BBK, Ltd.

Trademark Trial and Appeal Board

Jun 29, 2004

No. 76315836 (T.T.A.B. Jun. 29, 2004)

Mailed: June 29, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re BBK, Ltd.
________
Serial No. 76315836
_______
Kathleen G. Mellon of Young & Basile, P.C. for BBK, Ltd.
Karanendra S. Chhina, Trademark Examining Attorney, Law
Office 114 (Margaret Le, Managing Attorney).
_______
Before Hanak, Chapman and Rogers, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
BBK, Ltd. (a Michigan corporation) has filed an
application to register on the Principal Register the mark
BUSINESS BUILDING KNOWLEDGE for services amended to read
“turnaround management consulting services, namely,
corporate renewal, operations improvement, interim
management, organizational and financial restructuring,
litigation support services, and product and supplier
analysis, all for troubled companies” in International
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76315836
2
Class 35. Applicant disclaimed the word “business.” The
application was filed on September 21, 2001, based on
applicant’s claimed dates of first use and first use in
commerce of November 3, 2000 and December 22, 2000,
respectively.
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used in connection with its
services, so resembles the mark BUILDING KNOWLEDGE,
registered for “business management and consultation;
business management supervision” in International Class 35,
and “construction supervision, construction planning, and
construction management” in International Class 37,1 as to
be likely to cause confusion, mistake or deception.
When the refusal was made final, applicant appealed.
Briefs have been filed, but an oral hearing was not
requested.
We reverse the refusal to register. In reaching this
conclusion, we have followed the guidance of the Court in
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also, In re Majestic Distilling
1 Registration No. 2450959 issued May 15, 2001 to William A.
Berry & Son, Inc. The word “building” is disclaimed. The
Examining Attorney explained that the refusal was issued because
of registrant’s Class 35 services.
Ser. No. 76315836
3
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
The Examining Attorney contends that applicant has
merely added a word to the registered mark, which does not
obviate the likelihood of confusion; that the dominant
feature of applicant’s mark is the phrase BUILDING
KNOWLEDGE because the word “business” is descriptive of
applicant’s services; that the marks are similar in sound,
appearance, meaning and overall commercial impression;2 that
applicant’s and registrant’s Class 35 services are
“virtually identical, namely business management services”;
that applicant’s more specific Class 35 services are
encompassed within registrant’s broader Class 35 services;
that even if the purchasers of applicant’s services are
sophisticated, they are not immune from trademark
2 The Examining Attorney correctly points out that the marks need
only be “similar,” they do not have to be the “same” in sound,
appearance, connotation and/or commercial impression.
Ser. No. 76315836
4
confusion; that there is no evidence the purchasers of
registrant’s services are sophisticated; and that doubt is
resolved in the registrant’s favor.
Applicant argues that the marks, when considered in
their entireties, are not similar in sound, appearance,
connation and/or overall commercial impression; that the
mark BUILDING KNOWLEDGE in the context of registrant’s
construction business connotes knowledge about construction
or “building,” whereas applicant’s mark connotes knowledge
about creating (re-creating) or “building” up a business;
that the addition of the word “business” differentiates the
marks sufficiently to avoid a likelihood of confusion; that
the services are not similar or related as applicant offers
consultation and management assistance to companies in
serious financial and/or operational trouble, whereas
registrant offers business consultation and management in
the construction industry; that applicant’s identified
services are inherently different from and are commercially
unrelated to the services described in the cited
registration; that applicant’s services are offered to
major businesses while registrant’s provision of
construction and business consultation services are offered
through different channels to different purchasers; and
that the purchasers of these services are knowledgeable and
Ser. No. 76315836
5
sophisticated, and they would discover the actual identity
of the source of the services prior to purchasing.
Turning first to the involved services, it has been
repeatedly held that, when evaluating the issue of
likelihood of confusion in Board proceedings regarding the
registrability of marks, the Board must compare the
services (or goods) as identified in the application with
the services (or goods) as identified in the registration.
See Octocom Systems Inc. v. Houston Computer Services Inc.,
918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990); and Canadian
Imperial Bank of Commerce, N. A. v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
In this case, the cited mark is registered for
“business management and consultation; business management
supervision” and “construction supervision, construction
planning, and construction management,” while applicant
offers “turnaround management consulting services, namely,
corporate renewal, operations improvement, interim
management, organizational and financial restructuring,
litigation support services, and product and supplier
