Building Research Establishment Limited, Integrated Environmental Solutions Limited, WD Re-Thinking Limited, and AEC3 UK Limited

Trademark Trial and Appeal Board

Nov 18, 2015

No. 85901901 (T.T.A.B. Nov. 18, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 18, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Building Research Establishment Limited,
Integrated Environmental Solutions Limited,
WD Re-Thinking Limited, and AEC3 UK Limited
_____

Serial No. 85901901
_____

David A. Plumley of Christie, Parker & Hale, LLP
for Building Research Establishment Limited, Integrated Environmental
Solutions Limited, WD Re-Thinking Limited, and AEC3 UK Limited.
Deborah E. Lobo, Trademark Examining Attorney, Law Office 109,
Michael Kazazian, Managing Attorney.
_____

Before Quinn, Zervas and Bergsman,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Building Research Establishment Limited, Integrated Environmental Solutions
Limited, WD Re-Thinking Limited, and AEC3 UK Limited (“Applicants”) seek
registration on the Principal Register of the mark IMPACT and design, shown
below,

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for, inter alia, the following services as amended:
Providing an online computer database featuring
information in the field of construction; providing an
online computer database featuring information in the
field of building construction and repair and building
materials for construction and repair; providing
information relating to construction online via a global
computer network; providing information relating to
building construction and repair and building material for
construction and repair online via a global computer
network; providing consultancy, information and advisory
services in connection with the aforesaid services in the
fields of construction, building construction and repair
and building materials for construction and repair, in
International Class 37.1
The Trademark Examining Attorney has refused registration of Applicants’
mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the
ground that Applicants’ mark so resembles the registered mark IMPACT and
design, shown below,

for the services set forth below as to be likely to cause confusion.2

1 Application Serial No. 85901901 was filed on April 11, 2013, based upon Applicants’
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act and Section 44(d) of the Trademark Act.
Applicants describe their mark as consisting of the word “‘IMPACT’ in lower case letters
with three round arches above the mark.”
Applicants also applied to register their mark for software in Class 9 and for repair,
maintenance, updating and design of software, in Class 42. The goods and services in
Classes 9 and 42 are not involved in this appeal.
2 Registrant describes its mark as consisting of “two half circles to the left of the literal
element ‘impact.’”
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Construction of civil engineering structures, namely, soil
and subsurface improvement structures for support of
buildings and other commercial, industrial, residential,
and transportation-related structures, in Class 37; and
Engineering and design services for construction of civil
engineering structures, namely, soil and subsurface
improvement structures for support of buildings and other
commercial, industrial, residential, and transportation-
related structures, in Class 42.3
After the Examining Attorney made the refusal final, Applicants appealed to
this Board. 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 issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d
1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
A. Strength of the registered mark.
The Examining Attorney originally cited the 12 third-party registrations, owned
by 11 different entities, listed below against the registration of Applicants’ mark but
later withdrew them as bars to registration. Based on those registrations,
Applicants argue that Registrant’s mark is a weak mark entitled to only a narrow
scope protection or exclusivity of use.4

