Pinkerton Service Corp.v.Senior Tech-nologies, Inc.

Trademark Trial and Appeal Board

Jul 26, 2002

No. 91108377 (T.T.A.B. Jul. 26, 2002)

Mailed: July 26, 2002
Hearing: Paper No. 37
February 12, 2002 PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Pinkerton Service Corporation
v.
Senior Technologies, Inc.

Opposition No. 108,377
to application Serial No. 75/129,205
filed on July 2, 1996
_____

Gordon E. Gray III and Albin H. Gess of Price and Gess
for Pinkerton Service Corporation.

Vincent L. Carney for Senior Technologies, Inc.
______

Before Quinn, Hairston and Rogers, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Senior Technologies, Inc. has filed an application
to register the mark depicted below,

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition No. 108,377
2

for “alarms for health care facilities, namely, door
alarms to prohibit unauthorized exit or unauthorized
entry.”1
Pinkerton Service Corporation has opposed
registration. As grounds for the opposition, opposer
alleges that it and its predecessors in interest have
used the mark WE NEVER SLEEP along with a realistic
depiction of a human eye since before 1884 in connection
with the rendering of security and investigation services
to customers of every type; that a stylized eye design
has been in use at least since 1976 in connection with
security and investigation services and the protection of
people and property; and that it is the owner of the
following valid and subsisting trademark registrations:
(a) WE NEVER SLEEP and the depiction of a human eye
shown below,

1 Serial No. 75/129,205 filed July 2, 1996, alleging dates of
first use of January 23, 1989.
Opposition No. 108,377
3

for “private detective investigations and
property surveillance;”2

2 Registration No. 539,452 issued March 13, 1951; renewed.
Opposition No. 108,377
4

(b) PINKERTON and the stylized eye design depicted
below,

for “making private investigations and security
surveys for others; maintaining surveillance,
control and protecting people and physical
property;
providing uniformed security forces;”3

(c) PINKERTON and the stylized eye design depicted
below,

for “providing guard services, security patrol
services, and investigation services; namely,
service quality investigations, background
investigations, financial conditions
investigations,
fact verification investigations, personal
protection, surveillance undercover
investigation;”4

3 Registration No. 1,078,654 issued November 29, 1977; renewed.
4 Registration No. 1,778,207 issued June 22, 1993; affidavits
under Sections 8 and 15 accepted and acknowledged, respectively.
Opposition No. 108,377
5

(d) PINKERTON and the stylized eye design depicted
below,

for “risk assessment service; namely, providing
reports and information regarding potential threat
and vulnerability to harm to persons travelling
abroad;”5 and

(e) PINKERTON and the stylized eye design depicted
below,

for “servicing of automatic financial teller
machines (ATMS) and point of sale machines for
financial institutions; namely, restocking of cash

5 Registration No. 1,780,710 issued July 6, 1993; affidavits
under Sections 8 and 15 accepted and acknowledged, respectively.
Opposition No. 108,377
6
and supplies;” and “repair of automatic financial
services machines; namely, automatic teller
machines (ATMS) and point of sale machines for
financial institutions.”6

Opposer alleges that applicant’s mark, when used in
connection with its identified goods, so resembles
opposer’s previously used and registered marks set forth
above, as to be likely to cause confusion.7
In addition, although not pleaded in the notice of
opposition, opposer made of record by means of notice of
reliance a status and title copy of Registration No.
1,077,153 issued November 8, 1977 (renewed) for the
stylized eye design shown below,

for “making private investigations and security surveys
for others; maintaining surveillance, control and

6 Registration No. 1,790,672 issued August 31, 1993; affidavits
under Sections 8 and 15 accepted and acknowledged, respectively.
7 Opposer also pleaded ownership of Registration No. 1,788,407
for the mark PINKERTON and a stylized eye design for “employment
agency services.” Office records show that this registration
Opposition No. 108,377
7
protecting people and physical property; providing
uniformed security forces.” The status and title copy of
Registration No. 1,077,153 was submitted with the notice
of reliance which

was canceled December 23, 2000 under Section 8 of the Trademark
Act. Thus, we will give no consideration to this registration.
Opposition No. 108,377
8
included, inter alia, status and title copies of
opposer’s pleaded registrations. The registration was
specifically identified in the “Exhibit List”
accompanying the notice of reliance. In view thereof,
and inasmuch as applicant has not objected to the
registration, we deem the notice of opposition amended
pursuant to Fed. R. Civ. P. 15(b) to plead ownership of
this registration and a likelihood of confusion
therewith.
Applicant, in its answer, denied the salient
allegations of the opposition.
The Briefs and Arguments
Before turning to the record and the merits of this
case, we must discuss several preliminary matters.
First, applicant has filed a motion to strike
certain arguments in opposer’s brief on the case.
Applicant maintains that these arguments relate to issues
which have been raised for the first time in opposer’s
brief. In particular, applicant seeks to strike
arguments relating to the dilution of opposer’s marks and
a purported deficiency in the specimen submitted with
applicant’s application.8 It

