Rock Communications Ltd.

Trademark Trial and Appeal Board

Sep 23, 2011

No. 77820681 (T.T.A.B. Sep. 23, 2011)

Mailed:
September 23, 2011
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Rock Communications Ltd.
________

Serial No. 77820681
_______

Wendy K. Marsh of Nyemaster Goode West Hansell & O’Brien,
P.C., for Rock Communications Ltd.

Katy Halmen, Trademark Examining Attorney, Law Office 109
(Gwen Stokols, Acting Managing Attorney).
_______

Before Walters, Bucher and Wolfson, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark CATCHFIRE MEDIA (in standard character format)
for services recited in the application, as amended, as
follows:
“business consulting and information
services, namely, comprehensive social media
strategy consultation, monitoring, analysis
and support” in International Class 35.1

1 Application Serial No. 77820681 was filed on September 4,
2009 based upon applicant’s allegation of a bona fide intention to
use the mark in commerce. No claim is made to the exclusive right
to use the word “Media” apart from the mark as shown.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77820681
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The Trademark Examining Attorney issued a final refusal
to register this designation based upon Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). The Trademark Examining
Attorney has taken the position that applicant’s mark, when
used in connection with the recited services, so resembles
the mark CATCHFIRE (also in standard character format)
registered for “advertising agency services; creating
corporate and brand identities for others; creating
advertising and promotional materials for others, namely,
advertisements, brochures, annual reports, printed
publications, direct mailings, and Internet website
content,”2 also in International Class 35, as to be likely to
cause confusion, to cause mistake or to deceive.
After the Trademark Examining Attorney made the refusal
final, applicant appealed to this Board. Applicant and the
Trademark Examining Attorney have fully briefed the issues
in this appeal.
We affirm the refusal to register.
Arguments of applicant and the Trademark Examining Attorney
In urging registrability, applicant contends that the
Trademark Examining Attorney has not provided sufficient
evidence to demonstrate that registrant’s and applicant’s

2 Registration No. 3446064 issued on June 10, 2008.
Serial No. 77820681
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respective services are sufficiently related, and that the
failure of the Trademark Examining Attorney to give
appellant’s third-party evidence any weight is legally
unsupportable.
By contrast, the Trademark Examining Attorney argues
that the marks create highly similar commercial impressions;
that the applicant’s services, as recited, are highly
similar to the registrant’s services; that the respective
services move through the same channels of trade; and that
the minimal third-party usage proffered by applicant is not
persuasive of a different result herein.
Likelihood of Confusion
We turn then to a consideration of the issue of
likelihood of confusion. Our determination of likelihood of
confusion is based upon our analysis of all of the probative
facts in evidence that are relevant to the factors bearing
on this issue. See In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In any likelihood of
confusion analysis, however, two key, although not
exclusive, considerations are the similarities between the
Serial No. 77820681
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marks and the relationship between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
The Similarity of the Marks
As to the first du Pont factor in any likelihood of
confusion determination, we compare the similarity or
dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed.
Cir. 2005).
As argued by the Trademark Examining Attorney, there is
nothing improper in stating that, for rational reasons, more
or less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). In the case at hand, we find specifically that
the sole word in registrant’s mark and the leading word in
applicant’s mark is the term “Catchfire.” The word “Media”
within applicant’s composite mark is highly descriptive and
has been disclaimed, and it is a component of “social
media,” at the heart of applicant’s recitation of services.
Serial No. 77820681
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These facts taken together support the conclusion that the
marks herein are highly similar as to their overall
commercial impressions. This factor weighs in favor of a
finding of likelihood of confusion.
Relationship of the Services
We turn next to the du Pont factor focused on the
relationship of the services. On its face, registrant’s
recitation as to the creation of advertising and promotional
materials in the form of Internet website content could
clearly encompass the development of content for a social
media site.
Moreover, in order to show the relatedness of the
services, the Trademark Examining Attorney submitted for the
record copies of third-party registrations of various
enterprises. She argues that these registrations have
probative value to the extent that they serve to suggest
that the relevant services listed therein are of a kind that
may emanate from a single source. See In re Infinity Broad.
Corp., 60 USPQ2d 1214, 1217-1218 (TTAB 2001); In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and
In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at
n.6 (TTAB 1988) (emphasis supplied):
Serial No. 77820681
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Position2 for, inter alia, “advertising agencies,
namely, promoting the goods and services of
others; … social media strategy and marketing
consultancy focusing on helping clients
create and extend their product and brand
strategies by building virally engaging
marketing solutions” in Int. Cl. 35;3
QUANTUM
INTERACTIVE
for, inter alia, “ … advertising and
publicity services, namely, promoting the
goods, services, brand identity and
commercial information and news of third
parties through print, audio, video, digital
and on-line medium; … social media strategy
and marketing consultancy focusing on helping
clients create and extend their product and
brand strategies by building virally engaging
marketing solutions …” in Int. Class 35;4
FIZZBURG for, inter alia, “ … advertising, marketing
and promotion services; … social media
strategy and marketing consultancy focusing
on helping clients create and extend their
product and brand strategies by building
virally engaging marketing solutions … ” in
International Class 35;5
Connecting Marketers
to Results
for, inter alia, “ … advertising agency
specializing in the design and execution of
word of mouth, viral, buzz and experiential
marketing programs; … social media strategy
and marketing consultancy focusing on helping
clients create and extend their product and
brand strategies by building virally engaging
marketing solutions” in Int. Class 35;6
VCOMP for “advertising agency specializing in the
design and execution of word of mouth, viral,
buzz and experiential marketing programs;
creative marketing design services; direct
marketing advertising for others; direct
marketing consulting services; direct
marketing services; marketing services,
namely, providing informational web pages
designed to generate sales traffic via

