Strategic Marketing Partners, Inc.

Trademark Trial and Appeal Board

Nov 14, 2000

No. 75402227 (T.T.A.B. Nov. 14, 2000)

Paper No. 19
TEH
11/14/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Strategic Marketing Partners, Inc.
________
Serial No. 75/402,227
_______
James J. Kozuch of Caesar, Rivise, Bernstein, Cohen & Pokotilow,
Ltd. for Strategic Marketing Partners, Inc.
Martha L. Fromm, Trademark Examining Attorney, Law Office 106
(Mary Sparrow, Managing Attorney).
_______
Before Seeherman, Hairston and Holtzman, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
Strategic Marketing Partners, Inc. has appealed from the
final refusal of the Trademark Examining Attorney to register the
mark SMP for "market research and business marketing consultation
in the pharmaceutical and biotechnology fields."1

1 Application Serial No. 75/402,227, filed December 8, 1997 alleging
dates of first use on September 1, 1994.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT
OF THE T.T.A.B.
Ser No. 75/402,227
2
The Examining Attorney has refused registration under
Section 2(d) of the Trademark Act on the basis of Registration
No. 1,736,975 for the mark SMP ADVERTISING (with "ADVERTSING"
disclaimed) for "advertising agency services.2
When the refusal was made final, applicant appealed. Briefs
have been filed. An oral hearing was not requested.
Here, as in any likelihood of confusion analysis, we look to
the factors set forth in In re E.I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973), giving particular attention
to the factors most relevant to the case at hand, including the
similarity of the marks and the relatedness of the goods or
services.
Turning first to the marks, we find that SMP and SMP
ADVERTISING are substantially similar in sound and appearance,
and create virtually identical commercial impressions. While
marks must be compared in their entireties, there is nothing
improper in giving more or less weight to certain features of the
marks as being more dominant or otherwise significant, and
therefore to give those features greater weight. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). Here, the dominant part of both marks is the acronym SMP.

2 Issued December 1, 1992; combined affidavit under Sections 8 and 15
filed.
Ser No. 75/402,227
3
The disclaimed word ADVERTISING is descriptive and therefore less
significant. See In re National Data Corp., supra.
Applicant does not dispute the similarity of the marks but
instead argues, based on Homeowners Group v. Home Marketing
Specialists, 931 F.3d 1100, 18 USPQ2d 1587 (6th Cir. 1991), that
the "extensive use" of SMP by third parties for "a variety" of
goods and services diminishes the likelihood of confusion.3 In
support of this position, applicant has submitted thirteen use-
based third-party registrations which, as the Examining Attorney
observes and applicant does not dispute, are for goods or
services which are unrelated to the services involved in this
case.
Applicant's argument as to the effect of these registrations
is unconvincing for several reasons. To begin with, the factor
to be considered in determining likelihood of confusion under du
Pont is the number and nature of similar marks "in use on similar
goods" (emphasis added). See In re E.I. du Pont de Nemours &
Co., supra. The registrations on which applicant has relied are
not for similar goods or services. Furthermore, third-party
registrations are not evidence that the marks shown therein are

