Gary L. Avant and Dana A. Avant

Trademark Trial and Appeal Board

Sep 11, 2007

No. 78614165 (T.T.A.B. Sep. 11, 2007)

Mailed:
September 11, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Gary L Avant and Dana A. Avant
________

Serial No. 78614165
_______

Robert N. Blackmon of Merek, Blackmon & Voorhees, LLC for
Gary L. Avant and Dana A. Avant

Ray Thomas, Trademark Examining Attorney, Law Office 102
(Thomas V. Shaw, Managing Attorney)
_______

Before Seeherman, Grendel and Cataldo, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Gary L. Avant and Dana A. Avant, joint applicants,
have appealed from the final refusal of the Trademark
Examining Attorney to register WISDOM MATRIX in standard
character format, with MATRIX disclaimed, for the following
services, all in Class 42:
designing, implementing and maintaining
world wide web sites, world wide web
applications, and world wide web e-
commerce systems for others; computer
programming for others; computer
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78614165
2
software development, namely writing
and updating of data processing and
data management programs for others;
consulting services in the field of
utilization of computer networks and
databases for business and commercial
purposes; consulting and computer
software design for others in the field
of workflow automation; consulting
services in the field of design,
selection, implementation and use of
computer hardware and software systems
for others; installation, maintenance
and repair of computer software.1

Registration has been refused pursuant to Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicants’ mark, if used in connection with their
identified services, so resembles the mark WISDOM,
previously registered for the following goods and services,
that it is likely to cause confusion or mistake or to
deceive.2
Computer software for sales management,
namely, software for creating and
maintaining profiles of customers and
potential customers, and for
maintaining comparative information on
the goods and services of competitors;
all for use by sales businesses, namely
businesses which are engaged primarily
in marketing goods and services to
others, and all relating to the
development and operation of such sales
businesses (Class 9);

1 Application Serial No. 78614165, filed April 21, 2005,
asserting a bona fide intent-to-use the mark in commerce.
2 Registration No. 2905385, issued November 30, 2004.
Ser No. 78614165
3
Computerized database management,
relating to the development and
operation of sales businesses (Class
35); and

Computer systems consultancy; computer
systems analysis; computer programming
services for others; computer software
design for others; updating of computer
software; computer consultancy and
advisory services; installation of
computer software; all relating to the
development and operation of sales
businesses (Class 42).

Applicants and the Examining Attorney have filed
briefs, and applicants filed a reply brief.3
Before addressing the substantive issue in this
appeal, we must consider some evidentiary problems. With
their appeal brief applicants submitted a number of
exhibits, amounting to approximately 60 pages. The
Examining Attorney has objected to these exhibits as being
untimely.
Trademark Rule 2.142(d) provides that the record in
the application should be complete prior to the filing of
an appeal, and that the Trademark Trial and Appeal Board
will ordinarily not consider additional evidence filed with

3 Applicants filed their appeal brief two days after the due
date for such filing, and requested that their late-filed brief
be accepted. The Board did not specifically address applicants’
motion, although the granting of the motion was implicit in the
fact that the March 21, 2007 order “noted” the brief and
forwarded the file to the Examining Attorney for preparation of
his brief. This will confirm that applicants’ motion to accept
their late-filed brief was granted.
Ser No. 78614165
4
the Board by the applicant or by the Examining Attorney
after the appeal is filed. None of the materials submitted
with applicants’ brief was made of record during the
prosecution of the application. However, applicants have
made certain arguments in their reply brief as to why these
exhibits should be considered. With respect to Exhibit 1,
which is the file of the cited registration, applicants
claim that because applicants quoted from that file in
their response to the first Office action, and the
Examining Attorney “did not object or otherwise advise
applicant that a listing is insufficient to make such
registration file history of record at a point when the
applicant could cure the insufficiency,” reply brief, p. 6,
the Examining Attorney waived his objections. Applicants
have apparently confused Board policy regarding timely
objections to listings of registrations with making an
actual file wrapper of record. The quotes from the
registrant’s arguments during the prosecution of its own
application are not a “listing,” and the Examining Attorney
would have had no reason to know that applicants wished to
rely on the entire file wrapper merely by the fact that
applicants quoted some statements from that file.
Applicant also argues that the Examining Attorney has made
the file history of record merely by citing the
Ser No. 78614165
5
registration against applicants’ application. Applicants
have provided no support for such a position, and we do not
accept it. Nor do we accept applicants’ argument that the
entire file should be treated as of record because “the
application in full is readily available to the Examiner by
a click of a button (i.e., electronically).” Reply brief,
p. 6. Thus, the Examining Attorney’s objection to Exhibit
1 is well taken, although the quotes from the file that
applicants reported in their response to the first Office
action are of record. Further, in their response to the
first Office action applicants, referring to a document in
the file of the cited registration, stated that:
a prior registrant of a still active
registration to WISDOM, admitted in the
later filed registration that multiple
users of WISDOM would likely not
interfere with each other. See the
letter from Westbrook International
Ltd. enclosed herewith from the file
history of the Examiner’s cited
registration 2,905,385.

