BizMacs, Inc.

Trademark Trial and Appeal Board

Sep 3, 2014

No. 85652874 (T.T.A.B. Sep. 3, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
September 3, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re BizMacs, Inc.
_____

Serial Nos. 85652874, 85652879, 85652890 and 85652893
_____

Matthew H. Swyers of The Trademark Company, PLLC for BizMacs, Inc.

C. Skye Young, Trademark Examining Attorney, Law Office 117 (Hellen M. Bryan-
Johnson, Managing Attorney).
_____

Before Wellington, Adlin and Masiello, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
BizMacs, Inc. (“Applicant”) seeks registration of the marks MAC SUPPORT
AT WORK (with SUPPORT AT WORK disclaimed), MAC SUPPORT AT HOME
(with SUPPORT AT HOME disclaimed), BIZMACS and HOMEMACS, all in
standard characters, for “IT consulting services.”1 The Examining Attorney refused
registration of all four marks under Section 2(d) of the Trademark Act of 1946, 15

1 Application Serial Nos. 85652874, 85652893, 85652879 and 85652890, respectively, each
filed June 15, 2012. The application to register MAC SUPPORT AT HOME was filed based
on an intent to use the mark in commerce under Section 1(b) of the Trademark Act, while
the other three applications were filed based on use under Section 1(a) of the Act.
Serial Nos. 85652874, 85652879, 85652890 and 85652893
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U.S.C. § 1052(d), on the ground that Applicant’s marks so resemble five of Apple,
Inc.’s previously-registered marks, as set forth below:
MAC, in typed form, for “computers; computer printers;
computer monitors; computer peripherals; computer
operating system software; electronic mail and message
delivery apparatus; multimedia authoring computer
programs for use in the fields of business, government,
education, and science; CD-ROM drives,” Registration No.
1964391 (the “΄391 Registration”);

MAC, in typed form, for “computer storage media, namely
a full line of pre-recorded computer programs,”
Registration No. 1968965 (the “΄965 Registration”);

MAC OS, in typed form and with OS disclaimed, for
“computers, computer operating system software, and a
full line of prerecorded computer programs,” Registration
No. 2000282 (the “΄282 Registration”);

MAC, in typed form, for “leasing access time to computer
databases dealing with articles of general interest and
computer services, namely, providing information by
means of a global computer information network dealing
with articles of general interest,” Registration No.
2076153 (the “΄153 Registration”); and

MAC.COM, in typed form, for “telecommunication
services, namely, electronic transmission of data, images
and documents via local and global computer networks;
electronic mail services; electronic retrieval of data,
images and documents,” Registration No. 2585165 (the
“΄165 Registration”)2

that use of Applicant’s marks in connection with Applicant’s services is likely to
cause confusion or mistake or to deceive. After the refusals became final, Applicant

2 Issued March 26, April 16, September 10 and July 9, 1996, and June 25, 2002,
respectively. Each registration has been renewed.
Serial Nos. 85652874, 85652879, 85652890 and 85652893
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appealed, its requests for reconsideration were denied and the Board consolidated
the appeals.3 Applicant and the Examining Attorney filed briefs.
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative
facts in evidence that are relevant 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, 567
(CCPA 1973); see also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods and services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”).
Turning first to the goods and services, they need not be identical or even
competitive in order to support a finding of likelihood of confusion. It is enough that
the goods and services are related in some manner or that the circumstances
surrounding their marketing are such that they would be likely to be seen by the
same persons under circumstances which could give rise, because of the marks
used, to a mistaken belief that Applicant’s services and Registrant’s goods and
services originate from or are in some way associated with the same source or that
there is an association between the sources of the goods and services. Hilson

3 References to the record are to the file for application Serial No. 85652874, unless
otherwise indicated.
Serial Nos. 85652874, 85652879, 85652890 and 85652893
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Research, Inc. v. Society for Human Resource Management, 27 USPQ2d 1423, 1432
(TTAB 1993); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); Schering
Corp. v. Alza Corp., 207 USPQ 504, 507 (TTAB 1980); Oxford Pendaflex Corp. v.
Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978); In re International Telephone
& Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The issue is not whether
purchasers would confuse the goods and services, but rather whether there is a
likelihood of confusion as to the source of the goods and services. In re Rexel Inc.,
223 USPQ 830, 832 (TTAB 1984).
In this case, Applicant’s “IT consulting services” are at least related to
Registrant’s “computers,” “computer peripherals,” “computer operating system
software,” “computer programs” and “software.” In fact, IT (information technology)
consulting services by definition relate to computers, their peripherals and
computer software.
The Examining Attorney has introduced evidence that the same sources offer
under the same mark both IT consulting services and one or more of the goods or
services identified in the cited registrations. For example:
WOVENWARE WE BUILD SOFTWARE & Design (Reg.
No. 3618778) is registered for “IT consulting services” on
the one hand and computer software on the other.

