International Demographics, Inc.

Trademark Trial and Appeal Board

Sep 29, 2009

No. 78871559 (T.T.A.B. Sep. 29, 2009)

Mailed: September 29, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re International Demographics, Inc.
________

Serial No. 78871559
_______

John S. Egbert of Egbert Law Offices, PLLC for International
Demographics, Inc.

Mary Boagni, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Holtzman, Taylor and Wellington, Administrative Trademark
Judges.

Opinion by Taylor, Administrative Trademark Judge:

International Demographics, Inc. has filed an application
to register on the Principal Register the mark THE MEDIA AUDIT
(in standard character format) for goods and services ultimately
identified as “Computer software in the nature of a searchable
database of qualitative audience survey reports for the
communications industry” in International Class 9 and “Consumer
survey reports services, namely, conducting qualitative audience
THIS OPINION
IS NOT A PRECEDENT
OF THE TTAB
Serial No. 78871559
2
market research surveys for the communications industry” in
International Class 35.1
Registration has been finally refused on the ground of
likelihood of confusion with the mark MEDIAUDIT (in typed form2
and the subject of Registration No. 2584426) for “computer
software and programs, namely, computer software and programs
for use in database management in the field of market research
and media analysis” in International Class 93 under Trademark Act
Section 2(d), 15 U.S.C. § 1052(d).
When the refusal was made final, applicant appealed and
requested reconsideration of the refusal. The request for
reconsideration was denied on March 28, 2009 and this appeal was
resumed on April 6, 2009. Both applicant and the examining
attorney filed briefs and applicant filed a reply brief. As
discussed below, we affirm the refusal to register.
DISCUSSION
The examining attorney contends that applicant’s and the
registrant’s marks are similar and that the goods and services
are closely related.

1 Serial No. 78871559, filed April 27, 2006, and alleging 1971
as the date of first use of the mark anywhere and in commerce
for both classes of goods and services. Applicant claims
acquired distinctiveness of its mark pursuant to Trademark Act
Section 2(f), 15 U.S.C. 1052(f).
2 The former reference to what is now referred to as standard character
form.

Serial No. 78871559
3
Applicant, by contrast, maintains that the purchasers of
its goods and services are sophisticated, that its goods and
services are expensive and that the marks are used in different
channels of trade. Applicant particularly argues that “it is
clear that the respective goods and services are provided for
entirely different markets and functions … [and] that the
relevant consumers of the respective goods and services will not
likely believe that Applicant and the cited registrant are
related, nor will they encounter marketing or advertising that
will give rise to the mistaken belief that the parties’
respective goods originate from or in some way are associated
with each other.” (Br. pp. 10-11).
Our determination of the issue of likelihood of confusion
is based on an analysis of all the probative facts in evidence
that are relevant to the factors set forth in In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
See also, In re Majestic Distilling Company, Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie

3 Issued June 25, 2002, Section 8 affidavit accepted, Section 15
affidavit acknowledged.
Serial No. 78871559
4
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
Marks
We turn first to a consideration of the marks. We compare
applicant’s THE MEDIA AUDIT mark and the MEDIAUDIT mark in the
cited registration by considering the similarity, or
differences, in the appearance, sound, connotations and overall
commercial impressions. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1722, 396 F.3d 1369, 73 USPQ2d 1689,
1692 (Fed. Cir. 2005). The test is not whether the marks can be
distinguished when subjected to 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/or services offered under the respective
marks is likely to result.
In this case, both marks contain the phonetically
equivalent term, MEDIA AUDIT and MEDIAUDIT. The only
differences between marks is that applicant’s mark begins with
the definite article “The”; and applicant presents the common
term as two words, while registrant presents that term in
telescoped fashion wherein the first word and the second share
the letter “A.” The shared letter in cited mark would not
create a difference in pronunciation or connotation. Nor does
the word “THE” serve to distinguish the two marks, as it has no
Serial No. 78871559
5
particular trademark significance. See Dixie Restaurants, 105
41 USPQ at 1534 (The Federal Circuit held that the addition of
the word “The” and “Café” and a diamond-shaped design to
registrant’s DELTA mark still resulted in a likelihood of
confusion.).
Visually and phonetically, the marks are virtually
identical; and the connotation of the marks is essentially the
same, in that each conveys the notion of the appraisal of mass
communication. Accordingly, despite the differences between the
marks, we find that they convey the same overall commercial
impression.
The du Pont factor of similarity of the marks thus strongly
favors a finding of likelihood of confusion.
Relatedness of the Goods and Services/Channels of Trade