Response filed April 10, 2006. There was no attachment to
the response, but the Examining Attorney never advised
applicants that it was missing. As a result, we have
considered that page of Exhibit 1 consisting of what we
have assumed is the letter to which applicants referred.
In this connection, we note that applicants misidentified
the letter, in that Westbrook International Ltd. is the
Ser No. 78614165
6
name of the owner of the registration that has been cited
against applicants’ application, and the letter attached to
applicants’ brief was sent by a company called Robertson.
We also note that applicants’ characterization of what the
letter said is not correct, and that the letter actually
says:
Having circulated your previous
communication regarding the Wisdom
trademark and received no protestations
from my colleagues and staff, I can
only assume that there is little belief
that your utilisation of the Wisdom
brand name will interfere with our
product’s commercial development.
Consequently, we confirm our agreement
to your utilisation of the brand name
in a product as described in your
previous communication. Best wishes
for its successful implementation.

Exhibit 2 consists of 14 third-party registrations for
WISDOM marks. Two of these registrations, Nos. 2377363 and
2308357, are of record because the Examining Attorney, in
responding to applicants’ argument in their response to the
first Office action, included copies of the registrations
with his final Office action. As for the other
registrations, applicants assert that they should be
considered because they have either been made part of the
record by the Examining Attorney, or because of the
Examining Attorney’s failure to previously object to them.
It is applicants’ position that the registrations were made
Ser No. 78614165
7
part of the record by the Examining Attorney because the
search strategy in the application file shows that the
Examining Attorney searched for all “non-dead” applications
and registrations that included the term WISDOM, and the
search results show that the Examining Attorney viewed 400
of the hits and 219 of the images. As a result, applicants
assert that the records of the registrations were “in front
of the Examiner and were effectively ‘electronically’
attached to the file history of the Application by this
action as assuredly as if the Applicant has [sic]
electronically submitted scanned copies of the
registrations for review by the Examiner.” Reply brief,
p. 7. We are not persuaded by this argument. Board
practice is very clear as to how third-party registrations
are to be made of record: by submitting soft copies of the
registrations, or their electronic equivalent, during
prosecution/examination of the application, not by
speculating about what registrations an Examining Attorney
might have viewed.4 See TBMP §1208.02 and cases cited
therein (“to make a third-party registration of record, a
copy of the registration, either a copy of the paper USPTO

