The Alta Group, LLC

Trademark Trial and Appeal Board

Jun 28, 2005

No. 76563783 (T.T.A.B. Jun. 28, 2005)

Mailed:
June 28, 2005

Grendel

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The Alta Group, LLC
________

Serial No. 76563783
_______

Bonnie Drinkwater of Drinkwater Law Offices for The Alta
Group, LLC.

Kimberly Frye, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
_______

Before Walters, Grendel and Kuhlke, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark THE ALTA GROUP (in standard character form;
GROUP disclaimed) for services recited in the application
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76563783
2
as “business consulting services provided to the equipment
financing and leasing industry.”1
The Trademark Examining Attorney has issued a final
refusal to register applicant’s mark, on the ground that
the mark, as applied to applicant’s recited services, so
resembles the mark ALTA RESOURCES and design as depicted
below,

previously registered on the Principal Register (with a
disclaimer of RESOURCES) for services recited in the
registration as “business services, namely providing
business consultation, business networking, business
personnel and business specialist services in the fields of
customer acquisition, customer service, customer
management, data management, shipping, marketing and sales
for commercial businesses, excluding business consulting
services in the field of equipment financing and leasing.”2

1 Serial No. 76563783, filed December 8, 2003. The application
is based on use in commerce, and May 18, 1993 is alleged in the
application as the date of first use of the mark anywhere and the
date of first use of the mark in commerce.

2 Registration No. 2463521, issued June 27, 2001.
Ser. No. 76563783
3
Applicant has appealed the final refusal. Applicant
and the Trademark Examining Attorney have filed main appeal
briefs. Applicant did not file a reply brief, nor did
applicant request an oral hearing. The evidence of record
on appeal consists of printouts of fifteen third-party
registrations submitted by the Trademark Examining
Attorney, and a printout of pages from applicant’s website,
submitted by applicant.
Our likelihood of confusion determination under
Section 2(d) 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 and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In
considering the evidence of record on these factors, we
keep in mind that “[t]he fundamental inquiry mandated by
§2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We turn initially to the first du Pont factor, i.e.,
whether applicant’s mark, THE ALTA GROUP, and the cited
registered mark, ALTA RESOURCES and design, are similar or
dissimilar when compared in their entireties in terms of
appearance, sound, connotation and commercial impression.
Ser. No. 76563783
4
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 terms of their
overall commercial impression that confusion as to the
source of the goods offered under the respective marks is
likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general rather
than a 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 National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985).
First, we find that the word ALTA is the dominant
feature in the commercial impression created by each of the
marks at issue. The word GROUP in applicant’s mark, and
the word RESOURCES in the cited registered mark, are
descriptive and disclaimed, and they contribute relatively
less to the commercial impressions of the respective marks.
Likewise, the design feature in the registered mark is of
less significance to the mark’s commercial impression than
Ser. No. 76563783
5
is the word ALTA, and its presence in the cited registered
mark does not suffice to distinguish the marks. See In re
Chatham International Inc., 380 F.2d 1340, 71 USPQ2d 1944
(Fed. Cir. 2004); In re El Torito Restaurants Inc., 9
USPQ2d 2002 (TTAB 1988); and In re Appetito Provisions Co.,
3 USPQ2d 1553 (TTAB 1987).3
In terms of appearance, sound, connotation and overall
commercial impression, we find that the similarity between
the marks which results from the presence of the word ALTA
in both marks outweighs the minor points of dissimilarity
between the marks, i.e., the different descriptive words
GROUP and RESOURCES in the respective marks, and the
presence of the design element in the cited registered
mark. Viewing the marks in their entireties, we find that
they are similar because the dominant feature of both marks
is the distinctive word ALTA.
We turn next to the second and third du Pont factors,
i.e., the similarity or dissimilarity of the respective
services, and the similarity or dissimilarity of the trade
channels and classes of purchasers for the respective
purchasers. We must make our determinations under these

3 Applicant contends that its mark always is displayed with a
design feature of its own. However, our determination must be
made on the basis of the mark as it appears in the application,
which includes no such design feature.

Ser. No. 76563783
6
factors based on the services as they are recited in the
application and registration, respectively. See In re
Elbaum, 211 USPQ 639 (TTAB 1981).
Applicant’s services are “business consulting services
provided to the equipment financing and leasing industry.”
Registrant’s recitation of services also includes “business
consulting services,” but specifically excludes “business
consulting services in the field of equipment financing and
leasing.” To that extent, applicant’s trade channels and
purchasers are dissimilar to registrant’s trade channels
and purchasers. However, the other services recited in the
cited registration have no such trade channel or purchaser
limitations. Registrant’s “business networking, business
personnel and business specialist services in the fields of
customer acquisition, customer service, customer
management, data management, shipping, marketing and sales”
are similar in kind to applicant’s “business consulting
services,” as is evidenced by the third-party registrations
made of record by the Trademark Examining Attorney. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993);
and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB
1988). Moreover, those services of registrant’s are not
limited as to trade channels or purchasers, and they thus
must be presumed to be marketed to and rendered to all
Ser. No. 76563783
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“commercial businesses,” including the same businesses in
the equipment financing and leasing industry to which
applicant markets its services. These factors support a
finding of likelihood of confusion.
Applicant has pointed out (in its appeal brief), and
the Trademark Examining Attorney has acknowledged (in her
appeal brief), that applicant owned a previous registration
(Reg. No. 1970744, hereinafter the ‘744 registration) of
the same mark (THE ALTA GROUP) and for the same services
(“business consulting services in the field of equipment
financing and leasing”) as those for which it now seeks
registration.4 This ‘744 registration was cancelled (on
February 1, 2003) under Trademark Act Section 8, 15 U.S.C.
§1058, due to applicant’s failure to file the required
affidavit of continued use. Applicant notes that this
prior registration was extant when the cited ALTA RESOURCES
registration was issued, and that the two registrations
coexisted on the Register for over one year. Applicant
contends that the cited ALTA RESOURCES mark most likely was
able to be registered only after amendment of its
recitation of services to specifically exclude the services

