OnePoint Public & Private Solutions LLC

Trademark Trial and Appeal Board

Sep 29, 2012

No. 77790842 (T.T.A.B. Sep. 29, 2012)

Mailed: September 29, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re OnePoint Public & Private Solutions LLC
________

Serial No. 77790842
_______

Daniel L. Fiore of Reger Rizzo & Darnall LLP for OnePoint Public
& Private Solutions.

Fred Carl III, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
_______

Before Holtzman, Taylor and Lykos, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by OnePoint Public & Private
Solutions LLC (applicant) to register the mark ONEPOINT PUBLIC &
PRIVATE SOLUTIONS, in standard characters, for services
ultimately identified as "commercial lobbying services" in Class
35.1

1 Application Serial No. 77790842, filed July 28, 2009, based on an
allegation of a bona fide intention to use the mark in commerce. The
above identification was submitted by applicant in its "supplemental
brief" and accepted by the examining attorney in his appeal brief.
Accordingly, the examining attorney's requirement for an acceptable
THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Serial No. 77790842
2
The trademark examining attorney has refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d), on the ground that applicant's mark, when
applied to applicant's services, so resembles the
registered mark ONEPOINT in standard characters for the
following services (in Class 35) as to be likely to cause
confusion.2
Coordination, monitoring of and refinement of
marketing campaigns using closed-loop campaign
tracking and response management strategies and
technology; providing information in the field of
business planning via the internet; business
marketing consulting services, namely, consulting
services for product and service marketing, marketing
campaign planning, strategy, implementation and
management, outsourcing facilities and customer
relationship management techniques, namely tracking
of customer contact information, tracking of referral
sources, and customer financial histories; business
management and business consulting in the field of
customer relationship management; marketing data
collection; marketing data integration, marketing
data management, marketing report generation, and
systems for integrating marketing and customer data
with other business and statistical marketing data;
creating acquisition and loyalty strategies for
customers utilizing competitive reviews,
benchmarking, economic models and strategy
development and implementing such strategies for
others; developing strategies to profile and pinpoint
potential customers, new opportunities and strategic
business alliances using customer attributes,
demographics, financial information, and lifestyle
information; development of strategies to assist
clients with strategic customer acquisition and
knowledge, customer retention, marketing campaign

identification of services is deemed satisfied, and the appeal on this
issue is moot.
2 Registration No. 3113830, issued July 11, 2006.
Serial No. 77790842
3
management and market knowledge and implementing such
strategies for others; preparing targeted mailing
lists, telemarketing lists and e-mail lists by adding
customer attributes, demographics, financial
information, lifestyle information; computerized
database management; information analysis, namely
performing market analysis using client databases in
the field of modeling, scoring and analytics,
marketing and solicitation and customer profiles and
creating reports from such client databases; market
analysis services in the nature of statistical
analysis and sample design; preparation of
statistical business reports; business consultation
regarding customer profiling; data processing
services, namely processing sales and promotional
data; direct marketing campaign management, namely,
marketing consulting services.

When the refusal was made final, applicant appealed. Briefs
have been filed.3
Our determination under Section 2(d) is based on an analysis
of all of the probative facts in evidence that are relevant to
the factors bearing on the likelihood of confusion issue. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the
goods and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).

