Nissan North America, Inc.

Trademark Trial and Appeal Board

Mar 30, 2012

No. 77866625 (T.T.A.B. Mar. 30, 2012)

THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.

Mailed: March 30, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Nissan North America, Inc.
________

Serial Nos. 77865978 and 77866625
_______

Gary D. Krugman and Shahrzad Poormosleh, of Sughrue Mion
PLLC, for Nissan North America, Inc.

Mayur Vaghani, Trademark Examining Attorney, Law Office 102
(Karen M. Strzyz, Managing Attorney).
_______

Before Bucher, Ritchie and Wolfson, Administrative
Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:

Nissan North America, Inc. (“applicant”) has filed an
application for the mark ONE-TO-ONE SERVICE, in standard
characters, for “customer relationship management services
in the field of vehicle maintenance and repair offered
Serial Nos. 77866625 and 77865978

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exclusively to applicant’s authorized vehicle dealerships,”1
and an application for the mark depicted below:

for identical services.2
The examining attorney has refused registration of
applicant’s marks under Section 2(d) of the Trademark Act,
15 U.S.C. §1052, having determined that registration would
lead to a likelihood of confusion in view of registrations
for the mark ONE-TO-ONE SERVICE.COM (in standard
characters) and for the design mark depicted below:

The two cited marks are owned by the same entity and
registered for the same recitation of services: “online
business services, namely - tracking, managing and
cataloging customer service inquiries from web-site

1 Serial No. 77865978; filed November 5, 2009; first use and
first use in commerce asserted as of January 31, 2004; disclaimer
to “SERVICE” entered.
2 Serial No. 77866625; filed November 6, 2009; first use and
first use in commerce asserted as of June 30, 2009 and in a
different form as of January 31, 2004; disclaimer to “SERVICE”
entered.
Serial Nos. 77866625 and 77865978

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visitors and customers, and providing online responses
thereto; and, conducting and analyzing the results of
customer surveys.”3
When the examining attorney made the refusals final,
applicant appealed. On August 4, 2011, the Board granted
the examining attorney’s motion to consolidate the cases.
Both applicant and the examining attorney filed briefs.
For the reasons discussed below, we reverse the refusal to
register.
I. Applicable Law
Our determination under Trademark Act § 2(d) is based
on an analysis of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion. See In re E.I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973); see also Palm Bay
Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003); and In re Dixie Rests. Inc.,
105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In
considering the evidence of record on these factors, we

3 Reg. No. 2554651 for the mark ONE-TO-ONE SERVICE.COM; issued
April 2, 2002; renewed.
Reg. No. 2554652 for the mark ONE-TO-ONE SERVICE.COM and
design; issued April 2, 2002; renewed.

Serial Nos. 77866625 and 77865978

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keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and
differences in the marks.” Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976); see also In re Azteca Rest. Enters., Inc., 50 USPQ2d
1209 (TTAB 1999).
We have chosen to focus our likelihood of confusion
analysis on Registration No. 2554651 for the mark ONE-TO-
ONE SERVICE.COM because the mark in that registration is
most similar to that in the applications at issue. If we
find a likelihood of confusion with this registration, then
it would serve little purpose to consider the other
registration. Conversely, if we find that there is no
likelihood of confusion with registrant’s standard
character registration in connection with the listed
services, there is no need for us to consider the
likelihood of confusion with the special form mark of the
other cited registration. See In re Max Capital Group
Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
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II. Discussion
A. Similarity or Dissimilarity of the Marks in Their
Entireties

Applicant, in its brief, states that it “notes and
concedes that, while the marks in the cited registrations
are not identical to Applicant’s mark4 herein, the
respective marks are substantially similar and Applicant,
therefore, will not argue to the contrary.” Appeal Brief,
p. 5.
In view thereof, we need not conduct an analysis of
the marks, and simply find that they are similar.5
B. Similarity of the Services
Applicant uses its mark in association with “customer
relationship management services in the field of vehicle

