, PROQUEST HISTORICAL NEWSPAPERS has
offered both full text and image reproductions of leading
newspapers such as The New York Times from their first
issues through the mid-1980’s, while the HERITAGEQUEST
product offers comprehensive genealogical information.
4. PROQUEST products and services for academic and
educational markets – Since 1990, opposer has offered
Opposition No. 91158016
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PROQUEST-branded products and services specifically
targeted to the higher-education market. These include
research databases (July 1990), printed and online custom
course packets (July 1999), textbook supplements, study
aids, opposer’s XANEDU research engine (July 2000), and
products for use in the K-12 educational market, currently
available at http://www.proquestk12.com. These resources
include a variety of branded products seen throughout
opposer’s extensive exhibits made part of the record,
including a number of products using the “-QUEST” ending:
PROQUEST/ELIBRARY, SIRS, CULTUREGRAMS, CHALLENGEQUEST,
ISSUEQUEST, KIDQUEST and JUNIORQUEST.
5. PROQUEST dissertations – Since 1990, opposer has
offered abstracts of doctoral dissertations and masters
theses under the PROQUEST mark. With more than
1.6 million entries, the PROQUEST DIGITAL DISSERTATIONS
database represents the work of authors from more than
1,000 graduate schools and universities. More than 60,000
new dissertations/theses are added to this database each
year.
6. PROQUEST ARCHIVER service – Since February 2000,
opposer has offered the PROQUEST ARCHIVER service to
publishers by hosting a publication’s archive – including
Opposition No. 91158016
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past and current issues complete with full text and
graphics – enabling users to purchase articles online for
publications such as The New York Times, The Los Angeles
Times, USA Today, The Daily News, Newsday, Rolling Stone
and The Saturday Evening Post.
7. PROQUEST Copyright Clearance and Publishing
Services – Since June 2001, opposer has offered copyright
clearance services, custom publishing services and reprints
of out-of-print books under its PROQUEST mark.
From a review of opposer’s broad array of products and
services, we turn again to look at applicant’s
identification of goods:
“computer software for use by institutions and
individuals in the fields of business, government, law
and academia to conduct research, namely, a database
and filing program for gathering and storing
information and bibliographical references, and
provides functions for scanning or downloading online
information into the database and for interchanging
researched data between the users’ personal computers,
desktop computers, servers and Internet-based data
storage sites; and to automate reports, namely, to
provide routines that manipulate and compile stored
data into reports such as books, monographs, legal
briefs, essays, articles and theses in a variety of
grammatical styles.”

This description of goods represents a large slice of
the goods actually offered by opposer under the PROQUEST
mark and trade name, as well as the goods covered by
opposer's federal registrations for the PROQUEST mark.
Opposition No. 91158016
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For example, the record shows that PROQUEST users can
take the work product drawn from their research and then
manipulate it seamlessly using third-party bibliographic
management software applications (e.g., using End Note
software for creating reference databases and
bibliographies, or Reference Manager software for use in
bibliographic retrieval). Applicant has testified that his
software would be competitive with End Note and Reference
Manager. Island declaration, ¶12, p. 6 The end users may
or may not even be aware that they are moving from
opposer’s proprietary products to third-party applications
that are inextricably related to opposer’s products. Hirth
rebuttal declaration, ¶6, p. 3 Moreover, based upon our
review of this extensive record, we find that the fact that
opposer provides its users access to content in addition to
an array of automated research tools does not mitigate the
virtual overlap in these value-added tools for researchers.
Accordingly, we find that to the extent applicant’s
identified goods may provide any significant benefits to
the researcher not available through the products and
services offered in connection with the PROQUEST brand,
they would be either complementary or otherwise closely
Opposition No. 91158016
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related. This du Pont factor clearly favors the position
of opposer herein.
Channels of trade
As to channels of trade, the record demonstrates that
opposer targets its goods and services directly to
libraries, academic institutions, corporations and
government agencies. This characterizes the exact channels
of trade through which applicant intends to market his
goods. Hence, this related du Pont factor also favors the
position of opposer herein.