PMOLINK (Reg. No. 3707953) is registered for “IT
consulting services” on the one hand and computer
software on the other.

SAN SOLUTIONS & Design (Reg. No. 4047378) is
registered for “IT consulting services” on the one hand
and computer software on the other.

Serial Nos. 85652874, 85652879, 85652890 and 85652893
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GABEWIRE (Reg. No. 4077552) is registered for “IT
consulting services” on the one hand and “Computer
operating software” on the other.

ACCESSAGILITY (Reg. No. 3867078) is registered for “IT
consulting services” on the one hand and computer
software on the other.

COREFIRE CF & Design (Reg. No. 4196779) is registered
for “IT consulting services” on the one hand and computer
software and “Electronic transmission of data …” on the
other.

CONTINUUM ANALYTICS & Design (Reg. No. 4325817)
is registered for “IT consulting services” on the one hand
and computer software on the other.

CLOUDBOLT (Reg. No. 4318943) is registered for “IT
consulting services” on the one hand and computer
software on the other.

IGNIFY (Reg. No. 4316429) is registered for “IT
consulting services” on the one hand and computer
software on the other.

ITS (Stylized) (Reg. No. 4222056) is registered for “IT
consulting services” on the one hand and computer
software and “Provision of access to data or documents
stored electronically in central files for remote
consultation” on the other.

Office Actions of October 9, 2012 and May 5, 2013. “Third-party registrations which
cover a number of differing goods and/or services, and which are based on use in
commerce, although not evidence that the marks shown therein are in use on a
commercial scale or that the public is familiar with them, may nevertheless have
some probative value to the extent that they may serve to suggest that such goods
or services are of a type which may emanate from a single source.” See, In re Mucky
Serial Nos. 85652874, 85652879, 85652890 and 85652893
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Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1998); see also In re Davey
Prods. Pty. Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009).
More importantly, Applicant’s marks and specimens of use reveal that
Applicant’s IT consulting services are provided to owners of Registrant’s MAC
computers. Specimen for MAC SUPPORT AT WORK (“invest in the most efficient
and cost effective business Mac support available in the Bay Area. BizMacs has
been offering enterprise-level Macintosh4 based technical support services to some
of the largest and most demanding fortune 500 companies in the entire Bay Area …
BizMacs has the technical resources, experienced Apple® Certified technicians, and
the support know-how …”). Furthermore, printouts from Applicant’s website reveal
that Applicant provides “Help Desk” services to owners of Registrant’s MAC
computers, including phone support and a Web-based help desk. Office Action of
October 9, 2012 (printout from “bizmacs.com”). In other words, Applicant assists its
customers, who are by definition also Registrant’s customers, in using and resolving
issues with the computers and related products identified in the cited registrations.
Where, as here, goods or services are complementary, they may be found to be
related. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289,
1290 (Fed. Cir. 1984); General Mills, Inc. v. Fage Dairy Processing Industry SA, 100
USPQ2d 1584, 1597-98 (TTAB 2011), judgment set aside on other grounds, 2014 WL
343267 (TTAB 2014); In re Toshiba Medical Systems Corp., 91 USPQ2d 1266, 1272
(TTAB 2009).

