SBC Knowledge Ventures, L.P.v.Richard Engle

Trademark Trial and Appeal Board

Apr 30, 2007

No. 91163811 (T.T.A.B. Apr. 30, 2007)

Mailed: April 30, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

SBC Knowledge Ventures, L.P.

v.

Engle, Richard
_____

Opposition No. 91163811
to application Serial No. 78338240
filed on 12/9/03
_____

Purvi J. Patel of Haynes and Boone, LLP for SBC Knowledge
Ventures, L.P.

Timothy D. Beets of Beets & Yanda, PLLC for Richard Engle.
______

Before Quinn, Hohein and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

On December 9, 2003, applicant, Richard Engle, filed an
application to register on the Principal Register the mark
displayed below, based upon an allegation of his use thereof
in commerce on or in connection with "telephone and business
directories," in International Class 16.1

1 Application Serial No. 78338240 alleges January 1, 2002 as the
date of first use of the mark anywhere and in commerce in
connection with the goods. Applicant disclaims the exclusive
right to use "AMERICA" and "YELLOW PAGES", and the representation
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91163811
2

Registration has been opposed by SBC Knowledge Ventures,
L.P. ("opposer"). As grounds for opposition, opposer
asserts that it is the owner of numerous marks, previously
used and registered on the Principal Register, including the
following:
BELL
in typed or standard character form for, inter alia,
“telephone and business directories,”2 in International
Class 16;
BELL
in typed or standard character form for, inter alia,
“telephone and business directories and educational printed
publications in telecommunications skills and the use of

of the "walking fingers" apart from the mark as shown. In
addition, the application contains the following color statement:
The color gray appears in the representation of the Liberty Bell,
the color black appears in the word BELLWEST, the "walking
fingers" logo, the frame around the "walking fingers" logo, the
words YELLOW PAGES, and the outline of the Liberty Bell, the
color yellow appears in the background around the "walking
fingers" logo, the color white appears in the words PROCLAIM
LIBERTY, and the color red appears in the word AMERICA.

2 Concurrent Use Registration No. 1545199 issued on June 27,
1989. Section 8 affidavit accepted.
Opposition No. 91163811
3
telecommunications equipment and services,”3 in
International Class 16; and
SOUTHWESTERN BELL
in typed or standard character form for, inter alia,
“telephone and business directories and educational books
and pamphlets in telecommunications skills and the use of
telecommunications equipment and services,”4 in
International Class 16.
Opposer argues that it and its predecessors in interest
have used its famous BELL and BELL-formative marks in
connection with the above listed goods since prior to
applicant’s asserted first use of his involved mark; that
applicant's mark, when used on applicant's goods so
resembles opposer's BELL and BELL-formative marks for its
recited goods as to be likely to cause confusion, to cause
mistake, and to deceive; that registration of applicant’s
involved mark further would dilute the distinctive quality
of opposer’s BELL marks; and that opposer will be damaged
thereby.
Applicant's answer consists of a general denial of the
allegations in the notice of opposition.

3 Concurrent Use Registration No. 1545200 issued on June 27,
1989. Section 8 affidavit accepted; Section 15 affidavit
acknowledged.

4 Registration No. 1459198 issued on September 29, 1987 with a
claim of acquired distinctiveness under Trademark Act Section
Opposition No. 91163811
4
The record in this case consists of the pleadings and
the file of the involved application. During its assigned
testimony period, opposer filed a notice of reliance upon
the following: status and title copies of its pleaded
registrations; copies of court and World Intellectual
Property Organization (WIPO) decisions involving opposer and
third parties; applicant’s responses to certain of opposer’s
interrogatories; and copies of the prosecution histories of
opposition proceedings involving opposer and third parties
from the TTABVUE Trademark Trial and Appeal Board Inquiry
System.
In an interlocutory order, the Board denied applicant’s
motions to reopen his testimony period for the purpose of
introducing a notice of reliance. Consistent with that
order, applicant’s untimely notice of reliance will be given
no consideration. Applicant did not take any testimony or
introduce any other evidence herein. In the same
interlocutory order, the Board further granted opposer’s
motion to strike as untimely applicant’s brief on the merits
of the case.
Opposer timely filed a main brief on the case.
Opposer’s Standing
Because opposer has properly made its pleaded
registrations of record, and further because opposer has