8 Opposer maintains that the specimen is a brochure “that
Applicant cannot attest was even used in interstate commerce or
Opposition No. 108,377
9
is applicant’s position that neither of these issues
should
be interjected into this proceeding at this late date.
Opposer, on the other hand, citing Estate of Biro v.
Bic Corp., 18 USPQ2d 1382, 1385-6 (TTAB 1991), argues
that once it established its standing in this proceeding,
it was entitled to assert any argument in its trial
brief, constrained only by the bounds of Rule 11 of the
Federal Rules of Civil Procedure (FRCP).
While it is true that an opposer who has properly
pleaded its standing in an opposition is entitled to
plead any available ground for opposition, the opposer
may not assert the ground for the first time in its brief
on the case. Where, as here, a claim of dilution was not
pleaded in the notice of opposition, such a claim cannot
be relied upon by opposer unless the notice of opposition
was amended (or deemed amended), pursuant to FRCP 15(a)
or (b), to assert the claim. See TMPB Sections 321 and
507.01. In this case, the notice of opposition was not
amended to plead dilution and we do not deem the notice
of opposition amended to assert the matter. Opposer
presented no particular evidence during the trial of this

actually affixed to [applicant’s] product.” (Opposer’s brief,
p. 21, footnote 3).
Opposition No. 108,377
10
case that would have put applicant on notice that opposer
was asserting a claim of dilution.9

9 We should point out that opposer’s reliance on Estate of Biro
is misplaced. That case dealt with the issue of whether the
plaintiff therein had properly pleaded its standing; not whether
the plaintiff could plead additional grounds for opposition.
Opposition No. 108,377
11
With respect to opposer’s contention in its brief
that the specimens submitted with applicant’s application
are “deficient,” we should point out that a claim that
specimens were not used on or in connection with the
goods is not a ground for opposition and, therefore, not
a matter which the Board would entertain. In this
regard, a proper ground for opposition would be that
applicant did not use the mark on or in connection with
its goods prior to the filing date of the application.
However, before the Board could consider such a ground,
the notice of opposition would have had to be amended (or
deemed amended) to assert the matter. Obviously, in this
case, the notice of opposition was not amended to plead
this ground and the notice of opposition is not deemed
amended to assert such a ground.
In view of the foregoing, applicant’s motion to
strike is granted to the extent that, in deciding this
opposition, we will give no consideration to the
arguments in opposer’s brief relating to the issues of
dilution and the purported deficiency in the specimen
submitted with applicant’s
application. Thus, the only issue before us is that of
likelihood of confusion, there being no issue as to
Opposition No. 108,377
12
priority in view of opposer’s ownership of valid and
subsisiting registrations.
An additional matter that requires comment concerns
opposer’s statement in its brief on the case that it is a
holding company, which “owns each of the registrations at
issue in the present action and licenses these marks to
Pinkerton’s Inc.” (Brief, p. 9). Applicant, in its
brief on the case, characterizes this statement as an
“admission against interest.” Applicant argues that
there is no evidence of record which shows that the use
of the marks by Pinkerton’s Inc. inures to the benefit of
opposer and that this raises a question as to whether
opposer is entitled to rely upon use of the marks by
Pinkerton’s Inc.
Opposer has submitted, by means of notice of
reliance, copies of its pleaded registrations. Each of
the registrations shows ownership in opposer. Thus,
there is no question that opposer is entitled to rely
upon the registrations in this proceeding. As noted by
the Board in Liberty & Co. Ltd. v. Liberty Trouser Co.,
Inc., 216 USPQ 65, 66-67 (TTAB 1982) (citations omitted),
ownership of a subsisting registration constitutes prima
facie evidence of the use of the mark shown therein for
the goods or services recited in the registration since
Opposition No. 108,377
13
the filing date of the application which matured into the
registration. Moreover, there is nothing in this record
to indicate that Pinkerton Inc.’s use of the marks does
not inure to opposer.
Objections to Testimony and the Record
Applicant has raised objections to certain aspects
of the testimony of opposer’s witness, Jane Adler. Ms.
Adler is an archivist who once worked for opposer and
much of her testimony is devoted to recounting the
history of opposer and the life of its founder, Allan
Pinkerton. Applicant has essentially objected to this
testimony on the ground that Ms. Adler does not have
personal knowledge of the events to which she has
testified.
Obviously, Ms. Adler does not have personal
knowledge of events which are alleged to have occurred
during Allan Pinkerton’s life (1819-1884) and opposer’s
early beginnings. Also, we recognize that much of Ms.
Adler’s testimony was based on information derived from
the videotapes, books and publications introduced as
exhibits during her testimony.10

