Contemporary Information Corporation

Trademark Trial and Appeal Board

Jul 12, 2013

No. 85439043 (T.T.A.B. Jul. 12, 2013)

Mailed:
July 12, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Contemporary Information Corporation
________

Serial No. 85439043
_______

Matthew H. Swyers of The Trademark Company, PLLC for
Contemporary Information Corporation.

Gene V. J. Maciol, II, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
_______

Before Seeherman, Holtzman and Wolfson, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Contemporary Information Corporation has appealed from
the final refusal of the trademark examining attorney to
register the mark shown below for “background investigation
services.” The mark is described as consisting “of the
stylized green wording CIC THE POWER OF DECISION displayed
such that CIC is larger and above the phrase THE POWER OF
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 85439043
2
DECISION,” and the color green is claimed as a feature of
the mark.1

Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that applicant’s mark so resembles the mark CIC, registered
in typed form for “business investigation and business
consulting services” and “security consulting services,”2
that applicant’s use of its mark for its identified
services is likely to cause confusion or mistake or to
deceive.
Applicant and the examining attorney have filed
briefs.3
We affirm the refusal of registration.

1 Application Serial No. 85439043, filed October 4, 2011,
asserting first use and first use in commerce in 2009.
2 Registration No. 1579373, issued January 23, 1990; Section 8
affidavit accepted; Section 15 affidavit acknowledged; renewed.
“Typed drawing” form is now known as standard character form.
See Trademark Rule 2.52 (a): “Standard character (typed)
drawing.”
3 Applicant included with its brief 35 pages of exhibits that
had previously been made of record during prosecution. There is
no need to resubmit such exhibits with a brief, and the Board
discourages this practice.

