Harlow – HRK Sales & Marketing, Inc.

Trademark Trial and Appeal Board

Aug 20, 2015

No. 85937185 (T.T.A.B. Aug. 20, 2015)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
August 20, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re Harlow – HRK Sales & Marketing, Inc.
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Serial No. 85937185
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B. Joseph Schaeff of Dinsmore & Shohl LLP for Harlow – HRK Sales & Marketing,
Inc.

Bridgett G. Smith, Trademark Examining Attorney, Law Office 115 (John Lincoski,
Managing Attorney).
_____

Before Seeherman, Bergsman, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Harlow – HRK Sales & Marketing, Inc. (“Applicant”) has filed an application to
register on the Principal Register the mark SDM in standard characters for the
services set forth below:
product consulting services for the retail store industry,
namely, consulting services with respect to the use of
retail store product displays, demonstrations and
promotions to enhance sales; consulting services, namely,
providing retail store owners and operators with
comparisons of their store set-up, in-store marketing
activities and sales with those of competitors; consulting
services, namely, providing reports regarding retail
consumer shopping habits, retail store traffic flow and the
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influence of product display and placement on retail store
purchases; statistical evaluations of marketing data,
namely, analysis of marketing reports, statistics and
surveys respecting retail store traffic flow, retail
consumer shopping habits, and the influence of product
display and placement on retail store purchases, in
International Class 35.1
The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as used
in connection with Applicant’s services, so resembles the registered mark SDM (in
standard characters) as to be likely to cause confusion, or to cause mistake, or to
deceive. The cited mark is registered for the services set forth below:
Providing a website featuring online buyer's and
distributor's guides, classified advertisements, and
employment opportunities relating to the computer safety
and security products and services industry and the
building safety and security products and services
industry; advertising services; providing a website
featuring business information in the field of computer
safety and security products and building safety and
security products, in International Class 35;
Providing online non-downloadable publications in the
nature of newsletters, magazines, and articles in the field
of computer and building safety and security products and
services industry; providing online journals, namely, blogs
in the field of computer and building safety and security
products and services industry, in International Class 41.2

1 Application Serial No. 85937185, filed May 20, 2013 under Trademark Act Section 1(b), 15
U.S.C. § 1051(b), on the basis of Applicant’s bona fide intent to use the mark in commerce.
2 Reg. No. 4103947, issued February 28, 2012.
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The Examining Attorney has made clear in her brief that “[t]he refusal is solely
based on the Registrant’s services identified as ‘advertising services.’”3 Applicant
has appealed from the Examining Attorney’s final refusal. The case is fully briefed.
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 as set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods and services at issue. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, Applicant
and the Examining Attorney have also submitted arguments regarding
sophistication of customers, trade channels, and other considerations.
A. The marks.
We first consider the similarity or dissimilarity of the marks at issue in their
entireties as to appearance, sound, connotation and commercial impression. See
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The marks are identical in
appearance, and there is no evidence or argument to suggest that they would be
pronounced differently; or that they differ in any way in meaning or commercial
impression as applied to the services. Accordingly, we treat the marks as identical
in all respects.

3 Examining Attorney’s brief, 9 TTABVUE 4.
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B. The services.
We turn next to the similarity or dissimilarity of the services as they are
identified in the application and registration at issue. See Octocom Syst. Inc. v.
Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990); Kalart Co., Inc. v. Camera-Mart, Inc., 119 USPQ 139 (CCPA 1958); In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981). The services at issue do not have to be
identical or even competitive in order to find that there is a likelihood of confusion.
See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475
(Fed. Cir. 2000); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010).
“[E]ven if the goods in question are different from, and thus not related to, one
another in kind, the same goods can be related in the mind of the consuming public
as to the origin of the goods. It is this sense of relatedness that matters in the
likelihood of confusion analysis.” Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1898 (Fed. Cir. 2000).
With respect to the services of Registrant, our analysis is confined to “advertising
services,” because the Examining Attorney has based her refusal solely on these
services. Applicant uses the overall term “consulting services” in describing its
specific services and, for purposes of this analysis, we think it is fair to describe
them, broadly, as “marketing consultation services for retail stores.”
In order to demonstrate that the services of Applicant and Registrant are related,
the Examining Attorney has made of record several third-party registrations that
she contends cover services similar to those in both the application and registration
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at issue.4 Third-party registrations that are based on use in commerce and which
individually cover a number of different services may have some probative value to
the extent that they serve to suggest that the listed services are of a type which may
emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-1786; In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988). However, when one examines the identifications of these third-party
registrations, only one is arguably the same as the consulting services identified in
Applicant’s application:
Reg. No. Relevant services.
4390804 Consumer product marketing services, namely, product
merchandising, business marketing consulting services, and
direct marketing advertising for others; … advertising agency
services; Business marketing consulting services, namely,
arranging in-store promotions and of consumer products …