10 The exhibits introduced during Ms. Adler’s testimony consist
of the following: excerpts from the book titled The Pinkertons:
The Detective Dynasty That Made History, James D. Horan (1967);
excerpts from the book The Eye That Never Sleeps, Frank Morn
(1982); a publication titled History and Evidence of Passage of
Opposition No. 108,377
14
While in certain instances it is somewhat difficult to
discern whether certain of the events Ms. Adler testified
about are factual or are more akin to legend, we are
nonetheless inclined to allow all of Ms. Adler’s
testimony and accord it appropriate probative value.
Applicant has also objected to the testimony of
opposer’s witness Alex Felipe concerning the number of
contracts opposer has with health care providers. Mr.
Felipe testified that during the course of his job as
opposer’s direct marketing information supervisor, he
reviews opposer’s database of information concerning
opposer’s active and inactive clients. According to Mr.
Felipe, he obtained the information regarding the
contracts with health care providers from opposer’s
database. Applicant has objected to the testimony on the
ground of hearsay, arguing that there is no indication
that Mr. Felipe is responsible for the entry of
information in opposer’s database or that the database is
kept in the regular course of business.

Abraham Lincoln from Harrisburg, Pa. To Washington D.C. on the
22nd and 23rd of February 1861 authored by Allan Pinkerton in
1868 and published by the Pinkerton National Detective Agency in
1906; a videotape titled “Inside the Pinkertons” broadcast on
the Discovery Channel network in 2000; a videotape titled “Allan
Pinkerton The Original Private-Eye” broadcast on the A&E network
in 1996; Detective Agency’s Papers Open Window on American
Social History, The Gazette (Library of Congress, Washington
Opposition No. 108,377
15
It is opposer’s position, however, that its database
is “business information” and, thus, falls into the
business records exception to the hearsay rule.
In this case, we are inclined to agree with opposer
that a database containing information about client
contracts is a business record and, as such, falls within
the business records exception to the hearsay rule.
Thus, applicant’s objections to Mr. Felipe’s testimony
are not well taken.
Finally, opposer has objected to certain aspects of
the testimony of applicant’s witness, Kathleen Dowding
and applicant’s Exhibit 5 thereto. Ms. Dowding is a
legal assistant in the office of applicant’s counsel.
According to Ms. Dowding, she conducted a search of the
U.S. Patent and Trademark Office’s TESS database for
“trademark applications and registrations which had an
eye design” and “[t]he search provided 2,871 records of
applications and registrations, which contained the eye
design.” (Dep. 11, 12). Applicant’s Exhibit 5 is a list
of these marks with the serial and/or registration
numbers. Opposer objected to the testimony and the
exhibit as hearsay during the deposition and renewed the
objections in its brief. In addition, opposer argues

D.C.) June 30, 2000; and a printout of information about Allan
Opposition No. 108,377
16
that the submission of a mere list of third-party
applications/registrations is not the proper way to make
such applications/registrations of record.
Applicant has not responded to the objections in its
brief. Moreover, opposer is correct that the submission
of a mere list of third-party applications/registrations
is not the proper way to make such
applications/registrations of record. Rather, actual
copies of the applications/registrations or the
equivalent thereof, i.e., printouts of the
applications/registrations which have been taken from the
USPTO’s own computerized database, must be submitted. In
the absence thereof, the testimony and the list of
applications/registrations is of no probative value.
The record therefore consists of the pleadings; the
file of the opposed application; and the trial testimony,
with accompanying exhibits of opposer’s witnesses
Patricia Carlson, Dr. John Brasch (as an adverse
witness), Jane Adler, and Alex Felipe. In addition,
opposer submitted notices of reliance on, inter alia,
status and title copies of its pleaded registrations;
printed publications and excerpts from printed
publications; a copy of opposer’s 1997 annual report;

