BBK, Ltd.

Trademark Trial and Appeal Board

Sep 28, 2004

No. 76315835 (T.T.A.B. Sep. 28, 2004)

Mailed: 9/28/2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re BBK, Ltd.
________
Serial No. 76315835
_______
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:
On September 21, 2001, BBK, Ltd. (a Michigan
corporation) filed an application to register on the
Principal Register the mark BBK 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. 76315835
2
Class 35. The application is based on applicant’s claimed
dates of first use and first use in commerce of May 13,
1988 and September 14, 1989, 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 BB&K, registered for
“financial and investment advisory services” in
International Class 36,1 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.
Our determination of likelihood of confusion is based
on an analysis of all of the facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities of
1 Registration No. 1304118 issued November 6, 1984 to Bailard,
Biehl & Kaiser, Inc.; Section 8 affidavit accepted; Section 15
affidavit acknowledged. The claimed date of first use and first
use in commerce is October 1978.
Ser. No. 76315835
3
the marks and the similarities of the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). See also,
In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997). Based on the record before us, we find
that confusion is likely.
The Examining Attorney argues that the marks are
virtually identical in sound, appearance, connotation and
commercial impression, both consisting of the letters
“BBK”; and that applicant’s and registrant’s services are
related in that entities providing financial and investment
advice often also provide business management services,
including turnaround business management services. He
specifically contends that the absence of the ampersand
symbol from applicant’s mark does not serve to distinguish
the marks; that while the services are not the same, the
question is not whether purchasers are confused about the
services, but rather the source of the services; that
applicant’s identification of services includes “financial
restructuring” and its specimen brochure refers to several
of applicant’s “Capabilities” including “Financial
management” and “Corporate finance … advice on Corporate
Finance, Investment Banking, Refinancing,…”; that
registrant’s identification of services is not limited as
Ser. No. 76315835
4
to channels of trade or classes of purchasers; that actual
marketplace realities about trade channels and classes of
customers are not particularly relevant in an ex parte case
involving registrability; that even if the purchasers of
applicant’s services are sophisticated, they are not immune
from trademark confusion, and in any event, there is no
evidence that the purchasers of registrant’s services are
sophisticated; that inasmuch as turnaround business
management consulting services involve offering financial
advice as an entity rebounds, applicant’s services are
within the registrant’s normal fields of expansion; and
that doubt is resolved in registrant’s favor.
The Examining Attorney submitted printouts of several
third-party registrations to show that the services of
registrant and applicant frequently emanate from a common
source under a single mark.
Applicant acknowledges that the marks are similar
(see, e.g., brief p. 2, reply brief p. 1), but argues the
obvious, i.e., that the marks are not identical due to the
ampersand in the registrant’s mark. Applicant contends
that “because the services are different, in the reality of
the marketplace, these marks will never be confused or
associated” (request for reconsideration, p. 2).
Specifically, applicant argues that it offers
Ser. No. 76315835
5
“consultation/management assistance to companies that are
in serious financial/operational trouble” (brief, p. 3),
and it does not offer investment advice and does not
facilitate the manner or means of investing money; that it
offers “a very specialized and unique service assisting
struggling, troubled companies to turn around their
operations, enabling these companies to survive” (brief, p.
12); that it “may be true that there are some (very few)
entities which offer both business and financial
consultation” (brief, p. 4), but the cited registration is
only for financial consultation; that applicant’s attorney
stated she contacted the cited registrant and “was informed
[registrant] has no corporate clients but does
individual/group/small business financial
planning/investments” (brief, p. 4); that the purchasers of
applicant’s services are “major OEMs, appliance
manufacturers, health institutions, home care industries,
holding companies and other major businesses” and applicant
“is often hired by banks to assist failing business
clients” and by bankruptcy judges to assist a party in
bankruptcy (brief, p. 5); that the purchasers of
applicant’s services are knowledgeable and sophisticated,
and they would discover the actual identity of the source
of the services prior to purchasing; and that registrant’s
Ser. No. 76315835
6
financial and investment advisory services are offered
through different trade channels to different purchasers.
Turning first to a consideration of the marks, the marks
“BBK” and “BB&K” obviously consist of the identical
letters, “BBK.” These marks are unpronounceable except as
the separate letters, and would be more difficult to
remember, and thus, more susceptible of confusion or
mistake. Courts and this Board have often held that
consumers have more difficulty recalling differences in
what appear to be arbitrary letter strings. See, e.g.,
Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d
1546, 14 USPQ2d 1840, 1841 (Fed. Cir. 1990); Dere v.
Institute for Scientific Information, Inc., 420 F.2d 1068,
164 USPQ 347, 348 (CCPA 1970); and Alberto-Culver Co. v.
F.D.C. Wholesale Corp., 16 USPQ2d 1597, 1602 (TTAB 1990),
(overruled in part -- on a different issue -- by Eurostar
v. “Euro-Star” Reitmoden GmbH & Co. KG, 34 USPQ2d 1266
(TTAB 1994)). See also, 3 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition, §23:33 (4th ed. 2001).