4 Macintosh computers are known as MACs. Office Action of June 6, 2013 (printouts from
“jimmymacsupport.com” and “macsupportx.com”).
Serial Nos. 85652874, 85652879, 85652890 and 85652893
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Furthermore, Applicant offers to “build” and “support” computer servers,
including “Mail servers” and “Web servers,” and to assist with backing up data,
networking and software procurement. Office Action of October 9, 2012 (printout
from “bizmacs.com”). This reveals a close relationship between Applicant’s IT
consulting services and not just Registrant’s “computers,” but also Registrant’s
“electronic mail and message delivery apparatus,” “software,” “leasing access time
to computer databases,” “telecommunication services, namely, electronic
transmission of data, images and documents,” “electronic mail services” and
“electronic storage of data, images and documents.” Applicant’s inclusion of
Registrant’s cited mark MAC in its own mark and promotion of its “Apple®
Certified technicians” reveals just how close the relationship is between Applicant’s
services and Registrant’s goods and services. Applicant essentially concedes the
point. Applicant’s Appeal Brief at 10 (“it is apparent that although the services of
the Applicant are related to the goods of the registrant, they are distinct in that
there is no evidence of record that would establish that the registrant has ever
offered or intends to offer services of the kind offered by the Applicant”).5 This du
Pont factor weighs heavily in favor of a finding of likelihood of confusion.

5 Applicant also argues that consumers “are able to differentiate” between Registrant’s
“product itself and independent service companies for the same.” Applicant’s Appeal Brief
at 10. The record reveals, however, that Registrant promotes its own network of IT
consulting service providers and that Registrant provides support for its own products.
Office Action of July 6, 2013 Exs. B and C (printouts from “consultants.apple.com” and
“apple.com”). Although the Examining Attorney did not originally refuse registration of
Applicant’s marks BIZMACS and HOMEMACS, Registrant filed a Letter of Protest against
these applications, following which the Examining Attorney issued the Section 2(d) refusals
on appeal.
Serial Nos. 85652874, 85652879, 85652890 and 85652893
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As for channels of trade, neither Applicant’s nor Registrant’s identifications
of goods and services include any limitations as to channels of trade, and therefore
Applicant’s and Registrants’ goods and services are presumed to move in all normal
channels of trade for those goods and services and to be available to all classes of
consumers. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs, LLC, 80 USPQ2d 1370,
1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). In this case,
those channels of trade include Applicant’s and Registrant’s websites. Office Action
Response of April 8, 2013 Ex. 4 (Affidavit of Ron James (“James Aff.”) ¶¶ 6, 8).6
Perhaps more importantly, as revealed by Applicant’s marks and website, Applicant
specifically targets consumers who purchase Registrant’s MAC computers and other
products, and therefore the consumers of Applicant’s and Registrant’s products and
services are by definition identical. See James Aff. ¶ 4 (“The Macintosh, Mac, and
Apple brand names are the same that are referenced in our mark ….). This factor
also weighs in favor of finding a likelihood of confusion.7
Turning to the marks, we must compare them “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). That is,

6 While Mr. James is unidentified, he testifies that “[i]n the course and scope of my work I
have become familiar with the services offered” under Applicant’s mark, and we therefore
assume that he is somehow affiliated with Applicant.
7 To the extent that Applicant argues that there is no likelihood of confusion because its
services are offered only in the San Francisco Bay area, this is irrelevant because Applicant
seeks a geographically unrestricted registration.
Serial Nos. 85652874, 85652879, 85652890 and 85652893
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we may not dissect the marks into their various components. In re Nat’l Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint
Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981). At the
same time, however, one feature of a mark may be more significant than another,
and it is not improper to give more weight to the dominant feature of a mark in
determining its commercial impression. In re Nat’l. Data Corp., 224 USPQ at 751
(“There is nothing improper in stating that, for rational reasons, more or less weight
has been given to a particular feature of a mark, provided the ultimate conclusion
rests on consideration of the marks in their entireties. Indeed, this type of analysis
appears to be unavoidable.”).
Here, Applicant’s marks all include Registrant’s MAC mark in its entirety,
along with merely descriptive wording. Indeed, SUPPORT AT WORK from MAC
SUPPORT AT WORK and BIZ from BIZMACS directly convey that Applicant’s
services are directed to Registrant’s computers used for work or business,8 while
SUPPORT AT HOME from MAC SUPPORT AT HOME and HOME from
HOMEMACS directly convey that Applicant’s services are directed to Registrant’s
computers used in the home.9 See James Aff. ¶ 4 (“The Macintosh, Mac, and Apple