Pinkerton downloaded from the Biography Online Database.
Opposition No. 108,377
17
copies of promotional brochures; printouts of information
downloaded from opposer’s website11; and applicant’s
responses to opposer’s interrogatories.
Applicant submitted the trial testimony with related
exhibits of its witnesses Dr. John Brasch, Thomas Benes,
and Kathleen Dowding. Applicant submitted under notice
of

11 While materials such as an annual report, promotional
brochure and a printout retrieved from the Internet do not
qualify as printed publications under Rule 2.122(e) and
generally may not be introduced in an opposition by means of a
notice of reliance, in this case, applicant has not objected to
these materials on the basis that they were improperly
submitted. Thus, we consider applicant to have stipulated to
the entry of the annual report, promotional brochures and
printouts into the record. Cf. Racine Industries Inc. v. Bane-
Clene Corp., 35 USPQ2d 1832, 1834 n.4 (TTAB 1995); and JSB
International, Inc. v. Auto Sound North, Inc., 215 USPQ 60 n.3
(TTAB 1982). Indeed, at page 10 of its brief, applicant states
that such materials “may come into evidence.”
Opposition No. 108,377
18
reliance, inter alia, opposer’s responses to applicant’s
interrogatories; copies of third-party registrations for
marks which include an eye design; a certificate of
incorporation for Pinkerton Systems Integration, Inc.; a
dictionary entry for the word “security”; and a status
and title copy of its registration for the mark
WANDERGUARD and design.
The case has been fully briefed and an oral hearing
was held.12
The Parties
Opposer
The record shows that opposer is the largest
security firm in the United States with over 393 branch
offices throughout the country. Opposer offers a wide
range of security services, including guard services,
pre-employment and employee screening; crisis management,
threat assessment, and security systems integration.
Opposer’s security systems integration services involve
selection and deployment of a combination of hardware and

12 We note that opposer’s reply brief is twenty-eight pages in
length, including the table of contents and index of cases.
Trademark Rule 2.128(b) provides, in pertinent part, that a
reply brief shall not exceed twenty-five pages in its entirety.
Inasmuch as opposer’s reply brief exceeds the page limit set by
Rule 2.128(b), it is hereby stricken and has been given no
consideration. See United Foods Inc. v. United Air Lines Inc.,
33 USPQ2d 1542 (TTAB 1994). Under the circumstances, opposer’s
Opposition No. 108,377
19
software technology to provide security to opposer’s
clients. Such hardware may include access control
devices, closed circuit
television cameras, optical turnstiles, intrusion
detection, electronic imaging, custom security consoles,
remote monitoring, video image enhancement, and badging
supplies.
Opposer provides its services to a wide range of
customers including Toyota and General Motors and other
Fortune 1000 companies, the Oscar and Emmy awards, and
health care providers.
Opposer’s archivist, Ms. Adler, traced opposer’s
beginnings to the mid-1800’s and its founder Allan
Pinkerton. Pinkerton immigrated from Scotland to the
United States in 1842. In 1850 at the age of 31,
Pinkerton founded the Pinkerton National Detective Agency
in Chicago, Illinois. It was the first detective agency
in the United States and it focused on providing security
for people and property. Pinkerton and his agents had an
advantage over local police departments in that they
could cross city, county and state lines to pursue and
capture criminals. They quickly developed a reputation
for honesty and integrity. The agency used the depiction

motion to extend the time in which to file a reply brief is
Opposition No. 108,377
20
of a human eye and the motto “We Never Sleep” as its
trademark, and a sign bearing this mark hung over the
agency’s entrance. The agency came to be known as “The
Eye That Never Sleeps” or simply “The Eye.”
The agency prospered, receiving contracts to provide
security services to six major railroads. The railroads
had been losing substantial sums of money to conductor
embezzlement and Allan Pinkerton established an
undercover operation using “spotters” to spot and capture
embezzlers. Pinkerton came to know two influential men
during this time, George McClellan and Abraham Lincoln.
According to a book authored by Pinkerton, his agents
learned of a plot to assassinate then President-elect
Lincoln during his trip from Pennsylvania to Washington
D.C. on the eve of his inauguration. Pinkerton devised a
plan whereby he disguised Lincoln and changed his travel
arrangements, thereby assuring Lincoln’s safe arrival for
his inauguration.
During the Civil War, Pinkerton and his agents
gathered intelligence for the Union army and General
McClellan and they were dubbed the “Secret Service”.
They were the precursor to the present day government
protective agency which bears this name.