4 Applicant did not make the ‘744 registration of record prior to
appeal or with its appeal brief, but the Trademark Examining
Attorney has treated it as being of record, and so shall we.

Ser. No. 76563783
8
covered by applicant’s prior ‘744 registration, i.e.,
“business consulting services in the field of equipment
financing and leasing.”
In essence, applicant is attempting to re-register its
mark after having inadvertently allowed its previous
registration to be cancelled. Applicant argues that if the
cited ALTA RESOURCES intervening registration could coexist
on the Register with applicant’s previous ‘744 registration
for over one year, then it also can coexist with the
registration applicant now seeks by its current
application. Although we are not unsympathetic to this
argument, we are not persuaded.
That the cited registration was issued over, and
coexisted for a time with, applicant’s previous ‘744
registration is “a factor which is placed in the hopper
with other matters which ordinarily are considered in
resolving the question of likelihood of confusion, but
which is not in the least determinative of said issue.” In
re Trelleborgs Gummifabriks Aktiebolag, 189 USPQ 106, 107
(TTAB 1975). In the more recent case of In re Kent-
Gamebore Corp., 59 USPQ2d 1373 (TTAB 2001), the Board,
citing the In re Trelleborgs decision, noted as follows:

We can only speculate as to why the cited
registration issued over applicant’s
Ser. No. 76563783
9
predecessor’s now-cancelled registration. In
any event, even when one registration issues
over the other and both exist side-by-side for
some period of time (in this case about six
years), that is one element ‘which is placed in
the hopper…’ [of the likelihood of confusion
analysis].

59 USPQ2d at 1377. The Board also noted that “[n]either
the Board, nor the Courts, are bound by prior decisions of
Trademark Examining Attorneys, and each case must be
decided on its own merits on the basis of the record
therein. See In re Wilson, 57 USPQ2d 1863 (TTAB 2001).
See also, In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564 (Fed. Cir. 2001).”
In re Trelleborgs and In re Kent-Gamebore both
involved the situation at hand here, i.e., the registration
cited as a Section 2(d) bar to registration of the
applicant’s mark was an intervening registration which
issued over the applicant’s now-cancelled previous
registration. In both cases, the Board found that a
likelihood of confusion existed, due to the similarities
between the applicant’s and intervening registrant’s
respective marks and respective goods or services. We
likewise find in this case that, due to the similarity
between applicant’s mark THE ALTA GROUP and registrant’s
mark ALTA RESOURCES and design, and to the similarity
Ser. No. 76563783
10
between applicant’s and registrant’s respective recited
services, trade channels and purchasers, a likelihood of
confusion exists. We have considered the fact that the
cited registration coexisted on the Register with
applicant’s prior ‘744 registration for a period of time,
but we find that fact to be outweighed, in our likelihood
of confusion analysis, by the other du Pont factors which
weigh markedly in favor of a finding of likelihood of
confusion.
Finally, applicant argues that it is unaware of any
instances of actual confusion between its mark and the
cited registered mark, notwithstanding contemporaneous use
of the two marks for a period of years. However, we cannot
determine on this record that the nature and scope of
applicant’s and registrant’s actual use of their marks have
been such as to have created any meaningful opportunity for
actual confusion to occur. The absence of actual
confusion, under the seventh du Pont factor, therefore is
counterbalanced by the absence of evidence of any
opportunity for actual confusion to have occurred, under
Ser. No. 76563783
11
the eighth du Pont factor.5
After carefully considering all of the evidence as it
pertains to the relevant du Pont factors, and for the
reasons discussed above, we find that a likelihood of
confusion exists, and that registration of applicant’s mark
is barred under Trademark Act Section 2(d). We have
considered applicant’s arguments to the contrary, but are
unpersuaded.
Decision: The refusal to register is affirmed.

5 We cannot find, on this ex parte record, that the owner of the
cited registration likewise is aware of no instances of actual
confusion having occurred. Nor is there of record a consent
agreement between applicant and registrant, which obviously would
have been entitled to great weight in our analysis. See, e.g.,
Bongrain International (American) Corporation v. Delice de France
Inc., 811 F.2d 1479, 1 USPQ2d 1775 (Fed. Cir. 1987); In re Kent-
Gamebore Corp., supra.