Ser. No. 85439043
3
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth 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 Co., 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).
We first consider the similarity or dissimilarity of
the marks. It is a well-established principle that, in
articulating reasons for reaching a conclusion on the issue
of likelihood of confusion, there is nothing improper in
stating that, for rational reasons, more or less weight has
been given to a particular feature of a mark, provided the
ultimate conclusion rests on a consideration of the marks
in their entireties. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In this case,
the dominant element of applicant’s mark is CIC, as it is
significantly larger and more prominent than the phrase
Ser. No. 85439043
4
“The Power of Decision.” The phrase “The Power of
Decision” has the appearance of a subsidiary slogan, with
CIC as the primary source-indicating feature. Thus,
consumers who are aware of the registrant’s CIC mark are
not likely to view “The Power of Decision” phrase as
distinguishing applicant’s mark from the registrant’s, but
instead will perceive applicant’s mark as a variation of
the registrant’s CIC mark, with both marks indicating a
single source. As for applicant’s argument that the
stylization of the letters in its mark, and the color
green, are distinguishing elements, the cited registration
is in typed/standard character format, and therefore the
mark may be depicted without regard to any particular font,
style, size or color. In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1909 (Fed. Cir. 2012). In other words,
the registrant may depict its mark in the same color green
and the same typestyle as applicant’s mark.
The du Pont factor of the similarity of the marks
favors a finding of likelihood of confusion.
We turn next to the factor of the similarity of the
services. As it has often been stated, it is not necessary
that the goods or services be identical or even competitive
in nature in order to support a finding of likelihood of
confusion, it being sufficient that the goods or services
Ser. No. 85439043
5
are related in some manner and/or that the circumstances
surrounding their marketing are such that they would be
likely to be encountered by the same persons under
circumstances that would give rise, because of the marks
employed thereon, to the mistaken belief that they
originate from or are in some way associated with the same
producer. In re Home Builders Association of Greenville,
18 USPQ2d 1313, 1317 (TTAB 1990).
Applicant’s services are identified as background
investigation services, while the registrant’s services are
identified as business investigation and business
consulting services, and security consulting services. The
examining attorney has submitted a substantial amount of
evidence that single companies provide both the services
identified in applicant’s application and those identified
in the cited registration. For example, the website for
Titan International Security Services Inc.,
www.titaninternationalsecurity.com, lists among its offered
services that it does such background investigations as
employee screening, and also consults on property security
to identify vulnerabilities and make recommendations to
address them. The website for TSD Security Consulting
Group, Inc., www.tsdconsulting.com, lists “Pre-Employment
Background Checks” under the category “Investigative
Ser. No. 85439043
6
Services,” and also lists as a category of its services
“Security Consulting.” The website for Search First
Information Services, www.searchfirst.com, states that it
does pre-employment screening services, background
searches, records checks, and due diligence investigations,
as well as security consulting. Bales Security,
www.balessecurity.com, lists, among its services, employee
screening and security consulting.
Applicant asserts that its services differ from the
registrant’s because its services “are used exclusively in
connection with tenant screening, employment screening,
business credit screening, collections, and wholesale data
services,” while it asserts that the cited mark “is used in
connection with investigation and surveillance services for
divorce, financial fraud, insurance fraud, or missing
persons cases.” Brief, p. 11. The problem with
applicant’s position is that “‘[l]ikelihood of confusion
must be determined based on an analysis of the mark as
applied to the ... services recited in applicant's
application vis-a-vis the ... services recited in [a] ...
registration, rather than what the evidence shows the ...
services to be.’” In re Dixie Restaurants Inc., 41 USPQ2d
at 1534, quoting Canadian Imperial Bank of Commerce v.
Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813, 1815
Ser. No. 85439043
7
(Fed. Cir. 1987). Thus, applicant cannot limit the scope
of the cited registration to investigation and surveillance
for divorce, missing persons, and financial and insurance
fraud.
Based on the evidence made of record by the examining
attorney, we find that the Office has shown that
applicant’s and the registrant’s services are closely
related, and further that they are sold in the same
channels of trade. Applicant has argued that the channels
of trade are different because “[a]pplicant’s services are
offered exclusively through its facilities in Lancaster,
CA, industry trade shows, and its website,” while the
registrant’s services will be “offered exclusively through
their facilities in Perrysburg, OH and their website.”
Brief, p. 12. Again, however, we are bound by the
identifications of the services, not what the evidence
shows the services to be, and therefore we must assume that
the services travel in all channels appropriate for such
services. See In re Smith and Mehaffey, 31 USPQ2d 1531
(TTAB 1994). The du Pont factors of the similarity of the
services and channels of trade favor a finding of
likelihood of confusion.
Applicant has argued that there are other marks that
contain the letters CIC that have been allowed for
Ser. No. 85439043
8
registration, and therefore that the term CIC has been
diluted. First, we point out that third-party
registrations are not evidence of use of the marks shown
therein. While they can be used to show that a term has a
meaning or significance in a particular industry, we cannot
conclude that CIC has any particular meaning for
investigation and security consulting services from the
fact that Credit Industriel et Commercial has registered
CIC and CIC BANQUES for banking and other financial
services (Reg. Nos. 4140611 and 1900089); that Comite
International de la Croix-Rouge has registered CICR for a
wide variety of services, from accounting to telephone
answering to public relations (Registration No. 3043122);
or that Medical Asset Management, Inc. has registered CIC
for testing, analysis and evaluation of the services of
others for the purpose of certification (Registration No.
3556761).4 Rather, it seems to us that, with the exception
of the Medical Asset Management registration, each of the
CIC or CICR marks, including those of the applicant and the
owner of the cited registration, Corporate Intelligence

4 A fifth registration, for CIC COMPETITIVE INTELLIGENCE &
CONSULTING, No. 2997154, was cancelled for failure to file a
Section 8 affidavit of continuing use.

Ser. No. 85439043
9
Consultants, Inc., have been adopted because CIC and CICR
are the initials of the marks’ owners.
Because there is no evidence of third-party use of CIC
marks in the fields of business investigation and security
consulting services, and no evidence that CIC has a
suggestive meaning with respect to such services, we must
treat the mark CIC in the cited registration as a strong
mark, and therefore the scope of protection to which it is
entitled is broad enough to prevent the registration of
applicant’s similar mark for closely related services.
The final argument made by applicant is that the
purchasers of applicant’s and the registrant’s services are
sophisticated. We accept that business investigation and
security consulting services and background investigation
services are not services that are generally purchased by
the public at large. At the same time, applicant has
stated that the prices for its services range from $10 to
$100. Certainly these prices, or at least those at the
lower end of the range, are not particularly high, and
therefore may not be purchased with a great deal of
investigation and care. Further, even a careful purchaser
is likely to assume, because of the strong similarity of
the marks and the closely related nature of the services,
that applicant’s mark is merely a variation of the
Ser. No. 85439043
10
registrant’s mark CIC, and that both marks identify
services emanating from a single source.
We have discussed all of the du Pont factors on which
applicant and the examining attorney have submitted
evidence or argument; to the extent that any other factors
are relevant, we treat them as neutral.
Decision: The refusal of registration is affirmed.