denied as moot.
Opposition No. 108,377
21
In the post Civil War era, Pinkerton and his agents
were best known for pursuing train robbers and other
outlaws. After Pinkerton’s death in 1884, his sons
William and Robert took over operation of the agency.
Following their deaths, the agency was operated by two of
Pinkerton’s grandsons. Around the time of World War I,
the agency began to move away from police work and expand
its role in the protection of factory plants and
premises. In 1982, the agency was purchased by American
Brands who in turn sold it in 1988 to California Plant
Protection, Inc. Securitas, a Swedish security firm,
recently acquired the agency.
Applicant

Senior Technologies, Inc., is a manufacturer and
seller of products to the long-term health care industry.
Applicant’s products are designed to inform the staff of
long-term health care facilities, such as nursing homes,
of certain circumstances that may indicate a danger to
the patients. Generally, applicant’s products are
intended for the safety of wanderers, such as Alzheimer
patients. Applicant has four product lines - the Arial
line for a nurse calling system, the Wanderguard line
that indicates unauthorized departure of a patient, the
Micro-Tech line that detects motion of a patient, such as
Opposition No. 108,377
22
a wheelchair or a bed, and the Tabs product line that
alerts the staff if a patient falls or moves into a
dangerous position.
Applicant’s involved mark CATCH-ALL and design is
used on door alarms for health care facilities, to
prohibit unauthorized exit or entry. This product is for
infrequently used doors, such as fire doors, and is
intended to sound an alarm if a patient (or anyone else)
passes through the door. Applicant’s CATCH-ALL product
is a companion to its Wanderguard product, which is for
frequently used doors. Applicant first used the CATCH-
ALL and design mark in 1989. According to the testimony
of its president, it was applicant’s intent in selecting
the CATCH-ALL and design mark to choose a mark with an
eye design similar to that already in use as part of its
WANDERGUARD and design mark since they were to be
companion products. Applicant’s sales have totaled
$400,000 to $500,000 since the introduction of its CATCH-
ALL and design door alarms.
Priority
As indicated above, opposer made of record status
and title copies of its pleaded registrations. Thus,
there is no issue with respect to opposer’s priority of
its registered marks. King Candy Co., Inc. v. Eunice
Opposition No. 108,377
23
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974).
Likelihood of Confusion
We turn our attention to the issue of likelihood of
confusion. Our determination under Section 2(d) of the
Trademark Act is based on 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. DuPont de
Opposition No. 108,377
24
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
The relevant factors for which there is probative
evidence of record are discussed below.
Relatedness or Lack Thereof Between the Goods/Services
We turn first to a consideration of the relatedness
or lack thereof between opposer’s services and
applicant’s goods. At the outset, we note that the
surveillance services identified in opposer’s pleaded
registrations are the most relevant of opposer’s services
in this case. Opposer maintains that its surveillance
services and applicant’s door alarms for health care
facilities are
related. Applicant, on the other hand, maintains that
these goods and services are specifically different in
nature, and thus are not related.
As noted by our primary reviewing court in Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813, 1815 (Fed. Cir. 1987), “the question of
likelihood of
confusion must be determined based on an analysis of the
mark as applied to the goods and/or services recited in
applicant’s application vis-à-vis the goods and/or
services recited in opposer’s registration, rather than
what the evidence shows the goods and/or services to be.”
Opposition No. 108,377
25
Further, in the absence of specific limitations in an
application or registration, the goods and/or services
identified therein must be considered to travel in all
“the normal and usual channels of trade and methods of
distribution” to all the normal and usual purchasers of
the goods and/or services. CBS Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198, 199 (Fed. Cir. 1983).
Moreover, in order to support a finding of
likelihood of confusion, it is not necessary for the
goods or services of the parties to be similar or
competitive, or even that they move in the same channels
of trade. It is sufficient that the respective goods or
services of the parties are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods or
services are such that they would be encountered by the
same persons under circumstances that could, because of
the similarity of the marks, give rise to the mistaken
belief that they originate from the same producer. In re
International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1987).
In this case, opposer’s surveillance services,
including the protection of people and property, are
broad enough to include the installation, monitoring, and
Opposition No. 108,377
26
maintenance of door alarms for all types of facilities,
including health care facilities. In fact, opposer’s
witness, Mr. Felipe, testified that opposer offers access
control services that include devices such as close-
captioned televisions and alarms. Although there are
specific differences between opposer’s surveillance
services and applicant’s door alarms for health care
facilities, they are nonetheless complementary goods and
services, and we find that they are sufficiently related
if offered under the identical or substantially similar
marks, confusion as to source or sponsorship would be
likely. With respect to the other of opposer’s services
identified in its registrations, namely, private
detective services; security guard services; service and
repair of automated teller machine services;
investigation services; and risk assessment services, we
are not persuaded on this record that they are related to
applicant’s door alarms for health care facilties. In
view of the foregoing, this du Pont factor favors opposer
in regards to its surveillance services.
Channels of Trade/Purchasers
Although applicant’s identification of goods
contains a restriction such that applicant’s door alarms
are sold only to “health care facilities,” opposer’s
Opposition No. 108,377
27
registrations contain no restriction as to channels of
trade or purchasers. Thus, we must presume that
opposer’s surveillance services would move in all the
normal channels of trade and be offered to all the usual
purchasers, including health care facilities. Thus, for
purposes of our analysis, the parties’ trade channels and
purchasers are identical. Thus, we find that this du
Pont factor favors opposer.
Degree of Care Exercised by Purchasers of the
Goods/Services
The next factor in this case concerns the degree of
care exercised by the purchasers of opposer’s services
and applicant’s goods. Clearly, purchasers and
prospective purchasers of surveillance services would
exercise care in their selection. Such services involve
the protection of persons and property and there is no
question that a great deal of attention would be paid to
selecting a company to provide these services. Also, we
would expect purchasers and prospective purchasers of
door alarms for health care facilities to exercise care
in the selection of these products. Health care
facilities have a responsibility to provide a safe and
secure environment for their residents. Not only must
they comply with government regulations, but they have
Opposition No. 108,377
28
liability concerns as well. Thus, there is simply no
question that health care facilities would exercise care
in the selection of door alarms that would alert staff to
an unauthorized entry or exit. Accordingly, we find that
this du Pont factor favors applicant. With respect to
this factor, our primary reviewing court in Electronic
Design & Sales Inc. v. Electronic Data Systems Corp., 954
F.2d 713, 21 USPQ2d 1388, 1392, stated:
Where the purchasers are the same, their
sophistication is important and often dispositive
because “[s]ophisticated consumers may be

