Stroz Friedberg, LLC

Trademark Trial and Appeal Board

Jun 24, 2014

No. 85727594 (T.T.A.B. Jun. 24, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
June 24, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Stroz Friedberg, LLC
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Serial No. 85727594
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Bruce Goldner and Katelyn Andrews of Skadden, Arps, Slate, Meagher & Flom LLP
for Stroz Friedberg, LLC.

Wendell S. Phillips, III, Trademark Examining Attorney, Law Office 110 (Chris
A.F. Pedersen, Managing Attorney).
_____

Before Bucher, Lykos and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Stroz Friedberg, LLC (“Applicant”) seeks registration of SEEK TRUTH, in
standard characters, for:
Business enquiries and investigations; Forensic
accounting services; Providing business intelligence
services in International Class 35;

Computer forensic services; Computer security
consultancy in International Class 42; and

Litigation support services, namely, conducting electronic
legal discovery in the nature of reviewing e-mails and
other electronically stored information that could be
relevant evidence in a lawsuit or other legal, regulatory,
Serial No. 85727594
2

or administrative investigation or proceeding in
International Class 45.1

The Examining Attorney refused registration of the mark in all three classes under
Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark, when used in connection with Applicant’s services, so resembles
the previously-registered mark SEEKING THE TRUTH, A BIT AT A TIME, in
standard characters, for “Consulting services in the field of collection of evidence
found in computers and digital storage mediums for forensic purposes” in
International Class 42,2 that use of Applicant’s mark in connection with Applicant’s
services is likely to cause confusion or mistake or to deceive. After the refusal
became final, Applicant appealed and Applicant and the Examining Attorney filed
briefs.
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all 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, 567
(CCPA 1973); see also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d)

1 Application Serial No. 85727594, filed September 12, 2012, based on an intent to use the
mark in commerce under Section 1(b) of the Act, 15 U.S.C. § 1051(b).
2 Registration No. 3735239, issued January 5, 2010.
Serial No. 85727594
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goes to the cumulative effect of differences in the essential characteristics of the
goods and differences in the marks.”).
Turning first to the services, they need not be identical or even competitive in
order to support a finding of likelihood of confusion. It is enough that the services
are related in some manner or that the circumstances surrounding their marketing
are such that they would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks used, to a mistaken belief
that Applicant’s and Registrant’s services originate from or are in some way
associated with the same source or that there is an association between the sources
of the services. Hilson Research, Inc. v. Society for Human Resource Management,
27 USPQ2d 1423, 1432 (TTAB 1993); In re Melville Corp., 18 USPQ2d 1386, 1388
(TTAB 1991); Schering Corp. v. Alza Corp., 207 USPQ 504, 507 (TTAB 1980);
Oxford Pendaflex Corp. v. Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978); In re
International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The
issue is not whether purchasers would confuse the services, but rather whether
there is a likelihood of confusion as to the source of the services. In re Rexel Inc.,
223 USPQ 830, 832 (TTAB 1984).
Here, Applicant’s “computer forensic services” and “forensic accounting
services” encompass Registrant’s “consulting services in the field of collection of
evidence found in computers and digital storage mediums for forensic purposes.”
Similarly, Registrant’s services could encompass Applicant’s “litigation support
services,” because Applicant’s services, like Registrant’s, also involve “reviewing …
Serial No. 85727594
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electronically stored information that could be relevant evidence.” At the very least,
both Registrant and Applicant offer forensic services focused on computers and
electronically stored information, and their services are therefore closely related.
The Examining Attorney’s evidence fully supports this conclusion. For
example, printouts from third-party websites reveal that:
• Expert Insights, P.C. offers “litigation support” and
“forensic accounting” on the one hand and
“computer/digital forensics” on the other;

• Smart Devine offers “eDiscovery” and “digital
forensics” services on the one hand and “acquisition and
preservation of electronic evidence” and “data recovery &
analysis” on the other;

• Kessler offers “forensic accounting” services on the
one hand and “computer forensics” services on the other;

• DecisionRisks International offers “forensic
accounting” services on the one hand and “computer
forensics,” “digital forensics” and “data recovery” services
on the other;

• Jurinnov offers “eDiscovery” and “cybersecurity”
services on the one hand and “computer forensics” and
“deleted data analysis” services on the other;