4 It is unclear on what applicants base their position that
merely viewing material makes it of record. Certainly they have
pointed to no cases to support it.
Ser No. 78614165
8
record, or a copy taken from the electronic records of the
Office, should be submitted”).
Nor has the Examining Attorney waived any objection to
the third-party registrations merely because applicants
stated, in their response to the first Office action, that
“there are at least 26 other registrations that include
WISDOM.” This is not a “listing” of registrations that
would trigger a requirement for the Examining Attorney to
advise applicants that a listing is insufficient to make
the registrations of record, particularly since applicants
actually identified two registrations by number elsewhere
in their response.
This brings us to the substantive issue, namely,
whether applicants’ mark is likely to cause confusion with
the mark that is the subject of Registration No. 2905385.
Our determination of this issue 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
Ser No. 78614165
9
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).
Turning first to the du Pont factor of the similarity
of the goods and services, we note that applicants have
applied to register their mark for services in Class 42,
while the cited registration is for goods in Class 9 and
for services in Classes 35 and 42. The Examining Attorney
takes the position that applicants’ mark is likely to cause
confusion with the registered mark in all three classes,
and has submitted evidence and argument to that effect.
Because the refusal must be affirmed if we find likelihood
of confusion with respect to the goods or services in any
of the three classes of the registration, we have limited
our discussion herein to the similarity of the services in
Class 42, which services are the closest to applicants’.
The Class 42 services identified in the cited
registration are “computer systems consultancy; computer
systems analysis; computer programming services for others;
computer software design for others; updating of computer
software; computer consultancy and advisory services;
installation of computer software; all relating to the
development and operation of sales businesses.”
Applicant’s services, as identified, are “designing,
Ser No. 78614165
10
implementing and maintaining world wide web sites, world
wide web applications, and world wide web e-commerce
systems for others; computer programming for others;
computer software development, namely writing and updating
of data processing and data management programs for others;
consulting services in the field of utilization of computer
networks and databases for business and commercial
purposes; consulting and computer software design for
others in the field of workflow automation; consulting
services in the field of design, selection, implementation
and use of computer hardware and software systems for
others; installation, maintenance and repair of computer
software.” Thus, both applicants and the registrant have
included in their identifications “computer programming for
others” and “installation of computer software.” We
recognize that all of the registrant’s services are
“relating to the development and operation of sales
businesses,” but because applicants have not limited their
computer programming services and installation services,
such services can relate to sales businesses as well.
Further, applicants’ updating of data processing and data
management programs can include data processing and data
management programs for sales businesses, and therefore is
legally identical to the “updating of computer software”
Ser No. 78614165
11
relating to sales businesses identified in the cited
registration, while applicants’ consulting services in the
field of design, selection, implementation and use of
computer hardware and software systems and their consulting
services in the field of utilization of computer networks
and databases for business and commercial purposes would be
encompassed by the registrant’s computer systems
consultancy and computer consultancy and advisory services
for sales businesses.
Applicants assert that the Examining Attorney has
taken an impermissibly broad reading of the registrant’s
services, pointing out that with respect to the Class 35
services, the registrant has defined “sales businesses” as
“namely businesses which are engaged primarily in marketing
goods and services.” This definition is not in the
identification of the Class 42 services, and it presents an
interesting theoretical question as to whether it should
apply to the other classes in the registration, all of
which refer to “sales businesses.” We need not answer that
question here, however, because even if such definition
were included in the identification, applicants’ “computer
programming for others” and their “installation of computer
software” would still encompass services for “businesses
which are engaged primarily in marketing goods and
Ser No. 78614165
12
services,” as would the updating of data processing and
data management programs and consulting services in the
filed of utilization of computer networks and databases for
business and commercial purposes and their consulting
services in the field of design, selection, implementation
and use of computer hardware and software systems. That
is, these services as identified could be rendered to
“businesses which are engaged primarily in marketing goods
and services.”
Accordingly, we find that applicants’ services are, in
part, legally identical to the services identified in the
cited registration.5 As such, they must be presumed to
travel in the same channels of trade and be rendered to the
same classes of consumers. These du Pont factors favor a
finding of likelihood of confusion.
Applicants have pointed out that some of the services
listed in their identification are not found in the cited
registration. This argument is unavailing. It is not
necessary to show that all of the goods or services listed
in a class are identical to or related to the goods or
services listed in a cited registration. Likelihood of

5 In view of our finding that the services are in part identical
we need not discuss the third-party registrations made of record
by the Examining Attorney which show the relatedness of other
services listed in the application.

Ser No. 78614165
13
confusion must be found if there is likely to be confusion
with respect to any item that comes within the
identification of goods or services in the application.
See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648
F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
This brings us to the similarity of the marks, keeping
in mind that when marks would appear in connection with
virtually identical services, as they do here, the degree
of similarity necessary to support a conclusion of likely
confusion declines. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992). 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). For
instance, as our principal reviewing court has observed,
"[t]hat a particular feature is descriptive or generic with
respect to the involved goods or services is one commonly
accepted rationale for giving less weight to a portion of a
mark." Id.
Ser No. 78614165
14
Here the cited mark is WISDOM, while applicants’ mark
is WISDOM MATRIX. Applicants have disclaimed the word
MATRIX. However, despite their disclaimer, applicants have
argued that this term is not descriptive of their services,
and that their mark “is a composite of two relatively equal
parts, WISDOM and MATRIX.” Brief, p. 11. Applicants state
that their “voluntary disclaimer of MATRIX cannot be the
basis for concluding that MATRIX is highly descriptive of
Applicants’ services.” Reply brief, p. 3. However,
applicants did not voluntarily disclaim MATRIX. Rather,
the Examining Attorney required that applicants disclaim
this word “because the term merely describes the nature of
the proposed computer-related services.” First Office
action.6 Applicants did not dispute this assessment, but
provided the disclaimer. As a result, there was no need
for the Examining Attorney to submit further evidence in
support of his position that MATRIX is a descriptive term.
Applicants’ compliance with a requirement cannot be
considered to be “voluntary.” Thus, applicants’ agreement