expected to exercise greater care.”
(Citing Pignons S.A. de Mecanique de Precision
v. Polaroid Corp., 657 F.2d 482, 489, 212
USPQ 246, 252 (1st Cir. 1981).

Fame of Opposer’s Marks
The next du Pont factor we consider is the asserted
fame of what opposer characterizes as the “all seeing eye
of Pinkerton.” Opposer maintains that its “historic [eye
design] form” and “modern [eye design] form”, as shown
below, are famous. [Opposer’s brief, p. 11].
Historic Form13

13 This design does not reproduce adequately. Surrounding the
human eye design in large print are the words “PINKERTON
NATIONAL DETECTIVE AGENCY.” Directly below the design in small
print is the slogan “We never sleep.” On the left are the names
of the Pinkerton detectives, including of course, Allan
Pinkerton.
Opposition No. 108,377
29

Opposition No. 108,377
30
Modern Form

Fame, of course, is a significant factor in the
determination of likelihood of confusion, and can play a
dominant role in cases featuring a famous or strong mark.
Kenner Parker Toys, Inc. v. Rose Art Industries Inc., 963
F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992).
There is no dispute that the Pinkerton name is
famous. Indeed, applicant’s president has acknowledged,
“Pinkerton is a well-established brand name.” (Brasch
dep., p. 43, line 21). Nonetheless, there is
insufficient evidence in this record from which we may
conclude that either the historic or modern form of the
all-seeing eye is famous for opposer’s services.
With respect to the historic form of the all-seeing
eye, the evidence of record establishes use of this
design by Allan Pinkerton and the Pinkerton National
Detective Agency in connection with detective services in
the late 19th and early 20th century. It is not clear from
the record, however, the extent to which this design has
Opposition No. 108,377
31
been used in connection with the surveillance services
identified in opposer’s registrations since that time.
In other words, this record shows the historical
significance of opposer’s historic all-seeing eye design,
but not current use of this design as a mark. While
there is no question that the design is referred to in
the books/publications of record and in the two
television documentaries, this does not establish that
the design is so well known among purchasers and
prospective purchasers of opposer’s services that the
design may be said to be famous. So as to be clear, the
fact that historians who are knowledgeable about Allan
Pinkerton are well aware of the design does not mean that
the design is famous in a trademark sense among relevant
purchasers.
Further, with respect to the modern form of the all-
seeing eye design, there is no testimony or other
evidence concerning the length of time opposer has used
this design either alone or as part of opposer’s
composite marks. Moreover, there is no testimony or
other evidence concerning the extent of opposer’s
advertising or promotion of any of its services under
this design either alone or as part of opposer’s
composite marks. Although opposer has made of record
Opposition No. 108,377
32
copies of promotional brochures and an issue of its
Solutions magazine wherein the design appears, there is
no testimony concerning the extent of distribution of
these materials. We recognize that opposer is the
leading security firm in the United States, and that it
has estimated its goodwill at $86.4 million. However,
this is not enough for us to conclude, as opposer urges,
that its modern form of the all-seeing eye design is
famous, as opposed to the Pinkerton name. Compare e.g.,
Bose Corporation v. QSC Audio Products, Inc., No. 01-
1216, ___ F.3d ___, ___USPQ2d ____(Fed. Cir., June 14,
2002); (The marks ACOUSTIC WAVE and WAVE held famous in
view of 17 years use of the ACOUSTIC WAVE mark on table-
top loudspeaker music system and $5 million annually in
advertising; 8 years use of the WAVE mark on table-top
radio with total advertising expeditures of over $60
million; “vast evidence of public notice given to the
marked products”; and “considerable record evidence of
advertising and sales literature that also decouples the
product marks from the famous [BOSE] house mark”); and
Toro Co. v. ToroHead Inc., 61 USPQ2d 1164 (TTAB 2001)
[The mark TORO held famous in view of “testimony that
