Better Government Bureau

Trademark Trial and Appeal Board

Aug 7, 1998

No. 74615800 (T.T.A.B. Aug. 7, 1998)

Hearing: Paper No. 21
October 7, 1997 SIMMS/MD
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB AUG 7, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Better Government Bureau, Inc.
________
Serial No. 74/615,800
_______
Roger P. Furey of Arter & Hadden for Better Government
Bureau, Inc.
Linda M. Dwyer, Trademark Examining Attorney, Law Office 101
(R. Ellsworth Williams, Managing Attorney).
_______
Before Simms, Seeherman and Hohein, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Better Government Bureau, Inc. (applicant), an Ohio
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register the mark BETTER
GOVERNMENT BUREAU for the following services: “promoting
and advocating the interests of its dues-paying citizen and
business members in the fields of politics and government
Ser. No. 74615800
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regulation.”1 The Examining Attorney has finally refused
registration under Section 2(d) of the Act, 15 USC
†1052(d), on the basis of four registrations held by the
Council of Better Business Bureaus, Inc. These
registrations cover the marks BETTER BUSINESS BUREAU per se
(Registration No. 566,415, issued November 4, 1952, pursuant
to Section 2(f) of the Act, 15 USC §1052(f), twice renewed;
Registration No. 969,847, issued October 2, 1973, renewed;
and Registration No. 971,579, issued October 23, 1973,
renewed) and one registration covering that mark along with
the letters BBB and torch design. These marks have been
registered for the following services: “investigative and
information services relative to business and trade
practices for protecting responsible business against
abusive business practices and for establishing and
maintaining legitimate advertising and merchandising
practices”; and for “indicating membership in applicant” (a
collective membership mark).
Applicant and the Examining Attorney have submitted
briefs and an oral hearing was held.
Applicant’s Argument
It is applicant’s position that the marks BETTER
BUSINESS BUREAU and BETTER GOVERNMENT BUREAU are different

1 Application Serial No. 74/615,800, filed December 27, 1994,
under Section 1(a) of the Act, 15 USC †1051(a). Applicant has
Ser. No. 74615800
3
in sound, appearance and commercial impression. In this
regard, applicant argues that the word “GOVERNMENT” in its
mark and the word “BUSINESS” in registrant’s marks suggest
different things in the context of the respective services—-
improving government on the one hand and improving business
on the other. While applicant has conceded that the mark
BETTER BUSINESS BUREAU is “famous and well recognized”
(brief, 4), that it has achieved a “high level of public
awareness” (brief, 14) and that registrant’s “operations…are
probably as famous and recognized as any in this country…”
(brief, 15; response, filed September 11, 1995, 8), it is
nevertheless applicant’s position that the fact that its
mark may call to mind registrant’s marks means that the mind
is distinguishing the respective marks. In other words,
argues applicant, the public will notice that the marks are
different.
With respect to the services, it is applicant’s
position that its services travel in different channels of
distribution and are offered to relatively sophisticated
consumers after a careful, deliberative process. In this
regard, applicant argues that its customers must complete an
application which describes applicant’s political advocacy
functions as well as the member benefits, and then pay dues
to applicant. Applicant argues, therefore, that such

claimed use since on or before July 31, 1993, and use in commerce
Ser. No. 74615800
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consumers are not likely to be confused. Applicant also
points out that its services include combating government
corruption, fighting for lower taxes and fewer government
restrictions as well as less bureaucracy. Applicant
contrasts its services with registrant’s services which
include acting as an information clearinghouse of which the
public can avail itself free of charge. Registrant’s
services, according to applicant, include the furthering of
business honesty, the fostering of truth in advertising, as
well as protecting the public and business from unfair
business practices. Applicant argues that the ordinarily
prudent consumer will not select applicant’s services
thinking that applicant is the registrant.
Applicant has also pointed to the Nexis articles which
it made of record tending to demonstrate that there are at
least six other entities which have the terms “BETTER” and
“BUREAU” in their names—-BETTER BURRO BUREAU, BETTER BABIES
BUREAU, BETTER JUSTICE BUREAU, BETTER BICYCLING BUREAU, and
BETTER BAPTIST BUREAU. Applicant argues, therefore, that
consumers have become accustomed and attuned to dealing with
a “wide variety of entities” sharing the same two components
that are shared by applicant and the registrant.2
Examining Attorney’s Argument