• Computer Forensics LLC offers assistance “with
the preparation of e-discovery plans and the preservation
of ESI [electronically stored information]” on the one hand
and “recovery of lost and hidden evidence/data” and
“digital evidence analysis, interpretation, and
explanation” services on the other;

• Access Data offers “cyber security” services on the
one hand and computer and digital forensic services on
the other;

• Kroll Advisory Solutions offers “cyber security”
services on the one hand and “evidence and data
Serial No. 85727594
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collection” services and “forensic data analysis” on the
other;

• BIA offers “ediscovery” including “ESI collections”
services on the one hand and “computer forensics”
services which “reconstruct the every activit[y] [of] a given
person” on the other;

• PM Investigations, Inc. offers “email
tracking/recovery” and “computer forensic” services on the
one hand and “computer files analysis” on the other;

• Kevin P. Carey Investigations offers “computer
forensic” and “e-mail analysis” services on the one hand
and “discovery of hidden and deleted files, e-mails, images
and unauthorized software” on the other;

• New York Computer Forensics Services offers
“electronic discovery” services on the one hand and
“electronic digital evidence acquisition including search,
filter and consolidation of data, e-mails and files from
virtually any type of media including hard drives, backup
tapes, CD-ROM, floppy disks, Zip disks” on the other;

• Certified Fraud & Forensic Investigations offers
“forensic accounting” services on the one hand and
“computer forensics” services on the other;

• Fordham Forensics, Inc. offers “forensic
accounting” services on the one hand and “computer
forensics” services on the other; and

• Center for Computer Forensics offers “e-discovery”
services on the one hand and “computer data recovery”
services on the other.

Office Action of October 31, 2012; Office Action of May 22, 2013.
In addition, the following registered marks are registered for services of the
type identified in Applicant’s application on the one hand and those of the type
identified in the cited registration on the other:
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LDISCOVERY (Reg. No. 3463313) for inter alia,
“computer forensic investigations,” “business enquiries
and investigations,” “electronic discovery” and
“conducting computer forensic investigations.”

MANAGE WITH INSIGHT (Reg. No. 3589986) for inter
alia, “forensic accounting,” “business investigations,”
“forensic technology services, namely, evidentiary digital
data recovery and data mining” and “electronic discovery
services.”

Encore Discovery Solutions (Reg. No. 3680791) for, inter
alia, “computer consultation services, namely, data
recovery, extraction and reproduction services,” “data
forensic services, namely, collecting, preserving, and
analyzing paper documents and electronically stored
information for production of legal or other documents”
and “litigation support services in the nature of
conducting electronic online data discovery services for
attorneys.”

Sylint (Reg. No. 3643438) for, inter alia, “computer
consultation in the field of computer security,” “consulting
services in the field of collection of evidence for forensic
purposes,” “electronic legal discovery consulting services,”
“recovery of computer data” and “consultation in the
technology fields of cyber security … computer forensics
… digital forensics.”

Cyberdiligence (Reg. No. 3852167) for, inter alia,
“business enquiries and investigations,” “computer
security consultancy” and “consulting services in the field
of collection of evidence for forensic purposes.”

CSI GLOBAL DEPOSITION SERVICES
WWW.COURTROOMSCIENCES.COM & Design (Reg.
4072395) for, inter alia, “conducting electronic discovery
services via global computer networks,” “forensic
collection and analysis” and “computer data restoration
and filtering.”

Litigistix (Reg. No. 3852924) for, inter alia, “electronic
discovery services for law firms and businesses” and
“computer forensic services.”
Serial No. 85727594
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KESSLER (Reg. No. 3949873) for, inter alia, “business
enquiries and investigations,” “forensic accounting
services, “computer forensic services” and “providing
information in the field of collection of evidence for
forensic purposes.”

INTEGRITY PARTNERS (Reg. No. 3167742) for, inter
alia, “computer services, namely, providing computer
network security consulting, forensic examination of
computers, computer software and computer records,
namely computer forensics.”

Power3Forensics (Reg. No. 3988305) for, inter alia,
“forensic accounting services” and “computer forensic
services.”

