Sage Capital Global Ltd.

Trademark Trial and Appeal Board

May 10, 2017

No. 86586715 (T.T.A.B. May. 10, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: May 10, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Sage Capital Global Ltd.
_____

Serial No. 86586715
_____

Alain Villeneuve of Vedder Price PC,
for Sage Capital Global Ltd.
Parker Howard, Trademark Examining Attorney, Law Office 117,
Hellen Bryan Johnson, Managing Attorney.
_____

Before Zervas, Shaw, and Masiello,
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
Sage Capital Global Ltd. (“Applicant”) seeks registration on the Principal Register
of the mark FORSIGHT, in standard characters, for “Consulting in the field of
installation, use and maintenance of software designed to plan information
technology hardware infrastructure capacity changes,” in International Class 42.1

1 Application Serial No. 86586715, filed on April 3, 2015 under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), claiming dates of first use anywhere and in commerce of December
5, 2014.
Serial No. 86586715
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Registration has been refused under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground that Applicant’s mark, when used in connection with the
identified services, so resembles the mark FORESIGHT, in standard characters, for
“Computer consulting services, namely, installation, maintenance and updating of
computer software in the field of business process automation; technical support
services, namely, troubleshooting of computer software problems in the field of
business process automation,” in International Class 42, as to be likely to cause
confusion, mistake or deception.2
After the Examining Attorney issued a final refusal, Applicant appealed and
requested reconsideration. The Examining Attorney denied the request for
reconsideration, and the appeal was resumed. The case is fully briefed.3 We affirm
the refusal to register.
Analysis
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence relevant to the factors set forth in 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). In any
likelihood of confusion analysis, two key considerations are the similarities between

2 Registration No. 4508778, issued April 8, 2014. The Examining Attorney also finally refused
registration based on Reg. Nos. 4209067 (FORESITE) and 3635389 (FORESITE); however,
the refusal to register based on these registrations was withdrawn in the Examining
Attorney’s brief. 10 TTABVUE 3.
3 The Examining Attorney’s brief does not comply with rule 2.126, 37 CFR § 2.126, inasmuch
as it is not double-spaced. We have exercised our discretion to overlook this shortcoming, and
have considered the brief.
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the services and the similarities between the marks. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental
inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods [or services] and differences in the marks.”).
A. The number and nature of similar marks in use on similar services
We first consider the strength of the marks under the sixth du Pont factor. Du
Pont, 177 USPQ at 567. If the evidence establishes that the consuming public is
exposed to third-party use of similar marks used in connection with similar services,
it “is relevant to show that a mark is relatively weak and entitled to only a narrow
scope of protection.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee
en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005). “Third party
registrations are relevant to prove that some segment of the [marks] has a normally
understood and well recognized descriptive or suggestive meaning, leading to the
conclusion that that segment is relatively weak.” Juice Generation, Inc. v. GS Enters.
LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015) (internal quotation
marks omitted). See also Jack Wolfskin Ausrustung Fur Draussen GmbH v. New
Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015).
The record includes the following eleven third-party registrations, owned by nine
different entities, including one owned by registrant but not cited.4 All of the
registrations are for marks containing the term FORESIGHT or FORESITE, and are

4 Applicant also submitted pending applications which we have not considered. Pending
applications have “no probative value other than as evidence that the application was filed.”
Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1403 n.4 (TTAB 2010), citing
In re Phillips Van Heusen Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002).
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registered for, inter alia, computer software or services related to computers or
software.5
Reg. No. Owner Mark Relevant Goods/Services
3635389 Fortek Ltd. FORESITE Computer software relating to
processing, analyzing and managing
financial and business data and
information, in International Class
9.
Design and development of
software applications for statistical
or mathematical analysis of
business data in the commercial or
industrial business, in International
Class 42.
3738041 Celtic Testing
Experts, Inc.
FORESIGHT Computer software for use in
quality assurance processes, namely,
tracking, mapping and viewing the
progress of quality assurance
resources and tools, in International
Class 9.
4096449 Catalyst
Systems,
LLC
FORESIGHT Computer software containing
databases used to evaluate the
delivery of patient care by
healthcare organizations, in
International Class 35.
Business management services,
namely, assisting hospitals and
health care facilities to increase
their efficiency by collecting,
evaluating, and maintaining data
for a database and database
management featuring the reporting
of information concerning patient
classification, staff utilization, and
workloads and related consultation
therewith, in International Class 35.
4753282
&
4721665
Holstein
Aviation,
LLC

