Systems Integration Solutions, Inc.

Trademark Trial and Appeal Board

Oct 22, 1998

No. 74575862 (T.T.A.B. Oct. 22, 1998)

Paper No. 18
BAC
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Systems Integration Solutions, Inc.
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Serial No. 74/575,862
_______
Shirley J. Su of Howard, Rice, Nemerovski, Canady, Falk &
Rabkin, P.C. for Systems Integration Solutions, Inc.
Angela Lykos, Trademark Examining Attorney, Law Office 102
(Thomas Shaw, Managing Attorney)
_______
Before Simms, Quinn and Chapman, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
Systems Integration Solutions, Inc. has filed an
application to register the mark SYSTEMS INTEGRATION
SOLUTIONS, INC. for “consulting services in the field of
Ser. No. 74/575862
2
information technology, computer systems and software
development”.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when applied to its
identified services, so resembles the previously registered
mark INTEGRATED SYSTEMS SOLUTIONS for “information systems
services; namely, consulting, computer systems operations
for computer outsourcing, and computer applications
development”2 as to be likely to cause confusion, mistake or
deception.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested. We affirm the refusal
to register. In reaching this conclusion, we have
considered all of the relevant du Pont3 factors.
Applicant essentially contends that the two marks are
different in sound, appearance, and meaning; that the
registered mark is “highly suggestive and weak”; that the
registered mark is entitled to a limited scope of

1 Ser. No. 74/575,862, filed September 19, 1994. The claimed
dates of first use and first use in commerce are April 1, 1990.
Applicant disclaimed the words “systems integration” and the word
“Inc.”.
2 Reg. No. 1,854,331, issued September 13, 1994. The claimed
dates of first use and first use in commerce are June 4, 1991.
The words “integrated systems” are disclaimed.
3 See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973).
Ser. No. 74/575862
3
protection because there are numerous third-party
registrations of similar marks in the computer-related
services area; that applicant and registrant actually
provide different services which are offered through
different channels of trade; that the respective services
are expensive and are carefully selected by “sophisticated
corporate executives”; and that applicant is unaware of any
instances of actual confusion in the five years both marks
have been used. In support of its arguments, applicant
submitted, inter alia, the declaration of Gerald E. Heath,
Jr., applicant’s president and chief executive officer,
including exhibits consisting of photocopies of fourteen
third-party registrations; and a brochure obtained from the
registrant and information obtained from registrant’s web
site on the Internet.
It is the Examining Attorney’s position that the
involved services are identical, both involving consulting
services in the computer field; that the involved marks are
similar in appearance, connotation, and commercial
impression; that the third-party registrations submitted by
applicant can be distinguished from the cited registration;
that the purported sophistication of the consumers is not
determinative; and that actual confusion (or lack thereof)
Ser. No. 74/575862
4
is not the test, rather the test is likelihood of
confusion.
Turning first to a consideration of the involved
services, applicant’s services are “consulting services in
the field of information technology, computer systems and
software development”; and the services in the cited
registration are “information systems services; namely,
consulting, computer systems operations for computer
outsourcing and computer applications development”.
Clearly both identifications refer to consulting services
with regard to information technology and computer systems
and applications.
In determining the question of likelihood of confusion
in an ex parte case, the Board is constrained to compare
the services as identified in the application with the
services as identified in the cited registration. If the
registrant’s services and the applicant’s services are
described so as to encompass or overlap, then applicant
cannot properly argue that, in reality, the actual services
of the applicant and registrant are not similar. See
Canadian Imperial Bank of Commerce, National Association v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987); In re Trackmobile Inc., 15 USPQ2d 1152 (TTAB 1990);
Ser. No. 74/575862
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and Peopleware Systems, Inc. v. Peopleware, Inc., 226 USPQ
320 (TTAB 1985).
Applicant’s argument that its identification of
services and the cited registrant’s identification of
services “are different from each other and require
additional evidence to clarify the descriptions”
(applicant’s brief, footnote 23) is not convincing.4 We
agree with applicant that the identifications involved
herein do not utilize precisely the same words. However,
we disagree with applicant that the identifications of
services are ambiguous or unclear. Both of the recitations
of services clearly involve consulting services relating to
various aspects of the computer industry.5

