Worknow-ledge LLC

Trademark Trial and Appeal Board

Jan 8, 2004

No. 75901583 (T.T.A.B. Jan. 8, 2004)

Hearing: Mailed:
October 15, 2003 January 8, 2004
Paper Nos. 19 & 20
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Worknowledge LLC
________
Serial Nos. 75901582 and 75901583
_______
Jay H. Begler and Janel M. Calliham of Buchanan Ingersoll
PC for Worknowledge LLC.
Curtis W. French, Trademark Examining Attorney, Law Office
115 (Tomas Vlcek, Managing Attorney).
_______
Before Cissel, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Worknowledge LLC seeks registration on the Principal
Register of the marks WORKNOWLEDGE and WORKNOWLEDGE.COM,
each for services recited as follows:
“Business management consultation services,
namely, the collection and analysis of data
based upon employees[’] interaction with
knowledge materials1 delivered to them and
1 During examination, the Trademark Examining Attorney
suggested adoption of the term “training materials” rather than
“knowledge materials.” In its brief, applicant contends it had
earlier filed an amendment complying with the requirements of the
Trademark Examining Attorney, but retained the term “knowledge
materials.” In his brief, the Trademark Examining Attorney notes
that such an amendment was never made part of the application
file, but that he accepted applicant’s recitation of services as
written out in applicant’s appeal brief. Hence, the Office’s
records will be amended to reflect this minor change in language.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial Nos. 75901582 and 75901583
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the presentation of such data and
conclusions based thereon to employers,
employees and third parties,” in
International Class 35;
and
“Educational services, namely, conducting
business management seminars in the fields
of law, medicine, economics, finance,
business services, telecommunications,
manufacturing, real-estate, retail and
wholesale sales, government, non-profit
organizations, marketing, advertising, data
management, utilization and/or manipulation
of software and hardware, technology and
high technology,” in International Class 41.2
These cases are before the Board on appeal from the
final refusal to register the marks in each application
based upon Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d). Specifically, the Trademark Examining Attorney
has contended that applicant’s marks, if used in connection
with the recited services, would so resemble the mark
WORKING KNOWLEDGE registered for services identified as
“business consultation and business research in the fields
of management and management training, development of
training materials, course curricula and materials, and
thinking and writing skills,” in International Class 35,3 as
2 Application Serial Nos. 75901582 and 75901583 were filed on
January 27, 2000 based upon applicant’s allegations of a bona
fide intention to use these marks in commerce.
3 Reg. No. 1826569 issued on March 15, 1994; Section 8
affidavit accepted and Section 15 affidavit acknowledged.
Serial Nos. 75901582 and 75901583
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to be likely to cause confusion, to cause mistake or to
deceive.
Applicant and the Trademark Examining Attorney fully
briefed each appeal. The marks, the legal issues, the
procedural histories and overall records are closely
related in these two appeals. Accordingly, these cases
were consolidated for a single oral hearing before this
panel of the Board, and we have chosen to issue a single
opinion for these two applications to register, affirming
both refusals to register.
Applicant argues that its marks are distinctly
different from the cited mark; that given applicant’s
“survey services” in International Class 35, and in light
of its emphasis on “knowledge management” in International
Class 41, both services are quite different from
registrant’s enumerated services; and, finally, that
applicant’s consumers are “a highly sophisticated and
educated audience.” (Applicant’s reply brief, p. 2)
In turn, the Trademark Examining Attorney contends
that applicant’s marks are highly similar to registrant’s
mark as to appearance, sound and meaning, and that the
services are closely related.
Our determination under Section 2(d) is based upon an
analysis of all of the facts in evidence that are relevant
Serial Nos. 75901582 and 75901583
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to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the relationship of the
goods or services. Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to the du Pont factor focusing on the
relationship of the services as described in the
applications and in the cited registration.
We note that the overarching term for applicant’s
services in International Class 35 is “Business management
consultation services.” Applicant, however, focuses on the
limiting wording that follows, i.e., the “collection and
analysis of data,” and highlights applicant’s focus on
“knowledge workers,” in an attempt to differentiate its
services from those of the cited registrant. However, the
involved services are still business management
consultation services and registrant also renders business
consultation services. Moreover, we find applicant’s
“collection and analysis of data” to be encompassed within
registrant’s “research” (a broader term), so that when
these specific services are both rendered as business
consultation services, there is overlap.
