Overview

This case is a TTAB precedent.

In re Information Builders Inc. serves as a significant precedential decision regarding the weight assigned to integrated design elements within composite marks and the relative weakness of descriptive literal elements. The Applicant sought to register a composite mark incorporating a stylized design within the literal element "INFORMATION BUILDERS." Specifically, the first letter "O" in "INFORMATION" was replaced by a design of three slanted lines inside a broken circle.

The Board's analysis focused heavily on the visual impression of the marks, providing critical insights into how the Board treats "integrated" designs. Unlike cases where a literal element might dominate a design element, the design's placement within a word and its visual similarity to a cited mark led the Board to conclude that consumers would likely perceive a connection between the sources.

Background

The Applicant, Information Builders Inc., filed an application to register a composite mark incorporating the wording INFORMATION BUILDERS for:

• International Class 9: Computer software for distributing and managing information from databases, and for building decision support and business intelligence applications.
• International Class 42: Computer system design services for building information systems with data access and database management, and knowledge-based systems in a wide variety of fields.

The composite mark features the words "INFORMATION BUILDERS," with the first "O" in "INFORMATION" consisting of a design of three parallel slanted lines projecting through diametrically opposite openings in a broken circle.

The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, citing a likelihood of confusion with a registered mark. The cited registration covers various Class 9 and Class 42 goods and services, including computer software platforms for leveraging data to manage business operations, as well as software consultation, development, and implementation.

Furthermore, the Examining Attorney refused registration under Section 6(a) due to the Applicant's failure to provide a disclaimer in the standardized format. After the refusals were made final, the Applicant appealed to the TTAB.

How the Board Analyzed the DuPont Factors

Prior to addressing the DuPont factors, the Board tackled an evidentiary issue.

The Applicant included printouts of two third-party registrations as an exhibit in its brief to support an argument that the cited mark was weak. The Examining Attorney objected.

The Board sustained the objection and refused to consider the two registrations in its likelihood of confusion analysis. The Board emphasized that it is well-settled that the record in an ex parte proceeding must be complete prior to the appeal. Therefore, any evidentiary material attached to a brief that was not already made of record during examination is considered untimely and will not be evaluated.

DuPont #2: Similarity of the Goods and Services

In analyzing the second factor, the Board looked strictly at the identifications of goods and services set forth in the application and the cited registration. The Board noted that "the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods [or services] set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods."

For the Class 9 goods, the Board found that although the identifications are not identically worded (the Applicant’s broader computer software versus the Registrant’s computer software), they serve the same core function and purpose. Therefore, the goods are legally identical in part. For example, the Applicant's "software for building decision support" broadly encompasses the Registrant's software platforms.

Similarly, the Board found that the Registrant’s broadly worded Class 42 computer software design services are encompassed by the Applicant’s identified services. Thus, the Board found that the computer software design services are also legally identical in part.

This finding was further corroborated by website excerpts from both parties showing overlapping fields of use. The Applicant did not contest the legal identity of the respective goods and services, making this factor strongly favor a finding of likelihood of confusion.

DuPont #3: Similarity of Trade Channels and Classes of Purchasers

Following the determination that the goods and services were legally identical in part, the Board applied a legal presumption regarding their distribution. The Board stated that it "must presume that these goods and services travel through the same channels of trade and are offered or rendered to the same or overlapping classes of purchasers."

This presumption arises whenever goods or services are found to be identical or legally identical. Citing established precedent, the Board reaffirmed that where goods are legally identical, the channels of trade and classes of purchasers are considered the same. Because the identifications contained no limitations to suggest otherwise, the third factor weighed in favor of a finding of likelihood of confusion.

DuPont #4: Sophistication of Consumers

The Applicant argued that its target consumers were "information technology professionals" who possess the sophistication necessary to differentiate between sources, even when marks are similar. The Board, however, found this argument lacking in evidentiary support. It noted that the identifications of goods and services were not limited to expert purchasers. While IT professionals might be among the consumers, the Board observed that "there also may be others who are not proficient in information technology who may purchase computer-related goods and services on behalf of their businesses."

The Board emphasized that where the purchaser class is mixed, the standard for analysis must be the "least sophisticated potential purchasers." Furthermore, the Board noted that even sophisticated purchasers are not immune to confusion, stating that "human memories even of discriminating purchasers... are not infallible."

