Specialty Merchandise Corp.

Trademark Trial and Appeal Board

Dec 14, 2000

No. 75398506 (T.T.A.B. Dec. 14, 2000)

12/04/00
Hearing: Paper No. 19
July 11, 2000 PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Specialty Merchandise Corporation
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Serial No. 75/398,505; 75/398,506; and
75/398,507
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Monica B. Richman, Esq. of Brown Raysman Millstein Felder &
Steiner LLP for Specialty Merchandise Corporation.
Zhaleh Sybil Delaney, Trademark Examining Attorney, Law
Office 101 (Jerry Price, Managing Attorney).
_______
Before Hanak, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Specialty Merchandise Corporation has filed
applications to register the marks SMC, SMC MEMBER, and SMC
MEMBER and design as shown below,
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/398,505; 75/398,506; and 75/398,507
2
for the following services:
business planning services specifically tailored
to providing marketing advice in the establishment
and operation of retail and wholesale
distributorships specializing in selling and
and distributing giftware, novelties, collectibles,
housewares, dolls, toys, games, sporting goods,
clothing and accessories, jewelry and horological
instruments, notions, business publications,
business supplies, including stationery, carrying
cases and leather and imitation leather portfolios,
electronics, photographic equipment, eyeglasses,
hand tools, cosmetics, fragrances, personal care
items, musical instruments, musical boxes, fabrics
and artificial plants.1
Registration has been finally refused in each
application under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d), on the ground that each of applicant’s
marks, when used in connection with the identified
services, so resembles the following registered marks, all
owned by the same entity, as to be likely to cause
confusion, mistake or deception:
(a) SMC for “advice and consultation in management
sciences” (Registration No. 893,015; Section
8 & 15 affidavit filed);
(b) SMC for “management consulting” (Registration
No. 1,354,604; Section 8 & 15 affidavit filed); and
1 Serial No. 75/398,507 filed December 1, 1997, alleging dates of
first use of July 5, 1967; Serial No. 75/398,506 filed December
1, 1997, alleging a bona fide intention to use the mark in
commerce; and Serial No. 75/398,505 filed December 1, 1997,
alleging a bona fide intention to use the mark in commerce,
respectively. In the latter two applications, the word MEMBER is
disclaimed apart from the mark as shown.
Ser No. 75/398,505; 75/398,506; and 75/398,507
3
(c)
for “management consulting (Registration No.
1,337,092; Section 8 & 15 affidavit filed). The
registration includes the statement that “The
mark consists of the stylized letters SMC”.2
Both applicant and the Examining Attorney have filed
briefs and an oral hearing was held.
We turn first to a consideration of the respective
services. At the outset, it should be noted that it is not
necessary that the services be identical or even
competitive to support a finding of likelihood of
confusion. It is sufficient that the circumstances
surrounding their marketing are such that they would be
likely to be encountered by the same persons under
circumstances that would give rise, because of the marks
used in connection therewith, to the mistaken belief that
the services originate from or are in some way associated
2 We note that Registration Nos. 1,354,604 and 1,337,092 cover
additional services. However, the refusals to register are based
solely on management consulting services.
Ser No. 75/398,505; 75/398,506; and 75/398,507
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with the same source. In re International Telephone and
Telegraph Corp., 197 USPQ 910 (TTAB 1978).
In the present case, we find that the record supports
the Examining Attorney’s position that applicant’s business
planning services which are designed to assist others in
the establishment and operation of general novelty retail
and wholesale distributorships are related to registrant’s
management consulting services. It has long been settled
that the question of likelihood of confusion between
applied-for and registered marks must be determined on the
basis of the goods and services as they are identified in
the involved application and the cited registration. In re
Elbaum, 211 USPQ 639 (TTAB 1981). Thus, while we recognize
that applicant’s business planning services are restricted
to the field of general novelty merchandise, we note that
the recitations of services in the cited registrations
contain no restrictions as to the field in which they are
offered. In the absence of any restrictions, we must
assume that registrant’s management consulting services
could be offered to individuals operating retail and/or
wholesale distributorships specializing in general novelty
merchandise. In short, for purposes of our likelihood of
confusion analysis, we can draw no distinctions among the
Ser No. 75/398,505; 75/398,506; and 75/398,507
5
purchasers and channels of trade for the respective
services.
Also, in this case, the Examining Attorney submitted
copies of over twenty third-party registrations showing
that entities have registered the same mark for business
planning services, on the one hand, and management
consulting services, on the other hand. For example, the
mark LIFESPAN is registered for business planning and
management consulting services (Registration No.
2,137,788); the mark STRATEGIC LEVERAGE is registered for
business management consultation and conducting classes and
seminars in the field of business planning (Registration
No. 2,005,847); the mark BUSINESS ONE USA is registered for
business planning services and management consulting
services (Registration No. 1,966,880); and the mark
ORIENTATION TECHNOLOGIES DIRECTION FOR GROWTH is registered
for business planning and business management consultation
(Registration No. 2,289,308). These third-party
registrations serve to suggest that the involved services
are of a type which may emanate from a single source. In
addition, several of the third-party registrations indicate
that business planning is considered part of management
consulting. For example, BOSSARD is registered for
business management consultation services, namely global
Ser No. 75/398,505; 75/398,506; and 75/398,507
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strategic business planning (Registration No. 1,787,668)
and the mark CONSENSUS PLUS is registered for management
consulting services focusing on strategic business planning
(Registration No. 1,511,215). In view of the foregoing, we
find that the services of applicant and registrant are
sufficiently related that if marketed under the same or
similar marks, confusion as to source or origin would be
likely to occur.
Turning then to a consideration of the respective
marks, we note that applicant, in its brief on the case,
does not dispute the Examining Attorney’s contention that
applicant’s marks SMC, SMC MEMBER, and SMC MEMBER and
design are identical or highly similar to registrant’s mark
SMC in typed form. For the reasons set forth by the
Examining Attorney, we agree that these marks are identical
or highly similar. Individuals familiar with registrant’s
management consulting services offered under the typed mark
SMC are likely to believe, upon encountering applicant’s
marks SMC, SMC MEMBER, and/or SMC MEMBER and design for its
particular business planning services, that the respective
services originate or are somehow associated with the same
source. With respect to registrant’s design mark SMC,
however, we find that because the design is so highly
Ser No. 75/398,505; 75/398,506; and 75/398,507
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stylized, this mark is not similar to any of applicant’s
marks and thus, confusion is not likely.
Decision: The refusals to register Serial Nos.
75/398,505; 75/398,506; and 75/398,507 in view of
Registration Nos. 893,015 and 1,354,604 are affirmed. The
refusals to register the applications in view of
Registration No. 1,337,092 are reversed.
Ser No. 75/398,505; 75/398,506; and 75/398,507
8