Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 HILSON RESEARCH INC.
v.
SOCIETY FOR HUMAN RESOURCE MANAGEMENT
Cancellation No. 19,007
May 18, 1993
Hearing: January 19, 1993
Opposition No. 84,491 to application Serial No. 74/010,782 filed on December 14, 1989
David J. Mugford of the law firm of Bower & Gardner for Hilson Research Inc.
Patrick J. Coyne of the law firm of Collier, Shannon Rill & Scott for Society for Human Resource Management.
Before Rice, Seeherman and Quinn
Members
Opinion by Quinn
Member
In these consolidated proceedings, [FN1] Hilson Research Inc. (Hilson) has opposed an application and sought to cancel a registration owned by Society for Human Resource Management (Society).
Society's application is to register the mark shown below
for "association services, namely, promoting the human resource management profession and the interests of members of the human resource management profession." [FN2] Society's registration sought to be cancelled is for the mark shown below
for "association services, namely, promoting the human resource management profession and the interests of members of the personal [sic--personnel] administration industry." [FN3]
In its pleadings, Hilson essentially asserts that Society's marks, when applied to Society's services, so resemble Hilson's previously used mark which is registered as shown below
for "providing psychological and personality examinations for individuals, and applicants for jobs and employees of private and municipal concerns," [FN4] as to be likely to cause confusion, mistake or deception. Hilson also claims in the petition for cancellation that Society fraudulently obtained its registration since Society was aware of Hilson's mark prior to Society's adoption of its mark. [FN5]
Society, in its answers, denied the salient allegations of Hilson's complaints.
The record consists of the pleadings; the files of the opposed application and the registration sought to be cancelled; trial testimony, with related exhibits, taken by each party; a status and title copy of Hilson's pleaded registration, a status and title copy of a registration owned by Society which is not involved in these proceedings, [FN6] discovery depositions with related exhibits, and Society's responses to Hilson's first set of discovery requests, all made of record by way of Hilson's notices of reliance; status and title copies of three registrations owned by Society, two of which are not involved in these proceedings, [FN7] excerpts of discovery depositions, with related exhibits, certified copies of twenty-seven third-party applications and registrations, declarations of certain individuals, with related exhibits, [FN8] and Hilson's responses to certain of Society's discovery requests, [FN9] all introduced in Society's notices of reliance. [FN10] Both parties filed briefs on the case and both were represented by counsel at an oral hearing held before the Board.
Evidentiary Objections
*2 With respect to the record, the Board is required, before turning to the merits of the proceedings, to consider evidentiary disputes that have arisen between the parties. The record in this case is voluminous and, in reading the record, the Board sensed the contentiousness that this litigation has engendered. Thus, there are, not surprisingly, some evidentiary skirmishes to be resolved.
The first relates to Hilson's introduction of the discovery depositions of two third-party witnesses, namely Dan Harvey and Ronald Pilenzo. Hilson, along with notices of reliance, filed motions for orders allowing Hilson to introduce the discovery depositions of Messrs. Harvey and Pilenzo pursuant to Trademark Rule 2.120(j)(2). [FN11] Society has objected to the motion in each instance. The Board, since it does not review testimony or evidence prior to final hearing, deferred ruling on the motions until final hearing.
Hilson has sought to rely on the discovery deposition of Dan Harvey, taken pursuant to a subpoena, while Mr. Harvey was visiting the United States prior to his return to his employment and residence in London, England. Hilson cites that provision of Trademark Rule 2.120(j)(2) which allows the introduction of a third-party discovery deposition if the witness is, during the testimony period of the party offering the deposition, out of the United States.
Society, in opposing the motion, asserts that Mr. Harvey subsequently returned to the United States and signed his deposition and it is possible that he remained in this country during Hilson's testimony period. Society further argues that Hilson has not offered any evidence that Mr. Harvey was out of the country during the entirety of Hilson's testimony period. [FN12]
Trademark Rule 2.120(j)(2) requires, in essence, that the party seeking to rely on its own discovery deposition of a third-party witness for purposes of trial make an affirmative showing at the time of the proffer of such evidence that circumstances exist that justify acceptance of the evidence (unless the party is invoking "exceptional circumstances", in which case the motion must be filed promptly after the party learns of the circumstances). See: Fort Howard Paper Co. v. G.V. Gambina Inc., 4 USPQ2d 1552, 1555 (TTAB1987). See also: National Fidelity Life Insurance v. National Insurance Trust, 199 USPQ 691, 692 n. 4 (TTAB1978); and Insta-Foam Products, Inc. v. Instapak Corporation, 189 USPQ 793, 795 n. 4 (TTAB1976).
We believe that Hilson has satisfied the rule. Hilson's claim that Mr. Harvey works and resides in London, England is confirmed by the testimony of Mr. Harvey. Moreover, Hilson, in citing Trademark Rule 2.120(j)(2), essentially has represented that Mr. Harvey was out of the country during its testimony period. See: Fed.R.Civ.P. 11 [signature of counsel constitutes a certificate by the signer that the motion, to the best of the signer's knowledge, information and belief formed after a reasonable inquiry, is well grounded in fact and is warranted by existing law, and is not interposed for any improper purpose]. In opposing the motion on the basis that Mr. Harvey may have been in the United States during Hilson's testimony period, Society engaged in mere speculation; no evidence has been submitted to rebut Hilson's representations regarding Mr. Harvey's absence from this country. We also note that allowance of the Harvey testimony works no undue prejudice to Society. Society's counsel attended the deposition and cross-examined Mr. Harvey. Although, of course, discovery testimony is different in nature from trial testimony (see, e.g., Fisher Gesellschaft m.b.H. v. Molnar and Co., Inc., 203 USPQ 861, 865 (TTAB1979)), Society took the opportunity to attend the deposition and was able to confront the witness by way of face-to-face cross-examination.
*3 Accordingly, Hilson's motion to introduce the Harvey deposition is granted.
