IN RE IXE GRUPO FINANCIERO S.A.B. DE C.V., 77512922 (TTAB 3-31-2011)
Serial No. 77512922United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: March 31, 2011Page 1
Kathleen A. Pasulka of Procopio Cory Hargreaves Savitch LLP for Ixe Grupo Financiero S.A.B. de C.V.
Michelle E. Dubois, Trademark Examining Attorney, Law Office 107 (Joan Leslie Bishop, Managing Attorney).
Before Quinn, Holtzman and Kuhlke, Administrative Trademark Judges.
Opinion by Holtzman, Administrative Trademark Judge:
An application has been filed by Ixe Grupo Financiero S.A.B. de C.V. to register the mark shown below for services ultimately identified as “advertising and advertisement services, business consultation services” in Class 35.[fn1]Page 2
The trademark examining attorney has refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. ? 1052(d), on the ground that applicant’s mark, when applied to applicant’s services, so resembles the registered mark shown below for services which include, in pertinent part, “advertising and advertisement services”; “advertising and business management consultancy”; and “business management and consulting services for the health care industry, namely, customer service, accounting services, and web-based advertising and marketing services” (in Class 35) as to be likely to cause confusion.[fn2]
When the refusal was made final, applicant appealed. Briefs have been filed.Page 3
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 issue. In re E.I. du Pont de Nemours Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of confusion analysis, however, two key considerations are the similarities or dissimilarities between the marks and the similarities or dissimilarities between the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to the services. Applicant’s services and the services in the cited registration are, in part, identical. They both include “advertising and advertisement services.” It is sufficient if likelihood of confusion is established for any item encompassed by the identification of goods or services in the application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 987 (CCPA 1981) (registration properly denied when likelihood of confusion is established as to any of the goods or services described in the application).
Because the services are, in part, identical, and there are no limitations either in the application or the cited registration, we must assume that the channels of trade and classes of purchasers for these services are identical. See Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002) (“[A]bsent restrictions in thePage 4
application and registration, goods and services are presumed to travel in the same channels of trade to the same class of purchasers.”); Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910 (TTAB 2000); and In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994).
We turn next to a consideration of the similarity or dissimilarity of the marks in their entireties in terms of sound, appearance, connotation and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin,396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). In making this determination we keep in mind that when, as here, the marks are used in connection with identical services, less similarity in the marks is required to support a finding of likelihood of confusion. Century 21 Real Estate v. Century Life,970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
The test under this du Pont factor is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impressions that confusion as to the source of the services offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general, rather than a specific, impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).Page 5
Although the marks must be considered in their entireties, it is well settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. See In re National Data Corp.,753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
At the outset, we acknowledge that composite “letter” marks, as the Court in In re Electrolyte Laboratories, Inc.,913 F.2d 930, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990) noted, can be close to design marks and therefore may or may not be vocalized. However, while the marks in this case include visual elements, they are not so highly stylized that they would be considered essentially pure design marks, incapable of being spoken. Rather, the marks feature clearly identifiable letters, which although stylized to some extent, are easily recognizable as the letters IXE.
The marks are nearly identical in sound. The term IXE is the entire literal portion of applicant’s mark, and that same term is the dominant portion of registrant’s mark. At least on this record, IXE is a combination of arbitrary letters with no inherent meaning. As such it is a strong component of the mark and this portion must be given significant weight in our analysis. See Palm Bay, 73 USPQ2d at 1692 (VEUVE [in the mark VEUVE CLICQUOT] is arbitrary as applied to sparkling wines, “and thus conceptually strong as a trademark.”). While registrant’sPage 6
mark also includes the word STUDIO, that word is less significant in creating the commercial impression of registrant’s mark. The examining attorney has submitted 12 third-party registrations for various marks in the advertising field, all of which contain a disclaimer of STUDIO. While not conclusive, this evidence serves to suggest that “STUDIO” has a descriptive meaning and would be perceived by purchasers as a descriptive term in the context of advertising services. “Such third-party registrations show the sense in which the word is used in ordinary parlance and may show that a particular term has descriptive significance as applied to certain goods or services.” Institut National Des Appellations D’Origine v. Vintners International Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992). See also In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006) (“Third-party registrations can be used in the manner of a dictionary definition to illustrate how a term is perceived in the trade or industry”). Applicant, while at one point maintaining that STUDIO is arbitrary for the services, subsequently acknowledged that the term has a “specific meaning” as “a room or building where art is produced.” Br., pp. 4-5.
Applicant argues that IXE in its mark is pronounced as three syllables, “I-X-E,” while the registered mark “IXESTUDIO” is pronounced either as either four, five or six syllables, depending on whether the letter portion is pronounced as “IXE,”Page 7
“IX-E” or “I-X-E.” However, it has long been held that there is no correct pronunciation of a trademark that is not a recognized English word. See Centraz Industries Inc. v. Spartan Chemical Co., 77 USPQ2d 1698, 1701 (TTAB 2006) (“it obviously is not possible for a trademark owner to control how purchasers will vocalize its mark.”). We must presume that IXE in applicant’s mark would be pronounced in the same way that the identical letters IXE would be pronounced in registrant’s mark.
The marks have essentially the same arbitrary meanings, conveyed primarily by the term IXE. The additional word STUDIO may add to the meaning of registrant’s mark, providing information about registrant’s services or where the services are performed, but it does not impart a new or different meaning to IXE that would distinguish the marks.
There are obvious differences between the marks in appearance. They include different design elements and a display of the letters IXE in different stylized forms. However, these features do not detract from the prominence of the literal elements in the marks. “In a composite mark comprising a design and words, the verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed.” CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983). Purchasers are more likely to remember the identical letters, “IXE,” appearing in both marks rather than the designsPage 8
in the marks or the particular manner of display, because it is the wording in the marks that purchasers will rely on in calling for or referring to the services. See In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987) (the word portion of a composite word and design mark is generally accorded greater weight because it would be used to request the goods or services).
Furthermore, the term IXE still makes a strong visual impression in both marks. It is the first part of registrant’s mark that will be encountered, and it is therefore more likely to have a greater impact on purchasers and be remembered by them. See Palm Bay, 73 USPQ2d at 1692-93 (the term VEUVE in the mark VEUVE CLICQUOT is a “`prominent feature’ as the first word in the mark and the first word to appear on the label.”); Presto Products Inc. v. Nice-Pak Products 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.”). While IXE and STUDIO in registrant’s mark are physically connected, the IXE portion is emphasized over the word STUDIO which appears in smaller letters, and it makes a separate visual impression.
We find that when the marks are considered in their entireties, they are highly similar in sound and meaning, and any differences between the marks in appearance are far outweighed byPage 9
these similarities. Overall, the marks convey similar commercial impressions such that, when they are used in connection with the identical advertising and advertisement services, confusion is likely.
Decision: The refusal to register under Section 2(d) of the Trademark Act is affirmed.
[fn1] Application Serial No. 77512922, filed July 1, 2008. The application was originally filed under Section 1(b) of the Trademark Act and it was subsequently amended to rely on Section 44(e) of the Act as an additional filing basis. The application includes a description of the mark as “a circle with a plus sign in the center and four small circles in each quadrant with the letters “IXE” centered underneath”; and a statement indicating that IXE has no significance in the trade and no meaning in a foreign language. [fn2] Registration No. 3530706; issued November 11, 2008. The registration includes the following color claim and description of the mark: “The color(s) black, turquoise is/are claimed as a feature of the mark”; and “The mark consists of a turquoise color circle appears inside of the letter `e’ of the black lettering `ixestudio.'”