We next consider the goods and services based on a
comparison of the identifications in the application and the
cited registration. See Canadian Imperial Bank v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992); and In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 at n. 4 (Fed.
Cir. 1993). As is often stated, the goods and services need not
be identical or even competitive in order to support a finding
of likelihood of confusion. Rather, it is enough that the goods
and services are related in some manner or that some
circumstances surrounding their marketing are such that they
Serial No. 78871559
6
would be likely to be seen by the same persons under
circumstances which would give rise, because of the marks used
therewith, to a mistaken belief that they originate from or are
in some way associated with the same producer or that there is
an association between the producers of each parties’ goods or
services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and
the cases cited therein.
Moreover, the greater the degree of similarity between the
applicant’s mark and the registered mark, the lesser the degree
of similarity between applicant’s goods and services and
registrant’s services that is required to support a finding of
likelihood of confusion. In re Opus One, Inc., 60 USPQ2d 1812,
1815 (TTAB 2001); In re Concordia International Forwarding
Corp., 222 USPQ 355, 356 (TTAB 1983). Where, as in this case,
the applicant’s mark is virtually identical to the registrant’s
mark, there need only be a viable relationship between the goods
and/or services to find that there is a likelihood of confusion.
See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689
(Fed. Cir. 1993)(“even when the goods or services are not
competitive or intrinsically related, the use of identical marks
can lead to the assumption that there is a common source”);
Concordia International Forwarding Corp., 222 USPQ at 356.
In this case, we compare applicant’s computer software in
the nature of a searchable database of qualitative audience
Serial No. 78871559
7
survey reports for the communications industry, and its consumer
survey reports services, namely, conducting qualitative audience
market research surveys for the communications industry with the
registrant’s computer software and programs, namely, computer
software and programs for use in database management in the
field of market research and media analysis. The examining
attorney contends that applicant’s and registrant’s goods and/or
services are complementary goods and/or services used for
marketing purposes and encountered together by consumers in the
same channels of trade.
To support her position, the examining attorney in her
brief requested the Board to take judicial notice of the
following definition of the term “marketing”:
1b: the process or technique of promoting,
selling, and distributing a product or
service.4

The examining attorney also made of record with her final
Office action copies of twenty (20) use-based, third-party
registrations showing goods and services of the same or similar
types as those of applicant and registrant offered by the same

4 Merriam-Webster Online Dictionary (2009) retrieved at
http://www.merriam-webster.com/dictionary/marketing.
The Board may take judicial notice of dictionary definitions,
including online dictionaries which exist in printed format or have
regular fixed editions. See In re Red Bull GmbH, 78 USPQ2d 1375, 1378
(TTAB 2006). See also University of Notre Dame du Lac v. J. C.
Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).

Serial No. 78871559
8
entity. Third-party registrations that individually cover
different items and that are based on use in commerce serve to
suggest that the listed goods and services are of a type that
may emanate from a single source. See Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988) (Although third-party
registrations are “not evidence that the marks shown therein are
in use on a commercial scale or that the public is familiar with
them, [they] may nonetheless have some probative value to the
extent that they may serve to suggest that such goods or
services are of a type which may emanate from a single source”).
See also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786
(TTAB 1993).
These registrations include, by way of example:
Registration No. 2592336 for, inter alia, “Computer
software for use in calculation, imputing,
reporting, integrating and forecasting business data
and information and for use in data management, all
in the fields of accounting, auditing, tax,
management consulting, business, financial
management and analysis, and information
technology;”