Conditions of sale
Applicant argues that it is clear from this record
that purchasers of opposer’s products and services will be
sophisticated purchasers. Although neither party’s goods
or services are limited as to the likely classes of
purchasers, we agree with applicant that given the costs of
subscribing to opposer’s products and services, the
purchasers will be discriminating and exercise a high
degree of care in contracting for these products and
services.
Nonetheless, even though the purchasers of opposer’s
products are discriminating, careful and sophisticated (for
example, employees or agents of libraries, academic
Opposition No. 91158016
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institutions, corporations or government agencies), the
classes of consumers for applicant’s and opposer’s software
applications also include the ultimate users of such goods
and services (e.g., students, teachers, faculty,
researchers, corporate and government employees, and
members of the general public). See In re Artic
Electronics Co., Ltd. 220 USPQ 836 (TTAB 1983) [although
the initial purchasers (i.e., owners of arcades) are
sophisticated and careful purchasers of arcade games, in
determining likelihood of confusion, consideration must
also be given to the ultimate users of the arcade games
(i.e., the arcade’s customers who are the end users of the
goods)].
As in Artic Electronics Co, in determining likelihood
of confusion, the classes of purchasers for applicant’s and
for opposer’s software applications include not only the
sophisticated initial purchasers of the expensive software
applications, but also must include the ultimate users of
the PROQUEST products and applicant’s INQUEST product —
school children, teachers, college and graduate students,
professors and researchers as well as members of the
general public. These users, most of whom neither
participate in the decision to purchase the parties’
Opposition No. 91158016
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products nor typically pay for opposer’s goods and services
— cannot be considered sophisticated purchasers and also
are not likely to exercise more than ordinary care when
confronted with the parties’ respective marks and products.
Accordingly, although the purchasers of the parties’
products are discriminating, we cannot find that the users
are likely to exercise more than ordinary care. Applying
such reasoning tilts this du Pont factor in opposer’s favor
as well.
Strength of opposer’s mark
In his brief, applicant refers at length to the number
and nature of third-party marks incorporating the term
“Quest” that have been registered in connection with
similar goods and services.
However, as noted by opposer, none of these
registrations was correctly submitted into the record and
hence cannot be considered. TBMP § 704.03(b)(1)(B) (2d ed.
2004); 37 CFR § 2.122; In re Shapely, Inc., 231 USPO 72, 75
(TTAB 1986).
Furthermore, even if they had been properly included
in the record, opposer correctly argues that inasmuch as
there is no evidence that any of these third-party
registrations are for marks that are actually in use, the
Opposition No. 91158016
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probative value of such registrations is still very
limited. It is well settled that third-party registrations
are not evidence of what happens in the marketplace or that
the public is familiar with the use of the subject marks.
See National Aeronautics & Space Administration v. Record
Chemical Co., 185 USPQ 563, 567 (TTAB 1975). Thus, they do
not provide evidence that the marks have been used to such
an extent that customers have become accustomed to seeing
the marks and hence have learned to distinguish them based
on minor differences between the marks. See Smith Brothers
Manufacturing Co. v. Stone Manufacturing Co., 476 F.2d
1004, 177 USPQ 462, 463 (CCPA 1973); and In re Hub
Distributing, Inc., 218 USPQ 284, 285-86 (TTAB 1983).
“Consequently, the third-party registrations, even if they
were of record, would not cause us to conclude that
opposer’s mark is weak or entitled to a limited scope of
protection.”9

9 We also point out that the third-party marks have
connotations quite different from opposer’s mark (e.g.,
FLEXQUEST, SIGMAQUEST and QUESTIA) or the identified goods
(network searching software, database management software, multi-
media interactive training software, etc.) are not as closely
related to opposer’s products as are applicant’s involved goods.]
