Integrated Merchandising Systems, LLC

Trademark Trial and Appeal Board

Dec 2, 2020

88139236 (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
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Serial No. 88139236
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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 for:
Merchandising supply chain services, namely, marketing
and promoting branded products of others, except in the
field of bedding, mattresses, mattress foundations, bed
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springs, bed frames, bedding furniture, futons, and
bedding accessories in International Class 35.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), citing as a bar to registration
Registration No. 2943372 for the mark 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, in International Class 35,
owned by TEMPUR WORLD, LLC.2
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

1 Application Serial No. 88139236 was filed on October 2, 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). The description of the mark reads “The mark consists
of the lower case letters ims to the left of the stacked wording ‘Integrated Merchandising
Solutions.’” “INTEGRATED MERCHANDISING SOLUTIONS” has been disclaimed.

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).
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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,
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
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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).
While the marks at issue are not identical, when comparing them, the test is not
whether the marks can be distinguished in a side-by-side comparison, but rather
whether the marks are sufficiently similar in terms of their overall commercial
impression that confusion as to the source of the goods and services offered under the
respective marks is likely to result. Midwestern Pet Foods, Inc. v. Societe des Produits
Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); In re Davia, 110
USPQ2d 1810, 1813 (TTAB 2014).
The “ims” portion of Applicant’s mark is the dominant feature of the
mark, appearing in bolded larger-sized lower-case font. The lowercase typeface used
in the dominant “ims” portion of Applicant’s mark does not distinguish it from
Registrant’s “typed” mark. A typed mark, like Registrant’s mark, may appear in any
lettering style including one similar to Applicant’s; the rights reside in the wording
or other literal elements and not in any particular manner of display. See In re
Viterra, 101 USPQ2d at 1908; Citigroup v. Capital City Bank, 98 USPQ2d at 1258-
59 (“[T]he registrant is entitled to depictions of the standard character mark
regardless of font style, size, or color.”). That Applicant’s mark is in stylized lettering
will not avoid likelihood of confusion with Registrant’s mark shown in typed (or
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standard characters) consisting of the same lettering because the literal portion of
Registrant’s mark could be presented in the same manner of display. See, e.g., In re
Viterra, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937,
939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style
is not viable where one party asserts rights in no particular display”).
Neither does the addition of the disclaimed phrase “Integrated Merchandising
Solutions” displayed in a noticeably smaller non-bolded font, and positioned after
“ims,” diminish the overall similarity or alter the meaning or the commercial
impression of Applicant’s mark. Thus, the presentation of Applicant’s mark in a
stylized form does not avoid a likelihood of confusion with the cited mark which is not
limited to any particular font, size, style or color. See, e.g., Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); In re Melville Corp., 18
USPQ2d 1386, 1388 (TTAB 1991).
More importantly, disclaimed matter such as “Integrated Merchandising
Solutions” that is descriptive of a party’s services is typically less significant or less
dominant when comparing marks. According to the definitions submitted by the
Examining Attorney:
“integrated” is defined as: “2 With various parts or aspects
linked or coordinated ‘an integrated and high-quality
public transportation system;’”
“merchandising” is defined as: “1 The activity of promoting
the sale of goods, especially by their presentation in retail
outlets. ‘problems rooted in overexpansion and poor
merchandising;’” and
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“solution” is defined as: “1.2 (solutions) Products or services
designed to meet a particular need. ‘we are an Internet
marketing firm specializing in e-commerce solutions.’”3
Thus, the disclaimed wording “Integrated Merchandising Solutions” in
Applicant’s mark is descriptive of its marketing and promoting branded products of
others in connection with its merchandising supply chain services. Therefore, it is
less significant in terms of affecting the mark’s commercial impression, confirming
that the term “ims” in the beginning of Applicant’s mark is the dominant element of
the mark. See In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946
(Fed. Cir. 2004); In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34
(Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009). Greater weight is often
given to a dominant feature of a mark when determining whether marks are
confusingly similar. Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d
1424, 1431 (TTAB 2013) (citing In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596
(TTAB 1999)).
Therefore, while it is true that marks must be compared in their entireties and
should not be dissected, a trademark examining attorney may weigh the individual
components of a mark to determine its overall commercial impression. The ultimate