Registration No. 3372361 for, inter alia, “Computer
software for creating searchable databases of
information and data,” “Database management software
for audio and video records” and “Enterprise
software in the nature of a database for non-
transactional data and a search engine for database
content”;

Registration No. 3469181 for, inter alia, “Database
management software for use in the human resources,
employment, recruiting, and staffing fields” and
“enterprise software in the nature of a database for
Serial No. 78871559
9
non-transactional data and a search engine for
database content for use in the field of human
resources”;

Registration No. 2603990 for, inter alia, “computer
software used in conducting market research and
public opinion polls, for consumer analysis and for
data base management in the fields of market
research, product selection, and business
consulting”; “computer software for providing
forecasting models in the field of market research”
and “market analysis and research services”;

Registration No. 2688189 for, inter alia, “Computer
software for use in collecting, compiling,
maintaining, interpreting, and managing business,
marketing, and demographic information, market
research, and computer databases” and “Business and
marketing and consulting services, namely, the
research, preparation and distribution of
demographic and statistical market research
surveys”;

Registration No. 3230380 for, inter alia,
“Downloadable electronic databases and electronic
databases recorded on computer media in the fields
of advertising, marketing, market research, films,
radio airplay, book sales, music sales, video sales,
speaking events, new movie listings and media
research, and relating to school calendars”;
“computer software programs, and data management
programs … used to access, review, manipulate,
categorize, analyze, format, and prepare and print
reports from data and information in said
databases”; and “providing market research and
consumer research and consulting services, namely,
conducting and analyzing consumer surveys and
advertising and marketing studies”;

Registration No. 3452419 for, inter alia, “Computer
programs for use in database management, namely,
data warehousing, data evaluation, data processing,
data analyzing, data charting, data scoring, data
characterizing, and data monitoring, in the field of
research and development management” and “conducting
business and market research surveys”; and

Serial No. 78871559
10
Registration No. 3472733 for, inter alia, “Computer
software for use in database management, for use in
data access and data control, for use as a
spreadsheet, and for word processing, in the field
of business and financial applications … database
management software for use in the fields of
business and financial applications”; “computer
software for creating searchable databases of
information and data”; and “market analysis and
research services.”5

Based on the goods and services as identified, and the
definition of record, we conclude that applicant’s services and
registrant’s goods are all of the type that would be used in the
marketing field. Applicant’s software in the nature of a
searchable database of qualitative audience surveys reports is a
marketing tool used by the communications industry, while its
qualitative audience market research survey services provide
data for compiling such reports. Registrant’s goods are
database management computer software in the field of market
research and analysis. As defined, applicant’s goods and
services and registrant’s goods are clearly complementary
marketing goods and services that could be used together by the
same consumer and for the same purpose, i.e., for market

5 The remaining registrations are Registration Nos. 2745853, 3005761,
3203562, 3282512, 3394925, 3341869, 3487848, 3491753, 3009872,
2741759, 3456793 and 2820150.
We note that each of the following pairs of registrations are owned
by a single entity: Registration Nos. 2741759 and 2745853; 2592336
and 3009872; 3005761 and 3469181; and 3452419 and 3456793.