8 “Biz” is defined as “business.” Office Action of June 6, 2013 in application Serial No.
85652879 Ex. A (Merriam-Webster Dictionary). And MAC computers used for business
purposes are known as “business Macs.” Id. (articles from San Jose Business Journal,
TechBeat and InfoWorld).
9 The evidence also reveals that MAC computers may be used in homes, and when they are
may be called “home MACs.” Office Action of June 6, 2013 in application Serial No.
85652890 (printouts from The Seattle Times, St. Paul Pioneer Press, The Biloxi Sun
Herald, The New York Times, Marin Independent Journal, Chicago Sun Times, The
Washington Times and San Antonio Express-News).
Serial Nos. 85652874, 85652879, 85652890 and 85652893
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brand names are the same that are referenced in our mark ….”). This makes
confusion likely. See, e.g., Bellbrook Dairies, Inc. v. Hawthorn-Mellody Farms
Dairy, Inc., 253 F.2d 431, 117 USPQ 213 (CCPA 1958) (recognizing and applying
general rule “that one may not appropriate the entire mark of another and avoid a
likelihood of confusion by the addition thereto of descriptive or otherwise
subordinate matter”); see also, Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons,
Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL and BENGAL
LANCER & Design for related goods are confusingly similar); International Paper
Co. v. Valley Paper Co., 468 F.2d 937, 175 USPQ 704 (CCPA 1972) (DATA for
“writing, typewriter and printing paper” confusingly similar to DATA-SPEED for
“paper sold in bulk rolls or bulk reams for conversion only into business forms”); In
re Fiesta Palms LLC, 85 USPQ2d 1360 (TTAB 2007) (CLUB PALMS MVP for casino
services confusingly similar to MVP for casino services offered to preferred
customers identified by special identification cards); In re Rexel Inc., 223 USPQ
830, 832 (TTAB 1984) (“we are firmly of the opinion that purchasers who encounter
applicant’s ‘LITTLE GOLIATH’ stapler kits and registrant’s ‘GOLIATH’ large
diameter woodcased pencils are likely to believe … that both products emanate from
or are in some way associated with the same source”); Johnson Publishing Co. v.
International Development Ltd., 221 USPQ 155 (TTAB 1982) (EBONY for cosmetics
confusingly similar to EBONY DRUM for hairdressing and conditioner).
It is settled that descriptive wording such as SUPPORT AT WORK and
SUPPORT AT HOME (both of which are disclaimed), and BIZ and HOME, is
Serial Nos. 85652874, 85652879, 85652890 and 85652893
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entitled to less weight than arbitrary wording such as MAC. Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding
descriptive terms, this court has noted that the ‘descriptive component of a mark
may be given little weight in reaching a conclusion on the likelihood of confusion.’”)
(quoting In re Nat’l Data, 224 USPQ at 752); In re Dixie Rests., Inc., 105 F.3d at
1405, 41 USPQ2d at 1533-34; In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009)
(BINION’S, not disclaimed word ROADHOUSE, is dominant element of BINION’S
ROADHOUSE); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001)
(disclaimed matter is often “less significant in creating the mark’s commercial
impression”).10
Applicant argues that Registrant’s marks are entitled to only a narrow scope
of protection based a number of third-party registrations including the term MAC.
We disagree for several reasons. First, it is settled that third-party registrations
are not evidence that the marks are in use on a commercial scale or that the public
has become familiar with them. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476
F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the purchasing public is not aware of
registrations reposing in the U.S. Patent and Trademark Office); Productos Lacteos
Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934
(TTAB 2011). In other words, because there is no evidence that any of the marks in