In support of its motion for permission to introduce the discovery deposition of Ronald Pilenzo, Hilson contends that Mr. Pilenzo was a "party", as contemplated by Trademark Rule 2.120(j)(1), at the time of his deposition. In the alternative, Hilson relies upon Trademark Rule 2.120(j)(2), arguing that Mr. Pilenzo's testimony should be allowed because such exceptional circumstances exist as to make it desirable, in the interest of justice, to allow the deposition to be used. Hilson essentially contends that Mr. Pilenzo was a member of Society's board of directors at the time of his deposition, that he signed the pertinent applications for trademark registration, and that he is a busy man.
Society has objected to the motion, arguing that Mr. Pilenzo was not a "party" to these proceedings at the time of his deposition, that he was available and willing to testify during Hilson's testimony period, and that there are no exceptional circumstances to justify the allowance of his discovery deposition.
Trademark Rule 2.120(j)(1) provides that the discovery deposition of a party or of anyone who at the time of taking the deposition was an officer, director or managing agent of a party, or a person designated by a party pursuant to Fed.R.Civ.P. 30(b)(6) or Fed.R.Civ.P. 31(a), may be offered in evidence by an adverse party.
Mr. Pilenzo's deposition took place on June 12, 1991. Mr. Pilenzo testified that at that time he was employed by a third party, Personnel Decisions, Incorporated. He testified that he was president of Society for the years 1980- 1990 and that he officially retired as of December 31, 1990. Although Mr. Pilenzo may have been an "ex officio" member of Society's board of directors in 1990, there is nothing of record to confirm that he was in Society's employ in that capacity or any other capacity in June 1991. And, although Mr. Pilenzo signed the trademark applications in 1989 as an officer of Society, the simple fact is that he was no longer an officer or director at the time of his deposition. Further, Hilson's position in this matter is undermined by the parties' "stipulation regarding third-party discovery" approved by the Board on May 30, 1991. In that stipulation, Mr. Pilenzo is listed, among others (including Mr. Harvey), as a potential third-party discovery witness.
As far as Hilson's other arguments are concerned, we see no exceptional circumstances which warrant the allowance of Mr. Pilenzo's discovery deposition. We recognize that Mr. Pilenzo signed the applications for registration involved in these proceedings. We likewise recognize that Mr. Pilenzo is undoubtedly a busy person, a likely status for most witnesses in Board proceedings. Such circumstances, however, are not "exceptional" as contemplated by Trademark Rule 2.120(j)(2). Society claims that
Mr. Pilenzo was available during Petitioner's testimony period. Mr. Pilenzo was willing to offer testimony during Petitioner's testimony period. When Counsel for the Petitioner informed the Society it wished to rely upon the discovery deposition of Mr. Pilenzo, the Society stated it did not understand why, as it believed that Mr. Pilenzo would be available for a testimonial deposition. Accordingly, the Society contacted Mr. Pilenzo. Mr. Pilenzo informed the Society that he would be available any time after January 1. The Society informed Petitioner of this. The Society additionally offered to review any portions of the discovery deposition of Mr. Pilenzo that Petitioner was desirous of using during the testimony period and inform the Petitioner whether the Society could stipulate to any portion, thereby limiting the scope of the testimonial deposition, if the deposition was still even necessary. Petitioner simply refused to consider this option.
*4 Hilson has not disputed these allegations.
In view of the above, Hilson's motion to introduce the Pilenzo deposition is denied. See: Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1324-25 (TTAB1992).
Each party raised numerous objections to some of the testimony and evidence adduced by the other. The Board, in accordance with its usual practice, deferred ruling on the objections until final hearing. Hilson filed fifteen objections to the record introduced by Society; Society filed a response to the objections. Hilson, in its reply brief at final hearing (pp. 21-22), stated that "it is in the interest of justice to have the complete facts before this Board, and [Hilson] hereby waives any objection it has made to the evidence of [Society]. All facts should be in evidence and the weight to be attributed to such evidence decided by the Board."
Insofar as Hilson's testimony and evidence are concerned, Society filed papers wherein Society makes 149 specific objections. Hilson responded by way of a seventy-six page brief. Society, in its main brief at final hearing, renewed these objections, stating that it "objects to much of [Hilson's] evidence on the grounds of relevance, hearsay, lack of foundation and that it is misleading and unduly prejudicial under Fed.R.Evid. 403." (brief, pp. 36- 37).
The parties' objections, by the Board's count, number 164, comprising approximately 110 pages of arguments in briefs. Hilson now has waived its objections and we have given no consideration to the objections. Society's 149 objections have been considered by the Board and, where we have relied on (and, therefore, deemed admissible) evidence to which an objection was raised, we have made a point in our opinion to so state.
Hilson, a psychological research and test publishing corporation, was established in 1980 by Dr. Robin Inwald, Ph.D., a psychologist. Hilson's first product was the Inwald Personality Inventory, a preemployment psychological test used primarily for screening law-enforcement/security officers. The test was designed to screen out negative qualities/behavior in applicants for high-risk occupations. Over five hundred agencies, including many major police departments, have used this test in evaluating more than one hundred thousand candidates. In later years, Hilson developed additional products which included, among others, the Hilson Adolescent Profile (to identify troubled behavior patterns and problems in adolescents), the Hilson Personnel Profile/Success Quotient (to assist personnel administrators in identifying "successful" qualities in job applicants and employees), and the Hilson Career Satisfaction (to assess individuals who are currently working). Hilson has promoted its products through direct mailings and in advertisements placed in trade journals directed to personnel or human resource administrators, including one published by Society. In addition, Hilson has promoted its products at trade shows and conferences attended by those in the personnel or human resources field, including the annual conference and exposition sponsored by Society. The Inwald Personality Inventory test costs between $17 and $23 per copy, depending on how many are ordered.
*5 Society is a nonprofit trade association dedicated to the advancement of the human resource management profession. Formed in 1948 under a different name, Society is the world's largest professional association devoted exclusively to human resource management. Society claims to represent the interests of 70,000 human resource professionals worldwide, with membership numbering more than 46,000 individuals employed in the human resource management profession. As a professional trade association, Society offers a wide range of services dedicated to the promotion of the human resource management profession and the interests of human resource management professionals. The activities include monitoring legislative activities affecting the human resource management industry and reporting back to the membership, publishing a trade magazine, organizing and conducting exhibitions and conferences and operating a certification program for those in the field. Society's diverse operations extend to offering its members benefits such as credit cards, car rentals and insurance programs. Society also sells products relating to human resource management, such as books, videos and computer software. Annual dues in 1989 were $145.