Serial Nos. 75901582 and 75901583
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As to the nature of applicant’s services in
International Class 41, applicant argues that applicant is
not providing just any form of “business management
seminars” but is involved in consulting with companies
heavy with “knowledge workers”:
At the core of the second set of services is
Knowledge Management. While there are
varying definitions of Knowledge Management,
we believe the following explanation is
acceptable:
Knowledge assets are the knowledge
regarding markets, products, technologies
and organizations, that a business owns or
needs to own and which enable its business
processes to generate profits, add value,
etc.
Knowledge management is not only about
managing these knowledge assets but
managing the processes that act upon the
assets. These processes include:
developing knowledge; preserving knowledge;
using knowledge, and sharing knowledge.
Therefore, Knowledge management involves
the identification and analysis of
available and required knowledge assets and
knowledge asset related processes, and the
subsequent planning and control of actions
to develop both the assets and the
processes so as to fulfil (sic)
organizational objectives.4
Applicant’s complete recitation of services in
International Class 41 makes it clear that its management
seminars are focused on knowledge-intensive businesses that
place a premium on information and technology and whose
employees are concentrated in knowledge-based occupations.
4 Applicant’s appeal brief, unnumbered page 4. The quoted
material appears in applicant’s brief without citation.
Serial Nos. 75901582 and 75901583
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In essence, applicant argues that its emphasis on
“knowledge management” services affects the overall thrust
of its management seminars. However, our focus cannot be
on particular philosophies employed by various business
consultants and/or those providing management seminars when
making likelihood of confusion determinations under the
Lanham Act (e.g., as to the nature of the services
provided, the channels of trade through which they are
offered or the details of the audiences targeted). Rather,
our determination must be made based upon the recitations
of services contained in the involved applications or
registrations.
Accordingly, with regard to applicant’s International
Class 41 services, we note that these include “conducting
business management seminars,” and registrant’s services
include the “development of training materials.” Hence, we
find registrant’s services and applicant’s International
Class 41 services to be related.
At the oral hearing, applicant’s counsel retreated
somewhat from the argument that the focus of applicant’s
services on “Knowledge management” provides fundamental
support for finding there is a difference in the involved
services, and even conceded that there may well be some
“overlap” in the recited services. Certainly, these
Serial Nos. 75901582 and 75901583
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recitations of services are not limited in any way as to
the size of businesses targeted by applicant or by
registrant. As a result, we must presume that the
population of prospective customers ranges from small,
start-up companies all the way to the largest of the
Fortune 100 firms; that in offering these services, both
applicant and registrant rely upon “research” (or the
“collection of data”); and that the enumerated training (or
seminars) could be offered online and/or in a bricks-and-
mortar location. Accordingly, taking the plain meanings of
the words in these recitations, and in the absence of any
limitation as to channels of trade or classes of
prospective customers, we agree with the Trademark
Examining Attorney that there is overlap in some of the
involved services, and that others are closely related.
We turn then to the similarity or dissimilarity of the
marks in their entireties as to look, sound and
connotation.
As for appearance, applicant correctly points out that
WORKNOWLEDGE is a single word while WORKING KNOWLEDGE is
two words. In turn, the Trademark Examining Attorney notes
that both are combinations of some form of the words WORK
and KNOWLEDGE, and appear in the same order.
Serial Nos. 75901582 and 75901583
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As noted by the Trademark Examining Attorney, the test
of likelihood of confusion is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks create the same overall
commercial impression. Visual Information Institute, Inc.
v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980). We
must take into consideration the recollection of the
average purchaser, who normally retains a general, rather
than specific, impression of trademarks. Chemtron Corp. v.
Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979).
Using this standard, we find that WORKNOWLEDGE and WORKING
KNOWLEDGE are similar enough in appearance to support a
finding of likelihood of confusion when used in connection
with the same and/or closely related services.
As to sound, applicant argues that the mark in the
cited registration, WORKING KNOWLEDGE, has a distinctive
“ing” sound that is clearly absent in applicant’s marks,
WORKNOWLEDGE and WORKNOWLEDGE.COM. In turn, the Trademark
Examining Attorney contends that when registrant’s mark and
applicant’s marks are considered in their entireties, there
exists only a slight difference in sound. See In re
Energy Telecommunications & Electrical Association, 222
USPQ 350 (TTAB 1983) [marks were INTELLECT v. ENTELEC].
Again, we agree with the Trademark Examining Attorney.