HURON LEGAL (Reg. No. 4127935) for, inter alia,
“litigation support services, namely, conducting electronic
legal discovery in the nature of reviewing e-mails and
other electronically stored information that could be
relevant evidence in a lawsuit” and “forensic computer
services for legal consulting.”

RYAN EANALYTICS (Reg. No. 4251313) for, inter alia,
“forensic accounting services,” “computer forensic
services” and “data mining services.”

403 (Reg. No. 4197323) for, inter alia, “computer
consultation in the field of computer security” and
“computer forensic services.”

Complete Discovery Source (Reg. No. 4285268) for, inter
alia, “management and business consulting services in
the field of information technology systems and computer
forensic investigations; (sic) namely, litigation support,
electronic discovery, management collection, forensic
analysis …,” “computer forensic services” and “litigation
support services, namely, conducting electronic legal
discovery in the nature of reviewing e-mails and other
electronically stored information that could be relevant in
a lawsuit.”

Serial No. 85727594
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DSI (Reg. No. 4316310) for, inter alia, “computer forensic
services and consulting in connection therewith,”
“computer data recovery services” and “litigation support
services, namely conducting electronic legal discovery for
lawyers and corporations in the nature of reviewing e-
mails and other electronically stored information that
could be relevant evidence in a lawsuit.”

Office Action of May 22, 2013. “Third-party registrations which cover a number of
differing goods and/or services, and which are based on use in commerce, although
not evidence that the marks shown therein are in use on a commercial scale or that
the public is familiar with them, may nevertheless have some probative value to the
extent that they may serve to suggest that such goods or services are of a type
which may emanate from a single source.” See, In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1998); see also In re Davey Prods. Pty. Ltd., 92
USPQ2d 1198, 1203 (TTAB 2009). This factor weighs heavily in favor of finding a
likelihood of confusion.
As for the channels of trade, Applicant’s and Registrant’s identifications of
services include no limitations as to channels of trade or classes of consumers, and
their services are therefore presumed to move in all normal channels of trade for
those services and to be available to all classes of consumers. Citigroup Inc. v.
Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir.
2011); In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981); see also, Stone Lion Capital, 746 F.3d
1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (“Even assuming there is no overlap
between Stone Lion’s and Lion’s current customers, the Board correctly declined to
Serial No. 85727594
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look beyond the application and registered marks at issue. An application with ‘no
restriction on trade channels’ cannot be ‘narrowed by testimony that the applicant’s
use is, in fact, restricted to a particular class of purchasers.’”). Furthermore, the
third-party website evidence discussed above establishes that Applicant’s and
Registrant’s services in fact travel in the same channels of trade. This factor
therefore also weighs in favor of finding a likelihood of confusion.
The legal identity (in part) and close similarity (in part) of Applicant’s and
Registrant’s services and their overlapping channels of trade not only weighs
heavily in favor of finding a likelihood of confusion, but also reduces the degree of
similarity of the marks necessary to find a likelihood of confusion. In re Viterra, 671
F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601
F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); In re Max Capital Group Ltd.,
93 USPQ2d 1243, 1248 (TTAB 2010).
Turning to the marks, Applicant correctly argues that we must compare them
“in their entireties as to appearance, sound, connotation and commercial
impression.” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177
USPQ at 567). That is, we may not dissect the marks into their various
components. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ
233, 234 (CCPA 1981). At the same time, however, as the Examining Attorney
correctly points out, one feature of a mark may be more significant than another,
Serial No. 85727594
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and it is not improper to give more weight to the dominant feature of a mark in
determining its commercial impression. In re Nat’l. Data Corp., 224 USPQ at 751
(“There is nothing improper in stating that, for rational reasons, more or less weight
has been given to a particular feature of a mark, provided the ultimate conclusion
rests on consideration of the marks in their entireties. Indeed, this type of analysis
appears to be unavoidable.”).
Here, we agree with the Examining Attorney that Registrant’s tagline or
slogan A BIT AT A TIME is relatively insignificant when compared to Applicant’s
SEEK TRUTH and Registrant’s SEEKING THE TRUTH. The tagline merely
modifies and/or draws attention to SEEKING THE TRUTH. See, In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 219 (CCPA 1978) (Rich, J.,
concurring) (“the users of language have a universal habit of shortening full names
– from haste or laziness or just economy of words”). In fact, because SEEK TRUTH
and SEEKING THE TRUTH appear first, they are the dominant elements of
Applicant’s and Registrant’s marks. Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9
USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most
likely to be impressed upon the mind of a purchaser and remembered”); see also,
Palm Bay Imports Inc., 73 USPQ2d at 1692; Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).3