3 The examining attorney's objection to the third-party websites
referenced by applicant for the first time in its appeal brief is well
taken. This evidence is untimely and will not be considered. See
Trademark Rule 2.142(d). Nor will we consider applicant's unsupported
arguments in its brief which are based on or relate to this untimely
evidence.
Serial No. 77790842
4
We turn first to a comparison of applicant's mark ONEPOINT
PUBLIC AND PRIVATE SOLUTIONS with registrant's mark ONEPOINT, and
a consideration of the marks in their entireties in terms of
sound, appearance, meaning and commercial impression. See Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). While marks must be compared in
their entireties, one feature of a mark may have more
significance than another, and in such a case there is nothing
improper in giving greater weight to the more significant
feature. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985).
The term ONEPOINT is registrant's entire mark. The
identical term ONEPOINT is aurally and visually a significant
part of applicant's mark ONEPOINT PUBLIC & PRIVATE SOLUTIONS.
ONEPOINT is the first part of applicant's mark that purchasers
will see or hear when encountering the mark, and it is therefore
more likely to have a greater impact on purchasers and be
remembered by them. See Palm Bay, 73 USPQ2d at 1692-93 (The term
VEUVE in the mark VEUVE CLICQUOT is a "'prominent feature' as the
first word in the mark"); Presto Products Inc. v. Nice-Pak
Products Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) ("it is often the
first part of a mark which is most likely to be impressed upon
the mind of a purchaser and remembered").
Serial No. 77790842
5
Furthermore, the wording PUBLIC & PRIVATE SOLUTIONS in
applicant's mark may add to, but does not significantly change,
the meaning and commercial impression created by the term
ONEPOINT standing alone. Rather than distinguishing the marks,
the phrase is likely to simply suggest additional information
about applicant's ONEPOINT lobbying services, i.e., that
applicant provides solutions to meet the needs of its public and
private sector clients.
Because the identical term ONEPOINT is registrant's entire
mark and forms a significant part of applicant's mark, we find
that the marks as a whole are similar in sound, appearance,
connotation and commercial impression.
We also note that there is no evidence of third-party use of
ONEPOINT or any other evidence to show that the registered mark
is not a strong mark.
Turning next to the relationship between the services, we
keep in mind that the services must be considered as they are
described in the application and cited registration, rather than
in light of what the services may actually be. See Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001
(Fed. Cir. 2002); and Octocom Systems Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1987).
Applicant's services are "commercial lobbying services."
Registrant's services, which are essentially marketing services,
Serial No. 77790842
6
include the following: "Coordination, monitoring of and
refinement of marketing campaigns using closed-loop campaign
tracking and response management strategies and technology";
"business marketing consulting services, namely, consulting
services for product and service marketing, marketing campaign
planning, strategy, implementation and management...";
"developing strategies to profile and pinpoint...new
opportunities and strategic business alliances"; "development of
strategies to assist clients with...marketing campaign management
and market knowledge and implementing such strategies for
others"; "preparing targeted mailing lists, telemarketing lists
and e-mail lists..."; and "direct marketing campaign management,
namely marketing consulting services."
It is true, as applicant states, that lobbying and
marketing are different services. However, the question is not
whether purchasers can differentiate the services themselves but
rather whether purchasers are likely to confuse their source.
See Helene Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d
1618 (TTAB 1989). Thus, it is not necessary that the respective
services be similar or even competitive to support a finding of
likelihood of confusion. It is sufficient if the 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
Serial No. 77790842
7
similarity of the marks used thereon, give rise to the mistaken
belief that they emanate from or are associated with the same
source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993).
We find that applicant's and registrant's services are
related and they may be used for similar purposes. The examining
attorney submitted printouts from several third-party websites
showing that both lobbying services and marketing services, such
as the marketing campaign planning and strategies identified in
the cited registration, are offered under a single mark.
Excerpts from these websites are set forth below.
McLane, Graf, Raulerson & Middleton Professional
Association provides "lobbying services" along with
"Customer Service & Marketing" as part of its program
support.
mclane.com

Stefan/George Associates, an advocacy and association
management firm, offers "lobbying services" as well
as "Marketing and Networking Services" which includes
"targeted media lists" and "social marketing:
Meeting client needs as it relates to the legislative
arena by utilizing new trends."
stefangeorge.com

Hurt, Norton & Associates Inc. offers "a range of
consulting, marketing and lobbying services." The
firm provides "Government Marketing" assisting with
"marketing corporate products and services, and
provid[ing] advocacy services for corporate issues
and congressional legislation as required by the
client." In addition, the firm "provides valuable
networking and business contacts for our clients."
hurtnorton.com

Serial No. 77790842
8
Brown Communications, LLC offers "a full range of
communications and marketing services" including
"Government Relations and Lobbying Services,"
"Marketing Plan Development & Implementation" and
"Market Research and Focus Group Sessions," and
states that "Marketing a product or service entails
creating the right blend of advertising, public
relations, and promotion."
browncomm.com

