Integrated Merchandising Systems, LLC

Trademark Trial and Appeal Board

Dec 2, 2020

88077039 (T.T.A.B. Dec. 2, 2020)

This Opinion is not a
Precedent of the TTAB

Mailed: December 2, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Integrated Merchandising Systems, LLC
_____

Serial Nos. 88077039
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James E. Rosini and Armin Ghiam of Hunton Andrews Kurth LLP,
for Integrated Merchandising Systems, LLC.
Kristina Morris, Trademark Examining Attorney, Law Office 116,
Elizabeth Jackson, Acting Managing Attorney.
_____

Before Kuczma, Goodman and Hudis,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Integrated Merchandising Systems, LLC (“Applicant”) seeks registration on the
Principal Register of the mark IMS (in standard characters) for:
Merchandising supply chain services, namely, marketing
and promoting branded products of others, except in the
field of bedding, mattresses, mattress foundations, bed
springs, bed frames, bedding furniture, futons, and
bedding accessories in International Class 35.1

1 Application Serial No. 88077039 was filed on August 14, 2018, based upon Applicant’s
assertion of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).

Serial No. 88077039
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The Trademark Examining Attorney refused registration of Applicant’s mark
under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), citing the following two marks
registered on the Principal Register as bars to registration:
Registration No. 2943372 for IMS for: Accounting, payroll
preparation, human resource management, and inventory
control services in the field of bedding, mattresses,
mattress foundations, bed springs, bed frames, bedding
furniture, futons, and bedding accessories; and assisting
others with advertising and retailing in the field of
bedding, mattresses, mattress foundations, bed
springs, bed frames, bedding furniture, futons, and
bedding accessories;2 and
Registration No. 5001559 for for: Accounting
services; Advertising, marketing and promotion
services in the field of bedding, mattresses, mattress
foundations, bed springs, bed frames, bedding
furniture, futons, and bedding accessories;
Bookkeeping; Human resources management; Inventory
control in the field of bedding, mattresses, mattress
foundations, bed springs, bed frames, bedding furniture,
futons, and bedding accessories;3
both registrations are owned by TEMPUR WORLD, LLC.

2 Registration No. 2943372 issued April 26, 2005; renewed. The mark depicted in Registration
No. 2943372 is shown in a typed drawing. Effective November 2, 2003, Trademark Rule 2.52,
37 C.F.R. § 2.52, was amended to replace the term “typed” drawing with “standard character”
drawing. A mark depicted as a typed drawing is the legal equivalent of a standard character
mark. In re Viterra Inc., 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012); TRADEMARK MANUAL
OF EXAMINING PROCEDURE (TMEP) § 807.03(i) (Oct. 2018).
3 Registration No. 5001559 issued July 19, 2016. The description of the mark reads: “The
mark consists of the ringed letters ‘IMS’ with a blue ringed moon forming the dot over the
yellow letter ‘I,’ where the letters ‘M’ and ‘S’ are shaded blue in a graduated manner and the
encircling oval ring is blue, below which are the blue words ‘INNOVATIVE MATTRESS
SOLUTIONS’ all of which is on a white background.” The color(s) blue, yellow, and white are
claimed as a feature of the mark. “MATTRESS SOLUTIONS” is disclaimed.

