RHR Int’l. Co.

Trademark Trial and Appeal Board

Jun 29, 2004

No. 76303536 (T.T.A.B. Jun. 29, 2004)

Mailed:
June 29, 2004
Paper No. 12
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re RHR International Company
________
Serial No. 76303536
_______
Lisa A. Carroll of Bell, Boyd & Lloyd LLC for RHR
International Company.
Charles L. Jenkins, Jr., Trademark Examining Attorney, Law
Office 105 (Thomas G. Howell, Managing Attorney).
_______
Before Seeherman, Hanak and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
On August 23, 2001, applicant filed the above-
captioned application, by which it seeks registration on
the Principal Register of the mark CHANGINGWORKS (in typed
form) for services recited in the application (as amended)
as “business consultation services relating to
organizational assessment and improvement,” in Class 35.
The application is based on applicant’s allegation of a
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76303536
2
bona fide intention to use the mark in commerce. Trademark
Act Section 1(b), 15 U.S.C. §1051(b).
The Trademark Examining Attorney has refused
registration of applicant’s mark pursuant to Trademark Act
Section 2(d), 15 U.S.C. §1052(d), on the ground that
applicant’s mark, as applied to applicant’s services, so
resembles each of two previously-registered marks (which
are owned by a single entity) as to be likely to cause
confusion. The first cited registration is of the mark
depicted below, for services recited in the registration as
“business management and consultation,” in Class 35.1
1 Registration No. 1966359, issued April 9, 1996 pursuant to
Trademark Act Section 44. Affidavits under Sections 8 and 15
accepted and acknowledged. The registration includes the
following lining and stippling statement: “Although the drawing
is lined for color, applicant makes no claim as to color. The
stippling is for shading purposes only and is not a feature of
the mark.” The registration also includes the following
description of the mark: “The mark consists, in part, of a
stylized ‘question mark’ and a lower case ‘A’.”
Ser. No. 76303536
3
The second cited registration is of the mark THE CHANGE
WORKS (in typed form), for services recited in the
registration, in pertinent part, as “business consultancy
services; business management and business organizational
consultancy services,” in Class 35.2
When the refusals were made final, applicant filed
this appeal. Applicant and the Trademark Examining
Attorney filed main appeal briefs, and applicant filed a
reply brief. Applicant did not request an oral hearing.
The evidence of record on appeal (all of which was
submitted by applicant) consists of printouts from the
Office’s TARR database of numerous third-party
registrations of marks which end with the word WORKS, for
business consulting or related services; printouts from the
Office’s TARR database of applicant’s other registrations
and applications covering marks which end in WORKS;
printouts from applicant’s website offered to show use of
applicant’s other marks and to further explain the nature
2 Registration No. 2562249, issued April 16, 2002. The
registration’s identification of goods and services includes
various goods in Classes 9 and 16, as well as various services in
Class 35. However, it is apparent from the Trademark Examining
Attorney’s Office actions and his appeal brief that his Section
2(d) refusal is based solely on the Class 35 services recited in
the registration as “business consultancy services; business
management and business organizational consultancy services.” We
therefore have given no consideration to the remaining goods and
services identified in this registration.
Ser. No. 76303536
4
of applicant’s services; and dictionary definitions of the
words “change” and “works.”
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
likelihood of confusion factors set forth in In re E. I. du
Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental inquiry
mandated by §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).
We find that applicant’s services, as recited in the
application, are encompassed by and legally identical to
the services recited in each of the cited registrations.
Given the legally identical nature of the respective
services, and the absence of any restrictions or
limitations in either applicant’s or registrant’s
respective recitations of services, we also find that
applicant’s and registrant’s respective services would be
marketed in the same trade channels and to the same classes
Ser. No. 76303536
5
of purchasers. These facts support a finding of likelihood
of confusion.
We next must determine whether applicant’s mark and
the cited registered marks, when compared in their
entireties in terms of appearance, sound and connotation,
are similar or dissimilar in their overall commercial
impressions. 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 services offered under the
respective marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks
and service marks. See Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106 (TTAB 1975). 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
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). Finally, where, as in the present case, the marks
would be used in connection with legally identical
Ser. No. 76303536
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services, the degree of similarity between the marks which
is necessary to support a finding of likely confusion
declines. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
Applying these legal principles in the present case,
we find that applicant’s mark is similar to each of the
cited registered marks.
We first shall compare applicant’s mark,
CHANGINGWORKS, to the typed-form registered mark, THE
CHANGE WORKS. In terms of appearance, we find that these
marks are more similar than dissimilar. Purchasers viewing
the marks will see in each mark a form of the word CHANGE
followed by the word WORKS. The marks are not visually
identical, inasmuch as the cited registered mark consists
of three words while applicant’s mark consists of one word,
and because the cited registered mark (but not applicant’s
mark) includes the word THE, while applicant’s mark (but
not the cited registered mark) includes the suffix –ING.