[opposer] has over $1.3 billion in annual sales, that it
spends $35 to $40 million annually on advertising, and
Opposition No. 108,377
33
that it advertises in trade journals, daily newspapers,
national publications, and on national television.”]
In sum, opposer has not established on this record
that either the “historic” or “modern” form of its all-
seeing eye design is famous. Thus, neither its mark
which consists of the modern design or its composite
marks which include versions of these designs, are in our
eyes, famous marks. Accordingly, this du Pont factor is
neutral.
Third-party Use and/or Registration of Similar Marks
Applicant maintains that marks which include an eye
design are weak marks and thus not entitled to a broad
scope of protection. In support of its position,
applicant submitted sixty third-party registrations for
marks that include an eye design for various goods and
services. We note that fifty of these registrations
cover goods or services not of a type involved in this
case or even arguably related thereto. However, ten of
the registrations do cover goods and/or services of a
type involved in this case or at the very least related
to the security field.14

14 For example, Registration No. 949,649 is for the mark
GUARDWARE and the design of a house and an eye for security
hardware, burglar alarms and fire alarms; Registration No.
1,244,789 is for the mark SENTRY SECURITY SYSTEMS, INC. and the
design of a pair of eyes for the installation of business and
Opposition No. 108,377
34
Although third-party registrations are not evidence
of use of the involved marks or the extent to which the
relevant purchasing public is aware of them, as the Board
noted in American Hospital Supply Corp. v. Air Products
and Chemicals, Inc., 194 USPQ 340, at 343, they are
“competent

to establish that a portion common to the marks involved
in a proceeding has a normally understood and well-known
meaning; that this has been recognized by the Patent and
Trademark Office by registering marks containing such a
common feature for the same or closely related goods
where the remaining portions of the marks are sufficient
to distinguish the marks as a whole; and that therefore
the inclusion of [the common element] in each [involved]
mark may be an insufficient basis upon which to predicate
a holding of likelihood of confusing similarity.”
In this case, we find that the pertinent ten third-
party registrations are probative of the fact that eye
designs have appealed to others in the security field;

home security alarm systems, providing security guard security
services, and private investigations and lie detection testing;
Registration No. 1,566,744 is for the mark ARGUS SECURITY GROUP,
INC. and the design of an eye for security guard services; and
Registration No. 1,753,158 is for the mark SMART BOX and the
design of an eye for security and key controlled monitoring
systems for new car dealerships.
Opposition No. 108,377
35
that such designs are not particularly distinctive in
the field; and that an eye design has a readily
understood meaning in the field making the inclusion of
such a design, per se, an insufficient basis on which to
predicate a likelihood of confusion. See Bost Bakery,
Incorporated v. Roland Industries, Inc., 216 USPQ 799
(TTAB 1982) and cases cited therein. Accordingly, this
du Pont factor favors applicant.
Similarity/Dissimilarity of the Marks
Finally, we turn to a determination of what we find
to be the key likelihood of confusion factor in this
case, namely, whether applicant’s mark and opposer’s
marks, when compared in their entireties in terms of
appearance, sound and connotation, are similar or
dissimilar in their overall commercial impression.
In comparing the marks, 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/services offered under the respective marks is
likely to result. Furthermore, although the marks at
issue must be considered in their entireties, it is well
settled that one feature of a mark may be more
Opposition No. 108,377
36
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.
Cir. 1985).
We consider first opposer’s mark WE NEVER SLEEP and
the design of a human eye shown below,

and applicant’s mark CATCH-ALL and the stylized eye
design shown below.