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When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the Request for
Reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Likelihood of Confusion
Our determination under Trademark Act Section 2(d) is based on an analysis of
all probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973), cited in B&B Hardware, Inc. v. Hargis Indus.,
Inc., 575 U.S. 138, 113 USPQ2d 2045, 2049 (2015); 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 similarities between the goods and services. See In re i.am.symbolic, llc, 866
F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v.
Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated
Foods, Inc. v. Ft. Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)
(“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods and differences in the
marks.”).
We have considered each DuPont factor for which there is evidence and argument.
See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir.
2019). Varying weights may be assigned to each DuPont factor depending on the
evidence presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344,
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98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1688 (Fed. Cir. 1993) (“[T]he various evidentiary factors may play
more or less weighty roles in any particular determination.”).
A. Similarity of the Marks
Marks are compared in their entireties for similarities in appearance, sound,
connotation and commercial impression. Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm
Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369,
73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012).
For purposes of our likelihood of confusion analysis, we focus on the most relevant
cited mark, IMS in typed drawing form in Registration No. 2943372. We find this
mark to be the more relevant of the cited registrations for our du Pont analysis
because it is identical to Applicant’s mark given the design elements in the other cited
registration that contain additional points of difference with Applicant’s mark. If we
find a likelihood of confusion as to this cited registration, there is no need for us to
consider the likelihood of confusion with the other cited mark. On the other hand, if
there is no likelihood of confusion between Applicant’s mark and the IMS mark in
Registration No. 2943372, then there would be no likelihood of confusion with the
mark in the other cited registration. See In re Max Capital Group Ltd., 93 USPQ2d
1243, 1245 (TTAB 2010).
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Inasmuch as Applicant’s mark is identical to the mark in the cited registration,
this factor weighs against Applicant. See In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289, 1289-90 (Fed.Cir.1984); see also In re Shell Oil, 992
F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“The identity of words,
connotation, and commercial impression weighs heavily against the applicant.”).
B. Weakness of Cited Registrant’s Mark
Based on Registrant’s Registration No. 5001559 for the mark ,
Applicant argues that the “IMS” portion of Registrant’s mark is an abbreviation for
“Innovative Mattress Solutions,” which is descriptive of the Registrant’s services.
Applicant also argues that there are hundreds of federal applications and
registrations for marks containing “IMS,” including “seven other active registrations
in International Class 35” that include “IMS.” Accordingly, Applicant contends “[i]n
such cases, registration should only be blocked on Section 2(d) grounds where the
goods or services are ‘virtually identical,’ which . . . is hardly the case here.”4 However,
no copies of any registrations were submitted during prosecution of Applicant’s
application. In order to make third-party registrations part of the record, an applicant
must submit copies of the registrations, or the complete electronic equivalent from
the USPTO’s automated systems, prior to appeal. In re Star Belly Stitcher, Inc., 107

4 Applicant’s Appeal Brief p. 8 (13 TTABVUE 11).
Page references to the briefs on appeal include citation to the Board’s TTABVUE online
docket system.

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USPQ2d 2059, 2064 (TTAB 2013); see also TRADEMARK TRIAL AND APPEAL BOARD
MANUAL OF PROCEDURE (“TBMP”) § 1208.02 (2020).
Inasmuch as Applicant has not identified the registrations or more importantly,
submitted copies of those International Class 35 registrations into the record, they
are not considered.5 Even if the seven third-party registrations for marks in
International Class 35 that supposedly contain the term IMS were considered, they
fall well short of the “voluminous” and “extensive” evidence presented in Jack
Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports,
S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (at least fourteen
relevant third-party uses or registrations of record), or of that in Juice Generation,
Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1673 n.1 (at least twenty-
six relevant third-party uses or registrations of record).
C. Relatedness of the Services
We next consider the DuPont factors involving the similarity of Applicant’s and
Registrant’s services. The issue of likelihood of confusion between applied for and
registered marks must be determined on the basis of the goods and services as they
are identified in the involved application and registration. Paula Payne Prods. Co. v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973); In re Elbaum,
211 USPQ 639, 640 (TTAB 1981). The compared services need not be identical or even
competitive to support a finding of likelihood of confusion. See Coach Servs. Inc. v.

5 The mere listing of third-party registrations normally is insufficient to make them of
record. In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974).
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Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012)
(quoting 7-Eleven, Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); On-line
Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed.
Cir. 2000).
Where identical marks are involved, as we have here, the degree of similarity
between the services that is required to support a finding of likelihood of confusion
declines. In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d
1315, 123 USPQ2d 1744 (Fed. Cir. 2017); In re Concordia Int’l Forwarding Corp., 222
USPQ 355, 356 (TTAB 1983)( greater the degree of similarity in the marks, the lesser
the degree of similarity that is required of the products or services on which they are
being used in order to support a holding of likelihood of confusion).
Here, Applicant’s services are merchandising supply chain services, namely,
marketing and promoting branded products of others (excluding bedding and related
products); while Registrant’s services (in Registration No. 2943372), in relevant part,
are assisting others with advertising and retailing in the field of bedding and related
products.
Applicant contends that there is no likelihood of confusion between its mark and
Registrant’s identical mark because the services associated with each mark are non-
competitive and not related.6 Its services include merchandising, which Applicant
argues is specifically limited to marketing and promoting branded products of others.