Two other registrations include services that are similar, but not the same as
Applicant’s:
Reg. No. Relevant services.
4228007 Advertising and publicity services, namely, promoting the goods,
services, brand identity and commercial information and news of
third parties through print, audio, video, digital and on-line
medium; business marketing consulting services; … preparing
and placing advertisements for others …

4343863 Advertising and marketing; advertising and marketing
consultancy; … advertising and marketing services, namely,
promoting the goods and services of others; … advice in the field
of business management and marketing; assistance, advisory

4 Office Action of April 14, 2014 at 17-44.
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services and consultancy with regard to … marketing and
customer analysis; ….5

The Examining Attorney has also submitted several internet posts that treat
advertising and marketing as related business concepts. The following excerpts are
representative:
You will often find that many people confuse marketing
with advertising or vice versa. While both components are
important, they are very different. … Advertising is a
single component of the marketing process. …The best
way to distinguish between advertising and marketing is
to think of marketing as a pie, inside that pie you have
slices of advertising, market research, media planning,
public relations, product pricing, distribution, customer
support, sales strategy, and community involvement.
Advertising only equals one piece of the pie in the
strategy.6
Whether a business is an established global brand or a
start-up, effective advertising and marketing can be the
key to its success.7
The record includes a list entitled “Top Advertising & Marketing Companies on the
2013 Inc. 5000”;8 however, the list does not indicate whether the companies listed
provide advertising, marketing, or both. There is also a web page from the New

5 The Examining Attorney has also submitted Reg. Nos. 4158724, 4213888, and 4158724,
id. at 17-19; 26-31, which cover advertising services and the provision of marketing reports.
Although the provision of marketing reports is somewhat similar to services identified by
Applicant, it is not the same and we therefore do not find these three registrations
probative as to whether a single source would provide the services of both Applicant and
Registrant.
6 “Marketing vs. Advertising: What’s the Difference?” at ; Office Action of April
14, 2014 at 45.
7 “Advertising and Marketing,” at Bureau of Consumer Protection website, id. at 47.
8 Id. at 50-53.
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York University website indicating that its Office of Advertising & Publications
offers both placement of advertisements and marketing consultation.9
Finally, we note that the Examining Attorney has made of record definitions of
the words “advertising,”10 “marketing,”11 and “merchandising.”12 The definition of
“advertising” at states in relevant part:
1: the action of calling something to the attention of the
public especially by paid announcements
…
3: the business of preparing advertisements for
publication or broadcast
…
Advertising noun (Concise Encyclopedia)

Techniques and practices used to bring products, services,
opinions, or causes to public notice for the purpose of
persuading the public to respond in a certain way. … The
first advertising agencies were established in the 19th
century to broker for space in newspapers, and by the
early 20th century agencies were producing the
advertising message itself, including copy and artwork.
Most advertising promotes goods for sale …13

The entry for “marketing” states:
Activities that direct the flow of goods and services from
producers to customers. … Once primarily concerned with
increasing sales through ADVERTISING and other
promotional techniques, corporate marketing
departments now focus on credit policies (see CREDIT),
product development, customer support, distribution, and
corporate communications. …

9 Id. at 49.
10 Office Action of November 25, 2014 at 3-4.
11 Office Action of April 14, 2014 at 14.
12 Id. at 8-13. We note that Applicant has carefully purged all references to “merchandising”
from its recitation of services.
13 Office Action of November 25, 2014 at 3-4.
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On the basis of the evidence of record, the Examining Attorney argues that “the
services identified in the subject application are a subset of those identified in the
cited registration.”14 The Examining Attorney also argues:
The applicant’s services provide[ ] consulting related to
“product displays, demonstrations and promotions”
specifically to enhance sales. Additionally, the reports
regarding retail consumer shopping habits, retail store
traffic flow and the influence of product display and
placement are all used to determine how to best market
goods which will be done by various means, including
advertising. … This would suggest that the Applicant
consults with the store on how to best advertise a
particular product to increase its sales for that product.15
Applicant responds that “Applicant’s consulting services are not a subset of
advertising services.”16 On this point, we must agree with Applicant, as the evidence
of record does not show that business consultation on the subject of marketing is
considered to be a component of “advertising services.” Even if we assume that some
of the subject matter of Applicant’s consultation services is essentially the subject of
“advertising” or of an aspect of “advertising,” none of the evidence shows that such
marketing consultation is regarded as an aspect of the service of “advertising.”
Rather, a careful reading of the definitions and discussions of advertising and
marketing in the record suggest that they are considered different disciplines.
We also find that the evidence adduced to show that a single business may offer
both advertising services and consultation on marketing matters is very scant. The
only evidence from the marketplace (relating to New York University) is not highly