However, the marks need not be identical in order to be
found confusingly similar. We find that these points of
visual dissimilarity are outweighed by the basic similarity
between the marks which arises from the presence in both
marks of a form of the word CHANGE followed by the word
WORKS.
Ser. No. 76303536
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In terms of sound, we find that the marks are more
similar than dissimilar. Both marks have three syllables,
and two of those three syllables are pronounced
identically, i.e., “change” and “works.” The points of
aural dissimilarity between the marks, i.e., the definite
article THE in the cited registered mark and the suffix
–ING in applicant’s mark, are outweighed by the aural
identity of the syllables pronounced “change” and “works”
in each of the marks.
In terms of connotation or meaning, we find that the
marks are highly similar if not identical. We agree with
the Trademark Examining Attorney’s contention that both
marks convey the meaning “change does work” or “change can
work.” “Change” and “changing” are essentially synonymous;
we take judicial notice that Webster’s Ninth New Collegiate
Dictionary (1990) at p. 226 defines “change” as a noun
meaning “the act, process, or result of changing.”3
(Emphasis added.) So to say that “change works” is
essentially the same as saying that “changing works.” The
presence of the definite article THE in the cited
registered mark does not negate this essential similarity
3 The Board may take judicial notice of dictionary definitions.
See, e.g., University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983); see also TBMP §704.12(a)(2d ed. 1st
rev. March 2004).
Ser. No. 76303536
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in the two marks’ meanings. Although it gives the cited
registered mark the connotation of a particular “change”
that works, as opposed to the less specific sense conveyed
by applicant’s mark that “changing” in general works, this
difference is so subtle and slight as to be
inconsequential, and it is greatly outweighed by the
overall similarity in meaning conveyed by the marks. This
is especially so when we remember that purchasers are
likely to retain a general rather than a specific
impression of trademarks and service marks. See Sealed Air
Corp. v. Scott Paper Co., supra. The subtle differences
which result from applicant’s careful parsing of the marks
are not likely to be perceived, understood or recalled by
purchasers, who are not likely to engage in such an
exercise when confronting the marks.
In its reply brief, applicant argues that the word
“works” in its mark is a noun which conveys the meaning of
a plant or factory, as in the word “steelworks,” and that
its mark therefore connotes a factory or “works” where
“change” is produced.4 Even if we accept this construction
4 We note that this argument in applicant’s reply brief as to the
meaning of its mark, i.e., that the words “changing” and “works”
in its mark are both nouns, such that the mark connotes a “works”
where “change” is produced,” and its related reply brief argument
that, unlike the cited registered marks, “Applicant’s mark does
not indicate that Applicant causes businesses to change,” are
quite different from (and contradictory to) the argument
Ser. No. 76303536
9
of applicant’s mark, this does not help applicant, because
we find that the cited registered mark THE CHANGE WORKS can
connote the same thing, i.e., a works (or “the” works)
where change is produced. Again, “change” and “changing”
are essentially synonymous, so if “changing works” connotes
a factory where change is produced, “the change works” can
connote the same thing. Indeed, whatever construction
applicant’s mark might be given, the cited registered mark
can be construed to have the same or a similar meaning.
In short, we find that the marks are similar rather
than dissimilar in terms of appearance, sound and
connotation, and that they have similar overall commercial
impressions. Moreover, given the legal identity of
applicant’s and registrant’s services and the resulting
lesser degree of similarity between the marks which is
applicant made in its main appeal brief as to the connotation of
its mark. There, applicant argued that its mark is made up of
the gerund form of the verb “to change” and the third-person form
of the verb “to work,” namely, “works,” such that “Applicant’s
mark creatively communicates the notion that the Applicant is
engaged in the act or process of ‘changing’ the way one ‘works’,”
and that “the impression of Applicant’s mark is that Applicant is
always in the process of moving or ‘changing’ the work habits and
practices of companies or organizations.” The fact that
applicant itself appears to have no fixed conception of the
meaning (and grammatical construction) of its mark suggests that
purchasers are likely to be similarly uncertain and confused, or
at least flexible, in their understanding of the meaning of
applicant’s mark, and in their understanding of the meaning of
registrant’s mark as well. They therefore could understand the
marks to have the same or a similar meaning.
Ser. No. 76303536
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required to support a finding of likelihood of confusion,
see Century 21 Real Estate Corp. v. Century Life of
America, supra, we find that applicant’s mark is
sufficiently similar to the cited registered mark that
confusion is likely.
We also find that applicant’s mark is similar to the
other cited registered mark, which includes certain design
elements in addition to the words THE CHANGE WORKS. In
terms of appearance, we find that the marks are similar as
to their wording, for the reasons discussed above in
connection with the typed-form registered mark. Although
the design element of this registered mark is large in
comparison to the wording in the mark, we nonetheless find
that it is still the wording that functions as the dominant
feature in the mark’s commercial impression. The
background shading, the question mark and the small letter
“a” in the registered mark are likely to be viewed more as
decorative elements than as source indicators. It is the
wording in the mark that purchasers are likely to perceive,
recall and use in calling for or referring to the services.