Opposition No. 91158016
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Fame of the prior mark
The record supports opposer’s claim to being “a global
leader” in selling electronic and digital information
solutions and educational resources on a subscription basis
to a variety of entities, including thousands of public
libraries, colleges, universities, K-12 schools, government
entities, corporations, and publishers. Colleges and
universities comprise more than half of opposer’s
subscriber base. Representative academic customers include
Harvard University, Yale University, University of
California, MIT, Columbia University, Stanford University
and Northwestern University. In fact, more than ten
million college and university students currently have
access to opposer’s PROQUEST online service on their
campuses. Similarly, more than 35,000 K-12 schools
throughout the United States use PROQUEST-branded
resources, with more than 70% penetration into middle
schools and high schools. Many prominent corporations,
federal agencies, and thousands of public libraries
throughout the United States subscribe to PROQUEST
products and services.
By 2004, the daily usage of the PROQUEST online
service had increased to more than 2,500,000 page views per
Opposition No. 91158016
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day, and opposer testified that this number continues to
grow each year. In 2004 alone, the PROQUEST online
information service had more than 61,000 subscribers,
representing tens of millions of users, more than
125,000,000 distinct sessions and more than 260,000,000
retrievals.
The record shows that opposer has sold hundreds of
millions of dollars worth of products and services under
the PROQUEST trademark since 1990:
In 1994 alone, sales of PROQUEST CD-ROM products
totaled more than $37,000,000.
Since 1997, sales of PROQUEST branded CD-ROM
products and subscriptions to the PROQUEST online
service alone have exceeded $560,000,000.
With the introduction of online access to PROQUEST
products and services, sales have increased
steadily. In the six-year period from 1997 to
2003, sales of the PROQUEST online service
increased from approximately $10,000,000 to more
than $85,000,000, totaling more than $390,000,000
for that period.
In 2003, net sales for all PROQUEST products and
services were $270,500,000, representing an
increase of 12.1% from 2002.

Since 1990, opposer has spent more than forty million
dollars on marketing PROQUEST products and services, with
annual expenditures totaling approximately four million
dollars. In 2004 alone, opposer distributed more than
50,000 full-product-line brochures and more than 200,000
copies of other promotional pieces for PROQUEST products
Opposition No. 91158016
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and services. Since 1991, opposer has issued millions of
bulletins and newsletters to subscribers of a wide range of
PROQUEST products and services, all of which display the
PROQUEST mark.
Since at least as early as 1990, opposer has placed
advertisements prominently featuring the PROQUEST mark in
print publications promoting its products and services
offered under the PROQUEST mark (e.g., Information Today,
Computers In Libraries, Searcher, EContent, School Library
Journal, Online, Access, Library Journal, American
Libraries, Against the Grain, Charleston Advisor, Public
Libraries, Serials Review, and Teaching and Learning.)
Opposer maintains a level of high visibility at major trade
shows, e.g., state and regional library, educational and
genealogical shows. Since 2000 alone, opposer has
participated in more than 400 trade shows and conferences.
At all of these trade shows, the PROQUEST mark is
prominently displayed on banners, booths, and other
materials visible to participants.
The record also demonstrates that PROQUEST products
and services have received accolades and awards, as have
many of opposer’s advertising materials. Similarly, the
PROQUEST mark has received extensive media attention since
Opposition No. 91158016
- 24 -
at least as early as 1990. We find that this extensive
media exposure has expanded public awareness of the
PROQUEST mark, resulting in widespread recognition and
renown of the PROQUEST mark, particularly among those in
the academic, research, and education fields. We are not
convinced, however, that this mark is famous to members of
the general public at large.
Accordingly, we would characterize this renown as
niche market fame. Within the academic, research, and
education fields, the PROQUEST mark has achieved such a
level of fame that nearly everyone in those fields
recognizes the mark. That fact certainly assists opposer
in this case because applicant intends to use his mark in
the same fields. Cf. Toro Co. v. ToroHead Inc., 61 USPQ2d
1164, 1182 (TTAB 2001) [in the context of dilution
analysis, opposer’s claim of niche market fame not
considered in absence of proof that the parties’ trading
fields overlapped]; and Berghoff Restaurant Co. v.