We think it is helpful to give a little additional background regarding the genesis of the dispute which culminated in these proceedings before the Board. After discussion and vote by Society's board of directors, and ratification by Society's membership, the name of Society was changed from "American Society for Personnel Administration" to its current name "Society for Human Resource Management." In addition, a private firm designed logos which it felt were compatible with the name change candidates, and the logos then were presented to the Society's board of directors. The board of directors decided on the stylized HR which is reflected in Society's involved application and registration. The name change and new logo were the subject of much fanfare at Society's 1989 annual conference held in June in Cincinnati, Ohio. At the Society's dinner dance, the new name and logo were unveiled. Dr. Inwald was at the dinner and was upset when the new logo was shown because, in Dr. Inwald's opinion, Hilson's and Society's logos are similar. Dr. Inwald was especially upset inasmuch as Hilson was an advertiser in Society's magazine and was an exhibitor at Society's annual conferences, including the one in 1989. Dr. Inwald approached Society the next day and voiced her concerns which ultimately resulted in this litigation.
Issue
Now turning to the merits of these proceedings, there is no issue of priority of use. [FN13] Hilson has relied upon a status and title copy of its pleaded registration. Moreover, the testimony and evidence demonstrate, and Society does not dispute, that Hilson began using its mark at a time prior to the time Society began using either of its marks.
Thus, the issue in these cases is whether Society's HR and design marks, when used in connection with association services, namely, promoting the human resource management profession and the interests of members of the human resource management profession, so resemble Hilson's previously used HR and design mark for providing psychological and personality examinations for individuals and applicants for jobs and employees of private and municipal concerns, that consumers would be likely to believe that the services originated with or were somehow associated with or sponsored by the same entity. Although confusion, mistake or deception about source or origin is the usual issue posed under Section 2(d), any confusion made likely by a junior user's mark is cause for refusal; likelihood of confusion encompasses confusion of sponsorship, affiliation or connection. See: J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, § 24.03[3] (3d ed. 1992). We would hasten to add, however, that in our opinion, the present proceedings do not involve a classic case of likelihood of confusion or so-called "forward confusion." McCarthy, Trademarks and Unfair Competition, supra at § 23.1[5]. It is our belief that the cases now before us are not ones where customers familiar with the senior user's (Hilson's) services rendered under its mark would be likely to mistakenly think, upon encountering the junior user's (Society's) mark, that the junior user's (Society's) services are from the same source as or are connected with the senior user's (Hilson's) services. Rather, the issue in these proceedings involves "reverse confusion", that is, whether or not consumers purchasing the senior user's (Hilson's) services would mistakenly believe that they are getting services sponsored by or affiliated with the junior user (Society). Professor McCarthy points out that
*6 reverse confusion occurs when the junior user's advertising and promotion so swamps the senior user's reputation in the market that customers are likely to be confused into thinking that the senior user's goods [or services] are those of the junior user: the reverse of traditional confusion.
McCarthy, Trademarks and Unfair Competition, id. The concept of reverse confusion has been recognized by this Board and our primary reviewing court. See: K2 Corp. v. Philip Morris Inc., 192 USPQ 174 (TTAB1976), aff'd 555 F.2d 815, 194 USPQ 81 (CCPA1977); and American Hygienic Laboratories v. Tiffany & Co., 12 USPQ2d 1979, 1983 (TTAB1989).
Our determination of likelihood of confusion under Section 2(d) must be based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. See: In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA1973). The factors deemed pertinent in the proceedings now before us are discussed below.
The marks of the parties are similar and convey substantially similar overall commercial impressions. With respect to Hilson's mark shown below
and Society's mark sought to be registered in its application shown below
the marks are, in the Board's view, very similar in visual appearance and identical in sound and meaning. Both marks comprise the letters "HR", with a common right leg of the "H" and left leg of the "R". The designs of the letters look alike, with the letters in both marks being similarly constructed, each having "feet" at the top and bottom. Moreover, as shown by the record, Hilson's mark often appears as white letters against a dark background. The fact that the marks comprise letters adds to the likelihood that the marks will be confused. See: Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1841 (Fed.Cir.1990).
Society, in its brief, goes to great pains in distinguishing the marks, arguing, for example, that "[t]he large box is a dominant feature" of Society's mark and that "[i]t connotes the strength of the Society." Society's arguments are belied, however, by some of the very testimony and evidence introduced by Society. For example, Dr. Michael Rappeport, Society's survey expert, testified that the marks "look alike to a considerable degree" (dep., p. 48) and that the marks "are certainly similar in appearance" (dep., p. 172). Moreover, Dr. Rappeport's survey commissioned by Society refers to the marks as "quite similar looking logo(s)." (Rappeport dep., ex. 6, question 4).
Suffice it to say that Hilson's mark and Society's applied-for mark, as well as the HR portion of Society's registered mark, are substantially similar in appearance and engender substantially similar overall commercial impressions.
*7 With respect to Society's registered mark shown below
Society again points out that its mark "contain[s] a large dominant box", and makes much of the fact that the registered mark also contains the words "Human Resource Management."
We again believe that the parties' marks are similar and engender similar overall commercial impressions. For the reasons set forth above, Hilson's HR mark and the HR portion of Society's registered mark are substantially similar. The addition of the words "Human Resource Management" in Society's registered mark is simply not enough to diminish the similarity of the overall commercial impressions of the marks. We have no doubt that the letters "HR" in Society's registered mark comprise the dominant portion due to their large and bold lettering relative to the smaller and finer lettering of the words. Although disclaimed matter cannot be ignored in the analysis, the disclaimed words in Society's registered mark are relegated to subordinate status. See: Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed.Cir.1983). Moreover, although we have resolved likelihood of confusion on a consideration of the marks in their entireties, there is nothing improper in giving more weight, for rational reasons, to a particular feature of a mark. In this instance, we have given more weight to the HR portion, because of the prominence of the letters "HR" and the descriptive nature of the disclaimed words "Human Resource Management." See: In re National Data Corporation, 753 F.2d 1056, 224 USPQ 749 (Fed.Cir.1985).