3 Applicant’s argument that Registrant’s slogan is dominant because the word BIT
appears in capital letters is unpersuasive. The cited mark is registered in standard
characters, meaning its display is not “limited to any particular font, size, style, or color,”
and it could be displayed in the same manner as Applicant’s mark. In re Viterra, 101
USPQ2d at 1909; In re Strategic Partners Inc., 102 USPQ2d 1397, 1399 (TTAB 2012).
Serial No. 85727594
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The differences between SEEK TRUTH and SEEKING THE TRUTH are
minimal. Both marks include forms of the verb “seek” and the word “truth,” with
the only differences between them being that Registrant’s mark adds the suffix
“ing” to the word “seek” and the definite article “the” before the word “truth.” These
portions of the two marks therefore look and sound quite similar.
Perhaps more importantly, their meanings are virtually identical. Indeed,
the suffix “ing” merely creates the present participle of the verb “seek,” adding
nothing to its meaning in this circumstance. Similarly, the use of the definite
article “the” is not distinguishing. See, Jay-Zee, Inc. v. Hartfield-Zodys, Inc., 207
USPQ 269, 271 (TTAB 1980); United States National Bank of Oregon v. Midwest
Savings and Loan Association, 194 USPQ 232, 236 (TTAB 1977). As the Examining
Attorney points out, both marks “are suggestive of the ultimate goal of services like
those of Applicant and Registrant, that of discovering facts and piecing together
evidence.” Examining Attorney’s Appeal Brief at 8.4 Furthermore, Registrant’s
tagline does not change the meaning of Registrant’s mark but instead is a play on
words which conveys both “seeking truth” gradually and methodically and “seeking
truth” one binary digit (a measurement of computer data) at a time.5 The marks’
commercial impressions are so similar that A BIT AT A TIME would be a fitting

4 To the extent Applicant argues that Registrant’s mark is merely descriptive, it
should be aware that having failed to petition for cancellation of the cited registered mark
in an inter partes proceeding, it is “not permitted to overcome a refusal by arguing that
[the] cited registration is merely descriptive,” as that would constitute a collateral attack on
the cited registration. In re Fiesta Palms LLC, 85 USPQ2d 1360, 1363 (TTAB 2007); see
also, In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534-35 (Fed. Cir.
1997).
5 See, Applicant’s Appeal Brief at 5.
Serial No. 85727594
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tagline for Applicant’s mark, and would convey the same meaning in connection
with Applicant’s mark as it does in Registrant’s mark. We agree with the
Examining Attorney that Applicant’s mark could be perceived as merely a
shortened version of Registrant’s mark. See, In re Mighty Leaf Tea, 94 USPQ2d at
1257 and In re Optica International, 196 USPQ 775 (TTAB 1977).
While there are differences between Applicant’s and Registrant’s marks,
“[t]he proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). In this case, this factor
weighs in favor of finding a likelihood of confusion.
Finally, Applicant argues that its and Registrant’s services “are purchased
with care by sophisticated consumers.” Applicant’s Appeal Brief at 7. There is no
evidence of record supporting this contention. In any event, even if we assume that
consumers would exercise care in purchasing these services, even careful
purchasers can be confused as to source where similar marks are used on legally
identical and closely related services. See In re Research Trading Corp., 793 F.2d
1276, 230 USPQ 49, 50 (Fed. Cir. 1986) citing Carlisle Chemical Works, Inc. v.
Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human
memories even of discriminating purchasers … are not infallible.”). This factor
Serial No. 85727594
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therefore does not outweigh the similarity of the marks and services and
overlapping channels of trade.
There is no relevant evidence or argument concerning the remaining
likelihood of confusion factors, and we therefore treat them as neutral.
Conclusion
After considering all of the evidence of record as it pertains to the relevant du
Pont factors, including all of Applicant’s arguments and evidence, even if not
specifically discussed herein, we find that confusion is likely because the marks are
similar, the services related and the channels of trade overlapping.

Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.