IN RE ROCK COMMUNICATIONS LTD., 77820681 (TTAB 9-23-2011)
Serial No. 77820681United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: September 23, 2011Page 1
Wendy K. Marsh of Nyemaster Goode West Hansell O’Brien, P.C., for Rock Communications Ltd.
Katy Halmen, Trademark Examining Attorney, Law Office 109 (Gwen Stokols, Acting Managing Attorney).
Before Walters, Bucher and Wolfson, Administrative Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register of the mark CATCHFIRE MEDIA (in standard characterformat) for services recited in the application, as amended, as follows:
“business consulting and information services, namely, comprehensive social media strategy consultation, monitoring, analysis and support” in International Class 35.[fn1]Page 2
The Trademark Examining Attorney issued a final refusal to register this designation based upon Section 2(d) of the Trademark Act, 15 U.S.C. ? 1052(d). The Trademark Examining Attorney has taken the position that applicant’s mark, when used in connection with the recited services, so resembles the mark CATCHFIRE (also in standard characterformat) registered for “advertising agency services; creating corporate and brand identities for others; creating advertising and promotional materials for others, namely, advertisements, brochures, annual reports, printed publications, direct mailings, and Internet website content,”[fn2] also in International Class 35, as to be likely to cause confusion, to cause mistake or to deceive.
After the Trademark Examining Attorney made the refusal final, applicant appealed to this Board. Applicant and the Trademark Examining Attorney have fully briefed the issues in this appeal.
We affirm the refusal to register.
Arguments of applicant and the Trademark ExaminingAttorney
In urging registrability, applicant contends that the Trademark Examining Attorney has not provided sufficient evidence to demonstrate that registrant’s and applicant’sPage 3
respective services are sufficiently related, and that the failure of the Trademark Examining Attorney to give appellant’s third-party evidence any weight is legally unsupportable.
By contrast, the Trademark Examining Attorney argues that the marks create highly similar commercial impressions; that the applicant’s services, as recited, are highly similar to the registrant’s services; that the respective services move through the same channels of trade; and that the minimal third-party usage proffered by applicant is not persuasive of a different result herein.
Likelihood of Confusion
We turn then to a consideration of the issue of likelihood of confusion. Our determination of likelihood of confusion is based upon our analysis of all of the probative facts in evidence that are relevant to the factors bearing on this issue. See In re E. I. du Pont de Nemours Co.,476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also,In reMajestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie RestaurantsInc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In any likelihood of confusion analysis, however, two key, although not exclusive, considerations are the similarities between thePage 4
marks and the relationship between the goods and/or services. See Federated Foods, Inc. v. Fort Howard PaperCo., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
The Similarity of the Marks
As to the first du Pont factor in any likelihood of confusion determination, we compare the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin MaisonFondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
As argued by the Trademark Examining Attorney, 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 a consideration of the marks in their entireties. In re National DataCorp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In the case at hand, we find specifically that the sole word in registrant’s mark and the leading word in applicant’s mark is the term “Catchfire.” The word “Media” within applicant’s composite mark is highly descriptive and has been disclaimed, and it is a component of “social media,” at the heart of applicant’s recitation of services.Page 5
These facts taken together support the conclusion that the marks herein are highly similar as to their overall commercial impressions. This factor weighs in favor of a finding of likelihood of confusion.
Relationship of the Services
We turn next to the du Pont factor focused on the relationship of the services. On its face, registrant’s recitation as to the creation of advertising and promotional materials in the form of Internet website content could clearly encompass the development of content for a social media site.