4 Applicant’s president averred in his declaration that
“applicant’s role is similar to that of an employment agency
placing temporary contract employees for three-month periods to
assist with projects designed and managed by the client company”;
and in applicant’s brief, pages 2-3, applicant’s attorney stated
that “Applicant’s business is supplying temporary ‘contract
employees’ to supplement existing in-house corporate management
information systems (‘MIS’) departments in projects such as
software applications design, development and implementation”.
While applicant’s identification of services is broadly worded,
clearly employment agency services are not within the scope of
applicant’s “consulting services”. See In re Swen Sonic Corp.,
21 USPQ2d 1794 (TTAB 1991). To whatever extent applicant is
attempting to effectively limit or change its identification of
services by going outside the identification applicant itself set
forth in its application, it is not permitted.
5 Applicant’s situation in this case differs from the case cited
by applicant, In re Fieldcrest Cannon Inc., 5 USPQ2d 1142 (TTAB
1987), which involved not only ambiguous identifications of
goods, but also a written consent agreement.
Ser. No. 74/575862
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It is well settled that services need not be identical
or even competitive to support a finding of likelihood of
confusion. It is sufficient that the services are related
in some manner or that the circumstances surrounding their
marketing are such that they would likely be encountered by
the same persons under circumstances that could give rise
to the mistaken belief that they emanate from or are
associated with the same source. See In re Peebles Inc.,
23 USPQ2d 1795, 1796 (TTAB 1992); and Monsanto Co. v.
Enviro-Chem Corp., 199 USPQ 590, 596 (TTAB 1978).
Turning then to a consideration of the respective
marks, applicant’s mark SYSTEMS INTEGRATION SOLUTIONS, INC.
and the registered mark INTEGRATED SYSTEMS SOLUTIONS are
similar in connotation and appearance. The words “systems
integration” and “integrated systems” connote the
integration of various systems (in this case, especially
with regard to computer systems and applications). And the
term “solutions” connotes the idea that the purchaser of
the computer-related consulting services would be hiring a
company that can solve whatever problem or situation
resulted in its seeking out a consulting service.
Applicant argues that the marks have different
meanings because the words ‘systems integration’ in
applicant’s mark “suggest a process by which a company is
Ser. No. 74/575862
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integrating its systems” and applicant’s contract employees
assist in that process; whereas, in the cited registration,
the words ‘integrated systems’ “refer to a completed
system, or an end product, which is provided by Registrant”
(applicant’s brief, p. 7). This is merely argument by
applicant’s counsel. This record contains no evidence from
people in the business who are knowledgeable about the
meanings of these marks; nor is there any evidence of
general consumer understanding of these words.
Regarding the appearance of the two marks, it is true
that the marks are not identical. However, both marks
contain essentially the same three words, SYSTEMS,
INTEGRATION/INTEGRATED, and SOLUTIONS. (We do not believe
the word “Inc.” adds any significant feature to applicant’s
mark.) While the two words “integrated systems” and
“systems integration” are reversed, this, as well as the
additional word “Inc.” in applicant’s mark, does not
distinguish the two marks. Because both marks convey the
same connotation, purchasers are unlikely to remember these
slight differences between the marks. Under actual market
conditions, consumers generally do not have the luxury of
making side-by-side comparisons. See Puma-
Sportschuhfabriken Rudolf Dassler KG v. Roller Derby Skate
Ser. No. 74/575862
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Corporation, 206 USPQ 255, 259 (TTAB 1980). The commercial
impression created by the marks is essentially the same.6
None of the fourteen third-party registrations
submitted by applicant7 are for marks identical to the marks
here in issue, and many of the third-party registrations
cover goods such as solid state electronics, and different
computer programs, or they cover services such as the
repair of computer hardware and software, the installation
of computers for others, and training in the field of
computer software. Some of the third-party registrations
do include some type of computer consulting services, but,
as explained above, none of the third-party registered
marks are the same as the two marks involved herein. That
is, there are no third-party registrations which include
all three words, SYSTEMS, INTEGRATION or INTEGRATED, and
SOLUTIONS.

6 Applicant’s argument that its mark consists of a noun followed
by an adjective, and that the cited registrant’s mark is an
adjective followed by a noun is not persuasive, and we believe
the marks will not be so analyzed by the purchasing public.
7 In applicant’s request for remand (filed September 26, 1996)
and granted by the Board on October 30, 1996, applicant
specifically requested that the Board take judicial notice of all
28 exhibits attached to applicant’s request for remand.
Applicant is advised that judicial notice is not necessary once
evidence has been submitted for consideration of the Examining
Attorney, and the matter has been remanded to the Examining
Attorney. The evidence then forms part of the record of the ex
parte case.
Ser. No. 74/575862
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Moreover, it is well settled that third-party
registrations are not evidence of commercial use of the
marks shown therein, or that the public is familiar with
them. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785 (TTAB 1993); and In re Mucky Duck Mustard Co., Inc., 6
USPQ2d 1467, footnote 6 (TTAB 1988). Applicant submitted
neither evidence of use by third parties nor evidence of
awareness by the public of these various third-party
registrations. Therefore, we cannot conclude that the
public is so familiar with marks containing the words
SYSTEMS, INTEGRATION/INTEGRATED and SOLUTIONS that they
distinguish such marks on the basis of small differences.
Even if the prospective purchasers of the involved
services are sophisticated, and the services are expensive,
as argued by applicant, this does not mean that they are
immune from confusion as to the source of the consulting
services offered by applicant and the cited registrant.
See Peopleware Systems, Inc., supra; and In re Pellerin
Milnor Corporation, 221 USPQ 558 (TTAB 1983).
Applicant’s argument regarding the lack of actual
confusion is likewise not persuasive because the test is
likelihood of confusion, not actual confusion. And, of
course, on an ex parte record, the Board has no information
from the registrant on this question.
Ser. No. 74/575862
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We find that the same person may seek applicant’s and
the cited registrant’s services; and upon seeing the
substantially similar marks SYSTEMS INTEGRATION SOLUTIONS,
INC. and INTEGRATED SYSTEMS SOLUTIONS for the respective
services may believe the services emanate from or are
otherwise sponsored by or affiliated with the same source.
Decision: The refusal under Section 2(d) is affirmed.
R. L. Simms
T. J. Quinn
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal Board