since on or before October 31, 1993.
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The Examining Attorney, on the other hand, argues that
the points of similarity of the respective marks are of
greater importance that their differences. The Examining
Attorney argues that the marks convey similar commercial
impressions, one indicating, in context, that the services
involve attempts to improve business while the other involve
attempts to improve government. With respect to the alleged
third-party uses of marks and trade names which include the
words “BETTER” and “BUREAU,” the Examining Attorney notes
that a search revealed a total of only fifteen Nexis
articles covering all six of these third-party names. The
Examining Attorney argues, therefore, that the public
exposure to these other names or marks is very small and
that there is no proof that the public is familiar with
them. By comparison, the Examining Attorney states that
over 13,600 articles referred to the “Better Business
Bureau” while 96 referred to the “Better Government Bureau.”
Also, the Examining Attorney argues that the subject matter
of the services of those third parties is completely
unrelated to the services of applicant and registrant
herein. To the extent that the public may be aware of these
third-party uses, the Examining Attorney argues that they

2 On remand, this additional evidence was considered by the
Examining Attorney and is of record. See the Board’s letter of
October 8, 1996.
Ser. No. 74615800
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are not likely to associate these with either applicant or
registrant.
The Examining Attorney further notes that applicant has
conceded the fame of the registered marks and argues that
the fame of a mark contributes to the likelihood of
confusion because famous marks are afforded more protection
for their established goodwill.
With respect to the services, the Examining Attorney
argues that they are “generally similar.” The Examining
Attorney notes that, according to the Nexis evidence of
record, applicant’s president is a former officer of the
Council of Better Business Bureaus who established applicant
after leaving the registrant’s organization. Also, the
Examining Attorney maintains that both registrant and
applicant may investigate complaints about inequitable or
illegal conduct and that both organizations provide
information to the public. The Examining Attorney argues
that registrant may expand its investigative services to
extend to alleged inequitable or illegal government
activities, or registrant may lobby for changes in the law
to protect the public. Essentially, it is the Examining
Attorney’s position that the general public may join either
applicant or registrant and that the public may think that
registrant started a “branch operation” to handle complaints
about government activity. These people may think,
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therefore, that applicant is connected or related to
registrant. The same class of consumers (both individuals
and businesses), the Examining Attorney notes, may become
members of either applicant or registrant.
Discussion and Opinion
After careful consideration of this record and the
arguments of the attorneys, we believe that applicant’s mark
as used in connection with its services offered to citizen
and business members in the fields of politics and
government regulation so resembles the registered marks as
to be likely to cause confusion. In order for there to be a
likelihood of confusion, the respective marks and services
need not be identical. Services only need be related in
some manner, or conditions surrounding their marketing be
such, that the respective services could be encountered by
the same purchasers under circumstances that could give rise
to the mistaken belief that the services come from the same
source. See, for example, In re Corning Glass Works, 229
USPQ 65 (TTAB 1985). Here, there is no doubt that
registrant’s investigative and information services relative
to business and trade practices and applicant’s services
offered to dues-paying citizens and businesses in the fields
of politics and government regulation are specifically
different services. However, we believe that the general
Ser. No. 74615800
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public and the business community in general, familiar with
registrant’s famous marks used in connection with
registrant’s business-related services who then encounter
applicant’s mark used in connection with applicant’s
services may well believe, because of the similarity of the
respective marks, that applicant’s services are sponsored by
or endorsed by registrant, or that applicant is an
organization that has been established by registrant.
While the respective marks are not identical, we agree
with the Examining Attorney that they have obvious
similarities in structure, differing only in the second word
of each mark. We note, as did the Examining Attorney, that
the fame of a mark (conceded by applicant) is entitled to be
considered in the likelihood-of-confusion analysis, Kenner
Parker Toys Inc. v. Rose Art Industries Inc., 963 F.2d 350,
22 USPQ2d 1453, 1456 (Fed. Cir. 1992), and that “a strong
mark…casts a long shadow which competitors must avoid.” In
re Ferrero, 479 F.2d 1395, 178 USPQ 167, 168 (CCPA 1973).
In situations where there is a famous mark, as well as where
the applicant is aware of the previously used mark, there is
a legal duty to select a mark which is sufficiently
dissimilar from the famous mark. Accordingly, and in
accordance with the established precedent, resolving any
doubt in favor of the prior user and registrant, we believe
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that confusion is likely with respect to all of registrant’s
registered marks.
Decision: The refusal of registration is affirmed.
R. L. Simms
E. J. Seeherman
G. D. Hohein
Administrative
Trademark Judges,
Trademark Trial and
Appeal Board
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