The Board acknowledged that given the nature of software and system design services, some degree of purchasing care might be exercised. However, without evidence regarding the specific conditions of sale or purchasing processes, the Board found this factor only slightly favored a finding that confusion was not likely, and it was outweighed by the similarities in the marks and goods.

DuPont #1: Similarity of the Marks

The Board's consideration of the first factor involved an assessment of the marks in their entireties regarding appearance, sound, connotation, and commercial impression. The Examining Attorney argued that the design of the letter "O" in the Applicant's mark was "highly similar to the entirety of Registrant’s mark," describing both as plain line circles broken in the upper right and lower left with three parallel bars.

The Applicant contended that "INFORMATION BUILDERS" was the dominant portion of its mark and would receive greater consumer attention. It also pointed to specific visual differences, such as the fact that in the cited mark, the center bar does not approach the circle arc, whereas in the Applicant's mark, the bars extend through the openings to different degrees. The Applicant also argued that the thickness and alignment of the bars differed.

The Board rejected these arguments, noting that the proper test is the overall general impression rather than a side-by-side comparison. The Board found that the two designs shared "substantial visual similarities," specifically the broken circle with three parallel lines emanating from the top right to the bottom left. The Board further determined that while literal portions usually carry more weight, this rule was "inapplicable under these circumstances" because the design was centrally placed and formed an "integral part of the term INFORMATION." Consumers would have to recognize that the design functioned as the letter "O," thereby making the design a focal point of the visual experience.

Additionally, the Board noted that the words "INFORMATION" and "BUILDERS" were merely descriptive and had been disclaimed by the Applicant. Under Section 2(d) analysis, disclaimed, generic, or descriptive matter generally has less significance. The Board concluded that the inclusion of these descriptive terms was insufficient to distinguish the marks.

The Board also specifically rejected the Applicant's assertion that the cited mark is weak. Specifically, the Board found that five of the seven third-party registrations submitted by the Applicant in support of its position do not identify goods and services related to those at issue. Therefore, they have no bearing on the scope of protection accorded to the Registrant’s design mark. Although the remaining two registrations involve computer goods and services arguably related to those identified in the cited registration, neither mark is as close to the cited mark as the design in the Applicant’s mark. The Board stated:

In sum, we find that the record does not demonstrate that the cited mark has been diluted by third-party registrations. Rather, we find that, based on the record, the Registrant’s mark is inherently distinctive for the goods and services identified in the cited registration and accord it the normal scope of protection to which inherently distinctive marks are entitled. 

Because the cited mark was inherently distinctive and the Applicant provided no evidence of its commercial weakness, the Board found the marks sufficiently similar to favor a finding of likelihood of confusion.

DuPont #13: Other Established Facts

The Applicant claimed ownership of four prior registrations as an established fact probative of the effect of use. Specifically, the Applicant introduced four prior registrations, all containing the words "INFORMATION BUILDERS," to argue that its newly applied-for mark should be considered "unitary."

The Board found this argument unpersuasive and concluded that these prior registrations held no probative value on the likelihood of confusion issue. In particular, three of the four prior registrations did not include any design element. Because the Section 2(d) refusal was largely based on the visual similarities between the stylized letter "O" in the applied-for mark and the cited mark, the Board found these text-only registrations irrelevant.

As for the one prior registration that included a design element, the Board ruled that its design was "sufficiently dissimilar" to the cited mark. That prior registration featured a solid circle with five parallel lines of varying lengths in negative space emanating from the lower left. In contrast, the cited mark is a plain line circle, broken in the upper right and lower left, with three stacked parallel lines inside, a design the Board noted is nearly identical to the stylized "O" in the newly applied-for mark.

In conclusion, the Board found that this factor did not mitigate the likelihood of confusion.

Board’s Decision

The TTAB affirmed the refusal to register the Applicant’s mark under Section 2(d) of the Trademark Act, finding a likelihood of confusion with the cited registration.

The Board concluded that the goods and services were legally identical in part and that the marks, when viewed in their entireties, were sufficiently similar in visual format and commercial impression. The Board emphasized that the descriptive literal elements did not overcome the confusion created by the integrated design element.

The Board also affirmed the refusal based on the Applicant’s failure to comply with the requirement to provide a disclaimer in the standardized format.