Although registrant’s mark BB&K might be recognized by
purchasers as the initials of the principal names in
registrant’s trade name, the derivations of the marks are
of no particular significance. See Aerojet-General Corp.
v. Computer Learning & Sys. Corp., 170 USPQ 358, 362 (TTAB
Ser. No. 76315835
7
1971) (fact that letter marks are acronyms derived from
different words unimportant because average purchaser
probably unaware of derivation).
In any event, the proper test in determining
likelihood of confusion is not on a side-by-side comparison
of the marks, but rather must be on the recollection of the
purchasers, who normally retain a general rather than
specific impression of the many trademarks encountered;
that is, a purchaser’s fallibility of memory over a period
of time must also be kept in mind. See Grandpa Pidgeon’s
of Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ
573 (CCPA 1973); and Spoons Restaurants Inc. v. Morrision,
Inc., 23 USPQ2d 1735 (TTAB 1991), aff’d unpub’d (Fed. Cir.,
June 5, 1992).
We find that the marks BBK and BB&K are virtually
identical in sound, appearance, connotation and overall
commercial impression. See Weiss Associates, Inc. v. HRL
Associates, Inc., supra, (confusion found likely in
contemporaneous use of TMM and TMS on computer software).
Insofar as the services are concerned, it is not
necessary that goods and/or services be identical or even
competitive in order to support a finding of likelihood of
confusion. It is sufficient that the circumstances
surrounding their marketing are such that they would be
Ser. No. 76315835
8
likely to be encountered by the same persons in situations
that would give rise, because of the marks used in
connection therewith, to the mistaken belief that the goods
and/or services originate from or are in some way
associated with the same source. See In re Melville Corp.,
18 USPQ2d 1386 (TTAB 1991); and In re International
Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).
It has been repeatedly held that, when evaluating the
issue of likelihood of confusion in Board proceedings
regarding the registrability of marks, the Board is
constrained to compare the goods and/or services as
identified in the application with the goods and/or
services 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 v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813
(Fed. Cir. 1987).
In this case, the registered mark is for “financial
and investment advisory services,” while applicant offers
the service of “turnaround management consulting services,
namely, corporate renewal, operations improvement, interim
management, organizational and financial restructuring,
Ser. No. 76315835
9
litigation support services, and product and supplier
analysis, all for troubled companies.”2
The Examining Attorney has submitted printouts of
numerous third-party registrations, all based on use in
commerce, indicating the same entities offer financial and
investment services as well as business consultation
services (a few specifically business turnaround services)
under the same mark. See, for example, Registration No.
2630153 for “business management consulting services,
namely, providing advice and assistance to businesses in …
turnaround management, …” and “financial services, namely,
… making acquisitions and investments”; Registration No.
1774410 for “… business management planning, assistance and
supervision; … business crisis consultation services” and
“investment consultation; … financial analysis and
consultation services; … business turnaround consultation
services”;3 Registration No. 2287126 for “financial planning
and investment consultation” and “business planning and
business management planning”; Registration No. 2434489 for
“financial consulting services” and “business management
2 The fact that the services are classified in different
international classes is irrelevant. See Section 30 of the
Trademark Act, 15 U.S.C. §1112; and Jean Patou Inc. v. Theon
Inc., 9 F.3d 971, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993).
3 The entity listed as the owner of this registration is also the
listed owner of four of the other third-party registrations, all
for the same services.
Ser. No. 76315835
10
consulting”; Registration No. 2318215 for “financial
analysis and consultation; …” and “business planning;
business management planning and consultation; …”;
Registration No. 2384321 for “financial management and
consulting, financial planning and consulting, and
investment advisory services” and “business management,
consultation and planning …”; and Registration No. 2441878
for “financial services, namely investment consulting
services and financial analysis, consultation and planning”
and “business management consulting services and business
consulting services.”
When considering the third-party registrations
submitted by the Examining Attorney, we remain mindful that
such registrations are not evidence that the marks shown
therein are in use or that the public is familiar with
them. Such third-party registrations nevertheless have
some probative value to the extent they may serve to
suggest that such services are of a type which emanate from
the same source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785 (TTAB 1993); and In re Mucky Duck Mustard
Co., Inc., 6 USPQ2d 1467, footnote 6 (TTAB 1988).
We acknowledge that several of the third-party
registrations are for broader business management
consulting services, not specifically for turnaround
Ser. No. 76315835
11
management consulting services. However, the third-party
registrations covering the broader business management and
consulting services would conceivably and reasonably
encompass turnaround management consulting services. Thus,
these third-party registrations submitted are persuasive
evidence of the relatedness of the respective services.4
Purchasers aware of registrant’s financial investment
and advisory services, who encounter applicant’s turnaround
consultation services for troubled companies, offered under
these highly similar marks, are likely to believe that
applicant’s services are in some way affiliated with
registrant, possibly even that registrant’s financial
services are a spinoff of applicant’s larger category of
turnaround business management consultation services.