Carmen Group is a "lobbying firm" with "proven
Strategic Marketing Expertise" stating that they
"integrate multi-level campaigns with budget
discipline" that includes research, print ads,
websites, list building and email campaigns.
carmengroup.com

In addition, the examining attorney submitted several use-
based, third-party registrations showing, in each instance, that
the same mark has been registered for both applicant's and
registrant's types of services. The registrations include: Reg.
No. 3538706 (THE POWER OF DIRECT) listing "lobbying and public
relations services" and "providing information in the field of
direct marketing"; Reg. No. 3420715 (STRATEGIC PUBLIC PARTNERS
GROUP) listing "lobbying services" and "consultation and
management services for...marketing,...brand management, media
management, and communications"; Reg. No. 3916563 (PHARMACY PLUS)
listing "lobbying services" and "providing business consulting
services in...marketing..."; and Reg. No. 3950612 (REAL AMERICAN
STRENGTH) listing "lobbying services" and "advertising, marketing
and promotional networking and socializing opportunities for
business purposes; business marketing services." These third-
Serial No. 77790842
9
party registrations, while not evidence of use of the marks
therein, may serve to suggest that applicant's and registrant's
services are of a type which may emanate from a single source.
See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86
(TTAB 1993).
Applicant argues, pointing to the dictionary definitions of
"marketing," "lobby" and "lobbying" set forth below,4 that "[t]he
plain meaning of the services demonstrates distinct services
offered, on the one hand, in connection with the promotion and
sale of goods or services in the private sector for profit, and
on the other hand, in connection with the promotion of particular
interests before a legislative body in the public sector."
Marketing:
1: the act or process of selling or purchasing in a
market 2: an aggregate of functions involved in
moving goods from producer to consumer.

Lobby/Lobbying:
To conduct activities aimed at influencing public
officials and esp. members of a legislative body on
legislation 1: to promote (as a project) or secure
the passage of (as legislation) by influencing public
officials 2: to attempt to influence or sway (as a
public official) toward a desired action.

4 We take judicial notice of these definitions which were recited in
applicant’s brief. 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). Applicant identifies the source of
these definitions as Webster's Ninth New Collegiate Dictionary, but did
not submit copies of the relevant pages from the dictionary.
Nevertheless, there is no dispute as to the meanings of these words and
we accept that the words are defined as applicant claims.
Serial No. 77790842
10
However, as the examining attorney points out, the
definitions merely show that the services are defined differently
and that they are not the same. He states that "[r]egardless of
whether these services share a definition or are identical, they
are related to each other by virtue of the fact that they are
customarily offered together." As the website evidence shows,
marketing services can be offered as a separate service by
lobbying firms (to promote corporate goods and services to the
government), or as part of the lobbying service itself, using
marketing campaigns to optimize their lobbying efforts.
Furthermore, it is implicit in the definition of lobbying
submitted by applicant, and shown by the reference below, that a
lobbying service would involve promotional or marketing
activities designed to influence public opinion or public
officials.
[C]ontemporary usage has broadened the term
[lobbying] to incorporate making demands upon civil
servants, state institutions, and influencing public
opinion by reasoned argument, public relations
campaigns, mass media coverage, or sometimes the
offer of favors.5

As to the channels of trade and classes of purchasers,
because there are no restrictions or limitations in either
applicant's or registrant's identification of services, we must

5 The Crystal Reference Encyclopedia (2005); from the website
credoreference.com. We take judicial notice of this reference work.
Serial No. 77790842
11
presume that such services are offered in all the normal channels
of trade to all the usual purchasers for such services.
Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910
(TTAB 2000). The website evidence referenced above shows that
the channels of trade and purchasers for both lobbying services
and marketing services in fact overlap.
We recognize that the overlapping purchasers of applicant's
and registrant's services would be sophisticated and
knowledgeable and that they would exercise at least some
degree of care in selecting the services. However, even careful
purchasers can be confused as to source under circumstances
where, as here, very similar marks are used in connection with
related 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.").
In view of the foregoing, and because similar marks are used
in connection with related services, we find that confusion is
likely.
Decision: The refusal to register under Section 2(d) is
affirmed.