3 December 7, 2018 Office Action at TSDR 6, 8, 10 citing OXFORD LIVING DICTIONARIES,
https://en.oxforddictionaries.com/definition/us/integrated, https://en.oxforddictionaries.com
/definition/us/merchandising, and https://en.oxforddictionaries.com/definition/us/solution,
©2018 Oxford University Press, accessed 12/07/2018.
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.
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conclusion nonetheless must rest on consideration of the marks in total. Stone Lion
Capital Partners v. Lion Capital, 110 USPQ2d at 1161 (quoting In re Nat’l Data, 224
USPQ at 751 (“[I]n articulating reasons for reaching a conclusion on the issue 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 consideration of the marks in their entireties.”)); In re Viterra, 101
USPQ2d at 1908.
To the extent that Applicant’s mark and the cited mark both contain the term
IMS, when comparing the marks in their entireties, they are similar in sound and
appearance. This is particularly so in view of the fact that customers are generally
more inclined to focus on the first word in any trademark or service mark. See Palm
Bay Imps. v. Veuve Clicquot, 73 USPQ2d at 1692; see also Presto Products, Inc. v.
Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part
of mark which is most likely to be impressed upon the mind of a purchaser and
remembered” when making purchasing decisions).
The first (and dominant) part of Applicant’s mark is identical to the registered
mark in typed format and conveys a similar commercial impression. The additional
wording in Applicant’s mark, presented in noticeably smaller font, is disclaimed
because it is descriptive and therefore is afforded less weight in our likelihood of
confusion analysis. Thus, the similarity of the marks when taken as a whole favors a
finding of likelihood of confusion.
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B. Relatedness of the Services
We next consider the DuPont factor involving the similarity of Applicant’s
merchandising supply chain services, namely, marketing and promoting branded
products of others (excluding bedding and related products), and Registrant’s
services, which in relevant part, are assisting others with advertising and retailing
in the field of bedding and related products.
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. 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, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000).
Applicant contends that there is no likelihood of confusion between its mark and
Registrant’s mark because the services associated with each mark are non-
competitive and not related.4 Its services include merchandising, which Applicant
argues is specifically limited to marketing and promoting branded products of others.
Applicant emphasizes that its services are limited to supply chain services—a term

4 Applicant’s Appeal Brief p. 2, 4 (13 TTABVUE 5, 7).
Page references to the briefs on appeal include citation to the Board’s TTABVUE online
docket system.
Serial No. 88139236
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that it contends was completely ignored by the Examining Attorney when
characterizing Applicant’s services as “broad.”5
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.”6 Therefore, according to Applicant, its services “are a subclass of
merchandising services limited to supply chain services and branded products of
others.”7 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.8
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,
Applicant argues that Registrant’s customers are mattress or bedding furniture

5 Applicant’s Appeal Brief p. 7 (13 TTABVUE 11).
6 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. 7, n. 2 (13 TTABVUE
11). 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).
7 Applicant’s Appeal Brief p. 7 (13 TTABVUE 11).
8 Applicant’s Appeal Brief pp. 7-8 (13 TTABVUE 11-12).
Serial No. 88139236
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enterprises seeking assistance for advertising and marketing such products.9
Applicant points out that Applicant’s services explicitly exclude services relating to
such bedding related products.10
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. 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.11
The Examining Attorney counters that Applicant’s and Registrant’s services are
closely related because marketing, promotional, and advertising services are
commonly provided together to serve the same purpose, namely, to promote the sale