The record establishes, and the parties agree, that the letters "HR" in Hilson's mark stand for "Hilson Research" and the letters "HR" in Society's mark represent "human resources." Even when the marks are considered in this light, the substantial similarities in appearance and sound simply outweigh the differences pointed out by Society. Moreover, both parties' marks cover services rendered in the human resources field. The record establishes that "HR" is a commonly used and accepted abbreviation for "human resources." While some or even many purchasers may perceive the letters "HR" in Hilson's mark as signifying "Hilson Research," others may reasonably believe that the letters signify "human resources."
Third-Party Use
The parties agree that the letters "HR" per se have a commonly understood meaning in the human resource management field, that is, "human resources." Of record is a listing of "HR" in Acronyms, Initialisms & Abbreviations Dictionary (1991) showing that the letters mean, among other things, "Human Resources."
Society has introduced certified copies of five applications and twenty-two registrations owned by third parties. These official records show a variety of marks which, in whole or in part (and some stylized), consist of the letters "HR" for a wide range of goods and services, some of them in the human resources field.
*8 As often stated, third-party registrations are of little weight in determining likelihood of confusion issues. They are not evidence of use of the marks shown therein and they are not proof that consumers are familiar with such marks so as to be accustomed to the existence of similar marks in the marketplace. Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973); and Richardson-Vicks, Inc. v. Franklin Mint Corp., 216 USPQ 989 (TTAB 1982). There is a further problem with the third-party registrations in this case. Although all of the marks include the letters "HR," the marks include other features as well, such as designs, words and numbers, and, thus, they differ from the marks at issue in this case. In short, there are no registrations for marks comprising only the letters "HR" in the same design form as the marks involved herein. Moreover, by our count, six of the registrations are for marks covering goods far removed from the services involved in this proceeding. By way of example, those goods include electrical connectors, sunglasses, disposable vacuum bags and cosmetics. These registrations obviously have little relevance. See: Conde Nast Publications, Inc. v. American Greetings Corp., 329 F.2d 1012, 141 USPQ 249, 252 (CCPA 1964). See generally: J.D. Sams, Third Party Registrations in TTAB Proceedings, 72 TMR 297, 298 (1982).
Any value that these official records have to the likelihood of confusion issue is limited to their showing, as in the case of a dictionary listing, the sense in which the letters "HR" are employed in the language. In this case, the registrations show that the letters "HR" have in the past appealed to others in the human resources field as an appropriate designation for a mark or part of a mark. See: Smith Bros. Mfg. Co., supra at 462-63. As is the case with the dictionary listing for the letters "HR", the official records simply add credence to the notion that the letters have a normally understood and well-recognized meaning in the field, and that the mere inclusion of these letters in a mark may not, in and of itself, be sufficient basis for a finding of likelihood of confusion where the marks are otherwise distinguishable. Red Carpet Corp. v. Johnstown American Enterprises, Inc., 7 USPQ2d 1404, 1406 (TTAB 1988).
Society also has introduced testimony and evidence regarding actual use of "HR" marks by third parties in the human resources field. The Board has in the past given weight to evidence of widespread and significant use by third parties of marks containing elements in common with the mark being opposed on grounds of likelihood of confusion to demonstrate that confusion is not, in reality, likely to occur in the marketplace. See: Miles Laboratories Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445, 1462 (TTAB 1987). The justification is, of course, that the presence in marks of common elements extensively used by others, unrelated as to source, may cause purchasers to not rely upon such elements as source indicators but to look to other elements as a means of distinguishing the source of the goods and/or services. By relying on third-party uses of "HR" marks in the human resources field, Society would have us conclude that small variations in the marks used in the field, including Society's and Hilson's marks, are sufficient to avoid confusion.
*9 We have carefully considered the evidence of third-party use, but find that it is not persuasive to reach the result urged by Society. Given the fact that the letters "HR" are commonly understood by those in the field to mean "human resources", it comes as no surprise that these letters are included in marks used in connection with a variety of goods and services in the human resources field. However, the likelihood of confusion issue in this case does not involve the letters "HR" per se, [FN14] but rather the letters "HR" appearing in a substantially similar stylization. Society has documented third-party uses of various "HR" marks, all of which include other wording or letters, or include designs or highly stylized lettering which is different from the stylization of the parties' marks. [FN15] These marks, with the additional words/letters/designs, are all different from the ones at issue in this case which show the letters "HR" with a common right leg of the "H" and left leg of the "R."
Inasmuch as the third-party uses are of marks different from the ones involved herein, we conclude that this evidence is of limited value. For example, the use of the designation HR ONLY (Greene dep., ex. 30), although showing the letters "HR" joined, is of limited value since the designation also includes "ONLY." For the same reasons, uses of "HR COMMUNICATION SERVICES" (Hodge dep., ex. 33) or "HRAMM HUMAN RESOURCE ASSOCIATION OF THE MIDLANDS" can be accorded only limited probative value. Out of all of the uses cited by Society, there is but one use of the letters "HR" alone in a stylized format showing the letters joined in a manner like the parties' marks. (Batchelder dec., ex. 38). This designation is used in connection with recruitment advertising services to human resource professionals. However, even that mark is more different than Society's mark from the mark sought to be protected by Hilson, inasmuch as the third-party mark employs wide, squat letters with lining.
We have no doubt regarding the accuracy of the statement made by every one of Society's declarants, that is, "Many companies in the human resource management profession use marks containing the letters 'H' and 'R' in advertising their goods and services." However, the third-party uses of record all show marks which are different, some being very different, from the parties' marks. Inasmuch as this case does not turn solely on use of the letters "HR" per se, but rather on use of the letters "HR" in a particular stylized format, Society's evidence of third-party use, while certainly considered in our analysis, is entitled to limited weight.