&
Application service provider (ASP)
featuring software for use in
management, tracking, monitoring,

5 Office Action of July 16, 2015.
Serial No. 86586715
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Reg. No. Owner Mark Relevant Goods/Services
FORESIGHT analysis, and reporting of aircraft
and aircraft fleet management,
activities, in International Class 42.
4132081 TIBCO
Software, Inc.
FORESIGHT Computer software used to
facilitate the implementation and
operation of automated electronic
commerce transactions between
organizations and to assure their
accuracy, in International Class 9.
Training services relating to the
installation, implementation,
management, monitoring and
support of computer software used
to define and automate business
processes, in International Class 41.
4209067 ENom, Inc. FORESITE Computer software for monitoring
and diagnosing central computing
platform requirements in the field of
common computer system
management enterprise web
technologies that are designed to
handle intranet portals, extranets,
websites, business intelligence,
process integration, system
integration, workflow automation,
core infrastructure for third-party
solutions, content, enterprise search,
document, and file management
applications, in International Class
9.
4514321
4514322
Insurance
Technologies,
LLC
FORESIGHT

Computer software for use by
financial service institutions to
perform point of sale management
for investment products, in
International Class 9.
Providing temporary use of
software for use by financial service
institutions to perform point of sale
management for investment
products, in International Class 42.
4739502 Korn/Ferry FORESIGHT Downloadable computer software
for use in accessing, tracking,
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Reg. No. Owner Mark Relevant Goods/Services
International,
Inc.
monitoring, managing, and
analyzing information and data for
personnel recruitment and
management for use in career
development, in International Class
9.
Consulting services relating to
career development, namely,
personnel recruitment and
management consulting; providing a
database for personnel recruitment
and management, and information
relating to career development, in
International Class 35.
Providing use of software for
accessing, tracking, monitoring,
managing, and analyzing
information and data for personnel
recruitment and management for
use in career development, in
International Class 42.
4785289 FLYR, Inc. FORESIGHT Application service provider
featuring application programming
interface (API) software for
predictive analytics in the field of
travel, in International Class 42.

Applicant argues that “[t]he coexistence of the above-cited registrations and the
Cited Marks on the Principal Register demonstrates that consumers would be readily
able to distinguish Appellant’s Mark FORSIGHT from the Cited Mark[] FORESIGHT
. . . such that there is no likelihood of confusion in the present case.”6 For his part,
the Examining Attorney argues that “[u]ltimately, the registration for FORESIGHT

6 Applicant’s Br., p. 12, 8 TTABVUE 17.
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is too close to applicant’s mark FORSIGHT both in terms of the similarity of the
marks and the relatedness of the parties’ services. . . .”7
Nine of the registrations are for the term FORESIGHT. Two registrations are for
the term FORESITE, with an alternative spelling. None of the third-party marks
share the alternative spelling of Applicant’s mark, FORSIGHT. Nevertheless, all of
the marks, including Applicant’s, share the same pronunciation which suggests that
the marks may be “relatively weak and entitled to only a narrow scope of protection.”
Palm Bay Imports, 73 USPQ2d at 1693. Regarding the nature of the goods and
services offered in connection with the third-party marks, however, only one of the
marks, Registration No. 4739502, is used in connection with “consulting services.”
But this registration is used in connection with “career development” consulting
services, not computer-related consulting services such as those provided by
Applicant and Registrant. The remainder of the third-party marks are used in a
variety of different fields such as financial and business data, patient care, aircraft
fleet management, and travel. In sum, this case differs from Jack Wolfskin and Juice
Generation, where the third-party registrations involved the same goods and services
at issue. Further, third-party registrations are “not evidence that the registered
marks are actually in use or that the public is familiar with them.” In re Midwest
Gaming & Entm’t LLC, 106 USPQ2d 1163, 1167 n.5 (TTAB 2013) (citing In re Mighty
Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)). See also Olde Tyme
Foods Inc. v. Roundy’s Inc., 22 USPQ2d 1542, 1545 (Fed. Cir. 1992) (“As to strength

