Affinity Media, Inc.

Trademark Trial and Appeal Board

Aug 31, 2000

No. 75230840 (T.T.A.B. Aug. 31, 2000)

8/30/00
Paper No. 14
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Affinity Media, Inc.
___________
Serial No. 75/230,840
___________
F. Lawrence Harasym, III, Esq. for applicant.
James A. Rauen, Trademark Examining Attorney, Law Office
103 (Michael A. Szoke, Managing Attorney).
____________
Before Cissel, Hohein and Walters, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Affinity Media, Inc. has filed an application to
register the mark shown below for “computer services,
namely, designing multimedia software and providing
information regarding the development and integration of
software tools and services for companies in data-
intensive industries, such as engineering, architecture,
government, healthcare, manufacturing and distribution,
for use with the
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/230,840
2
global computer network.”1 Applicant entered a disclaimer
of MEDIA INCORPORATED apart from the mark as a whole.
The Trademark Examining Attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the mark AFFINITY, previously registered for
“engineering design and analysis services; namely,
computer design and analysis services, and computer
software design and analysis services,” in International
Class 42, and “electronic transmission of data and
documents via computer terminals,” In International Class

1 Serial No. 75/230,840, in International Class 38, filed January 24,
1997, based on an allegation of use of the mark in commerce, alleging
first use and use in commerce as of May 23, 1995.
Serial No. 75/230,840
3
38,2 that, when used in connection with applicant’s
services, it would be likely to cause confusion or
mistake or to deceive.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
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. See, In re E. I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In the
analysis of likelihood of confusion in this case, two key
considerations are the similarities between the marks and
the similarities between the goods. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ
24, 29 (CCPA 1976); and In re Azteca Restaurant
Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999) and the
cases cited therein.
We turn, first, to a determination of whether
applicant’s mark and the registrant’s mark, when viewed
in their entireties, are sufficiently similar in terms of
appearance, sound, connotation and commercial impression.

2 Registration No. 1,834,042, issued May 3, 1994, to Bull S.A.
[Sections 8 and 15 affidavits accepted and acknowledged, respectively.]
Serial No. 75/230,840
4
The test is not whether the marks can be distinguished
when subjected to a side-by-side comparison, but rather
whether the marks are 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 general, rather
than specific, impressions of trademarks. See, Sealed
Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Furthermore, although the marks at issue 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).
Considering applicant’s mark in its entirety, we
find the term AFFINITY to be a significant portion of
applicant’s mark. As evidenced by the disclaimer of
record, the terms MEDIA and INCORPORATED in applicant’s
mark are merely descriptive in connection with
applicant’s identified services, whereas the term
AFFINITY appears to be arbitrary in connection therewith.

Serial No. 75/230,840
5
The design element of applicant’s mark consists of the
words AFFINITY MEDIA INCORPORATED surrounding a pyramid
design. We find that the word portion of applicant’s
mark predominates over its design elements. The word
portion of a mark comprised of both a word and a design
is normally accorded greater weight, in a likelihood of
confusion analysis, because it would be used by
purchasers to request the goods or services. In re
Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987);
and Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228
USPQ 461, 462 (TTAB 1985).
Applicant’s mark incorporates registrant’s mark,
AFFINITY, in its entirety and that term is also a
significant portion of applicant’s mark. The commercial
impressions of applicant’s mark and registrant’s mark are
substantially similar.
Turning to consideration of the services involved in
this case, we note that the question of likelihood of
confusion must be determined based on an analysis of the
services recited in applicant’s application vis-à-vis the
services recited in the registration, rather than what
the evidence shows the services actually are. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813, 1815 (Fed. Cir. 1987). See also, Octocom
Serial No. 75/230,840
6
Systems, Inc. v. Houston Computer Services, Inc., 918
F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1992); and The
Chicago Corp. v. North American Chicago Corp., 20 USPQ2d
1715 (TTAB 1991). Further, it is a general rule that
goods or services need not be identical or even
competitive in order to support a finding of likelihood
of confusion. Rather, it is enough that goods or
services are related in some manner or that some
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 therewith, to a mistaken belief that they originate
from or are in some way associated with the same producer
or that there is an association between the producers of
each parties’ goods or services. In re Melville Corp.,
18 USPQ2d 1386 (TTAB 1991), and cases cited therein.
The specific nature of registrant’s “engineering
design and analysis services,” in International Class 42,
could be interpreted as broadly encompassing “computer
engineering services,”3 or as limiting registrant’s
specified computer services to services rendered to the

3 We take judicial notice of the definition of “engineering” in The
American Heritage Dictionary (2nd College Edition, 1985) as “1. The
application of scientific and mathematical principles to practical ends
such as the design, construction and operation of efficient and
economical structures, equipment and systems.”
Serial No. 75/230,840
7
engineering professions. Regardless, applicant’s recited
computer services overlap and are related to registrant’s
recited services in International Class 42. Both
applicant’s and registrant’s services include computer
software design and analysis of a client’s needs in
relation thereto.
Moreover, because applicant’s software design and
information services pertain specifically to enabling
companies to make better use of the Internet, we find
these services are similar to registrant’s services
recited in both International Classes 42 and 38.
Registrant’s services in International Class 42 are
sufficiently broad to encompass applicant’s computer
software design and information services. Registrant’s
services in International Class 38, electronic
transmission of data and documents via computer
terminals, clearly encompass transmission via the
Internet. As such, registrant’s recited services are
extremely broad. Applicant’s identified services are
rendered to “data-intensive” industries, and those
services specifically involve helping companies make
better use of the Internet, which would logically include
transmission of data, electronically, via the Internet.

Serial No. 75/230,840
8
Thus, we find that applicant’s recited services are
closely related to registrant’s services in International
Class 38.
We conclude that in view of the substantial
similarity in the commercial impressions of applicant’s
mark and registrant’s mark, their contemporaneous use on
the overlapping and closely related services involved in
this case is likely to cause confusion as to the source
or sponsorship of such services.
Applicant’s arguments to the contrary are
unpersuasive.
First, arguing that AFFINITY is a weak mark, applicant’s
brief recites a list of registered marks that purportedly
contain the term AFFINITY. However, these registrations
have not been considered as they are not properly of
record. Not only is the proffer of the list untimely,
but we cannot tell from a mere list of registrations the
nature of the involved goods or services or the status of
the registrations.
Additionally, applicant refers to its Registration
No. 2,260,215, issued July 13, 1999, for the mark
AFFINITY MEDIA INCORPORATED for the same services recited
in this application. Applicant argues that, in view of
that registration, the application before us should not
Serial No. 75/230,840
9
be refused registration. However, we are deciding this
case on the facts before us. The record of applicant’s
registration is not before us. Further, the Board is not
bound by the decisions of Trademark Examining Attorneys,
nor is the Office bound by any prior mistakes that may
have been made in another case. See In re AFG
Industries, Inc., 17 USPQ2d 1162 (TTAB 1990); In re
Avocet, Inc., 227 USPQ 566 (TTAB 1985); and In re D. B.
Kaplan Delicatessen, 225 USPQ 342 (TTAB 1985).
Serial No. 75/230,840
10
Decision: The refusal under Section 2(d) of the Act
is affirmed.
R. F. Cissel
G. D. Hohein
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board