When the respective services are compared in light of
the legal principles cited above and the evidence of record
4 As the Examining Attorney correctly pointed out, applicant’s
original identification of services was “business management
consultation services, namely, corporate renewal, operations
improvement, interim management, restructuring, operations
management, financial management, corporate finance, accounts
receivable and credit services, market analysis and research,
risk assessment, litigation support, public policy and economic
analysis; crisis turnaround management and consultation” and its
amended identification of services (voluntarily offered by
applicant after the Examining Attorney issued his final refusal)
was acceptable because it was a narrower identification. That is
to say, “turnaround management consulting services” “for troubled
companies” is a specific service which is encompassed within the
broad spectrum of business management consulting services.
Ser. No. 76315835
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(particularly the third-party registrations, and
applicant’s specimens -- quoted earlier herein), we find
that applicant’s turnaround management consulting services
and registrant’s financial investment and advisory services
are related.5
Applicant’s contentions regarding its contact with
registrant and the realities of the marketplace with regard
to the assertedly different channels of trade and different
purchasers is not supported by evidence, and in any event,
as explained previously, the Board must consider the
services as set forth in the application and the
registration. While we acknowledge that “turnaround
management consulting services … for troubled companies” is
clearly a specific service limited to those troubled
companies seeking such crisis business assistance, the
registrant’s identification of services is not limited as
to trade channels or customers. Thus, we must assume that
its financial and investment advisory services are offered
to all normal classes of customers including customers who
may one day seek applicant’s services. Even noting the
5 To be clear, we find that the evidence demonstrates that
registrant’s and applicant’s services, as identified
respectively, are related such that there is a likelihood of
confusion resulting from the contemporaneous use of registrant’s
BB&K mark and applicant’s BBK mark. In other words, we have not
relied upon the “expansion of trade doctrine” in finding that
there exists a likelihood of confusion.
Ser. No. 76315835
13
limitations in applicant’s identification of goods
(turnaround management for troubled companies),
nonetheless, the channels of trade and the classes of
purchasers could be at least overlapping. In fact,
applicant has stated that the purchasers of its services
include banks, and banks may also have dealings with
financial and investment advisory companies, for example,
one such as registrant.
We find that the respective services, as identified,
could be offered through the same or at least overlapping
channels of trade, to the same or at least overlapping
classes of purchasers.
It is true that these types of services (both
registrant’s financial and investment and applicant’s
business consultation) would not be impulse purchase
decisions, but rather, would be made through careful
consideration.
Applicant argues that the purchasers of its involved
services are sophisticated purchasers. The Examining
Attorney correctly argues that even sophisticated
purchasers are not immune from source confusion; and that
there is no evidence of record as to the sophistication of
potential purchasers of registrant’s services. In fact, we
agree with the Examining Attorney’s argument that “at a
Ser. No. 76315835
14
minimum, even if the applicant’s consumers may not be
likely confused, one cannot assume the same about the
registrant’s consumers (i.e., due to ‘reverse’ source
confusion).” (Brief, p. 11.)
Assuming the sophistication of the purchasers of
applicant’s services, “even careful purchasers are not
immune from source confusion.” In re Total Quality Group
Inc., 51 USPQ2d 1474, 1477 (TTAB 1999). See also,
Wincharger Corporation v. Rinco, Inc., 297 F.2d 261, 132
USPQ 289 (CCPA 1962); In re Decombe, 9 USPQ2d 1812 (TTAB
1988); and In re Hester Industries, Inc., 231 USPQ 881, 883
(TTAB 1986) [“While we do not doubt that these
institutional purchasing agents are for the most part
sophisticated buyers, even sophisticated purchasers are not
immune from confusion as to source where, as here,
substantially identical marks are applied to related
products”]. That is, even relatively sophisticated
purchasers of these services are likely to believe that the
respective services emanate from or are affiliated with the
same source, if offered under the virtually identical
marks. See Weiss Associates Inc. v. HRL Associates Inc.,
supra; and Aries Systems Corp. v. World Book Inc., 23
USPQ2d 1742, footnote 17 (TTAB 1992).
Ser. No. 76315835
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Based on the virtual identity of the marks; the
relatedness of the identified services; the same or
overlapping trade channels; and the same or overlapping
purchasers, we find that the purchasers would likely be
confused as to the source of applicant’s services vis-a-vis
registrant’s services, when offered under their respective
marks.
To the extent we have doubt on the question of
likelihood of confusion in this case, we resolve that
doubt, as we must, against applicant as the newcomer, as it
has the opportunity of avoiding confusion, and is obligated
to do so. See TBC Corp. v. Holsa Inc., 126 F.3d 1470, 44
USPQ2d 1315 (Fed. Cir. 1997); and In re Hyper Shoppes
(Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.