7 Examining Attorney’s Br., p. 12, 10 TTABVUE 12.
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of a mark, however, registration evidence may not be given any weight. (citing AMF
Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (CCPA 1973)
(“The existence of [third party] registrations is not evidence of what happens in the
market place or that customers are familiar with them. . . .”)). Accordingly, we find
that the third-party registrations do not demonstrate that “foresight” is weak as
applied to the services at issue in this appeal.
B. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression
We next consider the similarity of the marks. In comparing the marks we must
consider their appearance, sound, connotation and commercial impression. Palm Bay
Imps. Inc. v. Veuve Clicquot Ponsardin, 73 USPQ2d at 1692. The emphasis of our
analysis must be on the recollection of the average purchaser who normally retains a
general, rather than specific, impression of trademarks. Although we consider the
mark as a whole, “in articulating reasons for reaching a conclusion on the issue of
confusion, there is nothing improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark. . . .” In re Nat’l Data Corp.,
753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Applicant’s mark is FORSIGHT in standard characters. Registrant’s mark is
FORESIGHT, also in standard characters. Applicant argues that the absence of the
letter “e” in its mark creates a difference “in visual appearance, auditory appearance
and connotation” as compared to Registrant’s mark.8 We find the visual difference—

8 Applicant’s Br., p. 13, 8 TTABVUE 18.
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the absence of the letter “E”—to be slight. When spoken, both marks will be
pronounced the same. Similarity in sound alone may be sufficient to support a finding
that the marks are confusingly similar. See Krim-Ko Corp. v. The Coca-Cola Co., 390
F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either
form, spelling or sound alone is likely to cause confusion.”); In re White Swan Ltd., 8
USPQ2d 1534, 1535 (TTAB 1988); In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581,
1586 (TTAB 2007).
Regarding connotation, although the record does not show whether FORSIGHT
has a meaning, it is likely that consumers would understand it simply as a
misspelling of FORESIGHT, which is defined as “the power of foreseeing” or
“provident care.”9 Applicant nevertheless argues that:
If separated, the applied-for mark includes the two words
“for” and “sight” and thus also has the meaning “for sight.”
This has a separate meaning from the word “foresight.”
This is important to recognize in the context of Appellant’s
tradename. As shown in Appellant’s specimen submitted
in connection with the instant application . . . Appellant
uses the tradename “Sightline Systems.”
* * *
The “sight” portion of Appellant’s mark refers to and calls
to mind the tradename Sightline Systems. This reference
and association in the mind of consumers is sufficient to
prevent any likelihood of confusion.10
This argument is unpersuasive. It is settled that we must determine likelihood of
confusion based on the mark as shown in the application. Other matter, such as