6 With this action the Examining Attorney submitted definitions
of “matrix” taken from the Dictionary.com website as meaning,
inter alia, “Computer Science: The network of intersections
between input and output leads in a computer, functioning as an
encoder or a decoder,” The American Heritage Dictionary of the
English Language, 4th ed. © 2000; “Fanciful term for a cyberspace
expected to emerge from current networking experiments; the
totality of present-day computer networks,” The Free On-line
Dictionary of Computing, © 1993-2005.
Ser No. 78614165
15
to the Examining Attorney’s requirement for a disclaimer on
the basis that MATRIX is merely descriptive of their
services is a concession that the term is descriptive.
In comparing the marks, therefore, it is appropriate
for us to give greater weight to the word WISDOM in
applicants’ mark, since it is this word, rather than the
descriptive term MATRIX, which has greater source-
identifying significance. WISDOM in applicants’ mark is,
of course, identical to the cited mark, WISDOM. The
additional word MATRIX in applicants’ mark does not change
the appearance or pronunciation or connotation of the word
WISDOM, and the marks are identical in this respect. The
additional descriptive word MATRIX in applicants’ mark does
not serve to distinguish it from WISDOM. Therefore, when
we compare the marks in their entireties, but give
appropriate weight to the stronger source-identifying
element WISDOM in applicants’ mark, we find that they are
similar in appearance, pronunciation, connotation and
commercial impression. See In re Chatam International
Inc., 380 F.3d 71, 71 USPQ2d 1944 (Fed. Cir. 2004 (JOSE
GASPAR GOLD for tequila likely to cause confusion with
GASPAR’S ALE for beer and ale); In re El Torito Restaurants
Inc., 9 USPQ2d 2002 (TTAB 1988) (MACHO COMBOS, with COMBOS
disclaimed, for combination plates of food items as a part
Ser No. 78614165
16
of restaurant services likely to cause confusion with MACHO
in stylized form for specialty prepared sandwich as a part
of restaurant services).
We note applicants’ argument that the cited mark is
weak, and the registration is entitled to a limited scope
of protection. The only evidence of record on which
applicants base this assertion consists of two third-party
registrations, one of which, No. 2377363, is for WISDOM for
“charitable fundraising services namely, providing
management of and access to donor data to non-profit
organizations over the global computer network” and the
other, No. 2308357, is a cancelled registration for WISDOM
for “database management computer software, and
accompanying documentation sold as a unit, to provide
integrated agricultural pest, fertilizer, and crop
management systems.” Third-party registrations are not
evidence that the marks shown therein are in use or that
the public is aware of them. See AMF Incorporated v.
American Leisure Products, Inc., 177 USPQ 268, 269 (CCPA
1973) ("little weight is to be given such registrations in
evaluating whether there is likelihood of confusion."). We
recognize that third-party registrations may be used in the
manner of dictionary definitions, to show that a term has a
significance for particular goods or services. However, we
Ser No. 78614165
17
are unable to conclude from these two registrations, which
are for different services from those at issue herein, that
WISDOM has a suggestive meaning that would limit the scope
of protection to be accorded the cited registration.
Further, even if we were to consider the cited mark as
“weak,” weak marks are still entitled to protection from
the registration of a highly similar mark for identical
services. See In re Colonial Stores, Inc., 216 USPQ 793
(TTAB 1992); see also King Candy Co. v. Eunice King's
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974)
(likelihood of confusion is to be avoided as much between
weak marks as between strong marks.)
Applicants also point to statements made by the owner
of the cited registration when it was prosecuting its own
application, and seeking to avoid a rejection based on
another party’s registration. As noted previously, the
file of that registration is not of record, so we have not
considered the papers from that file that were submitted
with applicants’ appeal brief, but only the statements from
the file that applicants quoted in their response to the
first Office action, which was applicants’ only submission
other than their appeal papers.
The quoted statements follow (the bracketed language
is applicants’:
Ser No. 78614165
18
Each of the cited [WISDOM]
registrations is for the identical mark
WISDOM. The coexistence of these four
WISDOM registrations, all covering
software, shows that the public is
accustomed to seeing WISDOM used for
software by different entities. Words
such as SMART, INTELLIGENT, and WISE
are commonly used in the field of
computer software, and the cited marks
are thus not entitled to a broad scope
of protection with respect to the goods
covered by the registrations.”