3 The Court, quoting the Restatement of Torts §729 (1938), said that
"[t]he greater the number of...more or less similar trade-marks already
in use on different kinds of goods, the less is the likelihood of
confusion...."
Ser No. 75/402,227
4
in use. In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB
1993). Finally, while third-party registrations may be used to
show the dictionary or commonly understood meaning of a term to
those in the trade, the goods and services in these third-party
registrations are so unrelated to the services herein as to be of
no use in determining whether SMP has any recognized meaning in
the field.
We turn then to the services. To support her position that
the respective services are related, the Examining Attorney has
submitted the following evidence: Copies of over thirty third-
party registrations covering both types of services under the
same marks; marketing dictionary definitions of "advertising
agency" as a company which, if a "full service" agency, offers "a
comprehensive range of creative, production, market research,
strategic planning, and media planning/buying capabilities"; a
trade definition of "marketing"; a number of yellow pages
listings for companies which offer both advertising and marketing
services under the same marks, some of which contain specific
references to research services; printouts from the websites of
several advertising agencies which provide both advertising and
market research services; and excerpts from the Nexis database
showing in at least four of those articles that both advertising
and market research services are provided by the same companies.
Ser No. 75/402,227
5
Applicant argues that the services are not similar or
directly competitive and that the respective services are not
related merely because they "may co-exist in some types of
advertising agencies (i.e., "full-service" agencies)."
Applicant further argues that because the Examining Attorney's
third-party registrations "explicitly include" market research in
addition to advertising agency services, the services in the
cited registration should be "limited" to advertising agency
services and, in any event, should not be "extended" to include
market research services. Applicant maintains that its mark is
not used in connection with "marketing" services and has attached
its own definitions of "market research" to distinguish that
service from the "marketing" services as defined by the Examining
Attorney. Arguing that the services are in different channels of
trade and directed to different purchasers, applicant contends
that advertising agencies typically do not conduct "the types" of
market analysis conducted by applicant. According to applicant,
the purchasers of the respective services are knowledgeable and
are likely to exercise a high degree of care, thus further
diminishing the likelihood of confusion.
The Examining Attorney has shown that marketing research
services are specifically encompassed within advertising agency
services. We note, in particular, the definition of "advertising
agency" which makes it clear that marketing research is one of
Ser No. 75/402,227
6
the functions or activities a "full service" advertising agency
would provide. Whether registrant in fact conducts market
research services as part of its overall advertising agency
service or "the types" of market analysis provided by applicant
is not relevant. The question of likelihood of confusion is
determined on the basis of the recitation of services set forth
in the registration rather than on what any evidence may show as
to the actual nature of the services, their channels of trade
and/or classes of purchasers. Canadian Imperial Bank of commerce
v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987). There is no restriction in the registration as to the
range of services registrant's advertising agency would provide
or the customers for those services. We must therefore presume
that registrant is a "full service" agency offering marketing
research services in general as well as specialized fields,
including the pharmaceutical and biotechnology fields specified
in applicant's identification.
Moreover, it is not necessary that the services of the
applicant and registrant be similar or even competitive to
support a finding of likelihood of confusion. It is sufficient
if the respective services are related in some manner and/or that
the conditions surrounding their marketing are such that they
would be encountered by the same persons under circumstances that
could, because of the similarity of the marks used thereon, give
Ser No. 75/402,227
7
rise to the mistaken belief that they emanate from or are
associated with, the same source. See In re Albert Trostel &
Sons Co., supra. Even if conducting market research is not an
activity which falls within the scope of services an advertising
agency would provide, the two services are, nevertheless, closely
related.
The numerous third-party registrations submitted by the
Examining Attorney show that the same marks are registered for
both advertising agency services on the one hand and marketing
research and/or marketing consulting services on the other.
Although, as we noted earlier, third-party registrations are not
evidence of use of the marks in commerce, the registrations have
probative value to the extent that they suggest that the
identified services are of a type which may emanate from a single
source.4 See, e.g., In re Albert Trostel & Sons Co., supra at
1785-1786; and In re Mucky Duck Mustard Co., 6 USPQ2d 1467 (TTAB
1988). Simply because these registrants chose to delineate
"market research" as a separate service does not mean that it is
necessarily a separate service. More important, whether market
research is or should be characterized as a separate service is
irrelevant. The relevant consideration is that, as shown by the

4 We note that none of these registrations involve house marks for
broad or diverse categories of services.
Ser No. 75/402,227
8
evidence, purchasers would assume that both services are offered
by a single company.
In addition, the Nexis articles, website references and
Yellow Pages advertisements submitted by the Examining Attorney
all show that marketing services and/or market research services
are often provided by the same company which offers advertising
agency services. Applicant's apparent attempt to discredit this
evidence and distinguish the respective services on the basis of
the asserted differences in the definitions of "marketing" and
"market research" is an exercise in splitting hairs. A
significant portion of these materials contain references to
market research as well as marketing services and, in any event,
the Examining Attorney's definition of advertising agency
services (from The Marketing Glossary) contains a definition of
"marketing services" as including "market researchers."
It is clear from the foregoing evidence that advertising
agency services and market research services do not merely
"coexist" in the same industry but that they are, in fact,
closely related in the industry. Customers for these services
would be likely to believe, in view of the similarity of the
respective marks, that both services emanate from or are
sponsored by the same source. While it is reasonable to assume
that the relevant customers at least for applicant's services
would be relatively sophisticated and knowledgeable purchasers,
Ser No. 75/402,227
9
even such purchasers are not immune from source confusion,
particularly under circumstances where, as here, closely related
services are sold to the same purchasers under virtually
identical marks.5 See In re Total Quality Group Inc., 51 USPQ2d
1474 (TTAB 1999).
Decision: The refusal to register is affirmed.
E. J. Seeherman
P. T. Hairston
T. E. Holtzman
Administrative Trademark
Judges, Trademark Trial
and Appeal Board

5 This case is distinguishable from Electronic Design & Sales, Inc. v.
Electronic Data Systems Corp., 954 F.2d 713, 715, 21 USPQ2d 1388 (Fed.
Cir. 1992) relied on by applicant. In that case, the parties'
respective goods and services on which the marks were used were deemed
to be "different" and the respective purchasers were deemed to be
"substantially different." (Supra, at 1393).