9 Office Action July 16, 2015, TSDR pp. 34-36.
10 Applicant’s Reply Br., p. 3, 11 TTABVUE 3.
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Applicant’s trade name, which is not part of the mark Applicant seeks to register, is
not relevant to the analysis. The right to register a mark must be determined on the
basis of Applicant’s mark “exactly as shown in the application” regardless of the
manner of actual use. See Jim Beam Brands Co. v. Beamish & Crawford, Ltd., 937
F.2d 729, 19 USPQ2d 1352 (2d Cir. 1991) (distinguishing infringement proceedings
from Board proceedings). See also Bellbrook Dairies, Inc. v. Hawthorn-Mellody Farms
Dairy, Inc., 117 USPQ 213, 214 (CCPA 1958); Blue Cross and Blue Shield Assoc. v.
Harvard Cmty. Health Plan Inc., 17 USPQ2d 1075, 1077 (TTAB 1990). The trade
name Sightline Systems is not part of the mark sought to be registered and, if
Applicant were to obtain a registration, its use of the mark would not require the
inclusion of the trade name. Thus, for purposes of our determination of the similarity
or dissimilarity of the marks, we may not consider designs or other matter that are
not part of the marks as applied-for and registered.
This du Pont factor weighs in favor of a finding of a likelihood of confusion.
C. Similarity of the services
We next consider the similarity of Registrant’s and Applicant’s services, keeping
in mind that the services of the parties need not be identical or even competitive to
find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d
1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000). The respective services need only
be “related in some manner and/or if the circumstances surrounding their marketing
[be] such that they could give rise to the mistaken belief that [they] emanate from the
same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101
Serial No. 86586715
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USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d
1715, 1724 (TTAB 2007)).
Applicant’s services are “Consulting in the field of installation, use and
maintenance of software designed to plan information technology hardware
infrastructure capacity changes.” Registrant’s services are “Computer consulting
services, namely, installation, maintenance and updating of computer software in the
field of business process automation; technical support services, namely,
troubleshooting of computer software problems in the field of business process
automation.” Applicant’s and Registrant’s services are the same in that they both
consist of consulting services relating to the installation and maintenance of
computer software. However, the subjects of the respective consulting services differ
inasmuch as Applicant’s services focus on software for planning “information
technology hardware infrastructure capacity changes,” whereas Registrant’s
consulting services focus on software for “business process automation.”
Applicant argues that “[n]othing in the identification of goods and services for the
Cited Marks suggest that the Cited Marks are used with consulting services
relating to the installation, use, and maintenance of software used to plan
information technology hardware infrastructure capacity changes.”11 This
argument is unpersuasive. It is not necessary for Registrant’s mark to be used in
connection with the exact same services as Applicant. Rather, it is enough that the
services are related in some manner or that some circumstances surrounding their

11 Applicant’s Br., p. 16, 8 TTABVUE 21. (Emphasis in original).
Serial No. 86586715
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marketing are such that they would be likely to be seen by the same persons under
circumstances which would give rise to a mistaken belief that they originate from the
same source. Coach Services, 101 USPQ2d at 1722.
The Examining Attorney argues that
[A]pplicant’s software consultation regarding various
aspects of providing or optimizing information technology
hardware infrastructure (which can include computer
hardware and software) can necessarily encompass
registrant’s installation, maintenance, and/or updating of
software in the field of business process automation and
vice versa. In other words “information technology
hardware infrastructure” can include such infrastructures
for the purpose of business process automation and
business process automation can include information
technology hardware infrastructure.12
In support, the Examining Attorney has made of record internet articles and
excerpts from websites purporting to show the relationship between business process
automation and information technology hardware infrastructure. The following
examples are the most relevant:
• Http://beforeitsnews.com – An internet article titled Important
Hardware Involved in Business Process and Workflow Automation
(December 16, 2015) discussing the impact of business process automation
and computer hardware:
When it comes to business process or workflow automation,
it’s relatively easy to find information and options on what
software to get. However, automating business processes
and workflows is not just about the software. There are also
hardware involved which may not appear conspicuous
because they are too common or because they work behind
the scenes.
* * *

12 Examining Attorney’s Br., p. 10, 10 TTABVUE 10.
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However, it’s virtually impossible for business process and
workflow automation to happen without both software and
hardware.13
• Http://www.swipsystems.com – An internet article titled
Automating to Succeed (November 12, 2012) discussing
Business Process Automation: “Once the team has identified
the shortcomings and inefficiencies of the process . . . evaluate
the process as a whole, look at the technologies available to
solve the identified problems, then implement the software,
hardware and tools necessary to streamline the process.”14
• Http://www.bmc.com – The website of BMC Digital
Enterprise Management, offering information technology
“capacity management solutions” as well as “workload
automation.”15
• Http://www.hcltech.com – The website of HCL
Technologies, an information technology services company,
offering services to “simplify and accelerate business
processes” as well as “data center infrastructure services.”16
• Https://www.hpe.com – The website of Hewlett Packard
Enterprise, offering services involving “automation” as well as
“infrastructure solutions.”17
These internet articles and web site excerpts show that Registrant’s consulting
services involving business process automation and Applicant’s consulting services
involving information technology hardware infrastructure capacity changes are
sometimes offered by the same firm. Further, the articles suggest that the services
are overlapping, and therefore related, because companies seeking to automate