3 Registration No. 3943768, issued April 21, 2011.
4 4 TTABVUE 5 and 7 TTABVUE 2.
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1. Registration No. 3016156 for the mark IMPACT (typed drawing form)
for “design and engineering services; namely, design of structural foundations in the
nature of piers and collections of piers,” in Class 42;
2. Registration No. 2709525 for the mark IMPPAC (typed drawing form)
for “general construction; construction management; construction planning,” in
Class 37;
3. Registration No. 4222431 for the mark IMPACT (standard character
form) for “computer software for management of capital improvement programs,
construction projects, and for management of related project documentation,” in
Class 9;
4. Registration No. 4072990 for the mark IMPACT (standard character
form) for, inter alia, “software for neurocognitive testing, assessment and
evaluation,” in Class 9;
5. Registration No. 3469239 for the mark IMPACT (typed drawing form)
for “software used to correlate the effect of weather and other external causal
factors such as competition, demographics and economy on consumer demand by
product, location and time to support planning and forecasting, product distribution
and allocation, and advertising and promotion timing,” in Class 9;
6. Registration No. 2967047 for the mark IMPACT (standard character
form) for “computer software for audio production,” in Class 9;
7. Registration No. 4123403 for the mark IMPACT (standard character
form) for “computer software for use by financial and insurance advisors and their
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clients, namely, software for calculating financial needs analyses, as well as the
effect of assets, income, and investments on those needs for use in the fields of
financial planning, estate planning, insurance planning, retirement planning,
business planning, financial needs analysis and business worksite marketing,” in
Class 9;
8. Registration No. 3859298 for the mark IMPACT (standard character
form) for “computer software for use by preferred provider organizations, health
maintenance organizations and third-party administrators for use in enrollment,
claim re-pricing, adjudication and payment processing of medical insurance claims,”
in Class 9;
9. Registration No. 3727376 for the mark IMPACT (standard character
form) for “computer software for generating typeface designs and ornamental
designs,” in Class 9;
10. Registration No. 2407006 for the mark IMPACT (typed drawing form)
for “computer software for financial forecasting, namely, evaluating business units
and company structure options and analyzing market opportunities, for use by
utility companies and investors in utility companies,” in Class 9;
11. Registration No. 1775734 for the mark IMPACT (typed drawing form)
for “computer software for record keeping and routine functions by state, county
and local governments and judicial systems,” in Class 9; and
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12. Registration No. 1861636 for the mark IMPACT (typed drawing form)
for “computer software, computer programs, computer programs and instructional
manuals sold as a unit, for use in the field of insurance,” in Class 9.
We find the 12 third-party registrations to be of limited probative value in
assessing the strength of Registrant’s mark. First, contrary to the gist of Applicants’
argument, only the first three registrations listed above are for services related to
Registrant’s construction, engineering and design services. The other registrations
do not cover services similar to Registrant’s services. See In re Thor Tech Inc., 90
USPQ2d 1634, 1639 (TTAB 2009) (the third-party registrations are of limited
probative value because the goods identified in the registrations appear to be in
fields which are far removed from the goods at issue). See also Nat’l Cable
Television Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424,
1430 (Fed. Cir. 1991) (“The real world segment of the public is limited to the market
or universe necessary to circumscribe purchasers or users of products or services
like those being offered by the parties under the ‘common’ mark. Only if other
offerings under the ‘common’ mark are also directed to that relevant public is it
reasonable to infer that they may have become conditioned to draw fine lines
between sources of ‘related’ goods or services. Thus, in the relevant market or
universe, even a ‘common’ mark may stand alone, but for the single newcomer, and
there is simply no basis for an inference that the ‘public’ has been conditioned to
distinguish between sources of related products or services.”); Key Chemicals, Inc. v.
Kelite Chemicals Corp., 464 F.2d 1040, 175 USPQ 99, 101 (CCPA 1972) (“Nor is our
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conclusion altered by the presence in the record of about 40 third-party
registrations which embody the word ‘KEY.’ The great majority of those registered
marks are for goods unrelated to those in issue, and there is no evidence that they
are in continued use. We, therefore, can give them but little weight in the
circumstances present here.”). Three relevant third-party registrations do not
persuade us that the public has become conditioned to encountering so many
“Impact” marks in the construction field that Registrant’s mark “Impact” should be
considered a weak mark, entitled to only a narrow scope of protection.
Second, because “[t]he existence of [third-party] registrations is not evidence of
what happens in the market place or that consumers are familiar with them nor
should the existence on the register of confusingly similar marks aid an applicant to
register another likely to cause confusion, mistake or to deceive.” AMF Inc. v.
American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973);
In re Max Capital Group Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010).
Although we do not find Applicants’ evidence of the suggestive weakness of the
term IMPACT to be of very great weight, we take it into consideration in our
analysis.
B. The similarity or dissimilarity of the marks.
We now turn to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). In a particular case, “two marks may
Serial No. 85901901
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be found to be confusingly similar if there are sufficient similarities in terms of
sound or visual appearance or connotation.” Kabushiki Kaisha Hattori Seiko v.
Satellite Int’l, Ltd., 29 USPQ2d 1317, 1318 (TTAB 1991), aff’d mem., 979 F.2d 216
(Fed. Cir. 1992) (citation omitted). See also Eveready Battery Co. v. Green Planet
Inc., 91 USPQ2d 1511, 1519 (TTAB 2009) (citing Krim-Ko Corp. v. Coca-Cola Co.,
390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in
either form, spelling or sound alone is likely to cause confusion.”)).
“The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1721 (Fed. Cir. 2012). See also San Fernando Electric Mfg. Co. v.
JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d
mem., 972 F.2d 1353 (Fed. Cir. 1992).
The marks are displayed below:
Applicants’ Mark Registrant’s Mark