4 We presume applicant intends to refer to both of its marks and
that the reference to “Applicant’s mark” in the singular tense is
an inadvertent typo. This is corroborated by applicant’s
statement, in its reply brief, that applicant has “conceded that
the respective marks are similar ….” Reply Brief, p. 2.
Applicant is correct in noting that “Whether or not the marks are
confusingly similar is the ultimate legal issue in this case,”
and we have not construed applicant’s position as conceding this
ultimate legal issue.
5 Although applicant has conceded the similarity of the marks,
the strength of the registrant’s mark is a separate factor that
we may consider. We take judicial notice of the definition of
the phrase “one-to-one,” which is defined at http://www.merriam-
webster.com/dictionary as meaning: “1: pairing each element of a
set uniquely with an element of another set.” While this
definition stems from a mathematical function, its meaning is
evident in relation to the services provided by registrant,
namely, that registrant treats each customer individually, on a
one-to-one, personal basis. Thus, the mark is suggestive; as
such, it is entitled to a lesser scope of protection than would
be the case if it were arbitrary or fanciful.
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maintenance and repair offered exclusively to applicant’s
authorized vehicle dealerships” in International Class 35.
The registrations are for “online business services, namely
- tracking, managing and cataloging customer service
inquiries from web-site visitors and customers, and
providing online responses thereto; and, conducting and
analyzing the results of customer surveys.”
It is well settled that the question of likelihood of
confusion must be determined based on an analysis of the
goods recited in applicant’s application vis-à-vis the
goods or services identified in the cited registration(s).
See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687,
1690 n.4 (Fed. Cir. 1993); Canadian Imperial Bank v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1987);
and Paula Payne Products v. Johnson Publishing Co., 473
F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases
involving the issue of likelihood of confusion must be
decided on the basis of the respective descriptions of
goods.”). The examining attorney contends that the
services are of a type that could emanate from a single
source, and in support of this position, made of record
numerous third-party registrations that purportedly
demonstrate that consumers are familiar with entities
offering applicant’s type of services and registrant’s type
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of services under the same mark. Copies of use-based,
third-party registrations may serve to suggest that the
goods and services are of a type which may emanate from a
single source, although they are not evidence that the
marks shown therein are in commercial use, or that the
public is familiar with them. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
Upon careful review of the registrations submitted by
the examining attorney, we find them not to be highly
probative of the purported relationship between the
services. While several show that companies that offer
“customer relationship management” services may also
conduct and analyze public opinion surveys, none appear to
be web-based (in other words, “online business services”)
or directed specifically to customer service inquiries from
website visitors and customers, or to customer surveys, as
is the case with the cited mark.6 Moreover, none are in the
field of vehicle maintenance and repair.

6 While there is one registration (Reg. No. 2895993 for the mark
REAL-TIME CUSTOMER CARE POWERED BY ISKY & design) that includes
customer relationship management services and “promoting the
goods and services of others via an on-line electronic
communications network by initiating, receiving and responding to
on-line inquiries to and from customers of other businesses,”
this single instance does not show that the services are
generally of a type that emanate from a single source, that
consumers are familiar with their origination as being from a
single source or that the services are related.
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In addition, the examining attorney has taken
particular note of five web pages attached to the final
Office action that purport to show that the services of
conducting and analyzing customer survey results are
included within the definition of customer relationship
management services. According to this evidence, the
examining attorney argues that applicant could conduct or
analyze customer surveys for its dealerships as part of the
relationship management services it provides, creating an
overlap between the services and a potential for confusion.
Based on a strict reading of the recitations in each
of applicant’s application and registrant’s registration,
the services are potentially related with respect to the
services of conducting and analyzing customer surveys.
This factor, then, slightly favors a finding of likelihood
of confusion.
C. Channels of Trade and Classes of Purchasers
Applicant’s services are limited to applicant’s
“authorized vehicle dealerships” only. Applicant does not
offer services under the mark ONE TO ONE SERVICE to the
general public. As the examining attorney points out,
registrant could offer its “online business services” to
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opposer’s dealers.7 However, this appears unlikely.
Applicant has submitted ten declarations from authorized
vehicle dealerships8 wherein each dealer attests that he has
“never received any information from any business offering
the services of tracking, managing or cataloging consumer
service inquiries from web site visitors/customers [or] the
services of conducting or analyzing the results of such
customer inquiries.” Dealer declarations, para. 6. While
the dealers have each signed a similarly worded
declaration, two of the dealers have been authorized Nissan
dealerships since the 1980’s (1981 and 1985), and three
since the 1990’s (1990, 1995 and 1998). Thus, a long
period of time has elapsed during which none of these five
declarants ever encountered a business offering the type of
services offered by registrant. While the potential for
overlap in the channels of trade theoretically exists,
chances of its occurrence are slight. This du Pont factor
is neutral.

