Kadence (UK) Ltd.

Trademark Trial and Appeal Board

May 29, 2002

No. 75525798 (T.T.A.B. May. 29, 2002)

Mailed: May 29, 2002
Paper No. 14
HRW
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Kadence (UK) Ltd.
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Serial No. 75/525,798
_______
Andrew S. Breines of Aresty International Law Office, P.C.
for Kadence (UK) Ltd.
Robert C. Clark, Jr., Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney).
_______
Before Wendel, Holtzman and Drost, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Kadence (UK) Ltd. has filed an application to register
the mark KADENCE for “market research and market analysis.”1
Registration has been finally refused under Section
2(d) of the Trademark Act on the ground of likelihood of
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75/525,798
2
confusion with the mark CADENCE GROUP, which is registered,
inter alia, for “business management and consultation,
business research, temporary employment and job placement,
and general information clearinghouse services.”2
The refusal has been appealed and applicant and the
Examining Attorney have filed briefs. Applicant waived its
right to an oral hearing.
We make our determination of likelihood of confusion
on the basis of those of the du Pont3 factors that are
relevant in view of the evidence of record. Two key
considerations in any du Pont analysis are the similarity
or dissimilarity of the respective marks and the similarity
or dissimilarity of the services with which the marks are
being used. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976); In re Azteca
Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999).
Looking first to the marks, the Examining Attorney
takes the position that the term CADENCE is the dominant
portion of the registered mark CADENCE GROUP and as such is
aurally equivalent, the same in connotation, and similar in
1 Serial No. 75/525,798, filed July 24, 1998, claiming a first
use date of 1991 and a first use in commerce date of December
1995.
2 Registration No. 2,354,530, issued June 6, 2000. A disclaimer
has been made of the word GROUP.
3 In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Ser No. 75/525,798
3
visual appearance to applicant’s mark KADENCE. The marks
as a whole, argues the Examining Attorney, create the same
overall commercial impression.
Applicant contends that the phonetic similarity alone
of the marks is insufficient to establish a likelihood of
confusion. Applicant argues that its services are usually
purchased through face-to-face negotiations, making the
visual appearance of its mark the most important factor.
The visual appearance of its mark KADENCE, applicant
insists, is distinct from the appearance of registrant’s
mark CADENCE GROUP.
While the marks must be considered in their
entireties, there is nothing improper, under appropriate
circumstances, in giving more or less weight to a
particular portion of a mark. See In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
Although descriptive or disclaimed matter cannot be ignored
in comparing the marks, it is also a fact that purchasers
are more likely to rely on the non-descriptive portion of a
mark as an indication of source. See Hilson Research Inc.
v. Society for Human Resource Management, 27 USPQ2d 1423
(TTAB 1993).
We agree with the Examining Attorney that the dominant
portion of registrant’s mark is the term CADENCE. The
Ser No. 75/525,798
4
additional term GROUP, which has been acknowledged by
disclaimer thereof as being descriptive, would have little
source-indicating significance. The terms CADENCE and
KADENCE are not only phonetically equivalent, but also
highly similar in appearance. The interchange of a “C” and
a “K” is only a slight difference, if noticed at all by
purchasers, and would not reasonably have any effect on the
connotation projected by the term. Thus, even if the marks
are most likely to be encountered on a visual basis, the
overall commercial impressions created by the marks are
highly similar. We would add that the proper comparison of
the marks is not made on a side-by-side basis, but rather
on the general impressions created by the marks in the
minds of purchasers as they come upon the marks at
different points in time. See Mother’s Restaurants Inc. v.
Mother’s Other Kitchen, Inc., 218 USPQ 1046 (TTAB 1983).
We are convinced that the small differences between the
marks KADENCE and CADENCE GROUP would have minimal effect
on the overall impressions created by the marks in the
minds of potential purchasers of the involved services.
Turning to the services, we note that as a general
principle, the issue of likelihood of confusion must be
determined on the basis of the services as recited in the
application vis-à-vis the services recited in the cited
Ser No. 75/525,798
5
registration, rather than what any evidence may show the
services to actually be. Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813
(Fed. Cir. 1987); CBS, Inc v. Morrow, 708 F. 2d 1579, 218
USPQ 198 (Fed. Cir. 1983). Moreover, it is not necessary
that the services of applicant and registrant be similar or
even competitive to support a holding of likelihood of
confusion. It is sufficient if the respective services are