Similarity of Services
At the outset, we readily acknowledge that Hilson's testing services are different from Society's association services. Due to the specific nature of the parties' services we do not view them as competitive. [FN16] The test here is not, however, whether the services are likely to be confused. Rather, the test is whether purchasers are likely to be confused as to source, connection or sponsorship between the providers of the services. As often stated, it is not necessary that the goods and/or services be similar or competitive, or even that they move in the same channels of trade to support a holding of likelihood of confusion. It is sufficient that the respective goods and/or services are related in some manner, and/or that the conditions and activities surrounding the marketing of the goods and/or services are such that they would or could be encountered by the same persons under circumstances that could, because of the similarities of the marks used therewith, give rise to the mistaken belief that they originate from or are in some way associated with the same producer. See: National Football League v. Jasper Alliance Corp., 16 USPQ2d 1213, 1215 (TTAB 1990). When viewed in this light, we find that there is a likelihood that consumers will be confused into mistakenly believing that Hilson's testing services are somehow sponsored by or associated with Society.
*10 Society's range of operations is outlined in its membership application brochure. (Bower dep., ex. 36). The brochure describes the following activities in the members' "professional interest:"
SHRM provides the information you need to make today's decisions and to formulate and implement effective HRM programs. You are given a variety of sources to solve your problems, and the opportunity to exchange ideas and share concerns with your professional peers. SHRM helps you expand your professional competence and knowledge, represents our profession in federal and state lawmaking, and maintains standards of excellence in the human resource management field.
Society also lists a variety of "member services" including monthly newsletters and magazines, an annual directory of members, research reports, on-line computer services, annual national and regional conferences and expositions, accreditation programs in human resources management and governmental affairs. Other services are described as follows:
Professional Development: a complete human resource learning system, with course booklet, audio cassettes and self-scoring mastery tests, covering the entire spectrum of HRM in seven modules.
*****
SHRM Publication Service: publications, software and videos offering the latest distillation of research and practice, at reduced costs to members.
A review of Society's materials shows that it also markets a product called "SHRM/Saratoga Institute HR Measurement System." Catherine Bower, Society's vice president, communications and public relations, when asked how the Saratoga Institute related to Society, testified that "[t]hey [Saratoga Institute] do an annual study that carries both of our names on indexes, computer-based indexes for the profession." Ms. Bower stated that the product was "an analytic tool designed to allow the professional to quantify the value of the function." (Bower dep., p. 109). A document [FN17] produced in response to Hilson's first set of interrogatories lists the "SHRM/Saratoga Institute HR Management System" as "[a] HR standardized measurement system available to members and non-members for purchase." The system is described in another brochure as follows:
A management tool to standardize the measurement of the HR function, this system consists of two integrated parts: "Survey", a PC software package for collecting and analyzing management data and the "Human Resource Effectiveness Survey," a national report of comparative information. HR professionals can track and evaluate their department's operating effectiveness by quarter and by year, and then compare their data with similar operations.
Exhibit 32 to Ms. Bower's testimony is, in her words, "a promotion piece" for the system. This advertisement shows the name "Saratoga Institute" in bold letters with an address in California. Under the bold "Saratoga Institute" are the words "Human Resource Effectiveness Systems." Just to the right of this appears Society's logo mark.
*11 The materials produced by Society show that it also sells a product referred to as the "SHRM/Mercer Meidinger Hansen HRM Compensation Survey." The survey reports salary information on all areas of human resource management. In an advertisement (apparently appearing in one of Society's publications) for this survey, it is stated that the survey is a "joint effort" and that "[T]he 1991 Human Resource Management Survey [is] jointly produced by [Society] and William M. Mercer, Incorporated." (documents S0046 and S0062). Those individuals interested in being included in the survey are instructed to contact Mercer Meidinger Hansen, Inc. for a questionnaire which is then returned to this firm. The advertisement includes, in bold letters, the name "William M. Mercer Meidinger Hansen" Incorporated. To the left of this name appears Society's logo mark. We further note that the list of exhibitors at Society's 1990 annual conference included not only Hilson, but also "The William M. Mercer, Inc." (document S0041). [FN18]
As noted earlier in this decision, Society is engaged in a wide range of activities in "promoting the human resource management profession and the interests of members of the human resource management profession." Although Society's services are described as "association services" in its application and registration, certainly the products and services cited above serve to further the goals of Society. We are not persuaded that Society's "association services" are divorced from everything else Society does. Rather, its ancillary services serve, at least in our minds, to promote the profession and the membership. We view Society's joint endeavors with Saratoga and Mercer as contributing in that direction.
The Saratoga Institute and Mercer Meidinger Hansen examples show that Society has, in fact, associated itself with others in a manner which would lead potential and actual purchasers to think that the products were sponsored or endorsed by, or had some connection with Society. We think purchasers are likely to reach the same conclusion relative to Hilson's testing services. We think it quite likely that consumers confronting the marks at issue will think that the testing services have some connection with Society, by way of sponsorship, endorsement or affiliation. Because Society has cosponsored the salary survey with Mercer, a vendor at Society's annual conference, others are likely to mistakenly believe that Society sponsored the testing services of Hilson, another vendor appearing at the conference, who also happens to advertise in Society's magazine.
Due to Society's past practices with Saratoga and Mercer, we believe that consumers are more likely to accept the credibility of an association between Hilson's testing services and Society. It simply is a fact that Society has associated itself with others in the past--thus, it is hardly an unprecedented or novel idea. A potential purchaser of Hilson's testing services might well assume that, as in the cases of the Saratoga and Mercer products, Society was somehow involved in sponsoring or endorsing the testing services. Thus, a perceived connection between Hilson and Society is not as tenuous as was the case in Saks & Co. v. Snack Food Assoc., 12 USPQ2d 1833 (TTAB1989) [no confusion between identical SFA marks for association services and retail store services]. As for Society's arguments based on sophisticated purchasers and no actual confusion, even a careful consumer would not necessarily inquire about whether there was an association between Hilson and Society, but might simply assume one, due to Society's past association with at least two others in the human resources management field. See: Tiffany & Co. v. Classic Motor Carriages Inc., 10 USPQ2d 1835 (TTAB1989).