The words WE NEVER SLEEP are the dominant element of
opposer’s mark and the term CATCH-ALL is the dominant
element of applicant’s mark. It is appropriate to give
greater weight to the word portions of the marks, because
Opposition No. 108,377
37
it by the words that purchasers will refer to opposer’s
services and applicant’s goods, rather than the
respective eye designs. In terms of sound, there are
obvious differences between WE NEVER SLEEP and CATCH-ALL,
and the marks vary greatly in appearance, not only
because they include very different words, but also
because opposer’s realistic depiction of a human eye has
a different look from applicant’s stylized eye design.
In terms of connotation, opposer’s mark, as used in
connection with its services, suggests a security company
with an always watchful eye over persons and property,
whereas applicant’s mark, as used in connection with its
product, suggests an alarm, which will “catch all”
persons entering or exiting a door without authorization.
We find, therefore, that these marks are dissimilar in
their overall commercial impression.
Comparing next opposer’s mark PINKERTON and the
stylized eye design shown below,

Opposition No. 108,377
38
and applicant’s mark, for the same reasons as discussed
above we find that PINKERTON is the dominant element of
opposer’s mark and CATCH-ALL is the dominant element of
applicant’s mark. Similarly, in terms of sound,
appearance and meaning, there are obvious differences
between PINKERTON and CATCH-ALL. Further, even a
comparison between the stylized eye designs in
applicant’s and opposer’s marks reveals certain
differences. In applicant’s mark, the stylized eye
design forms part of the beginning letter “C” in the term
CATCH-ALL. It is a profile type of design and more open
in nature, whereas in opposer’s mark, the stylized eye
design looks somewhat like the letter “P,” is a more
frontal type of design and is more closed.
In terms of connotation, as noted above, applicant’s
mark suggests an alarm which will “catch all” persons
entering or exiting a door without authorization.
Opposer’s mark, on the other hand, suggests that the
Pinkerton Company is keeping a watchful eye over persons
and property. We conclude therefore that these marks
also have dissimilar overall commercial impressions.
Turning next to opposer’s mark, which consists of
the stylized eye design alone shown below,
Opposition No. 108,377
39

and applicant’s mark, in view of the differences noted
above between the stylized eye designs in these
respective marks, and more importantly because of the
inclusion in applicant’s mark of the term CATCH-ALL, we
find that the overall commercial impressions of these
marks are likewise dissimilar.
Turning finally to opposer’s mark PINKERTON and the
stylized eye design shown below,

and applicant’s mark, again we find that PINKERTON is the
dominant element of opposer’s mark and the term CATCH-ALL
is the dominant element of applicant’s mark. And, in
Opposition No. 108,377
40
terms of sound, appearance and meaning, there are obvious
differences between PINKERTON and CATCH-ALL. In terms of
the respective stylized eye designs, opposer’s design
appears above PINKERTON and is more open in appearance
whereas applicant’s design forms part of the beginning
letter “C” in the term CATCH-ALL. These marks have
different connotations as discussed above, and we
conclude that they likewise have dissimilar commercial
impressions.
In sum, when we compare applicant’s mark and each of
opposer’s marks in their entireties as to appearance,
sound and meaning, we find that they are dissimilar in
terms of their overall commercial impressions. In view
thereof, we conclude that this du Pont factor weighs in
favor of applicant.
In summary, after careful consideration of the
evidence of record with respect to the relevant du Pont
factors and the parties’ arguments with respect thereto,
we conclude that there is no likelihood of confusion in
this case. That is, notwithstanding the fact that
opposer’s surveillance services and applicant’s door
alarms for health care facilities are related and may be
marketed to the same purchasers, we find that opposer’s
marks and applicant’s mark are too dissimilar to support
Opposition No. 108,377
41
a determination that confusion is likely. Moreover, we
find that the design of an eye, which is the only feature
the marks have in common, is routinely adopted in the
security field, and thus not a feature of opposer’s marks
which is entitled to a broad scope of protection.
Additionally, we find that the respective purchasers of
opposer’s surveillance services and applicant’s door
alarms for health care facilities would be
discriminating, thus making confusion unlikely.
Decision: The opposition is dismissed.

Opposition No. 108,377
42