Serial Nos. 75901582 and 75901583
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Given its placement, the “ing” syllable is arguably the
least distinctive portion of registrant’s mark
linguistically, and the absence of this internal syllable
in applicant’s marks may not be easily discernible to
customers familiar with registrant’s mark.
Finally, as to connotation, applicant argues that
WORKING KNOWLEDGE suggests a high level of competence in a
particular field while WORKNOWLEDGE suggests the
assimilation of knowledge related to one’s work. By
contrast, the Trademark Examining Attorney contends that
both terms conjure up the meaning of the basic knowledge to
make something work.
Contrary to applicant’s interpretation of the likely
connotation of registrant’s mark, we find that the term
“working knowledge” suggests something less than a high
level of competence.5 In any case, registrant’s mark and
both of applicant’s marks connote a body of information or
familiarity with facts gained through past experience.
On any of the trilogy of comparing the marks (sight,
sound and meaning), the “.COM” portion of applicant’s
WORKNOWLEDGE.COM mark represents applicant’s top level
5 Working: … 15. Adequate for usual or customary needs; a
working knowledge of Spanish … The Random House Dictionary of
the English Language, Second Edition Unabridged (1987).
Serial Nos. 75901582 and 75901583
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domain (TLD) name. The addition of this TLD in one of
applicant’s marks does not alter its overall commercial
impression, as it has no source-indicating function. See
In re Martin Container Inc., 65 USPQ2d 1058 (TTAB 2002)
(the Board held the term CONTAINER.COM incapable of
distinguishing applicant's services and hence unregistrable
on the Supplemental Register); and In re Eilberg, 49 USPQ2d
1955 (TTAB 1998) (the Board held the term WWW.EILBERG.COM
incapable of distinguishing applicant's services and hence
unregistrable on the Supplemental Register).
Hence, we agree with the Trademark Examining Attorney
that when these marks are considered in their entireties,
the commercial impressions of applicant’s marks,
WORKNOWLEDGE and WORKNOWLEDGE.COM, are highly similar to
that of the registered mark, WORKING KNOWLEDGE.
We turn next to the du Pont factor focusing on the
conditions under which and buyers to whom sales are made.
Applicant urges us to find that decisions about seeking out
vendors of consulting services are made by high-level,
sophisticated business people making careful purchasing
decisions, and that both the procurement and implementation
of the services involves detailed interaction between the
vendor and customer that would eliminate any doubt as to
the exact source of the services.
Serial Nos. 75901582 and 75901583
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Based on the record before us, we must consider these
respective services to be available at a wide range of
prices to many different-sized organizations, including
small, start-up companies. These latter companies may well
not be sophisticated. Moreover, knowledge and
sophistication with respect to particular services does not
necessarily translate into the ability to avoid being
confused by the use of similar marks in connection with
closely related services. Accordingly, even careful
consumers may be confused as to source or sponsorship of
the involved services when marketed to the same class of
purchasers under similar marks. See Wincharger Corporation
v. Rinco, Inc., 297 F.2d 261, 132 USPQ 289 (CCPA 1962); In
re Total Quality Group Inc., 51 USPQ2d 1474 (TTAB 1999);
and In re Decombe, 9 USPQ2d 1812 (TTAB 1988).
We note that there is nothing in the record to suggest
that the cited mark is weak in any way. Hence, we presume
it to be an inherently distinctive mark as applied to the
recited services. Even weak marks are entitled to
protection against registration by a subsequent user of the
same or similar mark for the same or related goods.6
6 We specifically note that the cited registered mark is on
the Principal Register and it is, of course, entitled to the
statutory presumptions under Section 7(b) of the Lanham Act.
Serial Nos. 75901582 and 75901583
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In conclusion, we find that these marks are quite
similar as to overall commercial impression and that the
services are the same or closely related. Although it
works in applicant’s favor that many of the purchasers of
these services will tend to be fairly sophisticated
business managers, this factor alone is not sufficient to
counter the fact that the two major considerations (the
similarities between the marks and the relationship between
the services) support a finding of a likelihood of
confusion.
Finally, while we have no doubt about the likelihood
of confusion in this case, we note that if there were any
doubt as to whether there is a likelihood of confusion,
that doubt must be resolved in favor of the prior
registrant. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687 (Fed. Cir. 1993); and In re Hyper Shoppes (Ohio), Inc.
837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusals to register under Section 2(d)
of the Trademark Act are hereby affirmed.