13 Office Action of February 19, 2016, TSDR p. 4.
14 Id. at 5.
15 Office Action of September 9, 2016, TSDR pp. 6 and 11.
16 Id. at 15 and 17.
17 Id. at 24 and 25.
Serial No. 86586715
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business processes must also determine whether their information technology
infrastructure capacity is sufficient to support the process automation.
The du Pont factor relating to the similarity of the services favors a finding of
likelihood of confusion.
D. Channels of trade
With regard to the channels of trade, there is little evidence of record to help us
identify them. The briefs primarily discuss trade channels only in terms of the types
of customers to which the services are directed. Applicant argues that:
Appellant’s services are for a highly specialized and specific
field, and they are not offered to or targeted at customers
generally. The goods and services offered under the Cited
Mark are directed to entirely different fields, and likewise
are not offered to or targeted at customers generally[.]
There is little to no overlap in consumers; these services
would not be offered to or targeted at the same entities.
The Examining Attorney argues that:
[T]he parties’ services are sold or provided through the
same trade channels and used by the same classes of
consumers in the same fields of use, namely, computer
hardware and/or software companies (e.g., Hewlett
Packard, HCL Tech, and BMC) commonly provide
hardware and/or software as well as consulting related
thereto to businesses in order to effectuate business
process automation which can include computer hardware
to change a business’s infrastructure capacity.
In the absence of evidence regarding channels of trade, we do not find either
argument to be persuasive. This du Pont factor is neutral.
Serial No. 86586715
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E. Consumer sophistication
Applicant argues that:
[T]he services at issue are not “impulse” purchases but
rather are purchased because the consumer has a specific
need for them. In this regard, the purchase and use of the
services at issue involve considerable planning. Because of
the importance of these services, the purchasers
undoubtedly exercise care and correspondingly pay careful
attention to the trademark for the services. Moreover,
these services are not ordinary consumer products that are
purchased on a regular basis, but instead unusual and
complex services and purchases to which the prospective
consumers will pay particular attention to ensure that
their needs are met.18
Given the nature of the respective services which involve creation and
maintenance of complex computer systems, we think it likely that the relevant
customers would apply a higher degree of care to the selection of the services,
commensurate with that given to business decisions. This factor weighs against a
finding of a likelihood of confusion. However, even if we assume that the prospective
purchasers are sophisticated, “even careful purchasers are not immune from source
confusion.” See Wincharger Corp. v. Rinco, Inc., 297 F.2d 261, 132 USPQ 289 (CCPA
1962); In re Total Quality Grp. Inc., 51 USPQ2d 1474 (TTAB 1999); and In re
Decombe, 9 USPQ2d 1812 (TTAB 1988). See also In re Hester Indus., Inc., 231 USPQ
881, 883 (TTAB 1986) (“While we do not doubt that these institutional purchasing
agents are for the most part sophisticated buyers, even sophisticated purchasers are
not immune from confusion as to source where, as here, substantially identical marks
are applied to related products.”). That is, even relatively sophisticated purchasers of

18 Applicant’s Br. p. 5, 7 TTABVUE 5.
Serial No. 86586715
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these services are likely to believe that they come from the same source, if offered
under the involved substantially similar marks. See Weiss Assocs. Inc. v. HRL Assocs.
Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990); and Aries Sys. Corp. v. World
Book Inc., 23 USPQ2d 1742, n.17 (TTAB 1992).
This du Pont factor slightly weighs against a finding of a likelihood of confusion.
F. Balancing the factors
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. We find that the
similarity of the marks in appearance, sound, and connotation and the similarity in
the services outweigh any weakness in the marks and the care exercised by
consumers.
Decision: The refusal under Section 2(d) is affirmed.