Serial No. 78871559
11
analysis. That is, registrant’s database management software
could be used to input, categorize and chart the data obtained
from applicant’s surveys and database for the purpose of market
analysis. Moreover, the record suggests that software in the
nature of a database and database management emanates from the
same source and that providers of marketing services provide
related software in addition to those services.
We thus find that applicant’s and registrant’s
complementary goods and services are commercially related such
that, when identified by virtually identical marks, i.e., THE
MEDIA AUDIT and MEDIAUDIT, confusion as to source is likely.
Applicant, for the first time in its reply brief, questions
the probative value of the third-party registrations submitted
by the examining attorney in support of her position that the
respective goods and services are related. Citing to the
dissenting opinion in a non-precedential case, applicant argues
that the third-party registrations “are simply not probative by
themselves.” (Reply br. p. 5). First, we find applicant’s
argument untimely inasmuch as it was not raised until after any
opportunity for the examining attorney to respond. We add that
even if timely raised, it is unpersuasive. A lone dissenting
opinion is simply an insufficient basis to deviate from the
prevailing case law which, we reiterate, provides that third-
party registrations have some probative value to the extent that
Serial No. 78871559
12
they may serve to suggest that such goods or services are of a
type which may emanate from a single source. Albert Trostel &
Sons Co., 29 USPQ2d at 1786. Moreover, we point out that the
examining attorney did not base her assertion that the goods and
services involved herein are related solely on the third-party
registrations. Rather, as discussed above, her assertion, and
our finding, is based on the entirety of the record including
the respective identifications on their face.
In an attempt to distinguish its goods and services from
the goods of the registrant, applicant maintains that there are
significant limitations or restrictions to show that the
respective marks are used in different channels of trade.
Applicant particularly contends that “the channels of trade for
the cited registrant’s programs are narrowly limited to
‘computer database management programs in the field of market
research and analysis.’” (Br. p. 10). As regards its own goods
and services, applicant contends that they are exclusively
marketed and sold to professionals in the communications
industry. Applicant further contends that its goods and
services are not sold by retail computer software stores or at
any other point of sale which the cited registrant’s goods could
be offered for sale, but rather by directly contacting
applicant. We find these contentions unavailing.
Serial No. 78871559
13
Applicant’s contention that its goods are not sold at any
point of sale in which registrant’s goods are sold is
unsupported. Moreover, as stated, it is settled that the
determination of whether there is a likelihood of confusion is
made solely on the basis of the goods and/or services identified
in the application and registration, without limitations or
restrictions that are not reflected therein. In re Dakin’s
Miniatures Inc., 59 USPQ2d 1593, 1595 (TTAB 1999). Furthermore,
where the goods and/or services in an application or cited
registration are broadly described, such that there are no
restrictions as to trade channels and purchasers, it is presumed
that the identification of goods and services encompasses not
only all goods and services of the nature and type described
therein, but that the identified goods and services are provided
in all channels of trade which would be normal therefor, and
that they would be purchased by all potential customers thereof.
See, e.g., In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB
1991)(“With reference to the channels of trade, applicant’s
argument that its goods are sold only in its own retail stores
in not persuasive…. There is no restriction [in its
identification of goods] as to the channels of trade in which
the goods are sold.”); and In re Elbaum, 211 USPQ 639 (TTAB
1981).
Serial No. 78871559
14
In this case, while registrant’s identification of goods
identifies both the intended use, i.e., “data base management,”
and field of use i.e., “market research and media analysis,” of
registrant’s software, this language does not limit registrant’s
channels of trade or classes of purchasers. Therefore, we must
presume that registrant’s computer software and programs for use
in database management for market research and media analysis
may be purchased by consumers in the communications industry,
the same industry to which applicant’s goods and services are
marketed. Similarly, the recitation in applicant’s application
does not limit applicant’s software and survey services to
direct sales by professional purchasers. Accordingly, we
presume, as we must, that the goods and services identified by
the involved application and cited registration will be offered
in all usual channels of trade for such goods and services,
including by direct solicitation, and to all usual classes of
purchasers, including those in the communication industry
seeking marketing goods and services. We thus find, at a
minimum, that the channels of trade and classes of purchasers
overlap.
In view of the above, the du Pont factors of the
relatedness of the goods and services, channels of trade and
classes of purchasers favor a finding of likelihood of
confusion.
Serial No. 78871559
15
Conditions of Sale
Applicant maintains that the examining attorney failed to
give adequate consideration to its argument that the involved
goods and services are purchased by sophisticated purchasers.
It is clear, applicant argues, that “the professional consumers
of both the cited registrant and Applicant ensure that
Applicant’s mark and the cited registration should lead the
Board to conclude that no likelihood of confusion exists.” (Br.
p. 4). Applicant particularly argues that
[T]he cited registration explains that the goods are
limited to use for “database management in the field
of market research and media analysis.” The
Applicant’s application explains that its goods and
services are for “audience surveys” and “consumer
survey reports” for use by “the communications
industry.” These goods and services are clearly for
use at the professional management level and,
contrary to the analysis of the Examiner, are clear
evidence of the “precise sophistication level of each
of the parties’ customers.” The respective
identifications of the parties limit the users of
such goods and services only to professionals with
specialized expertise. An average consumer will not
purchase such goods and services. Furthermore, only
executives and management level employees of private
and public companies would be responsible for these
types of purchases.

