HSB Solomon Associates LLC

Trademark Trial and Appeal Board

Aug 10, 2016

No. 86404383 (T.T.A.B. Aug. 10, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 10, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re HSB Solomon Associates LLC
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Serial No. 86404383
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George R. Schultz of Schultz & Associates, PC
For HSB Solomon Associates LLC

Laura Golden, Trademark Examining Attorney, Law Office 103,
Michael Hamilton, Managing Attorney.
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Before Cataldo, Adlin and Lynch
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

HSB Solomon Associates LLC (“Applicant”) seeks registration on the Principal
Register of the mark PEI, in standard characters, for “Business consulting services,
namely, benchmarking and forecasting analyses in the field of chemical refining and
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power generation” in International Class 35.1 The Examining Attorney refused
registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
ground that use of Applicant’s mark is likely to cause confusion with the registered
mark PEI, also in standard characters, for services that include, inter alia, “Business
consulting services in the fields of plant operations, plant supervision, profitability
analysis, management, plant organization, job performance improvement strategy
development, and workplace capability assessments” in International Class 35.2
After the Examining Attorney made the refusal final, Applicant appealed and
requested reconsideration. The Examining Attorney denied the request for
reconsideration, and the appeal resumed. We affirm the refusal to register.
The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, hereinafter the “du Pont factors”); see also In re Majestic Distilling Co.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
relatedness of the services. See In re Chatam Int’l Inc., 380 F.2d 1340, 71 USPQ2d
1944 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes

1 Application Serial Number 86404383 was filed September 24, 2014, based on intent to use
under Section 1(b) of the Trademark Act, 15 USC § 1051(b).
2 Registration Number 4012896, issued August 16, 2011.
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to the cumulative effect of differences in the essential characteristics of the [services]
and differences in the marks.”).
Turning first to the similarity of the marks, this factor strongly favors a finding of
likely confusion because the marks are identical. Majestic Distilling, 65 USPQ2d at
1204.
Turning next to the services, we must determine whether their degree of
relatedness rises to such a level that consumers would mistakenly believe Applicant’s
and Registrant’s services emanate from the same source. We must focus on the
services as identified in the application and registration, not on extrinsic evidence of
actual use. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Systems, Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Furthermore,
“even when goods or services are not competitive or intrinsically related, the use of
identical marks can lead to an assumption that there is a common source.” In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993). See also Amcor, Inc.
v. Amcor Industries, Inc., 210 USPQ 70, 78 (TTAB 1981) (When both parties are using
or intend to use the identical designation, “the relationship between the goods on
which the parties use their marks need not be as great or as close as in the situation
where the marks are not identical or strikingly similar”).
The identifications of services in the subject application and cited registration
contain the identical prefatory language “business consulting services.” While
Applicant limits its business consulting services to forecasting and benchmarking in
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the chemical refining and power generation industries, the cited registration contains
no industry-specific limitation of its business consulting services. Rather, the
business consulting services in the registration are, without regard to industry, in the
“fields of plant operations, plant supervision, profitability analysis, management,
plant organization, job performance improvement strategy development, and
workplace capability assessments.” To the extent some of the services in the
registration relate to plants, the evidence of record shows that chemical refining
companies may operate chemical refinery plants and power generation companies
may operate power plants.3 Thus, Applicant’s narrower industry focus is
encompassed by the cited registration’s services.
Turning to the types of business consulting services at issue, Applicant’s
“forecasting” involves predicting future business outcomes,4 and its “benchmarking”
involves comparing performance metrics of businesses.5 We find that certain of the
business consulting services in the cited registration are broad enough to encompass
forecasting and benchmarking. For example, the service of consulting on
“management” in the cited registration is expansive, as “management” generally
consists of supervising and making decisions about a business.6 Thus, consultation

3 November 24, 2014 Office Action at 8-26; June 23, 2015 Office Action at 41-48, 51-52, 55-
58, 64-67.
4 June 23, 2015 Office Action at 23-37. We have not relied on the dictionary definitions from
British English or U.K. versions of online dictionaries that the Examining Attorney included
in the record. See In re Manwin/RK Collateral Trust, 111 USPQ2d 1311, 1313 n.18 (TTAB
2014).
5 June 23, 2015 Office Action at 5-8, 15-19. See footnote 4, supra.
6 Merriam-Webster Dictionary online, entry for “management” includes the definitions, “the
act or skill of controlling and making decisions about a business, department, sports team,
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on management could include forecasting and benchmarking necessary to make
strategic decisions about the business. We reject Applicant’s contention that
“management” and other services in the cited registration exclusively “function to
control human resources,” and therefore do not relate to benchmarking and
forecasting.7 This claim is not supported by the definition of “management” or any
evidence of record. Similarly, the cited registration’s consulting on “profitability
analysis” could include forecasting or benchmarking consultations as part of the
service. Although we acknowledge Applicant’s mere argument that this service only
covers the examination of financial records “to separate cost from gross income,”8
Applicant again points to no support in the record for this definition, and we find that
it is narrower than the meaning of the term in the identification of services, which
involves a study of the ability to make money.9
Given Applicant’s arguments about its industry focus and alleged “real world”
differences between the services at issue that are not reflected in the identifications
of services, we again point out that we must “decide this ex parte appeal based on the

