Shackleton S.A.

Trademark Trial and Appeal Board

Oct 15, 2013

No. 85450227 (T.T.A.B. Oct. 15, 2013)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: October 15, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Shackleton S.A.
________

Serial No. 85450227
_______

Arturo Perez-Guerrero of Law Offices of Arturo Perez-
Guerrero for Shackleton S.A.

Douglas M. Lee, Trademark Examining Attorney, Law Office
111 (Robert L. Lorenzo, Managing Attorney).
_______

Before Cataldo, Wellington and Masiello,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge.

Applicant, Shackleton S.A., filed an application, as
amended, to register in standard characters on the
Supplemental Register the mark SHACKLETON for “advertising
agencies, advertising services” in International Class 35.1

1 Application Serial No. 85450227 was filed on October 18, 2011,
seeking registration on the Principal Register under Section
44(e) of the Trademark Act, asserting ownership of Spanish
Registration No. 2574105, issued on June 2, 2004. Applicant
amended its application to seek registration on the Supplemental
Register on February 11, 2013. “The wording SHACKLETON has no
meaning in a foreign language.”

Ex Parte Appeal No. 85450227

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The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used in connection with its services,
so resembles the mark shown below,

previously registered on the Principal Register for
Business consultation; Business consultation and
management regarding marketing activities and
launching of new products; Business consultation
services to assist non-profit organizations in
planning, managing, and conducting fund raising
activities via a global computer network;
Business consulting and business information for
enterprises; Business consulting and information
services; Assistance, advisory services and
consultancy with regard to business planning,
business analysis, business management, and
business organization

in International Class 35,2 as to be likely to cause
confusion, mistake or deception.3 When the refusal was made
final, applicant appealed.

2 Registration No. 3559688 issued on January 13, 2009 with a
disclaimer of GROUP. “The mark consists of navy blue compass to
the left and the black wording "SHACKLETON GROUP" to the right of
the compass.” “The color(s) navy blue and black is/are claimed
as a feature of the mark.”
3 The examining attorney withdrew his refusal to register under
Section 2(e)(4) in light of applicant’s amendment to the
Supplemental Register. Applicant satisfied all outstanding
requirements issued by the examining attorney.

Ex Parte Appeal No. 85450227

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Applicant’s Motion to Suspend
As a preliminary matter, we note that on April 26,
2013, applicant filed a motion to extend by 60 days its
time to file a brief on appeal in this case in light of its
assertion that it is engaged in negotiations with the owner
of the cited registration for a consent agreement that
would obviate the outstanding refusal to register under
Trademark Act Section 2(d). In a paralegal order issued on
May 16, 2013, the Board granted applicant’s motion.
Thereafter, on June 25, 2013, applicant filed its
brief on appeal, including a second motion4 requesting “one
last 60 day extension in order to complete the settlement
discussions and requests that the merits of this brief be
considered once [t]he 60 [day] extension lapses.” By its
motion, applicant essentially requests suspension of its
appeal for an additional 60 days to allow it to conclude
negotiations for a consent agreement with the owner of the
cited registration.
Based upon the showing made therein, applicant’s June
25, 2013 motion is granted to the extent that proceedings
herein are considered to have been so suspended.

4 Applicant’s brief, p. 1.

Ex Parte Appeal No. 85450227

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We observe, nonetheless, that applicant’s requested 60
day suspension period passed on August 24, 2013 and there
is no indication from applicant that its attempt to reach a
consent agreement with registrant was successful. We
further observe that the examining attorney issued his
first refusal, inter alia, under Section 2(d) based upon
the cited registration on February 7, 2012, and denied
applicant’s request for reconsideration of his final
refusal on February 15, 2013. Thus, applicant has been
aware of the refusal to register, and its finality, for an
ample amount of time. Finally, we observe that applicant
has not requested any additional extensions of time or
suspension of the proceedings herein.
Accordingly, we turn to the issue on appeal.
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis two key, though not exclusive,
considerations are the similarities between the marks and
Ex Parte Appeal No. 85450227

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the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 27 (CCPA 1976). See also In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed.
Cir. 1997).
The Marks
We first turn our attention to a comparison of the
marks. In determining the similarity or dissimilarity of
the marks, we must compare 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 (Fed. Cir. 2005). 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 their entireties that confusion as to the source
of the services offered under the respective marks is
likely to result.
Because the similarity or dissimilarity of the marks
is determined based on the marks in their entireties, the
analysis cannot be predicated on dissecting the marks into
their various components; that is, the decision must be
based on the entire marks, not just part of the marks. In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
Ex Parte Appeal No. 85450227