*12 Society also markets a wide range of videotapes, software programs and books in the human resource management field. Although Society would have us conclude that such activities, as well as other activities, are not technically "association services," we find that this argument elevates semantics over substance. While admittedly not "association services", a trade association's mail-order program certainly furthers the promotion of the membership and the industry. And, although it is clear that Society does not sell or administer psychological and personality tests of the type marketed by Hilson, one would not be surprised to learn that Society marketed a similar human resource product or service. The variety and scope of Society's operations falling under the broad penumbra of "association services, namely promoting the human resource management profession and the interest of members of the human resource management profession" contribute to the likelihood that consumers would perceive Hilson's testing services as an extension of the Society's association with yet another activity in the human resource management field. See: The Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419 (CCPA1977), and Sterling Drug Inc. v. Sebring, 515 F.2d 1128, 185 USPQ 649 (CCPA 19975), rev'g 183 USPQ 117 (TTAB1974).
In sum, due to the use of substantially similar marks, the fact that the respective services (admittedly noncompeting) are marketed to the same persons (Hilson's advertisements even appear in Society's publications distributed to members), and Society's past association with the Saratoga and Mercer products, one would likely assume that there is some kind of relationship (e.g., license), sponsorship or association between Society, a human resource management professional trade association, and Hilson, the seller of testing services in the human resource management field. See: Philip Morris Inc. v. K2 Corp., et al., supra. Although the respective services are noncompeting, the particular facts of this case convince us that confusion is likely.
The Conditions of Sale and Class of Purchasers
As alluded to above, there is no question that Hilson's testing services and Society's association services are rendered to the same class of purchasers, that is, individuals involved in human resource management. The facts that Hilson advertises in Society's monthly magazine and is an exhibitor at Society's annual conference, show that the parties' respective services are directed to the same audience. Society's membership is composed of individuals, not corporations or other like entities. Although Hilson's services may be rendered to entities identified as "private and municipal concerns", those "concerns", such as police departments, have human resource managers who make the decision to purchase from Hilson. Those same individuals make up the membership of Society. Thus, there is an overlap in purchasers. See: Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388, 1390-92 (Fed.Cir.1992).
*13 The record demonstrates to our satisfaction that people in the human resources management field, that is, the purchasers for the parties' services, tend to be educated professionals. Society has shown that over eighty percent of its members have undergraduate degrees and about one-third of the membership hold masters' degrees. Society's figures also show that about seventy percent of Society's members are employed at the "manager" level or above. Moreover, Society's members tend to have a few years of experience in the human resources management field. Dr. Inwald herself acknowledged that human resources professionals are "generally sophisticated and educated individuals" and that "both their academic background and their social skills were significantly elevated compared to entry-level job applicants." (Inwald dep., pp. 301-303).
Having stated all of the above, we nevertheless are not convinced that these sophisticated human resources professionals are immune from source confusion, especially given the substantial similarities between the marks. Given their sophistication, these purchasers undoubtedly will exercise some discrimination when purchasing either party's services. However, the mere fact that one is knowledgeable in the human resources field does not necessarily mean that the individual is also skilled in distinguishing between two substantially similar trademarks in the field. We have kept in mind, of course, that even sophisticated purchasers have human minds which are not infallible in their recollection of trademarks. HRL Associates, Inc., supra at 1841-42.
With respect to Society's assertion that human resource professionals would know full well when they were dealing with Society as opposed to when they were dealing with Hilson, we are not so sure. Compare: Saks & Co. v. Snack Food Association, supra at 1835-36. As brought out by the Rappeport survey, discussed infra, almost sixty percent of Society's members did not know whether Society competed with exhibitors at its annual conference (four per cent said Society did compete). Forty-six percent did not know whether or not Society endorsed any of the exhibits at the annual show (four per cent said Society did endorse). This gives credence to our belief that a significant number of Society's members do not even know what Society does or does not do in this regard, making confusion as to source, association or sponsorship all the more likely. And as noted above, Society has, in fact, associated itself with the Saratoga and Mercer products, thus increasing the likelihood that its members will assume that another such association exists with respect to the Hilson product.
Actual Confusion
The parties are at odds over whether the record shows actual confusion. Society contends that there has been no actual confusion, pointing to the absence of any instances of misdirected mail or phone calls or mistakes in purchases. Hilson introduced the testimony of two third-party witnesses, Dan Harvey and Art Wilkie, in support of its contention that there have been instances of actual confusion.
*14 Mr. Wilkie's company was an exhibitor near Hilson at Society's 1989 annual conference and exposition and Mr. Wilkie was one of the respondents to Hilson's questionnaire (discussed infra). We agree with Society that Mr. Wilkie's allegations do not make out a probative case of actual confusion. As brought out in his testimony, Mr. Wilkie, in believing that there was confusion between Society's and Hilson's marks, considered only the appearances of the marks without taking into account other factors, such as, most particularly, the respective services rendered under the marks.
Dan Harvey, as indicated earlier in this opinion, works for a vendor of computer software in the human resources field. Mr. Harvey was walking through the 1990 Best of America Training/Personnel trade show when he came upon Hilson's exhibit booth. Mr. Harvey also attended Society's 1989 annual show when Society's new logo was announced. Mr. Harvey testified that, after looking at Hilson's logo, he asked Dr. Inwald if it was Society's HR logo. He went on to testify as follows:
The reason I was interested in it, as I said earlier being a small company, that I--it just--I was convinced that somehow they had gotten [Society] to endorse their product. And that was a very appealing prospect to me as a new young company, because of the credibility that it would give, so that was the first thought I had. (dep., p. 52)
*****
My thought was gee, I wonder if they've [Hilson] got some kind of deal with [Society], where one party has licensed the other to use the logo.... (dep., pp. 54-55).
Again, Mr. Harvey's testimony is weakened by the fact that, in perceiving a connection between Society and Hilson, he considered only the visual similarities between their marks. Mr. Harvey testified that when he saw Hilson's mark he "had no idea what [Hilson] did." Mr. Harvey's lack of knowledge about Hilson's services detracts from the probative value to be accorded to this alleged actual confusion.
In sum, little weight has been given to Hilson's evidence due to the deficiencies outlined above. Evidence of actual confusion, however, is not essential to proving a case of likelihood of confusion. Actual confusion is but one factor in our analysis. In any event, the time of contemporaneous use by the parties of their respective marks is relatively short.