The marks are very similar. Both marks consist of the word “impact” displayed
in lower case letters and include arch designs. Applicants’ mark has three round
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arches above the word “impact” and Registrant’s mark has two ovular arches or
“half circles” to the side of the word impact.
We find that the marks are very similar in terms of appearance, sound,
connotation and commercial impression.5
C. The similarity or dissimilarity and nature of the services.
As noted above, Applicants are seeking to register its mark for the services listed
below:
Providing an online computer database featuring
information in the field of construction; providing an
online computer database featuring information in the
field of building construction and repair and building
materials for construction and repair; providing
information relating to construction online via a global
computer network; providing information relating to
building construction and repair and building material for
construction and repair online via a global computer
network; providing consultancy, information and advisory
services in connection with the aforesaid services in the
fields of construction, building construction and repair
and building materials for construction and repair.
The services in the cited registration are listed below:
Construction of civil engineering structures, namely, soil
and subsurface improvement structures for support of
buildings and other commercial, industrial, residential,
and transportation-related structures; and
Engineering and design services for construction of civil
engineering structures, namely, soil and subsurface
improvement structures for support of buildings and other
commercial, industrial, residential, and transportation-
related structures.

5 Applicants did not argue that the marks are not similar; however, Applicants contend that
“due to specific differences in the respective services associated with the marks in question
combined with the weakness of the common term, applicant’s [sic]mark is entitled to
registration over the cited mark.” 4 TTABVUE 4.
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Applicants’ proposed services, specifically providing information relating to
construction online via a global computer network and providing information
relating to building construction and repair and building material for construction
and repair online via a global computer network, are identified broadly enough to
encompass Registrant’s construction, engineering and design services for civil
engineering structures, namely, soil and subsurface improvement structures for
buildings, and commercial, industrial, residential, and transportation related
structures. In other words, Registrant’s construction, engineering and design
services presumptively include providing information relating to building
construction and repair and building material for construction and repair.6
“Civil engineering” is defined as “[t]he branch of engineering that specializes in
the design and construction of structures such as bridges, roads, and dams.”7 The
three categories of civil engineering functions are set forth below:
1. Activities performed before construction (feasibility studies, site
investigations, and design);

6 Under this du Pont factor, the Trademark Examining Attorney need not prove, and we
need not find, similarity as to each and every activity listed in the description of services. It
is sufficient for a refusal based on likelihood of confusion that relatedness is established for
any activity encompassed by the description of services in a particular class in the
application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ
986, 988 (CCPA 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB
2014); General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1588 n.1
(TTAB 2011), judgment set aside on other grounds, 2014 WL 343267 (TTAB Jan. 22, 2014);
Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1397 (TTAB 2007).
7 Dictionary.com derived from THE AMERICAN HERITAGE SCIENCE DICTIONARY (2002).
See also Merriam-Webster online (merriam-webster.com). The Board may take judicial
notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co.,
213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including
online dictionaries that exist in printed format or have regular fixed editions. In re Red Bull
GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
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2. Activities performed during construction (dealing with clients,
consulting engineers, and contractors); and
3. Activities performed after construction (maintenance and research).8
Feasibility studies are described as extensive studies of the objective and
potential options. “Feasibility studies may cover alternative methods—e.g., bridge
versus tunnel, in the case of a water crossing—or, once the method is decided, the
choice of route. Both economic and engineering problems must be considered.”9
Consulting engineers are often hired for large specialized projects.
The consulting engineer may be required first to
undertake feasibility studies, then to recommend a
scheme and quote an approximate cost. The engineer is
responsible for the design of the works, supplying
specifications, drawings, and legal documents in sufficient
detail to seek competitive tender prices. The engineer
must compare quotations and recommend acceptance of
one of them. Although he is not a party to the contract,
the engineer’s duties are defined in it; the staff must
supervise the construction and the engineer must certify
completion of the work. Actions must be consistent with
duty to the client; the professional organizations exercise
disciplinary control over professional conduct. The
consulting engineer’s senior representative on the site is
the resident engineer.10
Civil engineering services also include a maintenance aspect.