6 Applicant’s Appeal Brief p. 2, 4 (13 TTABVUE 5, 7).
Serial No. 88077039
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Applicant emphasizes that its services are limited to supply chain services—a term
that it contends was completely ignored by the Examining Attorney when
characterizing Applicant’s services as “broad.”7
Applicant notes that the definition of “supply chain” is “a network between a
company and its suppliers to produce and distribute a specific product to the final
buyer.”8 Therefore, according to Applicant, its services “are a subclass of
merchandising services limited to supply chain services and branded products of
others.”9 Applicant contends, without evidentiary support, that the customers for its
merchandising supply chain services are large corporations and retailers that have
very complex procurement processes, requiring them to study and research their
vendors before making a purchase. According to Applicant, the prices charged for its
services ensures that customers fully understand every aspect of a potential
transaction with Applicant. Its typical contract for merchandising supply chain
services is worth millions of dollars and requires many in-person meetings, thereby
eliminating any likelihood of confusion as to the identity of Applicant or its services.10
Registrant’s services, on the other hand, are “assisting others with advertising
and retailing services in the field of bedding mattresses” and related goods, thus,

7 Applicant’s Appeal Brief p. 4 (13 TTABVUE 7).
8 Applicant cites “[s]ee, e.g., https://www.investopedia.com/terms/s/supplychain.asp” as the
source for the definition of “supply chain.” Applicant’s Appeal Brief p. 4, n. 1 (13 TTABVUE
7). While Applicant did not request the Board to take judicial notice of the definition for
“supply chain” submitted in its Brief, we take judicial notice of it. In re Cordua Rests. LP, 110
USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016);
In re S. Malhotra & Co. AG, 128 USPQ2d 1100, n 9 (TTAB 2018).
9 Applicant’s Appeal Brief p. 4 (13 TTABVUE 7).
10 Applicant’s Appeal Brief pp. 4-5 (13 TTABVUE 7-8).
Serial No. 88077039
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Applicant argues that Registrant’s customers are mattress or bedding furniture
enterprises seeking assistance for advertising and marketing such products.11
Applicant points out that Applicant’s services explicitly exclude services relating to
such bedding related products.12
Applicant maintains that its merchandising supply chain services, and
Registrant’s assisting others with advertising and retailing services for bedding
furniture, are not competitive services because they are not substitutes for each other.
Applicant concludes that the services do not overlap, serving different purposes – one
relating to a supply chain to procure products and the other relating to bedding
furniture.13 Applicant also notes that the Examining Attorney failed to introduce any
evidence suggesting that these services are complementary as Applicant’s
merchandising supply chain services are not purchased or used with advertising
services for bedding furniture.14
The Examining Attorney counters that Applicant’s and Registrant’s services are
closely related because marketing, promotional, and advertising services are