Survey Evidence
In view of the hotly contested issue in this case, it is not surprising that each side, in an attempt to make a more persuasive case, undertook efforts to gauge the subjective reactions of prospective purchasers to the marks at issue. Hilson, on the one hand, developed and distributed a "questionnaire", the results of which it alleges are probative to show that the involved marks are confusingly similar. On the other hand, one of Society's principal arguments in support of its defense that confusion is unlikely is based upon the results of a telephone survey commissioned by it for use in this case.
*15 The Board, although receptive to surveys, does not require them in Board proceedings. See, e.g.: Miles Laboratories, Inc., supra. Accord: Charles Jacquin et Cie Inc. v. Destileria Serralles Inc., 921 F.2d 467, 17 USPQ2d 1104, 1110 (3d Cir.1990) [although consumer surveys may be useful, survey is not mandatory to establish likelihood of confusion where other evidence exists]. See generally: McCarthy, Trademarks and Unfair Competition, supra at §§ 32.46-32.55 [and, in particular, note 3 which provides a generous list of articles on trademark surveys]. We appreciate the significant financial cost of surveys. Moreover, we obviously recognize the limited jurisdictional nature of Board proceedings, wherein only rights to federal registrability, not use, are determined. With these two thoughts foremost in our minds, we are not inclined to draw any negative inferences from a party's failure to offer survey evidence in a proceeding before the Board. [FN19] However, where surveys are offered, as in the present case, we will apply the law regarding the admissibility and probative value of surveys that the Board and other tribunals have developed. We accordingly turn our attention to the survey evidence.
Hilson's "survey" evidence consists of the information tabulated from questionnaires filled out by 139 respondents at three human resources trade shows in 1990 and 1991. The questionnaire was prepared at Hilson's request by Paul Lee, president and owner of a trademark search firm. The questions are reproduced below: [FN20]
Please check the items below that apply:
___ 1. I am a member, or associate, of the personnel administration industry;
___ 2. I am a member of the Society for Human Resource Management (SHRM);
___ 3. When I first noticed the "HR Design" used by SHRM, I was confused as to whether or not there was a connection or association between SHRM and Hilson Research Inc., ("Hilson");
___ 4. I believe the "HR Design" used by SHRM is very similar in appearance and overall impression to Hilson's "HR Design";
___ 5. I believe that Hilson and SHRM conduct business within the same industry and provide some related services;
___ 6. I have noticed Hilson's "HR Design" in the past, for approximately ___ years and have come to associate that design with Hilson's services;
___ 7. I believe there is a strong likelihood of confusion between the "HR Design" which SHRM uses and Hilson's "HR Design" among their respective members, clients, or customers;
___ 8. Additional comments:
On three occasions when Hilson attended trade shows as an exhibitor (including Society's 1990 annual conference), Dr. Inwald (Hilson's founder and owner) intercepted individuals who passed by Hilson's exhibit booths and asked them to complete the questionnaire. Many obviously begged off, but Dr. Inwald obtained completed questionnaires from 139 respondents. When an individual was willing to respond, Dr. Inwald first directed that person's attention to Hilson's logo mark as exhibited at Hilson's exhibit booth. The questionnaire then was completed. Hilson relies principally on the responses to question number three, pointing to the forty-four percent who answered the question in the affirmative.
*16 Hilson's questionnaire is fraught with serious problems, a point not lost on Society, whose expert witness leveled several attacks on the validity of the questionnaire's results. Society has objected, quite appropriately in our view, to this "survey" evidence. We agree that it is not entitled to any weight in determining the issue of likelihood of confusion in this case.
Both Dr. Inwald and Mr. Lee readily concede that they are not experts in conducting or administering surveys for trademark litigation and that the questionnaire was not prepared or conducted "in accordance with generally acceptable standards of survey techniques." Illustrative of the many deficiencies of the questionnaire are the questions themselves. Because the questions are leading they unequivocally tell the interviewee the response which Dr. Inwald sought. The questions are also framed as legal conclusions, and raise an issue as to whether the interviewees actually understood what was being asked. Moreover, the questions were intended to elicit information bearing on only a similarity in appearance between the logo marks of the parties without regard to the respective services rendered under the marks. [FN21] The questions are entirely silent regarding the respective services rendered under the marks. To highlight the ambiguous nature of the questions, Society points to Dr. Inwald's own testimony on cross-examination to the effect that she herself was unsure about the meaning of a "connection" or "association." (Inwald dep., pp. 349, 365 and 376). Lastly, Dr. Inwald, as the interviewer, was hardly an unbiased individual, but rather was intimately aware of this litigation and the purposes for which the questionnaire was to be used. It is quite possible that Dr. Inwald subtly (or not so subtly) influenced the respondents' answers. In sum, the Hilson "survey" is entirely lacking in trustworthiness and not entitled to any probative value.
Society has introduced the testimony of Dr. Michael Rappeport, a partner in a survey, market and public opinion research firm. The survey commissioned by Society for use in this case was introduced as exhibit 6 to Dr. Rappeport's testimony. Dr. Rappeport has developed numerous surveys for use in trademark litigation, and Hilson did not challenge Dr. Rappeport's qualifications to testify as a survey expert. Dr. Rappeport testified that his firm developed and conducted its survey in accordance with generally accepted survey techniques. The universe for Society's survey was determined to be, quite correctly in our view, all members of the Society. Two hundred members were then randomly selected and contacted by telephone.
The respondents were asked seven questions. According to Dr. Rappeport, the "four key questions," and answers, are as follows: [FN22]
1) As far as you know, does the Society for Human Resource Management ever compete for business with any of the companies that exhibit at their show, or don't they compete with companies that exhibit at their show, or don't you happen to know?
YES NO DON'T KNOW
4.5% 36 59.5
*17 3) As far as you know, does the Society for Human Resource Management ever endorse any of the companies that exhibit at their show? I don't mean a general endorsement implying that they only let reputable companies exhibit, but a specific endorsement of a particular company?
YES NO DON'T KNOW
4% 50 46
6A) The logo of Hilson Research uses block letters H and R linked together so that the right side of the H is also the vertical line in the R. The Society for Human Resource Management has a quite similar looking logo. Does knowing about these similar looking logos make you think the Society for Human Resource Management endorses Hilson Research or any of its products, or do you think the use of similar logos is just coincidental, or don't you have an opinion?