(Br. pp. 5-6).
Applicant also argues that the goods and services of
applicant and the registrant “should be” considered expensive
and therefore will be purchased with a great deal of care, and
that such fact can be deduced from viewing the identification of
Serial No. 78871559
16
goods and services and the documents included in the record.
Applicant particularly highlights its webpage (submitted as
Exhibit A to applicant’s request for reconsideration) and notes
that “Applicant’s software products, as explained on its
website, are often custom made” [and] “custom data base
applications, such as those provided by Applicant, would
certainly be even more expensive than the cited registrant’s
goods due to the fact that Applicant actually compiles such
databases while the cited registrant only provides software that
allows the end user to perform its own analysis.” (Br. p. 8).
First, applicant does not provide any evidence regarding
the decision-making process used by these purportedly
sophisticated professional purchasers, the role trademarks play
in their decision making-process, or how observant and
discriminating they are in practice. Accordingly, the problem
with applicant’s argument is that there is no corroborating
evidence. See Refreshment Machinery Inc. v. Reed Industries,
Inc., 196 USPQ 840, 843 (TTAB 1977) (selling to a sophisticated
purchaser does not automatically eliminate the likelihood of
confusion because “[i]t must also be shown how the purchasers
react to trademarks, how observant and discriminating they are
in practice, or that the decision to purchase involves such
careful consideration over a long period of time that even
subtle differences are likely to result in recognition that
Serial No. 78871559
17
different marks are involved”). Second, not only is applicant’s
software not identified as being “custom made,” there is no
evidence of the cost of either applicant’s software and survey
services or registrant’s software, or of the cost of
registrant’s software and computer programs and, thus, we cannot
ascertain whether the respective goods and services are so
expensive as to mitigate a finding of likelihood of confusion.
Moreover, as noted previously in this decision, there is no
limitation in either identification that applicant’s goods and
services and registrant’s goods are offered and sold solely to
sophisticated “executives and management level employees of
private and public companies.” However, even assuming arguendo
that the respective goods and services will be offered only to,
and purchased only by, such sophisticated professional
purchasers, even knowledgeable and careful purchasers can be
confused as to source, where, as here, virtually identical marks
are used in connection with closely related goods and services.
See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50
(Fed. Cir. 1986) citing Carlisle Chemical Works, Inc. v. Hardman
& Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)
("Human memories even of discriminating purchasers … are not
infallible.").
Accordingly, this du Pont factor, to the extent it favors
applicant, is outweighed by the other factors favoring a finding
Serial No. 78871559
18
of likelihood of confusion, in particular the near identity of
the marks and the relatedness of the goods and services.
After careful consideration of the evidence and arguments
of record, even those arguments not specifically addressed, we
conclude that prospective purchasers familiar with the
registered mark MEDIAUDIT for computer software and programs,
namely, computer software and programs for use in database
management in the field of market research and media analysis
would be likely to believe, upon encountering applicant’s
virtually identical mark THE MEDIA AUDIT for computer software
in the nature of a searchable database of qualitative audience
survey reports for the communications industry and consumer
survey reports services, namely, conducting qualitative audience
market research surveys for the communications industry, that
such goods and services emanate from, or are sponsored by or
affiliated with the same source.
Last, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., supra.
Decision: The refusal to register is affirmed as to both
the Class 9 goods and the Class 35 services.