11 The Examining Attorney objects to Applicant’s attempt to limit the scope of Registrant’s
services by referencing Registrant’s specimen. Examining Attorney’s Brief at 15 TTABVUE
9-10 referencing Applicant’s Appeal Brief p. 5 n.2 (13 TTABVUE 8) regarding the Business
Partner Handbook Registrant submitted as a specimen. Inasmuch as Registrant’s specimen
has not been properly introduced into the record, it is not considered. Additionally, as noted
by the Examining Attorney, even if Registrant’s specimen was considered, determining
likelihood of confusion is based on the identification of the services recited in Applicant’s
application and the cited registration, not on extrinsic evidence of actual use. See In re Detroit
Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re
i.am.symbolic, 123 USPQ2d at 1749); 37 C.F.R. §2.142(d).
12 Applicant’s Appeal Brief p. 6 (13 TTABVUE 9).
13 Applicant’s Appeal Brief pp. 5-6 (13 TTABVUE 8-9).
14 Applicant’s Appeal Brief p. 6 (13 TTABVUE 9).
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commonly provided together to serve the same purpose, namely, to promote the sale
of goods and services citing the evidence from www.universalclass.com,
smallbusiness.chron.com, adhouseadvertising.com, www.purelybranded.com, and
www.dlapiper.com.15 Additionally, according to the Examining Attorney, Applicant’s
marketing and promotion services encompass those in the field of non-bedroom
furniture, which is related to the advertising for the types of bedding goods offered by
Registrant.
The Examining Attorney submits evidence from the www.ramarketing.com and
furniturebranding.com websites showing that furniture marketing firms provide
services for both bedroom furniture and the non-bedroom furniture that could be
encompassed by Applicant’s services;16 and evidence from www.stryde.com,
www.napiermkt.com, www.microdinc.com, www.imagineadv.com, and eberlycollard
pr.com showing that the same sources provide marketing and advertising services for
a variety of fields, including home goods such as those offered by Registrant along
with other fields encompassed by Applicant’s identified services.17 The Examining

15 July 5, 2019 Final Office Action at TSDR 3, 5-21 (www.universalclass.com), 22-25
(smallbusiness.chron.com), 26-28 (adhouseadvertising.com), 29-31 (www.purelybranded
.com), 32-34 (www.dlapiper.com).
Page references to the application record refer to the online database of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system by page number in the
downloadable .pdf versions of the documents.
16 Examining Attorney’s Brief, 15 TTABVUE 11, citing to January 27, 2020 Denial of Request
for Reconsideration at TSDR 2-3, 4-7 (www.ramarket ing.com/furniture), 8-12
(https://furniturebranding.com/about-us).
17 January 27, 2020 Denial of Request for Reconsideration at TSDR 3, 4-7 (www.ramarket
ing.com/furniture), 8-12 (https://furniturebranding.com/about-us), 13-19 (https://www.str
yde.com/industries-we-serve/), 20-31 (https://www.napiermkt.com/who-we-do-it-for.html),
Serial No. 88077039
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Attorney argues this evidence shows that the same sources offer advertising services
in Registrant’s field of mattress and bedroom furniture as well as Applicant’s broader
marketing and promotional services for the branded products of others.18
Applicant contends that the services of Applicant and Registrant are not
competitive, noting the record is devoid of evidence suggesting that merchandising
supply chain services are replacements for advertising services for bedding
furniture.19 However, Applicant’s services are not simply “merchandising supply
chain services.” Applicant’s identification of services reads “merchandising supply
chain services, namely, marketing and promoting branded products of others, except
in the [bedding] field . . . .”
As explained in § 1402.03(a) of the TMEP, the term “namely” used in an
identification of goods or services is “definite and [is] preferred to set forth an
identification that requires greater particularity. . . . The goods or services listed after
‘namely,’ . . . must further define the introductory wording that precedes ‘namely,’ . .
. using definite terms within the scope of the introductory wording.” For example,
“power tools, namely, hammer drills in Class 7; . . . .” Therefore, Applicant’s services
“marketing and promoting branded products of others (except in the field of bedding
. . .)” further defines its “merchandising supply chain services.”