7 Of course, the registrant could offer its services to all
classes of consumers that are normal for the type of services
involved, and they could be purchased by all potential buyers
thereof; in this case, however, any but applicant’s customers are
not relevant to our inquiry, because applicant has narrowed its
recitation of services to its own dealerships.
8 Although the majority are located in the mid-Atlantic, opposer
also submitted the declaration of the Service Director of Tynan’s
Nissan located in Aurora, Colorado.
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D. Buyer Sophistication
The purchasers’ likely degree of care is an important
factor in this case. We first clarify that, based on the
recitation of services, it is applicant’s dealers whose
potential confusion is to be considered, and not that of a
member of the general public, inasmuch as applicant has
narrowed the potential purchaser of its services to only
its authorized dealerships. “If likelihood of confusion
exists, it must be based on the confusion of some relevant
person; i.e., a customer or purchaser.” Electronic Design
& Sales, Inc. v. Electronic Data Sys. Corp., 954 F.2d 713,
21 USPQ2d 1388, 1390 (Fed. Cir. 1992) (citations and
quotation marks omitted).
While “there is always less likelihood of confusion
where goods are expensive and purchased after careful
consideration,” Astra Pharm. Prods., Inc. v. Beckman
Instruments, Inc., 718 F.2d 1201, 220 USPQ 786, 790 (1st
Cir. 1983), in this case the record does not inform
regarding the cost of applicant’s services. Nonetheless,
applicant contends that its customers are sophisticated in
the sense that the close personal relationship cultivated
between itself and its dealers has educated them “about the
origin of the services offered [such that they] would not
be confused as to the source or sponsorship of those
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services given the realities of the commercial marketplace
in the automotive industry and how automotive manufacturers
communicate with their authorized dealership base.” Appeal
Brief, p. 8. The dealer declarations support applicant’s
contention. In each, the dealer attests that “access to
[opposer’s customer relationship management] program is
only through [opposer’s] dedicated dealers only portal,
which is password protected and can only be accessed by
authorized Nissan dealers.” Dealer declarations, para. 4.
Moreover, they would not be confused if approached by
registrant offering its online services: “If I did receive
information offering such services, which services were not
offered through Nissan’s password protected dealers only
portal, I would immediately recognize and understand that
such services were not offered by, sponsored by, endorsed
by, or otherwise connected in any way with Nissan.” Dealer
declarations, para. 4.
“[P]urchaser[ ] ... sophistication is important and
often dispositive because ‘[s]ophisticated consumers may be
expected to exercise greater care.’” (third bracket in
original). Electronic Design, 21 USPQ2d at 1392 (quoting
Pignons S.A. de Mecanique de Precision v. Polaroid Corp.,
657 F.2d 482, 212 USPQ 246, 252 (1st. Cir. 1981)); In re
Shipp, 4 USPQ2d 1174, 1176 (TTAB 1987)(commercial dry
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cleaning equipment, which is ordinarily not sold to general
public, and laundry and dry cleaning services that are
offered to general public are not so related that confusion
would be likely from contemporaneous use of virtually
identical mark, since only operators of dry cleaning
establishments would have potential to encounter both, and
since such operators are relatively sophisticated and
discriminating in matters relating to dry cleaning
industry). In this case, the relevant buyer class is
composed solely of professional or commercial purchasers
familiar with the field, who have attested to how observant
and discriminating they are in practice. This factor
strongly favors a finding of no likelihood of confusion.
III. Conclusion
We have carefully considered the entire record, all
arguments, and the evidence submitted by applicant and the
examining attorney. In the face of this evidentiary
record, we agree with applicant that “the only narrow and
limited overlap in the potential class of customers
comprise sophisticated, knowledgeable individuals who have
a close business relationship with applicant,” Appeal Brief
p. 9, and that these consumers are not likely to be
confused. In saying this, we note that it is well-
established that in evaluating a likelihood of confusion,
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the Board must consider more than the mere possibility of
confusion. See In re Coors Brewing Co., 343 F.3d 1340, 68
USPQ2d 1059 (Fed. Cir. 2003); Electronic Design, 21 USPQ2d
at 1393; Bongrain Intl. (American) Corp. v. Delice de
France Inc., 811 F.2d 1479, 1 USPQ2d 1775, 1779 (Fed. Cir.
1987); In re E.I. du Pont, 177 USPQ at 563. In view
thereof, use of applicant’s mark in association with
“customer relationship management services in the field of
vehicle maintenance and repair offered exclusively to
applicant’s authorized vehicle dealerships,” is not likely
to cause confusion with the marks in the cited
registrations.
Decision: The refusal to register under Trademark Act
§ 2(d) is reversed as to both marks in trademark application
Serial Nos. 77866625 and 77865978.
These applications will proceed to publication in due
course.