14 Examining Attorney’s brief, 9 TTABVUE 6.
15 Id. at 8.
16 Applicant’s reply brief at 3, 12 TTABVUE 3 (emphasis in original).
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probative, because a university is not typical of a business in the advertising and
marketing fields. As for the third-party registrations, as previously stated, only one
is for services that are arguably the same as those of Applicant and Registrant.
Even if we were to treat all three of the registrations as being for services identical
to Applicant’s and Registrant’s services, we cannot find on the basis of this small
number of registrations that the services are related.17
The record before us indicates that advertising and marketing may be considered
aspects of business operations, but it does not show that advertising services and
marketing consultation for retail stores are so related that customers would be
likely to believe they are provided by the same entity.
C. Trade channels.
The Examining Attorney argues that “[a]bsent restrictions in an application
and/or registration, the identified goods and/or services are ‘presumed to travel in
the same channels of trade…’” (citing In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1908 (Fed. Cir. 2012)). Where the services at issue are not the same, as in the
case before us, it is neither fair nor logical to make this presumption. (It is, of
course, fair to presume that the services travel in all normal channels of trade for
the services as described in the identification. Coach Services Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012).)

17 Our consideration of the Examining Attorney’s argument that Applicant’s services are
within the normal zone of expansion with respect to Registrant’s services is subsumed in
our analysis of the degree of commercial relatedness of the services. In re 1st USA Realty
Professionals Inc., 84 USPQ2d 1581, 1584, fn.4 (TTAB 2007).The most relevant evidence on
this point would be a showing that other companies actually have undertaken to provide
both types of services. As noted, the amount of evidence of this type is scant.
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Applicant’s recitation of services contains the limiting language “for the retail
store industry” and “providing retail store owners and operators…,” thereby
indicating that Applicant’s services will travel only through trade channels directed
to such stores and their owners and operators. Applicant argues in its brief that
“Applicant’s services are directed toward large retail chains, mostly grocery stores
…”18 As retail stores are among the types of businesses that may avail themselves
of the advertising services, it is reasonable to assume that the services of Applicant
and Registrant may both be found in those normal advertising channels that are
intended to reach retail stores and their management.
D. Sophistication of customers.
Applicant argues that “Applicant’s and Registrant’s services are marketed to
discerning, knowledgeable consumers … Applicant’s services are directed toward …
knowledgeable retail professionals … Registrant’s services are marketed to
management and technical professionals …”19 The Examining Attorney argues that
“There is no support in the record to support this proposition [that the customers
are discerning and knowledgeable].”20
As noted above, Applicant’s recitation of services contains the limiting language
“for the retail store industry” and “providing retail store owners and operators.”

18 Applicant’s brief at 10, 7 TTABVUE 10.
19 Id.
20 Examining Attorney’s brief, 9TTABVUE 12.
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These are significant limitations on the classes of customers.21 We do not accept
Applicant’s characterization of Registrant’s customers, because the registration
contains no customer limitations and, thus, Registrant’s services could be offered to
any person who desires to place an advertisement. However, the class of customers
that would likely be exposed to both marks consists of business professionals that
avail themselves of both advertising and retail store marketing consultation
services. It is fair to assume that business professionals would exercise an elevated
degree of care in selecting either advertising services or marketing consultation,
because both services are directly related to the success of the business. The
selection of such services would be made at the managerial level, after consideration
of the company’s needs, and possibly after a comparison of competing service
providers. Moreover, such business services would be fairly expensive or, at least,
not so inexpensive as to be selected on impulse. While there is an overlap of
customers, they are sophisticated customers who would exercise care in selecting
the services, under circumstances that would reduce the likelihood of confusion.
E. Conclusion.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. On the present
record, in view of the sophistication of the relevant customers and no clear showing

21 The identified services that lack such limitations are the provision of business reports
and evaluation of marketing data, both of which, by their nature, would be services offered
to business professionals.
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that the services at issue are likely to emanate from a single source, we find no
likelihood of confusion, mistake or deception as to the source of Applicant’s services.
Decision: The refusal to register is reversed.