32-35 (https://www.microdinc.com/industries/), 36-38 (https://www.imagineadv.com/), 39-45
(https://eberlycollardpr.com/industries/interior-design/).
18 Examining Attorney’s Brief at 15 TTABVUE 12.
19 Applicant’s Appeal Brief pp. 5-6 (13 TTABVUE 8-9).
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Additionally, we do not need to find Applicant’s marketing and promoting branded
products of others in the field of merchandising supply chain services to be
replacement services for Registrant’s advertising services for bedding furniture in
order to find that the services are similar. It is enough that the services are “related
in some manner and/or if the circumstances surrounding their marketing are such
that they could give rise to the mistaken belief that they emanate from the same
source,” Coach Servs. v. Triumph Learning, 101 USPQ2d at 1722 (quoting 7-Eleven
v. Wechsler, 83 USPQ2d at 1724), or that there is an association between the sources
of each of the parties’ services. In re White Rock Distilleries, Inc., 92 USPQ2d 1282,
1285 (TTAB 2009); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
The evidence introduced by the Examining Attorney supports the relatedness of
marketing, promotion and advertising services. Applicant argues that its services are
not related to Registrant’s services given that Registrant’s services are limited to
bedding goods which are explicitly excluded from Applicant’s services.20 The fact that
Applicant’s services exclude bedding furniture “is of little consequence; … [services]
need not be identical or even competitive in order to support a finding that confusion
is likely. The question is whether … consumers encountering the [services] sold under
these marks would mistakenly believe that they share or are affiliated with or
sponsored by a common source.” Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115
USPQ2d 1816, 1827 (TTAB 2015). That is, the list of goods or services in a
registration does not limit the scope of likelihood confusion. This is true even if

20 Applicant’s Appeal Brief p. 4-5 (13 TTABVUE 7-8).
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Applicant’s list of services expressly excludes those of Registrant. See 4 J. McCarthy,
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 24:63 (5th ed., 2020 update).
When the marks are identical, as they are here, it is only necessary that there be
a viable relationship between the goods or services to support a finding of likelihood
of confusion. In re Concordia Int’l, 222 USPQ at 356. It is enough if there is a
relationship between them such that persons encountering them under their
respective marks are likely to assume that they originate at the same source or that
there is some association between their sources.” McDonald’s Corp. v. McKinley, 13
USPQ2d 1895, 1898 (TTAB 1989). The confusion which the trademark statute is
concerned with is not only that a customer would mistakenly choose Applicant’s or
Registrant’s services for the job but also whether such a customer, familiar with
Registrant’s services (or vice versa), would believe that Applicant’s services were yet
another service emanating from Registrant or that the two services were somehow
associated with the same source. In re Uncle Sam Chemical Co., Inc., 229 USPQ 233,
235 (TTAB 1986).
In view of the foregoing, customers are likely to believe that Applicant’s services
and Registrant’s services would emanate from a single source particularly when they
will be offered under identical marks. Thus, the DuPont factor regarding the
similarity of the services favors a finding of likelihood of confusion.
D. Channels of Trade and Classes of Purchasers
We next consider whether Applicant’s and Registrant’s services travel in the same
trade channels to the same class(es) of purchasers. Because there is no limitation as
Serial No. 88077039
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to trade channels or class of customers in the identification of services in either the
application or the cited registration, we must presume that Registrant’s and
Applicant’s services are marketed in all normal trade channels and to all normal
classes of customers for such services. See Cunningham v. Laser Golf, 55 USPQ2d at
1846 (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”); Anheuser-Busch v. Innvopak Sys., 115 USPQ2d at 1825 (“[A]bsent
any explicit restriction in the application or registration, we must presume the
parties’ identified goods to travel through all normal channels of trade for goods of
the type identified ...”) citing Coach Services v. Triumph Learning, 101 USPQ2d at
1722; In re Anderson, 101 USPQ2d 1912, 1920 (TTAB 2012); In re Linkvest S.A., 24
USPQ2d 1716, 1716 (TTAB 1992); In re Elbaum, 211 USPQ at 640.
Applicant argues that its customers have millions of dollars in assets dedicated to
distribution of branded products or services and very complex procurement processes
requiring them to study and research their vendors before making a purchase; a
typical contract offered by Applicant for merchandising supply chain services is worth
millions of dollars and requires many in-person meetings. In addition to the complex
procedures that have to be followed, Applicant contends the prices charged for
Applicant’s services ensures that customers fully understand their transaction with
Applicant.21 Turning to Registrant’s customers, i.e., mattress or bedding furniture
enterprises seeking assistance for advertising and marketing such products,

