The Marketing Tree LLC

Trademark Trial and Appeal Board

Jan 7, 2008

No. 78631229 (T.T.A.B. Jan. 7, 2008)

Mailed:
Jan. 7, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re The Marketing Tree LLC
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Serial No. 78631229
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Joan H. Lowenstein of Jaffe, Raitt, Heuer and Weiss for The
Marketing Tree LLC.

Kelly Boulton, Trademark Examining Attorney, Law Office 112
(Thomas V. Shaw, Managing Attorney).
_______

Before Grendel, Zervas and Wellington, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

The Marketing Tree LLC, applicant herein, seeks
registration on the Principal Register of the mark THE
MARKETING TREE (in standard character form; MARKETING
disclaimed) for services recited in the application as

Advertising, marketing and promotion services;
advertising services, namely, creating corporate
and brand identity for others; advice in the
field of business management and marketing;
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 78631229
2
arranging and conducting marketing promotional
events for others; marketing consulting;
providing business marketing information;
development of marketing strategies and concepts;
statistical evaluations of marketing data; direct
marketing advertising for others; business
marketing and direct mail consulting services;
direct marketing services; cooperative
advertising and marketing services by way of
solicitation, customer service and providing
marketing information via websites on a global
computer network; business marketing consulting
services; business consultation and management
regarding marketing activities and launching of
new products; services relating to the analysis,
evaluation, creation and brand establishment of
trademarks, trade names and domain names; concept
and brand development for others in the field of
business marketing; creation of marketing tools
designed to increase a client company’s knowledge
of customer needs, and its competitors’ products
and services, pricing, advertising strategy and
sales strategy; market research studies; market
analysis; market research services; market
manipulation, research and analysis, whether or
not via the internet; conducting business and
market research surveys; public relations;
general business networking referral services,
namely, promoting the goods and services of
others by passing business leads and referrals
among group members; referrals in the field of
marketing and advertising; publicity and sales
promotion services; business management
consultancy as well as development of processes
for the analysis and the implementation of
strategy plans and management projects; business
project management services for others;
preparation and realization of media and
advertising plans and concepts; advertising via
billboards, electronic media and print
advertisements; preparing business reports for
others; production of radio and television
commercials; and preparation of internet and
print media advertisements

Ser. No. 78631229
3
in class 35.1
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark on
the ground that the mark, as used in connection with the
recited services, so resembles the mark MARKETTREE,
previously registered (in standard character form) for
services recited in the registration as “direct marketing
services” in Class 35,2 as to be likely to cause confusion,
to cause mistake, or to deceive. Trademark Act Section
2(d), 15 U.S.C. §1052(d).
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 (the du Pont factors). 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 Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.

1 Serial No. 78631229, filed on May 17, 2005. The application is
based on use in commerce under Trademark Act Section 1(a), 15
U.S.C. §1051(a). April 26, 2005 is alleged in the application to
be the date of first use of the mark anywhere. May 11, 2005 is
alleged in the application to be the date of first use of the
mark in commerce.

2 Registration No. 3077768, issued on April 4, 2006.

Ser. No. 78631229
4
2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
Under the second du Pont factor (similarity or
dissimilarity of the services), we find that the “direct
marketing services” and “direct marketing advertising for
others” identified in applicant’s recitation of services
are identical to the “direct marketing services” recited in
the cited registration. The evidence of record also
establishes that registrant’s “direct marketing services”
are similar and related to many of the other marketing
services included in applicant’s recitation of services.
See the thirty-two third-party registrations made of record
by the Trademark Examining Attorney which include in their
respective recitations of services both applicant’s types
of services and registrant’s “direct marketing services.”
Although such registrations are not evidence that the marks
shown therein are in use or that the public is familiar
with them, they nonetheless have probative value to the
extent that they serve to suggest that the services listed
therein are of a kind which may emanate from a single
source under a single mark. 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).
Ser. No. 78631229
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Because applicant’s services are in part identical to
and otherwise similar and related to the services recited
in the cited registration, we find that the second du Pont
factor weighs in favor of a finding of likelihood of
confusion.
Under the third du Pont factor (similarity or
dissimilarity of trade channels), we find that applicant’s
trade channels and registrant’s trade channels are
identical to the extent that the services themselves are
identical, i.e., “direct marketing services.” We also find
that the trade channels for the other marketing services
recited in applicant’s application are similar to and
closely related to the trade channels for registrant’s
direct marketing services. There are no limitations or
restrictions in either applicant’s or registrant’s
recitation of services, so we must presume that the
respective services are marketed in all of the normal trade
channels and to all the normal classes of purchasers for
such services. In re Elbaum, 211 USPQ 639 (TTAB 1981). We
find that the normal trade channels for applicant’s and
registrant’s highly similar and related services are
overlapping. The third du Pont factor weighs in favor of a
finding of likelihood of confusion.

Ser. No. 78631229
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We turn next to the first du Pont factor, which
requires us to determine the similarity or dissimilarity of
the marks when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial
impression. Palm Bay Imports, Inc., 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 services 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 and service marks. See Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Finally, in cases such as this, where the applicant’s
services are in part identical to the opposer’s services,
the degree of similarity between the marks which is
required to support a finding of likelihood of confusion is
less than it would be if the services were not identical.
Century 21 Real Estate Corp. v. Century Life of America,
970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
Applicant’s mark is THE MARKETING TREE. The cited
registered mark is MARKETTREE. In terms of appearance,
Ser. No. 78631229
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we find that the marks are similar to the extent that
they both include some form of the word MARKET and the
word TREE. The marks are not identical in appearance
due to the fact that the registered mark is a compound
word and applicant’s mark is not, and to the extent that
applicant’s mark includes the inconsequential word THE.
On balance, however, we find that the marks look very
similar.
In terms of sound, we find that the marks are
highly similar. Indeed, the marks sound the same except
for the word THE and the extra syllable “-ing” in the
middle of applicant’s mark. Those points of
dissimilarity are greatly outweighed by the overall
aural similarity between the marks.
In terms of connotation and overall commercial
impression, we find that the marks are similar. Both
include the word MARKET or a formative thereof, as well
as the word TREE. As applied to the marketing services
at issue in this case, the two marks mean essentially
the same thing and they present essentially the same
commercial impression.
Viewing the marks in their entireties, we find that
they are similar and likely to cause confusion when used
in connection with the identical and highly similar
Ser. No. 78631229
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services involved in this case. The first du Pont
factor weighs in favor of a finding of likelihood of
confusion.
The sixth du Pont factor requires us to consider
evidence of third-party use of similar marks in
connection with similar services. We find that there is
no such evidence in this case. Applicant asserts that
there are numerous third-party registrations and
applications for MARKET marks and TREE marks in
connection with marketing services. However, applicant
has failed to provide any competent evidence to support
that assertion. Moreover, even if applicant had
provided such evidence (i.e., copies of the entire
registrations or electronic equivalents thereof from the
Office’s database), it is settled that third-party
registrations (much less third-party applications) are
not evidence of third-party use and thus are not
probative evidence under the sixth du Pont factor. See
Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22
USPQ2d 1542 (Fed. Cir. 1992). In the absence of
evidence of third-party use, we find that the sixth du
Pont factor is neutral in this case.
For the reasons discussed above, and considering
all of the evidence of record pertaining to the du Pont
Ser. No. 78631229
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factors, we conclude that a likelihood of confusion
exists. Applicant’s mark is very similar to the cited
registered mark, and applicant’s services are identical
in part and otherwise closely related to the services
recited in the cited registration. We have no doubt
that confusion is likely.

Decision: The refusal to register is affirmed.