2(f) in part as to SOUTHWESTERN. Section 8 affidavit accepted;
Opposition No. 91163811
5
asserted a likelihood of confusion claim that is not
frivolous, we find that opposer has established its standing
to oppose registration of applicant’s mark. See Cunningham
v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir.
2000); and Lipton Industries, Inc. v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Priority of Use
Moreover, because opposer’s pleaded registrations are
of record, Section 2(d) priority is not an issue in this
case as to the BELL and SOUTHWESTERN BELL marks and goods
covered thereby. See King Candy Co. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Likelihood of Confusion
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue, even those not specifically discussed in
this decision. See In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Company, 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).

Section 15 affidavit acknowledged.
Opposition No. 91163811
6
We will concentrate our discussion of the issue of
likelihood of confusion on that registration of opposer’s
which is closest to the mark and goods for which applicant
is seeking registration, namely, opposer’s concurrent use
registration for BELL in typed or standard character form
for “telephone and business directories.”5
The Goods
Turning first to our consideration of the similarities
or dissimilarities between the parties’ goods, we note that
it is well established that the goods of the parties need
not be similar or competitive, or even offered through the
same channels of trade, to support a holding of likelihood
of confusion. It is sufficient that the respective goods of
the parties are related in some manner, and/or that the
conditions and activities surrounding the marketing of the
goods are such that they would or could 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 source. See Hilson
Research, Inc. v. Society for Human Resource Management, 27
USPQ2d 1423 (TTAB 1993); and In re International Telephone &
Telephone Corp., 197 USPQ 910, 911 (TTAB 1978). The issue,
of course, is not whether purchasers would confuse the
goods, but rather whether there is a likelihood of confusion