8 Encyclopædia Britannica Online, s. v. “civil engineering”, accessed November 16, 2015
(britannica.com/technology/civil-engineering). The Board may take judicial notice of
information in encyclopedias. B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d
727, 6 USPQ2d 1719 (Fed. Cir. 1988) (encyclopedias may be consulted); Productos Lacteos
Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 n.61 (TTAB
2011); In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1514 n.4 (TTAB 2001)
(dictionary entries and other standard reference works).
9 Id.
10 Id.
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The contractor maintains the works to the satisfaction of
the consulting engineer. Responsibility for maintenance
extends to ancillary and temporary works where these
form part of the overall construction. After construction a
period of maintenance is undertaken by the contractor,
and the payment of the final installment of the contract
price is held back until released by the consulting
engineer. Central and local government engineering and
public works departments are concerned primarily with
maintenance, for which they employ direct labour.11
Thus, because civil engineering services include providing information relating to
construction and repair and building material for construction, the services are in
part identical.
To further support her contention that the services are related, the Examining
Attorney submitted excerpts from several civil engineering firms that provide
information and advisory services relating to some form of building construction.
For example,
1. Brierley Associates (brierleyassociates.com) advertise pre-bid analysis
services where it “helps Contractors evaluate a project through technical review or
the contract documents, risk determination, constructability assessment, and
identification of alternate design concepts.”12 It also advertises its feasibility studies
services where Brierley Associates “help evaluate alignments and construction
alternative to determine options that best suit the work.”13
2. Pacific Western Technologies, Ltd (pwt.com) is an engineering firm,
including civil engineering, that advertises that it offers “full-service environmental

11 Id.
12 November 7, 2014 Office Action.
13 Id.
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consulting, engineering, design and construction capabilities,” including feasibility
studies and engineering evaluations and computer simulations and design of water
distribution systems.14
3. Freeman Companies (freemancos.com) is a civil engineering firm that
advertises “a wide range for services under the all-encompassing umbrella of civil
engineering ... from the early planning and design development stages through
ensuring that construction activities are performed in accordance with the contract
documents – and everywhere in between.”15
Applicants argue that their services “specifically relate to the service of
providing online-based information that is relevant to the construction industry,”
whereas Registrant’s services “relate to structural engineering services.”16
Applicants contend that their consultancy and advisory services “are not directly
related to the field of construction, but rather are directed to ‘the aforesaid services,’
referring to the previously-identified web-based services.”17 Essentially, Applicants’
arguments are based on the false premise that Applicants are providing an
information service devoid of subject matter. According to the description of
services, Applicants are providing information in the fields of construction, building
construction and repair and building materials for construction and repair, which is
broad enough to encompass soil and subsurface improvement structures for support

14 Id.
15 Id.
16 4 TTABVUE 4 and 7 TTABVUE 4.
17 4 TTABVUE 5 and 7 TTABVUE 4.
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of buildings and other commercial, industrial, residential, and transportation-
related structures. The fact that Applicants intend to offer those services through
an online service does not change the inherent nature of the services (i.e., providing
information in the field of building construction).
In view of the foregoing, we find that the services are in part identical or
otherwise closely related.
D. Established, likely-to-continue channels of trade.
Because the services described in the application and the cited registration are
in part identical, we must presume that the channels of trade and classes of
purchasers are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012) (legally identical goods are presumed to travel in same
channels of trade to same class of purchasers); In re Yawata Iron & Steel Co., 403
F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods,
the channels of trade and classes of purchasers are considered to be the same);
United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014);
American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011).
E. Balancing the factors.
Because the marks are very similar, the services are in part identical and,
therefore, we must presume that the services move in the same channels of trade,
we find that Applicants’ mark for “providing an online computer database
featuring information in the field of construction; providing an online computer
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database featuring information in the field of building construction and repair and
building materials for construction and repair; providing information relating to
construction online via a global computer network; providing information relating to
building construction and repair and building material for construction and repair
online via a global computer network; providing consultancy, information and
advisory services in connection with the aforesaid services in the fields of
construction, building construction and repair and building materials for
construction and repair” so resembles the registered mark for the services
set forth below as to be likely to cause confusion.
Construction of civil engineering structures, namely, soil
and subsurface improvement structures for support of
buildings and other commercial, industrial, residential,
and transportation-related structures; and
Engineering and design services for construction of civil
engineering structures, namely, soil and subsurface
improvement structures for support of buildings and other
commercial, industrial, residential, and transportation-
related structures.
Decision: The refusal to register Applicants’ mark for the services
identified in Class 37 is affirmed.
The application will be forwarded for publication in Classes 9 and 42 in due
course.