10 As the Examining Attorney points out, while the marks in the ‘282 and ‘165
Registrations include additional elements, those elements, OS (which is an acronym for
“operating system” and disclaimed), and .COM (which is a generic top-level domain and has
no source identifying significance) are themselves descriptive and entitled to less weight in
our analysis.
Serial Nos. 85652874, 85652879, 85652890 and 85652893
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these third-party registrations are currently in use, the third-party registrations
standing alone are not particularly relevant. Second, “[n]either the Trademark
Examining Attorney nor the Board is bound to approve for registration an
Applicant’s mark based solely upon the registration of other assertedly similar
marks for other goods or services having unique evidentiary records.” In re
Datapipe, Inc., 111 USPQ2d 1330, 1336 (TTAB 2014); see also, In re Nett Designs,
Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“The Board must
decide each case on its own merits … Even if some prior registrations had some
characteristics similar to Nett Designs’ application, the PTO’s allowance of such
prior registrations does not bind the Board or this court.”). Third, we agree with the
Examining Attorney that most of the cited third-party registrations are irrelevant
in any event, because, for example, they contain arbitrary terms or otherwise create
a different overall commercial impression than Applicant’s and Registrant’s marks
(MacPaw Reg. No. 3968494, DMACS Reg. No. 1805911, EMACS & Design Reg. No.
1852270, EZMAC Reg. No. 3241397, O!macworms Reg. No. 4287917, FLIP4MAC
Reg. No. 3122483, OMEGAMAC Reg. No. 1885903, SCHEMACS Reg. No. 4373491,
INFIMACS II Reg. No. 3403198), consist of unitary terms in which MAC is not
separable (PRIMAC Reg. No. 2963956, VMACS-PLUS Reg. No. 1775782,
TELEMAC COST CONTROL Reg. No. 2725670, HUMAC Reg. No. 1328133,
INMAC Reg. No. 1224630, PMAC-LITE Reg. No. 1764208, RMACS Reg. No.
3362444, TARMAC Reg. No. 3984181, etc.) and/or predate the cited marks
(MACDRAFT Reg. No. 1414771, MACUSER Reg. No. 1437982, MACSUB Reg. No.
Serial Nos. 85652874, 85652879, 85652890 and 85652893
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1456229, MACWAREHOUSE Reg. No. 1616162, MACLINK Reg. No. 1433606,
MAC & Design Reg. No. 1441835, etc.).
Applicant argues that the relevant consumers have a “high level of
sophistication” because Applicant’s marks “are used to attract a very specific
consumer, namely, men and women of all ages who use Macintosh products in their
business and occasionally need to hire an IT professional who specializes in
Macintosh products.” Applicant’s Appeal Briefs at 13. Furthermore, Applicant
points out that its services range in price from $95-180 per hour while Registrant’s
products “are priced at about $300.00 for software up to $3000.00 for some computer
systems.” James Aff. ¶ 9. While Applicant’s services and Registrant’s goods are not
inexpensive, they are not so costly that we can presume that consumers will
exercise heightened care. Furthermore, “men and women of all ages who use
Macintosh products in their business” is a broad category encompassing both
sophisticated and unsophisticated consumers, while consumers who only
“occasionally need to hire an IT professional who specializes in Macintosh products”
are likely to be less sophisticated than, for example, IT professionals who routinely
purchase services such as those Applicant offers under its marks. Where, as here,
the relevant consumers include both professionals and the general public, we apply
the standard of care of the least sophisticated purchaser in the class. Alfacell Corp.
v. Anticancer, Inc., 71 USPQ2d 1301, 1306 (TTAB 2004). Furthermore, there is no
evidence or even argument that home computer users are sophisticated and there is
no reason to assume that they are. Finally, even if we assume that consumers may
Serial Nos. 85652874, 85652879, 85652890 and 85652893
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exercise at least some care in purchasing Applicant’s services and Registrant’s
goods and services, even careful purchasers can be confused as to source where
substantially similar marks are used on highly related and/or complementary
goods. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir.
1986) citing Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d
1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories even of discriminating
purchasers … are not infallible.”). This factor does not outweigh the similarity of
the goods and services, the channels of trade and the marks.
Finally, Applicant argues that confusion is unlikely because there is no
evidence of actual confusion. However, this is not relevant because there is also no
evidence that there have been any meaningful opportunities for confusion to have
occurred. See Cunningham, 55 USPQ2d at 1847; Gillette Canada Inc. v. Ranir
Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). Moreover, the lack of evidence of
actual confusion carries little weight, J.C. Hall Co. v. Hallmark Cards, Inc., 340
F.2d 960, 144 USPQ 435, 438 (CCPA 1965), especially in an ex parte context. In re
Bisset-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (stating that
self-serving testimony of applicant’s corporate president’s unawareness of instances
of actual confusion was not conclusive that actual confusion did not exist or that
there was no likelihood of confusion).
Conclusion
After considering all of the evidence of record as it pertains to the relevant du
Pont factors, including all of Applicant’s arguments and evidence, even if not
Serial Nos. 85652874, 85652879, 85652890 and 85652893
15

specifically discussed herein, we find that confusion is likely because the goods and
services are similar, they are marketed to the same class of purchasers, the
channels of trade overlap and the marks are similar.

Decision: The Section 2(d) refusals to register Applicant’s marks are
affirmed.