Victor Alfonso Suarez

Trademark Trial and Appeal Board

May 15, 2017

No. 86780157 (T.T.A.B. May. 15, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: May 15, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Victor Alfonso Suarez
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Serial No. 86780157

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Rod Underhill, Esq.,
for Victor Alfonso Suarez.

Lyndsey Kuykendall, Trademark Examining Attorney, Law Office 102,
Lydia Belzer, Managing Attorney.
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Before Zervas, Bergsman and Greenbaum,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Victor Alfonso Suarez (“Applicant”) seeks registration on the Principal Register of
the mark for “business consulting services in the field of
international procurement and logistics, import and export, fulfillment and
Serial No. 86780157
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warehouse consultations” in International Class 35.1 Applicant has disclaimed the
wording CONSULTING GROUP.
The Examining Attorney issued a Final Office Action refusing registration of
Applicant’s mark pursuant to Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based
on Registration No. 4836136 (registered October 20, 2015) for the standard character
mark for “Advertising agencies; Advertising agencies, namely,
promoting the goods and services of others” in International Class 35.
Both the Examining Attorney and Applicant have filed briefs. We reverse the
Section 2(d) refusal.
Likelihood of Confusion
Our determination under Section 2(d) of the Trademark Act is based on an
analysis of the probative facts in evidence that are relevant to the factors bearing on
a likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re
Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the
evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry

1 Application Serial No. 86780157, filed October 7, 2015, pursuant to Trademark Act § 1(b),
15 U.S.C. § 1051(b), claiming a bona fide intent to use the mark in commerce. The description
of the mark in the record provides, “The mark consists of the letters ‘SKG’ in a stylized font,
in black, centered against a rectangle in red and outlined in black, over the words ‘Consulting
Group’ in black.”
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mandated by Section 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods [or services] and differences in the marks.” Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976);
see also In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014).
Similarity or Dissimilarity of Services
We compare the parties’ respective services as they are identified in the
application and registration at issue. See Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (goods as
identified in involved application and registration compared); Octocom Syst., Inc. v.
Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001
(Fed. Cir. 2002). With respect to Applicant and registrant’s services, the services of
the parties need not be identical or even competitive to find a likelihood of confusion.
See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471,
1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894,
1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus
not related to, one another in kind, the same goods can be related in the mind of the
consuming public as to the origin of the goods.”). The respective services need only be
“related in some manner and/or if the circumstances surrounding their marketing
[be] such that they could give rise to the mistaken belief that [the goods and/or
services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning
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LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc.
v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).
The Examining Attorney submitted webpages from third party websites to
demonstrate that there is a commercial relationship between Applicant’s and
registrant’s services. We have carefully considered the webpages; only a handful
discuss consulting services in the field of international procurement and logistics,
import and export, fulfillment and warehouse consultations. Those webpages which
refer to consulting services without an explanation of the nature of consulting offered
by the owner of the webpage have limited probative value; from their content, we are
certain that the website owners do not provide the type of consulting services
identified in Applicant’s recitation of services. See:
• inspetta.com, stating “We provide, configure and
customize SOLID CORPORATE WEBSITES AND
Software. We provide managed Hosting, infrastructure
growth, updates and support.”2
• www.kristofcreative.com, stating, “We develop online
business platforms that integrate your traditional (offline)
business marketing efforts into an online presence so they
work as a single, cohesive marketing tool.” 3
• www.marketingandadvertisingdesigngroup.com,
stating, “Our advertising agency and marketing company
is focused on driving targeted business to your company. …
From our strategic business consulting comes
recommendations on branding new business approaches
and how to connect with the emotional touch points of your
prospective clients.” Also, the website offers “Marketing/

2 Feb. 8, 2016 Office Action, TSDR 14.
3 Feb. 8, 2016 Office Action, TSDR 25.
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Advertising,” “Company Branding” and “Graphic Design
Services.”4
• vortexbusinesssolutions.com: offering “Web Design and
Development,” “Search Engine Optimization/PPC
Advertising” and “Applicant Development/Mobile
Compliance” as services.5
• www.passionforbusiness.com, stating, “What Clients Say
… I highly recommend Karyn as a small business coach for
anyone who is truly ready to do the work of building a
successful business … Lisa Kramer, MSW, PCC.”6
•www.swanmountainconsulting.com, stating “Find out
why Swan Mountain Consulting Group is [the] consulting
firm of choice for the outdoor recreation industry!”7
Considering the difference between Applicant’s “business consulting services in
the field of international procurement and logistics, import and export, fulfillment
and warehouse consultations” and registrant’s advertising agency services, the
limited probative evidence submitted by the Examining Attorney is not persuasive to
show that purchasers would expect a common source for Applicant’s and registrant's
services and hence fails to establish a specific commercial relationship between such
services. At best, just three websites support the refusal. In view thereof, this du Pont
factor weighs against a finding of likelihood of confusion.

4 Feb. 8, 2016 Office Action, TSDR 30.
5 Feb. 8, 2016 Office Action, TSDR 48-50.
6 “MSW” is a “Master of Social Work.” See online version of Merriam Webster Dictionary
accessed at https://www.merriam-webster.com/dictionary/MSW. The Board may take judicial
notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co.,
213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including
online dictionaries that exist in printed format or have regular fixed editions. In re Red Bull
GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). June 30, 2016 Office Action, TSDR 24.
7 June 30, 2016 Office Action, TSDR 28.
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Because the Examining Attorney has not submitted sufficient evidence to
establish a relationship between the recitations of services, the refusal to register
under Section 2(d) cannot stand; the same consumers would not encounter the marks
under circumstances likely to give rise to the mistaken belief that the services
emanate from the same source.
Decision: The refusal to register under Section 2(d) of the Trademark Act is
reversed.