Washington Forge, Inc., 225 USPQ 603, 609-610 (TTAB 1985)
[opposer’s proof of fame of its mark within a limited
geographic area sufficient to find its mark famous for
purposes of the likelihood of confusion analysis, where
applicant’s goods were marketed in that geographic area].
Opposition No. 91158016
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Our primary reviewing court has determined that the
fame of an opposer’s mark plays a “dominant role in the
process of balancing the du Pont factors.” Recot, Inc. v.
M.C. Becton, 54 USPQ2d 1894, 1897-98 (Fed. Cir. 2000), on
remand, 56 USPQ2d 1859 (TTAB 2000) [likelihood of confusion
between FIDO LAY and FRITO-LAY]; and Kenner Parker Toys v.
Rose Art Industries, 963 F.2d 350, 22 USPQ2d 1453, 1456
(Fed. Cir. 1992) [likelihood of confusion between FUNDOUGH
and PLAY-DOH - “[F]ame of the prior mark plays a dominant
role in cases featuring a famous or strong mark.”]
Moreover, as the fame of a mark increases, the degree of
similarity between the marks necessary to support a
conclusion of likely confusion declines. Bose Corp. v. QSC
Audio Prods. Inc., supra at 1309. Our primary reviewing
Court, employing compelling imagery, held that “[a] strong
mark … casts a long shadow which competitors must avoid,”
and “[t]here is no excuse for even approaching the well-
known trademark of a competitor … and … all doubt as to
whether confusion, mistake, or deception is likely is to be
resolved against the newcomer, especially where the
established mark is one which is famous.” Kenner Parker
Toys, supra.
Opposition No. 91158016
- 26 -
Based on this record, we find that the PROQUEST mark
is inherently distinctive and strong. Furthermore, opposer
has demonstrated the fame of its mark measured by the
length of time the mark has been in use, the volume of
sales and advertising expenditures, as well as the
widespread unsolicited media attention it has garnered.
This mark is quite well known in the academic, educational,
research and library markets — the exact same fields where
applicant has indicated he intends to use his INQUEST mark.
Accordingly, this critical factor weighs strongly in favor
of finding a likelihood of confusion herein.
The marks
Finally, we turn to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression. See Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005). We also begin this
discussion of the similarity of the marks mindful of black
letter trademark case law that where, as here, the marks
are applied to “virtually identical goods or services, the
degree of similarity necessary to support a conclusion of
likely confusion declines.” Century 21 Real Estate Corp.
Opposition No. 91158016
- 27 -
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1701 (Fed. Cir. 1992) [finding CENTURY LIFE OF AMERICA for
insurance underwriting services confusingly similar to
opposer's CENTURY 21 mark for insurance brokerage services];
Centraz Industries Inc. v. Spartan Chemical Co., 77 USPQ2d
1698, 1700 (TTAB 2006) [finding and ICE SHINE
confusingly similar for floor-refinishing preparations].
Moreover, because we have also found that opposer’s mark is
famous in the academic, research, and education fields, the
same fields in which applicant’s mark will be used,
opposer’s mark is entitled to a greater degree of
protection.
Contrary to applicant’s position that the term “Quest”
is descriptive for opposer’s products, we find that the
“Quest” portion of opposer’s mark is most likely suggestive
of its goods and services, i.e., inasmuch as these goods
and services are used for research, the word “Quest” has a
suggestive meaning in terms of hunting for answers. In
fact, the “Quest” element, as the most distinctive portion
of opposer’s mark, is also the dominant portion of its
mark. Accordingly, when “Quest” is combined with the
syllable, “Pro-,” opposer’s resulting ProQuest mark appears
on this record to be strong. The resulting mark appears
Opposition No. 91158016
- 28 -
capable of two related connotations in that the product is
a “help” in the quest for answers, and that it is good or
“professional” in the help it provides. The mark’s
inherent strength is further reinforced with the fame that
opposer has built up around its mark over the past fifteen
years in the academic, educational and research fields.
See Bose Corp. v. QSC Audio Prods. Inc., supra at 1309.
