Tuesday, May 05, 2020

Precedential No.17: TTAB Affirms Section 2(d) and Disclaimer Refusals of INFORMATION BUILDERS & Design

The Board affirmed a Section 2(d) refusal to register the mark INFORMATION BUILDERS and Design (below left) for database software and related design services, finding the mark confusingly similar to the design mark shown below right, for overlapping software and services. The Board found that even if, as applicant argued, INFORMATION BUILDERS is the dominant portion of the subject mark, "the design functioning as the letter 'O' is nonetheless a salient, distinctive feature of Applicant's mark which must be given due consideration."In re Information Builders Inc., 2020 USPQ2d 10444 (TTAB 2020) [precedential] (Opinion by George C. Pologeorgis).

Likelihood of Confusion:Because the involved goods and services are in part legally identical, the Board must presume that those overlapping goods and services travel in the same channels of trade to the same classes of consumers. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal presumption in determining likelihood of confusion); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same).

Applicant argued that its customers are sophisticated information technology professionals, but there were no such limitations in the identification of goods and services. Thus there may be consumers who are not proficient in information technology. See Stone Lion Capital Partners, L.P., 110 USPQ2d at 1163 (where the purchaser class is mixed, the Board considers the likelihood of confusion from the perspective of “the least sophisticated potential purchasers”). Moreover, even sophisticated  purchasers may not distinguish between similar trademarks for similar goods and services. Nonetheless, in light of the inherent nature of the goods ans services, some degree of care may be exercised by customers, and to this factor favored slightly in applicant's favor.

As to the marks, Examining Attorney Cynthia R. Smith maintained that because the design of the letter “O” in applicant’s mark is highly similar to the entirety of registrant’s mark, the marks as a whole may be easily confused. Furthermore the individual words INFORMATION and BUILDER are highly descriptive of applicant's goods and services relating to building business intelligence applications and systems.

Applicant argued that the phrase INFORMATION BUILDERS is the dominant portion of its mark because the verbal portion of the mark is most likely to indicate the origin of the goods and services, and furthermore the stylized letter "O" in its mark is distinguishable from the cited mark.

Specifically, Applicant maintains that, in the cited mark, the top and bottom bars extend through an opening in the circle but the center bar does not approach either arc of the circle. In the stylized letter “O” in Applicant’s involved mark, Applicant asserts that each of the bars extends beyond an arc of the circle and by different degrees. Applicant further contends that the design element in its applied-for mark consists of two of the bars that extend through the upper opening, one more than the other, and the third bar extends through the lower opening. Applicant concludes that the respective designs make very different impressions due to the vertical alignment and thickness of the identical bars in the cited design versus the thinner, unequal and misaligned bars in Applicant’s stylized letter “O.”

The Board was unmoved. It observed that greater weight is often given to the wording in a mark since that is what purchasers use in ordering or requesting the goods or services. However, in appropriate circumstances the Board may give greater weight to the design element of a composite mark. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 U.S.P.Q.2d 1129, 1135 (Fed. Cir. 2015); see also In re Electrolyte Labs. Inc., 913 F.3d 930, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990) (“There is no general rule as to whether letters or design will dominate in composite marks.”).

The Board found that even if INFORMATION BUILDERS constitutes the dominant portion of applicant's mark, "the design functioning as the letter 'O' is nonetheless a salient, distinctive feature of Applicant's mark which must be given due consideration."

The design in Applicant’s mark forms an integral part of the mark. It functions as the letter “O” but in a way that would be viewed by consumers as a distinct design and not simply as a stylized letter “O”. When comparing the design which functions as the letter “O” in Applicant’s mark with the cited mark, we are of the opinion that the two designs have substantial visual similarities.

Although one may discern differences between the two designs when placed side-by-side, purchasers in the marketplace "would not usually have the opportunity for a careful examination of these marks in minute detail, even if such consumers are sophisticated as suggested by Applicant." See Grandpa Pidgeon’s of Mo., Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573, 574 (CCPA 1973) (differences in marks not likely to be recalled by consumers at spaced intervals; purchasers do not engage in trademark dissection).

The Board found that "there are important resemblances in the overall design format and especially in the commercial impression which they convey to customers." The record, including a disclaimer by applicant of INFORMATION and BUILDERS, demonstrates that "INFORMATION" and "BUILDERS" are each descriptive in relation to applicant's good and services, and they fail to create "a meaningful, distinguishable overall commercial impression to avoid a finding of likelihood of confusion."

The Board found that the marks are similar in appearance and highly similar in commercial impression, and therefore that the first du Pont factor favors a finding of likely confusion.

Applicant pointed to a registration that it owns for the mark shown below for the identical goods in class 9 as the involved application. The Board, however, found that the design element that functions as the letter "O" in that registered mark is sufficiently dissimilar from that of the cited mark that both registrations may exist on the Principal Register.

Disclaimer: The Board then turned to the USPTO's requirement that applicant disclaim the wording INFORMATION BUILDERS on the ground that it is merely descriptive. Applicant argued that INFORMATION BUILDERS is unitary, and instead it provided this disclaimer: "No claim is made to the exclusive right to use 'INFORMATION' or 'BUILDERS' apart from INFORMATON [sic] BUILDERS or apart from the mark as shown." The examining attorney then modified the disclaimer requirement to the disjunctive: "No claim is made to the exclusive right to use INFORMATION or BUILDERS apart from the mark as shown."

The Board agreed with the examining attorney that applicant's proposed disclaimer was improper: "First, as noted by the Examining Attorney, Applicant has misspelled the term INFORMATION. Second, and more importantly, Applicant seeks to add extraneous matter to the disclaimer, namely, that it is not disclaiming rights to INFORMATION BUILDERS."

Applicant’s proposed disclaimer essentially seeks to claim rights to the literal wording INFORMATION BUILDERS standing alone, i.e., without the stylized letter “O” in the term INFORMATION. This is tantamount to claiming matter shown in the mark, although the wording “INFORMATION BUILDERS” itself, without the design, is not Applicant’s applied-for mark. Accordingly, the requirement to disclaim the terms INFORMATION or BUILDERS disjunctively apart from the mark as shown and without referring to the disclaimer as not including a term that is not at issue is affirmed.

Conclusion: The Board allowed the applicant thirty days to submit a properly worded disclaimer. However, the Section 2(d) refusal would still stand.

Read comments and post your comment here.

TTABlogger comment: Why precedential? As to the unitary nature of INFORMATION BUILDERS, applicant owns three related, block-letter registrations for that phrase with only INFORMATION disclaimed.

Text Copyright John L. Welch 2020.


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