Fona International Inc.

Trademark Trial and Appeal Board

Apr 12, 2013

No. 85344795 (T.T.A.B. Apr. 12, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
April 12, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Fona International Inc.
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Serial No. 85344795
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Scott W. Smilie of Patzik, Frank & Samotny Ltd. for Fona International, Inc.

Rudy R. Singleton, Trademark Examining Attorney, Law Office 102 (Mitchell
Front, Managing Attorney).
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Before Seeherman, Ritchie and Gorowitz, Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
Fona International, Inc. (applicant) has appealed the final refusal of its
application for the mark CONSIDER IT DONE for “business consulting services
related to the development and use of flavors”1 pursuant to Section 2(d) of the
Trademark Act on the ground of likelihood of confusion with the mark
CONSIDER IT DONE for “business consultation services, namely consultation
relating to business strategy, including assessing a company's existing
operations, and advising on the development of technology-related

1 Application Serial No. 85344795, filed June 13, 2011, based on Section 1(b) of the
Trademark Act (intent-to-use).
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methodologies in the field of project management; consultation relating to
outsourcing of computerized business functions; business consultation relating
to the fields of electronic commerce and electronic business; business
consultation relating to the field of on-line business transactions, namely
marketing, order processing, and order fulfillment; customer relationship
management; and employee leasing services, namely, providing information
technology professionals to others.”2
Before addressing the substantive refusal, we note applicant’s contention
that the examining attorney, in denying applicant’s request for reconsideration
on January 18, 2012, should have issued a “subsequent final refusal” with a
six-month-response clause because, according to applicant, applicant’s request
for reconsideration presented new evidence. Applicant’s complaint is not
proper subject matter for this appeal. If applicant believed that there was a
procedural error in examination, its recourse was to file a petition to the
Commissioner. Further, any objection that applicant had to this point of
examination was waived by applicant’s not pursuing the objection at the proper
time, but proceeding with the filing of its notice of appeal on May 21, 2012.3

2 Reg. No. 2718991, issued May 27, 2003; Section 8 accepted and Section 15
acknowledged. The registration also includes services in Class 42, however the refusal
was not based on the services in this class.
3 It is noted that applicant stated in its brief that its attorney had spoken with
someone in the examining attorney’s law office, but did not receive any further
correspondence from that person. However, the onus was on applicant to take
appropriate further action. We also point out that, if applicant believed that it should
have been able to submit evidence in response to the denial of the request for
reconsideration, it could have filed a request for remand with the Board at the time it
filed its notice of appeal.
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Turning next to the substantive refusal, 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 turn first to the du Pont factor of the similarity and nature of the
goods. As set forth in the Dixie Restaurants case:
“Likelihood 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 v. Wells Fargo Bank, N.A. , 811 F.2d 1490, 1
USPQ2d 1813, 1815 (Fed. Cir. 1987).

Applicant’s services are identified as “business consulting services
related to the development and use of flavors.” The services in the cited
registration are, inter alia, “business consultation services, namely
consultation relating to business strategy, including assessing a company's
existing operations, and advising on the development of technology-related
methodologies in the field of project management.”
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Contrary to applicant’s assertion, the registrant’s services are not
restricted to “custom information technology.” Appeal Brief, p. 8. The services
are identified as “business consultation services, namely consultation relating
to business strategy including assessing a company's existing operations, and
advising on the development of technology-related methodologies in the field of
project management.” The specific services set forth after the word “including,”
i.e., “assessing a company's existing operations, and advising on the
development of technology-related methodologies in the field of project
management,” are examples of the business consultation services, rather than
limitations thereof.
The registrant’s identified “business consultation services, namely
consultation relating to business strategy” encompasses the “business
consulting services related to the development and use of flavors” identified in
the application. The determination of the specific flavors to be developed and
the use thereof is a decision that can be part of consultation relating to
business strategy. Therefore, business strategy consultation in the flavor
industry necessarily includes consultation related to the development and use
of flavors and thus these services are encompassed by the identification in the
cited registration.
Accordingly, we find that applicant’s services, as identified, are in part
legally identical to the services identified in the cited registration.
“It is well established that absent restrictions in the application and
registration, [identical] goods and services are presumed to travel in the same
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channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d, 1905, 1908 (Fed. Cir. 2012). Because the services are in
part legally identical, they are presumed to travel in the same channels of trade
to the same classes of purchasers.
As for the du Pont factor of the similarity of the marks, the marks are
identical. Accordingly, this factor favors a finding of likelihood of confusion.
Applicant contends that its “customers are business professionals in the
flavor industry who are very knowledgeable about the industry.” Appeal Brief
p. 9. We agree that purchasers of business consulting services are likely to be
sophisticated and that it is possible that the sophistication of purchasers can
minimize a likelihood of confusion. However, even sophisticated purchasers
are likely to be confused when identical marks are used for legally identical
services. In re Cynosure Inc., 90 USPQ2d 1644, 1647 (TTAB 2009). See also In
re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir.
1986).
Applicant also contends that the cited mark is relatively weak and
entitled to a narrow scope of protection.
Applicant submitted evidence regarding third-party use and registration
of the phrase CONSIDER IT DONE, consisting of five registrations and pages
from nine websites, for various services, i.e., “property management, including
accounting,” “aviation support,” “marketing assistance for real estate agents,”
“event planning,” “professional errand and personal assistance services” and
“junk removal and cleanouts.” The registrations correspond to five of the
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websites. In addition, we take judicial notice that the slogan CONSIDER IT
DONE means “you will do a particular task immediately.”4 Accordingly, we
agree with applicant that the mark has some suggestive significance with
regard to business consultation services. However, even if we treat the cited
mark as not being entitled to the same degree of protection as an arbitrary
mark, the scope of protection due the cited registration still extends to prevent
the registration of the identical mark in connection with legally identical
services. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108, 109 (CCPA 1974).
Having considered all the evidence and argument on the relevant du Pont
factors, we find that applicant’s mark CONSIDER IT DONE for “business
consulting services related to the development and use of flavors” is likely to
cause confusion with the cited registration for the mark CONSIDER IT DONE
for “business consultation services, namely consultation relating to business
strategy.”
Decision: The refusal to register the mark is affirmed.

4 We take judicial notice of the meaning of the phrase, CONSIDER IT DONE, which
was obtained from the Cambridge Advanced Learner’s Dictionary and Thesaurus, ©
Cambridge University Press, located online at http://dictionary.cambridge.org.
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).