related in some manner and/or that the conditions
surrounding their marketing are such that they would be
encountered by the same persons under circumstances that
could, because of the similarity of the marks used thereon,
give rise to the mistaken belief that they emanate, or are
associated with, the same source. See In re Albert Trostel
& Sons Co., 29 USPQ2d 1783 (TTAB 1993) and the cases cited
therein.
Applicant’s services are identified as “market
research and market analysis.” While applicant has gone
into many of the specifics of the nature of its services,
the means by which the services are carried out and the
typical customers, we are constrained to consider the
services as identified. The same holds true for
registrant’s services, the most pertinent of which are
“business research” and “business management and
Ser No. 75/525,798
6
consultation.” Any qualifications or limitations on these
services which applicant may attempt to introduce as a
result of its research of registrant’s actual services are
irrelevant. Furthermore, although registrant allegedly
only provides its services at the present time in the
Pacific Northwestern states, the registration is unlimited
as to geographic extent and accordingly no particular area
of use can be imposed. Registrant is free to use its mark
in the entire United States and likelihood of confusion
must be determined on this basis.
We find the evidence of record fully convincing that
applicant’s market research and analysis would either be
encompassed by the business research and consultation
services of registrant or closely related thereto. In the
first place, as shown by the dictionary definition of
“market research” introduced by the Examining Attorney,4
this research is an analysis directed to the products
and/or services offered by a business, and thus would fall
within the scope of a “business” research project.
Second, even if market research is construed as a type
of research separate from “business” research, the
4 The definition for “market research” reads:
The gathering and evaluation of data regarding consumers’
preferences for products and services.
The American Heritage Dictionary of the English Language
(3rd ed. 1992).
Ser No. 75/525,798
7
Examining Attorney has made of record copies of several
third-party registrations showing registration of the same
mark by a single entity for both types of research. While
these registrations are admittedly not evidence of use of
the marks in commerce, they are sufficient to suggest that
these services are ones which might be provided by a single
entity and offered to the public under the same mark. See
In re Albert Trostel & Sons Co., supra, In re Mucky Duck
Mustard Co., 6 USPQ2d 1467 (TTAB 1988). Accordingly, if
similar marks, such as those involved here, are used for
both types of research services, it may reasonably be
presumed that purchasers will mistakenly believe that the
services emanate from the same source.
Finally, in its brief, applicant acknowledges that
applicant itself offers both business research and market
analysis and research services. (Brief p. 2). This is
also evident from the specimen of record consisting of the
cover of applicant’s brochure bearing the KADENCE mark and
listing as available services, “business research,”
“industrial research,” and “market analysis.” Thus, we
come to the inevitable conclusion that the services of
applicant and those of registrant are closely related for
purposes of our analysis of likelihood of confusion.
Ser No. 75/525,798
8
As for the channels of trade, we find no limitations
in either the application or the cited registration as to
spheres of operation or types of clientele. There being no
such limitations, it must be presumed that the services are
offered in all the normal channels of trade to all the
usual customers for services of this type. See Canadian
Imperial Bank v. Wells Fargo Bank, supra. Once again we
cannot take into account any of the present-day practices
of applicant or those alleged to be true for registrant.
We are bound to determine likelihood of confusion on the
breadth of the services as recited in the application and
registration.
As a final factor for consideration, applicant raises
the sophistication of the purchasers of these services and
the expenses involved. Assuming that both applicant’s and
registrant’s services are relatively expensive and
purchased after due consideration, although we have no
specific evidence in the record to this effect, even
careful purchasers are not immune to source confusion.
This is especially true when the marks involved are highly
similar in commercial impression, as is the case here, and
the services in connection with which the marks are being
used are closely related and ones which may well emanate
Ser No. 75/525,798
9
from the same source. See In re Total Quality Group Inc.,
51 USPQ2d 1474 (TTAB 1999).
Accordingly, in view of the highly similar commercial
impressions created by the respective marks, the close
relationship between the services of applicant and
registrant, and the similarity of the channels of trade, we
find confusion likely.
Decision: The refusal to register under Section 2(d)
is affirmed.
Ser No. 75/525,798
10