Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE BENCHMARK VALUATION CONSULTANTS, INC.
Serial No. 506,268
April 19, 1988
Buell, Ziesenheim, Beck & Alstadt for applicant.
Trademark Examining Attorney
Law Office III
(Myra K. Kurzbard, Managing Attorney)
Before Sams, Krugman and Cissel
Opinion by Cissel
Applicant applied to register the term 'BENCHMARK' for 'consulting services in the field of financial evaluations and providing financial evaluation services for others 'in Class 36. [FN1] Registration was refused under Section 2(d) of the Act on the grounds that applicant's mark, as used with applicant's services, so resembles the mark, 'BENCHMARK,' as registered for 'providing financial and investment advisory services,' [FN2] that confusion is likely. When the refusal was made final applicant filed this appeal.
We agree with the Examining Attorney that confusion is likely because the marks are identical and the services, as recited in the registration and application, respectively, are closely related, if not overlapping.
Applicant contends that confusion is unlikely because the services of applicant and registrant are in 'entirely unrelated different and non-conflicting fields of services.' (Brief, p. 2). In support of its position applicant argues that its own services are 'the valuation of business enterprises and their securities,' whereas registrant provides 'investment advisor services,' which 'require registration as an investment advisor'. (Brief, p. 2). Applicant contends that these are distinctly different services which are offered to discriminating customers who recognize the significant differences between them and would not be confused.
Additionally, applicant argues that registrant has consented to applicant's use of the mark. Applicant made of record a copy of a letter it received from registrant shortly after applicant began using the mark. The pertinent portion of the letter is reproduced below:
Having noted your announcement ads, I've been advised to let you know that I own the trademark rights to the Benchmark name as it relates to investment services. While I do some evaluation work myself, I do not employ the Benchmark name in that connection and see no cause for conflict. My purpose in writing is simply to make you aware of the circumstances in case either of us contemplates a change in the nature of our businesses.
Applicant's argument that its services are significantly different from those services recited in the cited registration is not supported by the record. There is no evidence concerning the specific services rendered by either applicant or registrant and nothing supporting applicant's claim that the services of registrant 'require registration as an investment advisor' with anybody. In any event, we must evaluate the relationship between the services based on the plain, unrestricted language in the application and the registration. There is no evidence that we should attribute to these words any meanings other than what their ordinary dictionary meanings would convey. Applicant's financial evaluation services for others are clearly encompassed within registrant's financial advisory services. Even applicant's unsupported argument admits applicant evaluates business enterprises as well as their securities. The registrant's investment advisory services surely would be facilitated by an accurate evaluation of the various assets as well as the securities of a particular business. To properly advise would seem to require evaluation. It is quite reasonable for a single business to render both evaluation services and advisory services which are predicated on its evaluation, including security evaluation.
*2 In the above-quoted letter from registrant to applicant registrant states that registrant does in fact render valuation services, albeit not under the 'BENCHMARK name.' In light of the fact that registrant does render both types of services, whatever the subtle distinctions between them may be, it would not be unreasonable to expect that when one mark is used to identify both services, potential customers would expect a single business to be the source of both services.
The letter from registrant apparently acquiescing to applicant's use of its mark does not convince us that confusion is unlikely. While we are not unmindful of the holdings by our reviewing court concerning the significance of consent agreements in connection with the issue of likelihood of confusion [Bongrain International (American) Corp. v. Delice de France, Inc., 811 F.2d 1479, 1 USPQ 2d 1775 (Fed. Cir. 1987); In re N.A.D., Inc., 754 F.2d 996, 224 USPQ 969 (Fed. Cir. 1985); and most recently in The Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 9 _____ F.2d ____, ____ USPQ _____, (Fed. Cir. March 23, 1988), we nonetheless conclude that confusion is likely in the case before us based on consideration of all the facts. The court noted in the Amalgamated case, supra, that 'several factors play pivotal roles' in assessing likelihood of confusion, among them whether the parties whose marks are in question have agreed to memorialize methods of avoiding confusion. Quoting from In re E. I. duPont De Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), the court noted that the weight to be given more detailed agreements should be substantial.
The letter from registrant in the case before us is hardly a detailed agreement. It is not even an agreement made by two parties together. The letter in the instant case does not appear to be the result the sort of arms-length negotiations referred to in the N.A.D. case. Registrant here did not even specifically agree to applicant's registration of the mark, much less 'memorialize methods of avoiding confusion.'
The court has consistently stated that a consent is only 'one factor to be taken into account along with all of the other relevant circumstances bearing on the likelihood of confusion.' Dynamics Research Corp. v. Langenau Mfg. Co., 704 F.2d 1575, 217 USPQ 649 (Fed. Cir. 1983) cited in N.A.D., supra, at 971; In re Mastic, _____ F.2d _____, 4 USPQ 2d 1292, 1294 (Fed. Cir. 1988). In the case at hand we cannot find confusion likely unless there exists a heretofore unrecognized and unstated per se rule that likelihood of confusion cannot be found if there exists a 'consent' by a registrant, even if it is merely the most general recognition of use by another, no matter how the rest of the factual circumstances surrounding the respective marks and their use by the registrant and the applicant relate to the other factors to be considered in determining likelihood of confusion enumerated in the duPont case.
*3 There is virtually no evidence as to the facts surrounding registrant's acknowledgment of applicant's use of its mark. The recognition by registrant of applicant's use and the apparent willingness of registrant to stand by without taking legal action may well have been predicated on a misapprehension of the precise nature of applicant's actual services as rendered at that time, or an accurate understanding of more restricted, limited evaluation services in which applicant may have been engaged at that time, that is, services more limited in scope than those in connection with which applicant now seeks to register its mark. Registrant's recognition of applicant's use may have been simply a prudent business decision at the time the letter was written not to get involved in an expensive legal dispute with registrant when in fact there was no confusion and hence no actual damage to registrant at that time. Clearly, though, the letter is not a detailed, formal memorialization of an agreement by two businesses concerning how the two businesses will avoid the likelihood of confusion.
Juxtaposed to the letter are the facts reflected in the registration and the application, respectively. Here, as opposed to the situation in the Bongrain, N.A.D., and Amalgamated cases, the mark of applicant is identical to the registered mark. There is no evidence concerning the sophistication of the clients of either business in question. The recited services, while not described in identical terminology, are so closely related that they overlap. At a minimum, in light of the fact that registrant apparently was actually performing some of the services identified in the application, it would not be unexpected for a single entity to do so. If the same mark is used to identify both activities, confusion is clearly likely to result.
Evaluation of all the relevant factors on which there is evidence before us leads us to conclude that confusion in this case is likely.
Decision: The refusal to register is affirmed.
J. D. Sams
G. D. Krugman
R. F. Cissel
Members, Trademark Trial and Appeal Board
FN1. S.N. 506,268, filed Oct. 29, 1984, claiming first use on July 9, 1984.
May 20, 1988
Euma S. Brown
The Board's decision of April 19, 1988 is amended as follows:
On page 6, line 1 is amended by substituting 'unlikely' for 'likely'.