6
(Fed. Cir. 1985). See also Franklin Mint Corp. v. Master
Mfg. Co., 667 F.2d 1005, 212 USPQ 23, 234 (CCPA 1981). On
the other hand, different features may be analyzed to
determine whether the marks are similar. Price Candy
Company v. Gold Medal Candy Corporation, 220 F.2d 759, 105
USPQ 266, 268 (CCPA 1955). In fact, 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., 224 USPQ at 751.
In this case, applicant’s mark, SHACKLETON, is similar
to the registered mark,

in that applicant’s mark is wholly incorporated within that
of registrant. SHACKLETON, the sole term comprising
applicant’s mark, is the first and most distinctive term in
that of registrant, given that the term GROUP in
registrant’s mark is disclaimed and appears to merely
describe a feature or characteristic of its services.
Ex Parte Appeal No. 85450227

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Further, in the case of marks consisting of words and
a design, the words are normally given greater weight
because they would be used by consumers to request the
products [and/or services]. In re Dakin’s Miniatures,
Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito
Provisions Co., 2 USPQ2d 1553, 1554 (TTAB 1987). See also
Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d
1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987); Giant Food,
Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565, 218
USPQ 390 (Fed. Cir. 1983).
For these reasons, we find that SHACKLETON is the
dominant term in registrant’s mark and accordingly it is
entitled to more weight in our analysis. In coming to this
conclusion, we do not discount the presence of the term
GROUP and compass design in registrant’s mark. However,
for the reasons discussed above we find that the term
SHACKLETON is more prominent and more likely to be
remembered by consumers.
The term SHACKLETON as it appears in both marks, is
identical in sound and connotation, and nearly identical in
appearance. Furthermore, applicant’s mark is presented in
standard characters and therefore we must consider that it
may be presented in the same stylization found in
registrant’s mark. See In re Viterra Inc., 671 F.3d 1358,
Ex Parte Appeal No. 85450227

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101 USPQ2d 1905, 1909 (Fed. Cir. 2012). See also
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1847-48 (Fed. Cir. 2000). As a result, we find that,
when viewed in their entireties, the marks SHACKLETON and
are more similar than they are different and,
overall, convey similar commercial impressions. That is to
say, the marks appear to be variations of each other that
nonetheless point to a common source. As such, this du
Pont factor favors a finding of likelihood of confusion.
The Services
We turn now to our consideration of the identified
services, noting that it is not necessary that the services
at issue be similar or competitive, or even that they move
in the same channels of trade, to support a holding of
likelihood of confusion. It is sufficient instead that the
respective services are related in some manner, and/or that
the conditions and activities surrounding the marketing of
the services 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
producer. See In re International Telephone & Telegraph
Corp., 197 USPQ 910, 911 (TTAB 1978).
Ex Parte Appeal No. 85450227

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In this case, applicant’s services are “advertising
agencies, advertising services” and registrant’s services
are various business consultation, management, information
and advisory services. Applicant devotes the majority of
its brief to arguing that its services are neither similar
nor complementary to those of registrant. The following
arguments are illustrative:5
In other words, the cited registration covers in
essence services related to how to run a company,
be it a big company, a medium size company or a
small company. None of these services are
related, directly or indirectly with advertising
services. These are simply different fields of
expertise and companies constantly require advice
in both of them. But again, there are services
that are never provided by the same providers
because managing a company and advertising its
services and products are entirely different
aspects of doing business. Advertising agencies
do not give advice on how to internally
organize and run a company, on how to distribute
or allocate financial and human resources.
Advertising companies are hired to sell a
company's goods and services to potential clients
and consumers. Advertising companies assist
their clients in creating perceptions in the
public's mind about their clients' goods and
services.

Applicant's services relate to the advertising of
a company's goods and services to the consuming
public. There is nothing complementary about
these activities. They are simply different,
unrelated and non-competing. Accordingly, a
client seeking advice in how to manage his or her
company more efficiently would most certainly
know that these services have nothing to do with

5 Applicant’s brief, p. 3-5.
Ex Parte Appeal No. 85450227

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advertising services and would not believe that
these services come from the same source, even if
distinguished by the same mark, particularly when
these are costly, not every day "purchases" and
the time and effort deciding that [sic] service
provider to engage will certainly be substantial
and intensely thought of and analyzed.

In support of the refusal to register, the examining
attorney has made of record evidence from six informational
and commercial internet websites suggesting that firms
providing advertising services also provide marketing
services.6 While this evidence suggests that entities
providing applicant’s advertising agencies and advertising
services also provide marketing services, it does not
establish that such entities also provide registrant’s
recited “business consultation and management regarding
marketing activities and launching of new products” or any
other business-related services identified in the cited
registration. As such the internet evidence made of record
by the examining attorney only suggests a tangential
relation between applicant’s services and those of
registrant. Nonetheless, we perceive a close logical
relationship between consultation regarding marketing and

6 These include bohanideas.com and insightcubed.com, submitted
with the February 7, 2012 Office action; as well as agenypja.com,
smallbusinessmarketingconsultant.com, smallbusinesschron.com and
mdimarketing.com, submitted with the August 10, 2012 Office
action.