All of the [WISDOM] registrations cover
goods which would typically be sold to
sophisticated specialists who are not
susceptible to confusion. None of the
software in question would be purchased
on impulse, or without careful
consideration of the nature and quality
of the company standing behind the
software.

And, as we indicated previously, we have treated of record
the letter in the file of the cited registration from the
Robertson company, in which they agreed to the registrant’s
“utilisation of the brand name in a product.”
With respect to the present registrant’s statements
during the prosecution of its application, such statements
are facts that:
may be received in evidence as merely
illuminative of shade and tone in the
total picture confronting the decision
maker. To that limited extent, a
party's earlier contrary opinion may be
considered relevant and competent.
Under no circumstances, may a party's
opinion, earlier or current, relieve
the decision maker of the burden of
Ser No. 78614165
19
reaching his own ultimate conclusion on
the entire record.

Interstate Brands Corp. v. Celestial Seasonings, Inc., 576
F.2d 926, 198 USPQ 151, 154 (CCPA 1978). Here, the
registrant’s comment that third-party registrations show
that the public is used to seeing WISDOM used for software
is incorrect. As we have previously noted, the existence
of third-party registrations is not evidence that the marks
shown therein are in use, or that the public is familiar
with them. The registrant also makes the statement that
WISE, SMART and INTELLIGENT are commonly used, and that the
owners of the registrations cited against it are not
entitled to a broad scope of protection with respect to the
goods covered in the registrations. Of course, the mark at
issue herein is WISDOM, not WISE, SMART or INTELLIGENT, and
we are concerned here with services, rather than goods. On
this record, there is no evidence that third parties use
WISDOM marks in connection with services relating to
computer software and the like. We certainly cannot
extrapolate from the registrant’s comments that this is the
case. And, as we stated above, even weak marks are
entitled to protection from the use of similar marks on
identical services.
Ser No. 78614165
20
Nor can we treat the letter by the Robertson company
as an indication that those familiar with the field believe
there is no confusion between the present applicants’ use
of their mark for their identified services and the cited
registrant’s use of its mark for its identified goods and
services. The letter only indicates that the Robertson
company does not have a concern about confusion between the
cited registrant’s “product” and the Robertson company’s
own mark or goods and services. We have no information
from this letter as to what the Robertson company’s mark or
goods or services are, and this company’s assessment about
likelihood of confusion between the registrant’s use and
its own use has virtually no probative value with respect
to whether competitors believe there is likelihood of
confusion between the use of applicants’ mark for their
identified services and the registrant’s mark.
The one “fact” in the quoted language that we consider
significant is that the registrant implies that consumers
of its goods would be careful and sophisticated purchasers.
We would agree the registrant’s services, since they all
relate to “the development and operation of sales
businesses,” would be purchased by businessmen who would
exercise care in choosing their vendors. Similarly,
applicant’s services are of a complicated-enough nature
Ser No. 78614165
21
that those who obtain them will select them with care.
This du Pont factor of the conditions of purchase favors
applicants.
However, this factor is not sufficient to outweigh the
factors of the similarity of the marks and the legally
identical services. Even if consumers note that
applicants’ mark includes the word MATRIX, they are not
likely to view this additional word as indicating a
different source of the services. Rather, they are more
likely to treat WISDOM MATRIX, when used in connection with
legally identical services, as a variation of the WISDOM
mark, and to consider that both marks identify services
emanating from a single source.
Finally, we note that applicants have asserted one
additional du Pont factor as being relevant to our decision
herein, namely, the nature and extent of any actual
confusion. Applicants state that “on information and
belief, there has been no instances of actual confusion
between Registrant’s mark and Applicant’s mark.” Brief,
p. 21. However, applicants filed their application based
on an asserted intention to use their mark, not on actual
use, and there is no information in the record that
applicants have even commenced use, let alone evidence to
show that there has been sufficient and geographically
Ser No. 78614165
22
coextensive use of both applicants’ and the registrant’s
mark for us to conclude that there has been an opportunity
for incidents of confusion to occur if confusion were
likely. And we categorically reject applicants’ suggestion
that the “consent” from Robertson to the registrant
provides any evidence whatsoever as to whether confusion
would occur between the use of applicants’ and the
registrant’s marks. Thus, we treat this du Pont factor as
neutral.
Decision: The refusal of registration is affirmed.