See, e.g., In re Appetito Provisions Co., Inc., 3 USPQ2d
1553 (TTAB 1987).
We also find that applicant’s mark is similar to the
second cited registered mark in terms of sound, for the
Ser. No. 76303536
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reasons discussed above in connection with the typed-form
word mark. This registered mark is likely to be pronounced
simply as THE CHANGE WORKS. As noted above, the design
portions of the mark are likely to serve merely as
decorative features of the mark. The question mark and the
small “a” in the design portion of this registered mark are
not likely to be pronounced.
We further find that this registered mark, like the
typed-form registered mark, is similar to applicant’s mark
in terms of connotation. It is not immediately apparent
what, if anything, the design features of the registered
mark contribute to the meaning of the mark; it is the
wording in the mark, i.e., THE CHANGE WORKS, which creates
the mark’s connotation, and that connotation is similar to
the connotation of applicant’s mark.
In short, we find that applicant’s mark is
sufficiently similar to this second cited registered mark
that, when the marks are used on the legally identical
services involved herein, confusion is likely.
Applicant has presented evidence of numerous third-
party registrations of marks which end in –WORKS, for
business consulting and related services. Applicant argues
that this evidence shows that WORKS is so commonly used in
marks for these services that purchasers are accustomed to
Ser. No. 76303536
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distinguishing such marks by looking to other features of
the marks. Even if these third-party registrations were
probative evidence of third-party use under the sixth du
Pont factor (“the number and nature of similar marks in use
on similar goods [or services]”), which they are not,
applicant’s argument would not be persuasive.5 If
purchasers were to look beyond the presence of the word
WORKS in applicant’s mark and each of registrant’s marks,
they would find that the marks also include a variant of
5 Nor are we persuaded by applicant’s argument that purchasers
are not likely to be confused because they will perceive
applicant’s CHANGINGWORKS mark as one of applicant’s family of
–WORKS marks. First, we cannot conclude on this record that
applicant in fact owns a “family” of –WORKS marks. It is settled
that
A family of marks is a group of marks having a
recognizable common characteristic, wherein the marks
are composed and used in such a way that the public
associates not only the individual marks, but the
common characteristic of the family, with the
trademark owner. Simply using a series of similar
marks does not of itself establish the existence of a
family. There must be a recognition among the
purchasing public that the common characteristic is
indicative of a common origin of the goods… (Emphasis
added.)
J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18
USPQ2d 1889, 1891 (Fed. Cir. 1991). Second, even if applicant
had established ownership of a family of –WORKS marks, our
likelihood of confusion determination under Section 2(d) requires
a comparison of the mark applicant presently seeks to register
and the previously-registered mark(s) cited as a Section 2(d) bar
to registration. If the marks at issue are confusingly similar,
then applicant’s ownership of a family of other marks which may
not be as similar to the cited registered mark avails applicant
nothing. See In re Ald, Inc., 148 USPQ 520 (TTAB 1965).
Ser. No. 76303536
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the word CHANGE. Indeed, on this record, applicant’s mark
and the cited registered marks are the only marks which
consist of the word WORKS and some form of the word CHANGE.
In this respect, no two of the third-party registered marks
cited by applicant are as similar to each other as
applicant’s mark is to registrant’s marks. The examples
cited by applicant in its reply brief, i.e., LEANWORKS, THE
LEAD WORKS, and LEARNWORKS, each combine WORKS with words
that have completely different meanings, no matter how
similar their spelling. In short, the presence on the
register of these third-party registrations does not
persuade us that applicant’s mark is not confusingly
similar to the cited registered mark, as used in connection
with these legally identical services.
Applicant also argues that its consulting services are
expensive, and that the decision to purchase the services
would be made by experienced and sophisticated upper-level
management personnel of companies and organizations who
would exercise great care in making the purchasing
decision. Even if we assume that this is true with respect
to applicant’s actual services, we find that applicant’s
services, as recited in the application, are not limited or
restricted in such a way. That is, it is not apparent from
the face of applicant’s recitation of services that such
Ser. No. 76303536
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services necessarily are expensive, or that they
necessarily are purchased by knowledgable, careful
purchasers. Rather, applicant’s business consulting
services must be presumed to include services marketed to
businesses of all sizes, including small businesses, whose
decision-making personnel could be expected to vary widely
in terms of experience, care and sophistication. Moreover,
we find it likely that even sophisticated purchasers
encountering these similar marks used in connection with
these legally identical services will assume the existence
of a source connection or affiliation.
Having considered all of the evidence of record as it
pertains to the du Pont evidentiary factors, we conclude
that a likelihood of confusion exists as between
applicant’s mark and each of the cited registered marks.
We have carefully considered applicant’s arguments to the
contrary, but are not persuaded. Moreover, if we had any
doubt as to the existence of a likelihood of confusion (and
we do not), it is settled that such doubt must be resolved
against applicant and in favor of the prior registrant.
See In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d
1025 (Fed. Cir. 1988); In re Martin’s Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.