Ex Parte Appeal No. 85450227

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product launches, on the one hand, and applicant’s
advertising services on the other. Advertising is a
component of the marketing process; and it would not seem
unusual for an advertising firm to consult with its
customers as to this aspect of the customers’ marketing
activities.
In addition, the examining attorney has made of record
numerous use-based third-party registrations, of which the
following show that various entities have adopted a single
mark for services identified in the involved application
and cited registration:
Registration No. 3677609 for, inter alia,
advertising and business management consultancy,
advertising and business services, namely,
securing airtime on all forms of media
communications stations, systems, networks, and
services for the purpose of promoting the goods
and services of others, advice in the field of
business management and marketing, business
consultation and management regarding marketing
activities and launching of new products;

Registration No. 3162190 for, inter alia,
advertising consultation, business administration
consultancy, business advisory services,
consultancy and information, business management
consulting with relation to strategy, marketing,
production, personnel and retail sale matters;

Registration No. 4008420 for, inter alia,
advertising, business and retail services,
namely, business consultation in the field of
revenue cycle management, advertising, business
management, business consulting services;

Ex Parte Appeal No. 85450227

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Registration No. 4186242 for, inter alia,
advertising and marketing services, business
marketing consultation, business advertising and
marketing consultancy;

Registration No. 4186318 for, inter alia,
advertising and marketing, business consultation
and management regarding marketing activities and
launching of new products; and

Registration No. 4186681 for, inter alia,
advertising and marketing, business consultation
services.

Third-party registrations which individually cover a number
of different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB
1993). The evidence of record establishes that applicant’s
services are related to the services identified in the
cited registration, and further may be identified under the
same mark. As such, this du Pont factor favors a finding
of likelihood of confusion.
Channels of Trade
In making our determination regarding the relatedness
of the parties’ channels of trade, we look as we must to
the services as identified in the involved application and
cited registration. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990). See also Paula Payne Products v. Johnson
Ex Parte Appeal No. 85450227

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Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
It is presumed that applicant’s advertising and advertising
agency services as well as registrant’s business
consultation, management, information and advisory services
at issue move in all channels of trade normal for such
services, and that they are purchased by all of the usual
consumers for such services. In re Elbaum, 211 USPQ 639,
640 (TTAB 1981), citing Kalart Co., Inc. v. Camera-Mart,
Inc., 119 USPQ 139 (CCPA 1958). Here, the examining
attorney’s third-party evidence clearly suggests that the
services are related. Furthermore, neither recitation of
services recites any restrictions as to the channels of
trade in which they may be encountered. As such, this du
Pont factor is, at worst, neutral.
Sophistication of Purchasers
Neither the application nor the cited registration
includes any limitation on the customers to whom the
respective services are rendered so we must consider the
relevant purchasers to include all of the usual customers
for the recited services. See In re Elbaum, 211 USPQ at
640.
While both advertising and business management,
information and advisory services suggest that the relevant
customers for the services at issue include businesses
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exercising a degree of care, we note that small businesses
(including sole proprietorships) and entrepreneurships
advertise and seek business management and information
services. While some of these customers are undoubtedly
sophisticated in such matters, the potential purchasers for
these services also include those of modest means and no
more than an ordinary level of sophistication.
Even if we accept, in considering the fourth du Pont
factor, applicant’s assertion that the involved services
may be the subject of sophisticated purchases, even careful
purchasers are likely to be confused by highly similar
marks used in connection with related services. As stated
by our primary reviewing court, “[t]hat the relevant class
of buyers may exercise care does not necessarily impose on
that class the responsibility of distinguishing between
similar trademarks for similar goods. ‘Human memories even
of discriminating purchasers ... are not infallible.’” In
re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49,
50 (Fed. Cir. 1986), quoting Carlisle Chemical Works, Inc.
v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112
(CCPA 1970).
Therefore, even if it is true in this case, the fact
that the purchasers may exercise care before purchasing
these services does not mean there can be no likelihood of
Ex Parte Appeal No. 85450227

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confusion. In the present case, the similarity between the
marks and the similarity between the services as identified
outweigh any sophisticated purchasing decision. See HRL
Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819
(TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL
Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir.
1990) (similarities of goods and marks outweigh
sophisticated purchasers, careful purchasing decision, and
expensive goods). As such, this du Pont factor is, at
best, neutral or slightly favors a finding of no likelihood
of confusion.
Summary
In light of the foregoing, we conclude that consumers
familiar with registrant’s services sold under its above-
referenced mark would be likely to believe, upon
encountering applicant’s services rendered under its mark,
that the services originate with or are associated with or
sponsored by the same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant and not, as urged by applicant, in its favor.
See In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6
USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous
Ex Parte Appeal No. 85450227

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Pastry Shoppe, Inc., 748 F.2d 165, 223 USPQ 1289 (Fed. Cir.
1984).
Decision: The refusal under Section 2(d) of the Act
is affirmed.