Law & Practice

UNITED STATES: INFORMATION BUILDERS Barred Only Due to Design

Published: June 15, 2020

Linda Yang Taylor English Duma LLP Atlanta, Georgia, USA INTA Bulletins Committee - North America Subcommittee

The Trademark Trial and Appeal Board (Board) on April 30, 2020, affirmed the refusal to register the mark INFORMATION BUILDERS & Design (shown below left) for computer software and related design services in Classes 9 and 42. Among its findings, the Board deemed it confusingly similar to a design mark, Registration No. 3707266 (shown below right), for overlapping software and services. The Board indicated that the “O” design was a salient and distinctive feature of the applicant’s mark and thus deserved “due consideration” even if it were to assume that the wording “Information Builders” constituted the dominant portion of the mark. In re Information Builders Inc., 2020 USPQ2d 10444 (TTAB 2020).

 

To assess the likelihood of confusion, the Board considered several DuPont factors (a reference to the established test of determining a likelihood of confusion): similarities between the marks, similarities of trade channels and classes of purchasers, sophistications of purchasers, and similarities between the goods and services.

The Board first compared the parties’ goods and services. Although not identically worded, the Board found that they overlapped and were legally identical in part. This conclusion also allowed the Board to presume the goods and services traveled through the same trade channels and were marketed toward the same or overlapping purchasers. As a result, these two DuPont factors favored a finding of likelihood of confusion.

The applicant argued that the sophistication of its target customers—information technology professionals—would obviate any likelihood of confusion. However, the Board recognized that, due to the lack of limitation in either identification of the applicant’s goods and services, there might also be unsophisticated customers. Nonetheless, the Board still found this DuPont factor slightly in favor of the applicant after considering that customers may exercise some degree of care due to the unique nature of computer software goods and services.

The Board then considered the similarity between the marks. The applicant argued that the literal portion “Information Builders” should dominate its mark and that a stylization difference also existed between the stylized letter O in its mark and the registered mark. But the Board was unmoved.

According to the Board, even if it were to assume the wording “Information Builders” dominated the applicant’s mark, the letter O design was nonetheless “a salient, distinctive feature of Applicant’s mark which must be given due consideration.” The Board noted the two designs had substantial visual similarities and that consumers who usually rely on general rather than specific impressions might mistakenly believe that the registered mark was being used as a part of the applicant’s mark. Moreover, because the “O” design was centrally placed in the mark and formed an integral part of “Information,” the general tendency that wording elements weigh more in a likelihood of confusion analysis was inapplicable here. The Board thus found that the marks were similar in appearance and highly similar in commercial impression.

Accordingly, the Board affirmed the Section 2(d) refusal.

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