analysis, all for troubled companies.”
As identified, the cited registrant’s business
management and consultation services are broad and
encompass all types of business management and consultation
Ser. No. 76315836
6
services, including the more specific business turnaround
management consulting services offered by applicant to
troubled companies. Thus, we find that applicant’s
services and registrant’s services are related.
Turning to a consideration of the trade channels and
purchasers, it is clear from the identifications of
services as well as other information in the record that
applicant’s services are offered to businesses in crisis,
and applicant goes in and takes over the operation of a
troubled company until it regains its ability to operate
profitably. That is, applicant “provides total relief and
assistance to businesses in crisis.” (Brief, p. 8.)
Applicant is often hired by banks to assist the bank’s
failing business customers, or by bankruptcy courts to
assist the party in bankruptcy.
Registrant’s business services, on the other hand,
specifically relate to the construction industry, and
providing construction (building) supervision and
management. The cited registration is of record and
therefore, although the International Class 37 construction
services have not been relied on by the Examining Attorney
as a basis for refusal under Section 2(d) of the Trademark
Act, those services nonetheless remain part of the record
Ser. No. 76315836
7
before the Board, and provide context within which to
consider registrant’s mark and its likely connotation.
Even noting the limitations in applicant’s
identification of goods (turnaround management for troubled
companies) and the clear association of registrant with the
construction industry, nonetheless, the channels of trade
and the classes of purchasers could be at least
overlapping.
However, and importantly, these types of business
consultation services (both registrant’s and applicant’s)
would certainly not be impulse purchase decisions, but
rather, would be made by sophisticated purchasers after a
process of negotiation and decision making. Although the
record does not indicate the cost of the respective
services, the Board finds it is common knowledge that these
types of business consultation services would not be
inexpensive, but instead, would be at least somewhat
expensive.
Turning to a consideration of the marks, it is well
settled that marks must be considered and compared in their
entireties, not dissected or split into component parts so
that parts are compared with other parts. This is because
it is the entire mark which is perceived by the purchasing
public, and therefore, it is the entire mark that must be
Ser. No. 76315836
8
compared to any other mark. It is the impression created
by each of the involved marks, each considered as a whole,
that is important. See Kangol Ltd. v. KangaROOS U.S.A.
Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); and
Franklin Mint Corp. v. Master Manufacturing Co., 667 F.2d
1005, 212 USPQ 233 (CCPA 1981). See also, 3 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition,
§23:41 (4th ed. 2001).
Marks are compared in terms of their appearance,
sound, connotation and commercial impression. In terms of
appearance and sound, applicant’s three-word mark and the
cited registrant’s two-word mark are somewhat similar.
While the marks share the terms “BUILDING KNOWLEDGE,”
applicant’s mark begins with a different word, and the
first word is often the memorable portion. See Presto
Products, Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895
(TTAB 1981).
Importantly, in terms of connotation, applicant’s mark
BUSINESS BUILDING KNOWLEDGE connotes the concept that
applicant has knowledge or expertise in the field of how to
build (or rebuild) a business, whereas, registrant’s mark
BUILDING KNOWLEDGE connotes that registrant has knowledge
or expertise in the building or construction business. The
marks are dissimilar in connotation.
Ser. No. 76315836
9
We find that applicant’s mark, considered in its
entirety, creates a different commercial impression from
that of the cited registered mark.
In view of the differences in the marks, sophisticated
purchasers, and the conditions of sale, i.e., negotiation
for, generally expensive business services, we find that
there is not a likelihood of confusion. See In re Hearst
Corp., 982 F.2d 493, 25 USPQ2d 1238 (Fed. Cir. 1992)(VARGA
GIRL and VARGAS, both for calendars, held not confusingly
similar); Food Specialty Co., Inc. v. Kal Kan Foods, Inc.,
487 F.2d 1389, 180 USPQ 136 (CCPA 1973)(KITTY for cat food
and KAL KAN KITTY STEW and design for canned cat food held
not confusingly similar); Lever Bros. Co. v. Barcolene Co.,
463 F.2d 1107, 174 USPQ 392 (CCPA 1972)(ALL for household
cleansing products and ALL CLEAR! in stylized lettering for
a household cleaner held not confusingly similar, by
majority opinion); Colgate-Palmolive Co. v. Carter-Wallace,
Inc., 432 F.2d 1400, 167 USPQ 529 (CCPA 1970)(PEAK for
dentifrice and PEAK PERIOD for personal deodorants held not
confusingly similar, by majority opinion); Local Trademarks
Inc. v. The Handy Boys Inc., 16 USPQ2d 1156 (TTAB
1990)(LITTLE PLUMBER and design for advertising services in
the plumbing field and LITTLE PLUMBER for liquid drain
opener held not confusingly similar); and Electronic Realty
Ser. No. 76315836
10
Associates, Inc. v. Kayser-Roth Corp., 216 USPQ 61 (TTAB
1982)(ERA for a variety of clothing items and GOLDEN ERA
for sportshirts held not confusingly similar).
Decision: The refusal to register under Section 2(d)
of the Trademark Act is reversed.