21 Applicant’s Appeal Brief pp. 4-5 (13 TTABVUE 7-8).
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Applicant asserts that the types of services offered by Registrant to its customers
require a detailed contract identifying Registrant and explaining the types of services
subject to the contract. Applicant believes that Registrant’s customers would heavily
research and investigate the services before signing the contract.22
While Applicant provides no evidence in support of the differences in channels of
trade or class(es) of customers, to the extent that Applicant’s and Registrant’s
services are offered to the commercial public, the channels of trade and classes of
purchasers may overlap. This overlap weighs in favor of a finding of likelihood of
confusion, under the third and fourth du Pont factors. In re Wilson, 57 USPQ2d 1863,
1866 (TTAB 2001).
E. Conditions under which and Customers to Whom Sales are Made, i. e.
“impulse” vs. careful, sophisticated purchasing
Applicant asserts that its merchandising supply chain services are provided to
sophisticated large corporations and retailers with millions of dollars in assets
dedicated to distribution of branded products or services. Such customers, according
to Applicant, have very complex procurement processes requiring them to study and
research their vendors before making a purchase. A typical contract offered by
Applicant for its merchandising supply chain services “is worth millions of dollars
and requires many in-person meetings, thereby eliminating any likelihood of
confusion as to the identity of Applicant or its services.”23

22 Applicant’s Appeal Brief p. 5 (13 TTABVUE 8).
23 Applicant’s Appeal Brief pp. 4-5 (13 TTABVUE 7-8).
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Applicant contends that the types of services offered by Registrant require a
detailed contract identifying Registrant and explaining the types of services subject
to the contract. “It is believed that these services are relatively expensive and as a
result consumers would heavily research and investigate the services before signing
the contract.” Applicant argues that “Registrant’s customers are also sophisticated
and informed about the nature of the products that they buy–particularly when these
products are expensive.” As such, Applicant concludes, there is almost no likelihood
of confusion with Applicant’s services.24
Thus, according to Applicant, its services and Registrant’s services are both highly
complex services that only attract sophisticated consumers who are well-versed in
their respective fields. Each service requires a procurement process involving signing
a contract and is relatively expensive. Applicant concludes, it is highly unlikely that
the customers ever confuse the source of the services.25
However, it is the identification of services stated in the application and cited
registration that controls, not what Applicant argues or what extrinsic evidence may
show about the specific nature of the services. Applicant may not restrict the scope of
the services covered in its application or the cited registration by argument or
extrinsic evidence. See In re Detroit Athletic, 128 USPQ2d at 1052 (citing In re
i.am.symbolic, 123 USPQ2d at 1749); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198,
1204 (TTAB 2009); In re Peregrina Ltd., 86 USPQ2d 1645, 1646 (TTAB 2008).

24 Applicant’s Appeal Brief p. 5 (13 TTABVUE 8).
25 Applicant’s Appeal Brief p. 8 (13 TTABVUE 11).
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Therefore, our determination under the fourth DuPont factor must be based on
Applicant’s and Registrant’s identified services. In re Davey Prods., 92 USPQ2d at
1204; In re Opus One, 60 USPQ2d 1812, 1817 (TTAB 2001).
On this record, there is no basis upon which we might find that the customers of
Applicant’s and Registrant’s services necessarily are so knowledgeable and careful in
purchasing the services that the likelihood of confusion arising from the use of highly
similar marks in connection with such services would be significantly mitigated.
Even if we were to find that some care would be taken in purchasing their services,
even careful purchasers who may be sophisticated or knowledgeable as to the services
offered does not necessarily mean that they are sophisticated or knowledgeable in the
field of trademarks or immune from source confusion. See, e.g., Stone Lion Capital
Partners v. Lion Capital, 110 USPQ2d at 1163-64; In re Davey Prods., 92 USPQ2d at
1204; In re Wilson, 57 USPQ2d at 1870. Thus, the fourth DuPont factor is neutral.
II. Conclusion
In view of the identity of Applicant’s and Registrant’s IMS marks they have the
identical sound, meaning and commercial impression. Therefore, their use in
connection with the involved related services that may travel in overlapping trade
channels to the same customers is likely to cause confusion as to the source or
sponsorship of such services.
Decision: The refusal to register Applicant’s mark IMS under § 2(d) of the
Trademark Act is affirmed.