We also agree with opposer that in neither mark is the
first syllable the dominant part of the mark. The terms
“In-” and “Pro-” are common, widely-used prefixes. Given
the lessened impact of these beginning syllables on the
overall impressions of the marks, we find a similarity in
commercial impressions herein despite the obvious
dissimilarity in the appearance, pronunciation and
connotation of the respective prefixes. See San Fernando
Electric Mfg. Co. v. JFD Electronics Components Corp.,
565 F.2d 683, 196 USPO 1 (CCPA 1977) [MONOCERAM and
MICROCERAM are not sufficiently different in their total
impacts to eliminate likelihood of confusion as to source];
Rexall Drug & Chem. Co. v. Romm & Haus Co., 427 F.2d 782,
166 USPQ 29, 30 (CCPA 1970) [OROGLAS for synthetic resinous
materials in the form of sheets, rods, or molding compounds
and PROGLAS for synthetic injection plastic molding
Opposition No. 91158016
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materials confusingly similar; consumers are unlikely to
distinguish between the marks based on the different
prefixes, “Pro-” and “Oro-”]; and Magnavox Co. v. Multivox
Corp. of Am., 341 F.2d 139, 144 USPQ 501, 503 (CCPA 1965)
[use of MULTIVOX on electric organs likely to cause
confusion with MAGNAVOX on radios, phonographs, and
television sets].
Applicant’s INQUEST mark, in this intent-to-use
application, is shown in standard character format. Hence,
we must consider that applicant’s mark is not limited to
any special form or style as displayed on its goods.
Phillips Petroleum Co. v. C. J. Webb, Inc., 442 F.2d 1376,
170 USPQ 35, 36 (CCPA 1971) [“The drawing in the instant
application shows the mark typed in capital letters, and …
this means that [the] application [for the mark INQUEST] is
not limited to the mark depicted in any special form” and
hence we are mandated “to visualize what other forms the
mark might appear in.”]; see also Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847-48 (Fed. Cir.
2000) [LASERSWING v. LASER for golf clubs: typed drawings
are not limited to any particular rendition of the mark];
and INB National Bank v. Metrohost, 22 USPQ2d 1585, 1588
(TTAB 1992) [CORPORATE DOLLARS PASSPORT v. PASSPORT].
Opposition No. 91158016
- 30 -
It is clear from these cases that when a mark is presented
in a typed or standard character format, the Board must
consider all reasonable manners in which applicant could
depict its mark. In particular, we must give special
consideration to the ways in which applicant has actually
depicted its mark. See Phillips Petroleum, supra at 36;
and INB National Bank, supra at 1588. For example,
applicant’s mark could reasonably be depicted as INQUEST
with the letter Q in a larger size
and different font, much as we had
seen with opposer’s usage.
“ … We must not be misled by considering [applicant’s] mark
only in its printed or typewritten form, with all the
characters being of equal height.” Phillips Petroleum,
supra at 36.
Accordingly, this factor too favors a finding of
likelihood of confusion.
Conclusion on Likelihood of Confusion:
When we weigh all the du Pont factors favoring
opposer, including the close relationship of the respective
goods/services and the fame of opposer’s mark, we find that
opposer has met its burden of demonstrating by a
preponderance of the evidence that confusion as to source or
Opposition No. 91158016
- 31 -
sponsorship from contemporaneous use of the parties’ marks
in connection with their respective goods and/or services is
likely to occur.
Dilution
Finally, we note that opposer also charges that given
the demonstrated prior fame of opposer’s PROQUEST mark,
applicant’s use of its INQUEST mark is likely to cause
dilution of opposer’s mark under the Federal Trademark
Dilution Act of 1995. However, given our determination
that opposer has priority of use and that there is a
likelihood of confusion herein, we find it unnecessary to
reach a determination on the question of dilution in this
proceeding.
Decision: The opposition is sustained based on the
ground of likelihood of confusion under Section 2(d) of the
Lanham Act, and registration to applicant is hereby
refused.