5 Concurrent Use Registration No. 1545199, supra.
Opposition No. 91163811
7
as to the source thereof. In re Rexel Inc., 223 USPQ 830
(TTAB 1984).
In this case, applicant’s "telephone and business
directories" are virtually identical to the goods identified
in opposer’s pleaded Concurrent Use Registration No.
1545199. In view of the fact that applicant and opposer are
using their marks on identical goods, this du Pont factor
heavily favors opposer.
Channels of Trade
Because the parties’ goods are identical, and because
there are no recited restrictions as to their channels of
trade or classes of purchasers, we must assume that the
goods are available in all the normal channels of trade to
all the usual purchasers for such goods, and that the
channels of trade and the purchasers for opposer’s goods as
well as applicant's goods would be the same. See Interstate
Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910 (TTAB
2000). It is settled that in making our determination
regarding the relatedness of the parties’ goods and/or
services, we must look to the goods and services as
identified in the involved application and pleaded
registration. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (“The authority is legion that the question
of registrability of an applicant’s mark must be decided on
Opposition No. 91163811
8
the basis of the identification of goods set forth in the
application regardless of what the record may reveal as to
the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to
which the sales of goods are directed.”) See also Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods.”) Thus, this
du Pont factor also favors opposer.
The Marks
We turn to the first du Pont factor, i.e., whether
applicant’s mark and opposer’s BELL mark are similar or
dissimilar when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial
impression. See Palm Bay Imports, Inc. v. Veuve Clicquot,
supra. The test, under the first du Pont factor, 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
offered under the respective marks is likely to result.
Because the involved goods would be marketed to the general
public, our focus is on the recollection of the average
purchaser, who normally retains a general rather than a
Opposition No. 91163811
9
specific impression of trademarks. 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
Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944
(Fed. Cir. 2004); and In re National Data Corp., 753 F.2d
1056, 224 USPQ 749 (Fed. Cir. 1985).
In this case, the wording BELLWEST AMERICA and the
design of the Liberty Bell are by far the largest and most
visually prominent features of applicant’s mark. The
wording PROCLAIM LIBERTY is much less prominent, being
difficult to read and easy to overlook as it appears in
small white letters on the upper portion of the light gray
Liberty Bell design. The wording YELLOW PAGES and the
“walking fingers” design, appearing in the lower right hand
corner of the mark, is even less prominent due to its very
small size. As a result, consumers viewing applicant’s mark
will be drawn immediately to the wording BELLWEST AMERICA
and the Liberty Bell design and will only notice the
remaining features of the mark upon closer inspection.
Thus, we find that BELLWEST AMERICA and the Liberty Bell
design are the most prominent features of applicant’s mark.
Opposition No. 91163811
10
Further, it is settled that the literal portions are
generally the dominant and most significant features of
marks because consumers will call for the goods or services
in the marketplace by that portion. See In re Appetito
Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987); and In
re Drug Research Reports, Inc., 200 USPQ 554, 556 (TTAB
1978). For this reason, greater weight is often given to
the literal portions of marks in determining whether there
is a likelihood of confusion. See Id. Because consumers
are likely to call for applicant’s goods by the BELLWEST
AMERICA portion of his mark rather than by the Liberty Bell
design or one of the mark’s less prominent features, we find
that BELLWEST AMERICA is the dominant and most significant
feature of the applied-for mark.
In comparing the parties’ marks, we note that
applicant’s mark incorporates in its entirety registrant’s
BELL mark. BELL is the first word of the phrase BELLWEST
AMERICA, which, as discussed above, is the dominant feature
of applicant’s mark. Consumers calling for applicant’s
goods are very likely to pronounce registrant’s BELL mark
when doing so. Because applicant’s mark contains
registrant’s mark as the first word of its most prominent
feature, the marks are highly similar in appearance and
sound. Furthermore, registrant’s mark is registered in
typed or standard character form and thus could be displayed
Opposition No. 91163811
11
in lettering similar, or even identical, to the BELLWEST
AMERICA portion of applicant’s mark which is displayed in
rather ordinary font. See, e.g., In re Melville Corp., 18
USPQ2d 1386, 1388 (TTAB 1991); In re Pollio Dairy Products
Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); and Sunnen Products
Co. v. Sunex International Inc., 1 USPQ2d 1744, 1751 (TTAB
1987). In addition, the relatively prominent Liberty Bell
design in applicant’s mark is essentially a pictorial
representation of registrant’s BELL mark. Thus, we find
that the marks are highly similar in overall connotation and
convey very similar commercial impressions.
Moreover, it is undisputed that applicant's mark and
the mark in opposer’s Registration No. 1545199 are for
identical goods, namely, “telephone and business
directories.” Where the goods identified in the application
are identical to the goods identified in an existing
registration, "the degree of similarity necessary to support
a conclusion of likely confusion declines." Century 21 Real
Estate Corp. v. Century Life of Am., 970 F.2d 874, 877, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992). In addition, confusion
is more likely when, as here, an applicant's mark
incorporates the entire word portion of a previously
registered mark. See, e.g., In re Hyper Shoppes, Inc., 837
F.2d 463, 464- 65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988); and
Opposition No. 91163811
12
Wella Corp. v. California Concept Corp., 558 F.2d 1019,
1022, 194 USPQ 419, 422 (CCPA 1977).
As a result, we find that when viewed as a whole, the
similarities between the parties’ marks as to sound,
appearance, connotation and commercial impression outweigh
the dissimilarities. In view thereof, this du Pont factor
also favors opposer.
Summary
In view of the foregoing, we find that opposer has
established its standing to bring this proceeding; its
priority of use; and that a likelihood of confusion exists
between its BELL mark and applicant’s mark, as used in
connection with the parties’ identical goods.
DECISION: The opposition is sustained on the ground of
priority and likelihood of confusion, and registration to
applicant is refused.6

6 In view of our determination herein, we need not and do not
reach opposer’s dilution claim.