3 Registration No. 3572408 issued on February 10, 2009.
4 Registration No. 3572577 issued on February 10, 2009. No
claim is made to the exclusive right to use the word “Interactive”
apart from the mark as shown.
5 Registration No. 3605677 issued on April 14, 2009.
6 Registration No. 3677473 issued on September 1, 2009.
Serial No. 77820681
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hyperlinks to other websites; on-line
advertising and marketing services; online
advertising via a computer communications
network; promoting, advertising and marketing
of the on-line websites of others; promotion,
advertising and marketing of on-line
websites; social media strategy and marketing
consultancy focusing on helping clients
create and extend their product and brand
strategies by building virally engaging
marketing solutions” in International Class
35;7

for, inter alia, “ … marketing consulting;
providing advertising, marketing and
promotional services, namely, development of
advertising campaigns for television, film,
print, radio, outdoor billboards, mobile
telephone advertising and online advertising;
… social media strategy and marketing
consultancy focusing on helping clients
create and extend their product and brand
strategies by building virally engaging
marketing solutions …” in International Class
35;8
thinkinsync for, inter alia, ““ … advertising, marketing
and promotion services; … social media
strategy and marketing consultancy focusing
on helping clients create and extend their
product and brand strategies by building
virally engaging marketing solutions …” in
International Class 35;9 and
REDBEAN SOCIETY for “strategic planning and consultancy in
the field of advertising and marketing;
social media planning focusing on helping
clients promote their brands across multiple
media platforms, such as broadcast media,
digital media, promotions, events and public
relations; advertising services, namely,
promoting and marketing the goods and
services of others through public and
commercial communication means; design of
advertising materials for others; production

7 Registration No. 3742258 issued on January 26, 2010.
8 Registration No. 3756573 issued on March 9, 2010. No claim
is made to the exclusive right to use the word “Industries” apart
from the mark as shown.
9 Registration No. 3765120 issued on March 23, 2010.
Serial No. 77820681
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of advertising material and commercials” in
International Class 35.10

We note that the recitations of services seen in many
of these registrations (all of which recently issued, and
roughly within a year of each other) employ substantially
identical language (e.g., “social media strategy and
marketing consultancy focusing on helping clients create and
extend their product and brand strategies by building
virally engaging marketing solutions”) – language that was
added to the United States Patent and Trademark Office
Identification of Goods Manual on April 10, 2008.
The Trademark Examining Attorney’s conclusions about
this recent trend are consistent with articles from the
Internet that she placed into the record:

Social Media Marketing Services
Social Media marketing has established itself as an essential artery of almost any successful online marketing campaign.
Social networks, blogs, forums and more all offer a level of interaction that the current state of the internet thrives on.
Your customers and potential customers take part in daily conversations on a variety of different social networks. Should
you be doing the same?
At THAT Agency, we recognized the value of social media marketing services and social media advertising for our
clients from the beginning, and have since regarded it as an essential tool to our marketing arsenal. From concept to
implementation, we specialize in finding potential online social marketing opportunities for businesses and can take these
marketing campaigns all the way to completion. Since we recognize that there is no cookie-cutter solution that is right
for all businesses, we approach each project individually based on client goals, challenges and opportunities. 11

10 Registration No. 3768619 issued on March 30, 2010.
11 http://www.thatagency.com/marketing/social-media-networks.php
Serial No. 77820681
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Advertising Agencies Change Ways - Social Media Is Taking Over
Posted: Apr 11, 2010
In this day and age, a historic moment in time where the internet is taking over, advertising agencies are
changing their ways and jumping aboard the social media bandwagon left and right. Unconventional forms of
marketing are becoming conventional, and top ad agencies recognize such … 12

In discussing its digital marketing and communications
services, applicant’s own website discusses long-term
strategies for developing comprehensive marketing
solutions.13 While applicant may well limit its focus to
social media and digital marketing, it is clear from the
entire record that in this Internet age, even traditional
advertising agencies are finding it necessary to jump aboard
“the social media bandwagon.”14 The Trademark Examining
Attorney has shown that other advertising firms offering the
traditional advertising services recited by registrant are
also offering social media tracking and consultancy services
like those touted by applicant:

Social Media Consultation
…
Our services:
• Develop a personalized social media plan for your business to correspond with and
supplement your current web presence
• Track key words and trends associated with your brand to monitor online conversation
of your business and your competitors
• Implement and personalize your social media plan - including designs & marketing that
correspond with your website or other promotional materials

12 http://www.articlesbase.com/online-promotion-
articles/advertising-agencies-change-ways-social-media-is-taking-
over-2133559.html
13 http://www.catchfiremedia.com/services/
14 Quotation from http://www.articlesbase.com/ above.
Serial No. 77820681
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• Assist in the development of a social media policy for your company and your
employees to insure consistent, beneficial use
• Help create social media promotions, contests, and specials
• Incorporate social media into your events, shows, and conferences to increase
awareness, word of mouth marketing, and participation 15

With more then a decade of Graphic Design experience including working with clients to develop brand
identity through the creation of marketing collateral including brochures, catalogs and websites. I have
helped a broad range of clients to sustain positions of leadership in their fields through development of
advertising strategies and promotional materials that complement their vision and forge relationships with
new audiences.
• Website and Blog design and implementation
• Social Media Consultation and Setup (Twitter, Facebook, etc)
• Full Spectrum Print Design (Logos, branding, advertising, collateral)
• Digital Photo Retouching 16

Digital Marketing & Social Media services include:
• Online Marketing Materials Audits
• Digital Marketing Planning & Support
• Social Media Design & Development Support
• Banner Ad Campaigns
• …
• Measurement & Reporting 17

As seen in the websites of third-parties offering
advertising agency services, the role of social media is an
increasingly important component of such services. In the
absence of any limiting language in registrant’s recitation

15 http://www.bluecompass.com/social-media-consultation-
campaign-strategy.aspx
16 http://rgb247.com/work/?page_id=272
17 http://www.openfieldcreative.com/capabilities.aspx

Serial No. 77820681
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of services, we assume that registrant’s broadly-recited
advertising services might well include consultation on
social media, and we must also presume that the respective
services of registrant and applicant will be offered through
the same channels of trade to the same classes of consumers.
Accordingly, we agree with the Trademark Examining
Attorney that the applicant’s specialized services, even if
not a subset of registrant’s recited services, are related
to such advertising, marketing and promotional services, and
these several related du Pont factors also favor a finding
of likelihood of confusion.
The number and nature of similar marks in use on similar services
In relation to the strength of the registered mark, the
Trademark Examining Attorney and applicant disagree on what
we should conclude based on the evidence of record. The
Trademark Examining Attorney is correct that there is no
probative evidence of similar marks on the federal trademark
register covering services related to those of registrant.
However, applicant submitted screenprints of web pages from
various Internet websites showing four different third-party
enterprises across the nation that adopted and used the term
“Catchfire” in connection with a variety of services
directed to businesses:
Serial No. 77820681
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18
19
20
21

As to these uses, the record does not provide any
indication as to the nature and extent of the actual uses of
these marks, and we cannot know whether these marks are
generally known to the relevant purchasing public.
Certainly, the existence of this small number of third-party
uses is not sufficient to prove that a mark is unprotectably
weak. See Giant Food Inc. v. Roos and Mastacco, Inc., 218
USPQ 521 (TTAB 1982) [even the owner of a weak mark is
entitled to protection from likelihood of confusion].

18 http://www.catchfirecoaching.com/, a website for Dr. Chandler
George, a chiropractor turned speaker/author who also consults
clients in the health and beauty industry.
19 http://www.catchfiremarketing.com/, a marketing firm having
an emphasis on direct mail, printing, promotional marketing,
apparel, pens, magnets, etc.
20 http://catchfirecafe.com/, having seminars and programs
dedicated to helping persons to build better lives through
“Positive Energy, Health Lifestyles and Laughter!”
21 http://www.catchfirelearning.com/, having workshops
specializing in improving struggling, dysfunctional teams in the
workplace.
Serial No. 77820681
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In any case, we find that this evidence does not show
that the term “Catchfire” has any descriptive significance
when used in connection with business services, nor does it
prove that the term “Catchfire” is so weak and diluted that
applicant’s addition of the generic term “Media” is
sufficient to distinguish the marks when they are used in
connection with the same or related services. Rather, when
used in the manner of a dictionary, these uses may well
suggest that multiple vendors, in a quest for clients, want
to tout their ability to ignite great interest and
widespread enthusiasm. In view of the foregoing, there is no
basis upon which to conclude that consumers encounter marks
comprising the word “Catchfire” so often that they have
learned to distinguish between the different marks. Hence,
this factor is, at best for applicant, a neutral factor.
In conclusion, we agree with the Trademark Examining
Attorney that CATCHFIRE and CATCHFIRE MEDIA create
highly similar commercial impressions, that applicant’s
services are related to registrant’s services, that the
respective services move through the same channels of trade,
and that the minimal third-party usage proffered by
applicant is not persuasive of a different result herein.
Serial No. 77820681
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Decision: The refusal to register under Section 2(d)
of the Lanham Act is hereby affirmed.