9 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 referencing Applicant’s Appeal Brief p. 8 n.3 (13 TTABVUE 12) 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).
10 Applicant’s Appeal Brief p. 8 (13 TTABVUE 12).
11 Applicant’s Appeal Brief p. 9 (13 TTABVUE 13).
Serial No. 88139236
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of goods and services citing evidence from www.universalclass.com,
smallbusiness.chron.com, adhouseadvertising.com, www.purelybranded.com, and
www.dlapiper.com.12 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;13 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 products encompassed by Applicant’s identified services.14 The Examining
Attorney argues this evidence shows that the same sources offer advertising services

12 July 5, 2019 Final Office Action at TSDR 3, 9-25 (www.universalclass.com), 26-29
(smallbusiness.chron.com), 30-32 (adhouseadvertising.com), 33-35 (www.purelybranded
.com), 36-38 (www.dlapiper.com).
13 Examining Attorney’s Brief, 15 TTABVUE 10-11, 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).
14 Examining Attorney’s Brief, 15 TTABVUE 11, citing to January 27, 2020 Denial of Request
for Reconsideration at TSDR 2-3, 13-19 (https://www.stryde.com/industries-we-ser ve/), 20-
31 (https://www.napiermkt.com/who-we-do-it-for.html), 32-35 (https://www.microd inc.com/
industries/), 36-38 (https://www.imagineadv.com/), 39-45 (https://eberlycollardpr.com/indus
tries/).
Serial No. 88139236
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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.15
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.16 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.” 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

15 Examining Attorney’s Brief at 15 TTABVUE 12.
16 Applicant’s Appeal Brief p. 9 (13 TTABVUE 13).
Serial No. 88139236
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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, 18 USPQ2d at 1388.
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.17 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
Applicant’s list of services expressly excludes those of Registrant. See 4 J. McCarthy,
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 24:63 (5th ed., Dec. 2020
update).

17 Applicant’s Appeal Brief p. 7-8 (13 TTABVUE 11-12).
Serial No. 88139236
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Where highly similar marks are involved, as we have here, the less similar the
goods or services need to be for the Board to find a likelihood of confusion. In re Shell
Oil, 26 USPQ2d at 1688-89; In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001);
In re Concordia Int’l Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). Under such
circumstances, 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 very similar marks. Thus, the DuPont factor regarding the
similarity of the services favors a finding of likelihood of confusion.
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C. Channels of Trade and Class of Purchasers
We next consider whether Applicant’s and Registrant’s services travel in the same
trade channels to the same class(es) of customers. Because there is no limitation as
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 for such services 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
Serial No. 88139236
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Applicant’s services ensures that customers fully understand their transaction with
Applicant.18 Turning to Registrant’s customers, i.e., mattress or bedding furniture
enterprises seeking assistance for advertising and marketing such products,
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 customers would heavily research and
investigate the services before signing the contract.19
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).
D. Conditions under which and Customers to Whom Sales are Made, i. e.
“impulse” vs. careful, sophisticated purchasing
Applicant asserts its merchandising supply chain services are provided to highly
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

18 Applicant’s Appeal Brief pp. 7-8 (13 TTABVUE 11-12).
19 Applicant’s Appeal Brief p. 8 (13 TTABVUE 12).
Serial No. 88139236
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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.”20
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.21
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.22
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

20 Applicant’s Appeal Brief pp. 7-8 (13 TTABVUE 11-12).
21 Applicant’s Appeal Brief p. 8 (13 TTABVUE 12).
22 Applicant’s Appeal Brief p. 11 (13 TTABVUE 15).
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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). Thus,
our determination under the fourth DuPont factor must be based on Applicant’s and
Registrant’s identified services, not on the legally irrelevant fact that their services
might be expensive. In re Davey Prods., 92 USPQ2d at 1204; In re Opus One, 60
USPQ2d at 1817.
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.

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II. Conclusion
In view of the substantial similarity in the commercial impressions of Applicant’s
mark, , and Registrant’s mark IMS, 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 under § 2(d) of the
Trademark Act is affirmed.