etc.”; “the act or art of managing: the conducting or supervising of something (as a business).”
http://www.merriam-webster.com/dictionary/management. 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).
7 7 TTABVUE 8.
8 Id.
9 We take judicial notice of the following definitions: Merriam-Webster Dictionary online,
entry for “profitable” includes the definition “making money,” http://www.merriam-
webster.com/dictionary/profitability; entry for “analysis” includes the definition “a careful
study of something to learn about its parts, what they do, and how they are related to each
other.” http://www.merriam-webster.com/dictionary/analysis.
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information on the face of the cited registration; we do not read in limitations.” In re
Cook Medical Technologies LLC, 105 USPQ2d 1377, 1384 (TTAB 2012). However, as
we also stated in Cook Medical Technologies:
[A]pplicant was not without possible remedies here, including seeking a consent
from the owner of the cited registration, or seeking a restriction of the registration
under Section 18 of the Trademark Act, 15 U.S.C. § 1068. . . . A party in applicant’s
position can file a petition for cancellation of the cited registration, requesting a
restriction or modification of registrant’s description of its mark on the basis that
the description is “ambiguous or overly broad and not specific to the mark actually
used” in the marketplace. . . . Such a claim can be used to modify overly broad
identification of goods (for example, “computer programs”). See IdeasOne Inc. v.
Nationwide Better Health Inc., 89 USPQ2d 1952, 1954-55 (TTAB 2009), citing In
re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).
Id.
The services overlap in part, and this overlap renders the services legally
identical in part. See Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745
(TTAB 2014) (It is sufficient for a refusal based on likelihood of confusion that
relatedness is established for a service in each class). Thus, this factor also weighs in
favor of likely confusion.
We next consider the third and fourth du Pont factors relating to trade channels
and purchaser sophistication. Based on the partial overlap in services between the
application and the registration, it follows that the classes of purchasers and channels
of trade for such services also overlap and must be considered legally identical. See
Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part
identical and in-part related nature of the parties’ goods, and the lack of any
restrictions in the identifications thereof as to trade channels and purchasers, these
clothing items could be offered and sold to the same classes of purchasers through the
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same channels of trade.”); see also In re Smith and Mehaffey, 31 USPQ2d 1531, 1532
(TTAB 1994) (“Because the goods are legally identical, they must be presumed to
travel in the same channels of trade, and be sold to the same class of purchasers.”).
The recitation in the registration is unrestricted, and we presume that the services
in the cited registration are marketed in all usual trade channels and to all normal
classes of purchasers, including in the chemical refining and power generation
industries that are the focus of Applicant’s business consulting services. Cunningham
v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (affirming
Board finding that where the identification is unrestricted, “we must deem the goods
to travel in all appropriate trade channels to all potential purchasers of such goods”);
In re Wilson, 57 USPQ2d 1863, 1865 (TTAB 2001).
Applicant argues that its customers must be considered sophisticated because
they “are responsible for the operation of huge power plants and refineries in the oil
and gas industry.”10 Applicant further alleges that its services “cost hundreds of
thousands of dollars,” involve extensive communication, and are time-consuming,
such that consumers would have “a thorough understanding of the source.”11
However, these arguments are not persuasive because Applicant’s identification of
services controls, rather than Applicant’s characterization in the appeal brief of the
services as offered in the marketplace. See e.g., Stone Lion Capital Partners, 110
USPQ2d at 1162-63 (“Stone Lion effectively asks this court to disregard the broad

10 7 TTABVUE 9.
11 Id. at 10.
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scope of services recited in its application, and to instead rely on the parties’ current
investment practices … the Board properly considered all potential investors for the
recited services, including ordinary consumers seeking to invest in services with no
minimum investment requirement.”) (emphasis in original); Cunningham, 55
USPQ2d at 1846; see also Octocom Systems, 16 USPQ2d at 1787 (“The authority is
legion that the question of registrability of an applicant’s mark must be decided on
the basis of the identification of goods [or services] set forth in the application
regardless of what the record may reveal as to the particular nature of an applicant’s
goods [or services], the particular channels of trade or the class of purchasers to which
the sales of goods [or services] are directed”).
While Applicant alleges its actual customers are only large-scale power plants,
Applicant’s recited business consultation services are not so limited. They may be
offered to all types of power-generation or chemical-refining businesses, including
small businesses whose decision-making personnel may vary widely in terms of
experience, care and sophistication. Applicant submitted no evidence on the nature
of the industries suggesting otherwise. Thus, while we acknowledge some slight
sophistication inherent in the industries identified in Applicant’s identification, this
factor is not as compelling as Applicant contends, particularly as the identification of
services does not specify the relevant consumer.
Applicant’s reliance on Electric Design & Sales, Inc. v. Electric Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388 (Fed. Cir. 1992) for its customer sophistication
argument is misplaced. The pleaded registration in Electric Design & Sales, from
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which the Court inferred customer sophistication, covered “the design,
implementation and management of electronic data processing programs and
telecommunications services.” Id. at 1389. The Court also noted “Opposer sells its
computer services to customers in the medical, automotive, merchandising,
communications and other fields. Its customers are mostly large corporations such as
Blue Cross and Blue Shield, General Motors, Sears, Roebuck & Co., and International
Business Machines.” Id. In this case and on this record, Applicant’s recited
benchmarking and forecasting services are not inherently so complex.
The trade channels du Pont factor weighs in favor of likely confusion, and the
consumer sophistication factor does not outweigh the likely confusion caused by the
identical marks and overlapping services and trade channels.
Based on the identical marks, as well as the overlap of the services and trade
channels, we find that Applicant’s mark is likely to cause confusion with the mark in
the cited registration, regardless of what we assume is a modicum of consumer
sophistication.
Decision: The refusal to register Applicant’s mark is affirmed.