Kenneth M. Stirbl

Trademark Trial and Appeal Board

Feb 7, 2002

No. 75489564 (T.T.A.B. Feb. 7, 2002)

2/7/02
Paper No. 12
ejs

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Kenneth M. Stirbl
________

Serial No. 75/489,564
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Michael R. Diliberto of Kleinberg & Lerner, L.L.P for
Kenneth M. Stirbl

William P. Jacobi, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney)1
_______

Before Seeherman, Hanak and Quinn, Administrative Trademark
Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Kenneth M. Stirbl has appealed from the final refusal
of the Trademark Examining Attorney to register UIS in
stylized form, as shown below, for the following services:2
installation, repair, and maintenance
of computers, computer systems,
computer networks, and
telecommunications equipment, and

1 Mr. Jacobi handled the appeal. Rebecca A. Smith was the
Examining Attorney during the examination of the application.
2 Application Serial No. 75/489,564, filed May 22, 1998, and
asserting first use and first use in commerce as of December 6,
1996. The lining in the drawing is a feature of the mark and is
not intended to indicate color.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/489,564
2
business and office machinery and
equipment; (Class 37)

integration of computer systems and
networks; consultation services in the
fields of computers, computer networks,
computer software and hardware,
computer software and design and
installation, computer network and site
design, installation and integration.
(Class 42).

Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. 1052(d), on the ground that
applicant’s mark so resembles the stylized mark shown
below, UIS UNIVERSAL INFORMATION SYSTEMS, INC. (with the
words INFORMATION SYSTEMS, INC. disclaimed), previously
registered for “providing personnel on a shortterm basis to
businesses to perform data processing; microfilm services,”
(Class 35) and “computer programming services” (Class 42)3
as to be likely to cause confusion or mistake or to
deceive.

3 Registration No. 1,087,818, issued March 21, 1078; Section 8
and 15 affidavits received; renewed.
Ser No. 75/489,564
3

The appeal has been fully briefed. Applicant withdrew
his request for an oral hearing.
Before discussing the substantive issue on appeal, we
must address a procedural point. With his reply brief
applicant has submitted exhibits relating to the
registrant’s business and a declaration by his attorney.
These materials are manifestly untimely and will not be
considered. Trademark Rule 2.142(d) provides that the
record in an application should be complete prior to the
filing of an appeal, and the Trademark Trial and Appeal
Board will ordinarily not consider additional evidence
filed by the applicant or the Examining Attorney after the
appeal is filed. Similarly, we have not considered
applicant’s comments in his reply brief which were made on
the basis of these untimely submissions.
Turning then to the issue of likelihood of confusion,
our determination is based on an analysis of all of the
probative facts in evidence that are relevant to the
Ser No. 75/489,564
4
factors set forth in In re E.I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). 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).
During the examination of the application the
Examining Attorney focused on the issue of likelihood of
confusion with respect to the programming services in the
cited registration, and did not even discuss the
registrant’s personnel services. A different Examining
Attorney prepared the appeal brief, and has argued that “in
the context of the registrant’s entire recitation of
services, the Class 35 services could be interpreted as
providing on-site assistance/consultation in performing
computer programming services.” Brief, p. 7. We disagree.
The question of likelihood of confusion must be determined
based on the goods and/or services as they are identified
in the application and the cited registration. See
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, NA,
811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). The Class
35 services as they are identified in the cited
registration--providing personnel on a shortterm basis to
Ser No. 75/489,564
5
businesses to perform data processing; microfilm services--
cannot be considered, as the Examining Attorney suggests,
to be on-site assistance/consultation in performing
computer programming services. Further, there is no
evidence of any relatedness between providing temporary
personnel to perform data processing; microfilm services,
and the services identified in applicant’s application.
Similarly, the Examining Attorney has not discussed in
what manner applicant’s Class 35 services-–installation,
maintenance and repair of computers, etc.-–are related to
the registrant’s computer programming services, nor has the
Examining Attorney provided evidence as to the relatedness
of these services.
With respect to the Class 42 services, applicant
argues confusion is not likely because he does not provide
computer programming services. However, the Examining
Attorney has made of record a number of third-party
registrations that show entities have registered a single
mark for both computer consultation services (applicant’s
identification includes such services) and computer
programming services. Applicant contends that these
registrations are irrelevant because the marks are not
“even remotely confusingly similar to either the
registrant’s mark or the appellant’s mark.” Reply brief,
Ser No. 75/489,564
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pp. 7-8. The purpose of the submission, however, is not to
show that there are third-party marks which are similar to
applicant’s or the registrant’s. Rather, third-party
registrations which individually cover a number of
different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
This brings us to a consideration of the marks of
applicant and the registrant. The Examining Attorney has
accurately cited a number of principles of trademark law:
although marks must be compared in their entireties, more
weight may be given to dominant elements; disclaimed matter
is generally less significant; highly suggestive matter
generally is entitled to less weight; and a strong mark is
entitled to a broader scope of protection.
The difficulty with the Examining Attorney’s position
is that the determination of the similarity of marks cannot
be made simply on the basis of a mechanical application of
principles of law. In our view, despite the fact that both
marks contain or consist of the letters UIS in stylized
forms, applicant’s mark and the cited mark convey different
commercial impressions. The letter designs themselves are
different in appearance. Moreover, the trade name which
Ser No. 75/489,564
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appears in the cited mark, although it is in smaller size
than the letters UIS, and although the words UNIVERSAL
INFORMATION SYSTEMS, INC. are either suggestive or
disclaimed, results in further differences between the
marks in appearance, as well as in pronunciation and
meaning.
It must also be remembered that the services at issue
herein, both the registrant’s identified computer
programming services and applicant’s computer consultation
services, etc., are rather specialized services which
likely will be purchased by knowledgeable individuals
exercising a degree of care. When we consider this factor,
along with the differences in the marks and the fact that
the services are not identical, we find that the Office has
not met its burden of proving that confusion is likely.
Decision: The refusal of registration is reversed.