Moreover, in order to show the relatedness of the services, the Trademark Examining Attorney submitted for the record copies of third-party registrations of various enterprises. She argues that these registrations have probative value to the extent that they serve to suggest that the relevant services listed therein are of a kind that may emanate from a single source.See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-1218 (TTAB 2001); In re Albert Trostel SonsCo., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and In reMucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n. 6 (TTAB 1988) (emphasis supplied):Page 6
for, inter alia, “advertising agencies,
for, inter alia, “. . . advertising and
for, inter alia, “. . . advertising, marketing
for, inter alia, “. . . advertising agency
for “advertising agency specializing in the
for, inter alia, “. . . marketing consulting;
for, inter alia,” “. . . advertising, marketing
for “strategic planning and consultancy inWe note that the recitations of services seen in many of these registrations (all of which recently issued, and roughly within a year of each other) employ substantially identical language (e.g., “social media strategy and marketing consultancy focusing on helping clients create and extend their product and brand strategies by building virally engaging marketing solutions”) ? language that was added to the United States Patent and Trademark Office Identification of Goods Manual on April 10, 2008.
The Trademark Examining Attorney’s conclusions about this recent trend are consistent with articles from the Internet that she placed into the record:
[fn11]Page 9
[fn12]
In discussing its digital marketing and communications services, applicant’s own website discusses long-term strategies for developing comprehensive marketing solutions.[fn13] While applicant may well limit its focus to social media and digital marketing, it is clear from the entire record that in this Internet age, even traditional advertising agencies are finding it necessary to jump aboard “the social media bandwagon.”[fn14] The Trademark Examining Attorney has shown that other advertising firms offering the traditional advertising services recited by registrant are also offering social media tracking and consultancy services like those touted by applicant:
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[fn15]
[fn16]
[fn17]
As seen in the websites of third-parties offering advertising agency services, the role of social media is an increasingly important component of such services. In the absence of any limiting language in registrant’s recitationPage 11
of services, we assume that registrant’s broadly-recited advertising services might well include consultation on social media, and we must also presume that the respective services of registrant and applicant will be offered through the same channels of trade to the same classes of consumers.
Accordingly, we agree with the Trademark Examining Attorney that the applicant’s specialized services, even if not a subset of registrant’s recited services, are related to such advertising, marketing and promotional services, and these several related du Pont factors also favor a finding of likelihood of confusion.
The number and nature of similar marks in use onsimilar services
In relation to the strength of the registered mark, the Trademark Examining Attorney and applicant disagree on what we should conclude based on the evidence of record. The Trademark Examining Attorney is correct that there is no probative evidence of similar marks on the federal trademark register covering services related to those of registrant. However, applicant submitted screenprints of web pages from various Internet websites showing four different third-party enterprises across the nation that adopted and used the term “Catchfire” in connection with a variety of services directed to businesses:Page 12
[fn18]
[fn19]
[fn20]
[fn21]
As to these uses, the record does not provide any indication as to the nature and extent of the actual uses of these marks, and we cannot know whether these marks are generally known to the relevant purchasing public. Certainly, the existence of this small number of third-party uses is not sufficient to prove that a mark is unprotectably weak. See Giant Food Inc. v.Roos and Mastacco, Inc., 218 USPQ 521 (TTAB 1982) [even the owner of a weak mark is entitled to protection from likelihood of confusion].Page 13
In any case, we find that this evidence does not show that the term “Catchfire” has any descriptive significance when used in connection with business services, nor does it prove that the term “Catchfire” is so weak and diluted that applicant’s addition of the generic term “Media” is sufficient to distinguish the marks when they are used in connection with the same or related services. Rather, when used in the manner of a dictionary, these uses may well suggest that multiple vendors, in a quest for clients, want to tout their ability to ignite great interest and widespread enthusiasm. In view of the foregoing, there is no basis upon which to conclude that consumers encounter marks comprising the word “Catchfire” so often that they have learned to distinguish between the different marks. Hence, this factor is, at best for applicant, a neutral factor.
In conclusion, we agree with the Trademark Examining Attorney that CATCHFIRE and CATCHFIRE MEDIA create highly similar commercial impressions, that applicant’s services are related to registrant’s services, that the respective services move through the same channels of trade, and that the minimal third-party usage proffered by applicant is not persuasive of a different result herein.Page 14
Decision: The refusal to register under Section 2(d) of the Lanham Act is hereby affirmed.