6B) The logo of the Society for Human Resource Management uses block letters H and R linked together so that the right side of the H is also the vertical line in the R. Hilson Research has a quite similar looking logo. Does knowing about these similar looking logos make you think the Society for Human Resource Management endorses Hilson Research or any of its products, or do you think the use of similar logos is just coincidental, or don't you have an opinion?
ENDORSE COINCIDENCE DON'T KNOW
6% 56 38
7) As far as you know, does the Society for Human Resource Management produce any product similar to Hilson Research's personality inventories or does the society not produce any products that compete with Hilson Research's personality inventories or don't you happen to know if the Society produces any competitive products?
YES NO DON'T KNOW
1% 42.5 56.5
Society relies on the survey in concluding that only seven percent of its members saw either an endorsement or a competition between Society and Hilson. Society contends that the seven percent is not significant and concludes that the survey results support its contention that there is no likelihood of confusion.
We see several flaws in the survey. We recognize that surveys taken by telephone can be, in appropriate circumstances, inherently reliable. However, in this case, given that the marks at issue are design marks which have a substantially similar appearance, much validity was lost when the survey was conducted by telephone. Throughout this decision, we have pointed to this du Pont factor, that is, the substantial similarity of the marks in appearance, which weighs heavily in our analysis. Given the visual similarities, we question why the survey was done by telephone, other than perhaps, of course, for the obvious reasons of cost and time. Although the questions posed to respondents indicated that Hilson and Society used "quite similar looking logo [s]", that characterization is, in our minds, not enough. Simply put, in cases such as this where so much turns on similarities of the marks in visual appearance, survey respondents should be confronted with reproductions of the marks rather than mere descriptions. See: Inc. Publishing Corp. v. Manhattan Magazine, Inc., 616 F.Supp. 370, 227 USPQ 257 (S.D.N.Y.1985), aff'd without op., 788 F.2d 3 (2d Cir.1986) [telephone surveys are confined to aural stimuli and visual and cerebral stimuli are lost].
*18 We perceive another problem with the methodology, more specifically, with the leading questions posed to the respondents. It is improper to suggest a business relationship where the respondent may previously have no thought of any such connection. See: Universal City Studios, Inc. v. Nintendo Co., supra. It seems to us that the flip side of the coin is just as true, that is, it is improper to suggest that there is no connection. We view questions 1, 3, 6A, 6B and 7, when considered in their entirety, as doing just that. That is to say, we see these questions as setting up the respondents to assume there was no endorsement rather than permitting them to have an uninfluenced reaction. The questions themselves establish that two different entities are involved, Hilson Research and Society for Human Resource Management. Once the respondents were confronted with the information that two distinct entities were involved, we think it quite likely, as borne out by the survey results, that the respondents would not draw a connection between the two. The critical issue in this case, and in any likelihood of confusion dispute, is whether or not consumers are likely to believe, because of the marks used, that goods and/or services emanate from the same source, or that there exists some affiliation or sponsorship connection. Simply put, in specifically identifying that two entities were involved, and essentially putting the respondents on notice that the entities were different, the questions were leading in that they suggested their own answers. See: McCarthy, Trademarks and Unfair Competition, supra at § 32.50[4][b] (Formats Eliciting Responses as to Confusion of Sponsorship, Affiliation or Connection).
The survey results themselves, at least to our way of thinking, detract from Society's contentions. It is important to remember that the respondents are all members of Society. In answering Question 1, almost sixty percent of the respondents indicated that they did not know whether Society, the members' own trade association, competed with any companies that exhibit at Society's annual show. In answering Question 3, forty-six percent indicated that they did not know whether Society endorsed any exhibitor companies at its show. Finally, in answering Question 7, over fifty-six percent did not know whether Society produced any products competitive with Hilson's personality inventories. The above responses lead us to conclude that a significant number of Society's members simply are not sure whether or not Society, their own trade association, would be engaged in, or at least endorsing, the types of services rendered by Hilson. [FN23] This lack of knowledge tends to reinforce our view that Society's past association with other vendors in the field makes it more credible that consumers will believe that an association exists between Hilson and Society.
Although Society's survey has some probative value, we think that the problems outlined above are significant enough that the value to Society is limited.
Other Factors
*19 In wrapping up our analysis of the likelihood of confusion issue, we briefly pause to mention certain other du Pont factors mentioned by Society in its brief on the case. First, we agree with Society that the record falls short of demonstrating that Hilson's mark is so well known as to be famous. The record simply does not support, nor does Hilson seriously contend, that its mark is famous. Cf. Kenner Parker Toys Inc. v. Rose Art Industries Inc., --- F.2d ----, 22 USPQ2d 1453 (Fed.Cir.1992) [fame plays a dominant role in cases featuring a famous mark]. Second, based on the record before us, we harbor no doubt about Society's good faith adoption of its own mark. Although Hilson was an advertiser in Society's publications and an exhibitor at Society's conferences, Society's testimony convinces us of its good faith. Third, the fact that the Trademark Examining Attorney, in the ex parte examination of Society's applications, did not cite Hilson's previously registered mark is irrelevant. The Board is not bound by the actions of the Trademark Examining Attorney who, of course, did not have the benefit of the evidence which has been introduced in these proceedings.
Abandonment
One final matter requires our attention. In its main brief on the case at final hearing, Hilson raises for the first time a claim that Society has abandoned the mark shown in Registration No. 1,583,065. Hilson characterized the abandonment claim as a "secondary issue" and that it is presented to the Board "as an alternative" in the event no likelihood of confusion was found between the parties' marks. Hilson asserts that the mark, as registered, has not been used since March 1989. Hilson relies upon certain testimony (such as the excluded Pilenzo testimony) and evidence, including Society's proposed amendment to its mark four days before its registration issued. Hilson essentially contends that the wording "Human Resource Management" was dropped in favor of "Society For Human Resource Management" as reflected by the February 9, 1990 proposed amendment. [FN24]
Society, in its brief, has vigorously opposed the abandonment claim, contending that the ground was never pleaded and was not raised until the manifestly late juncture of briefing at final hearing.
We find Society's objection to be well taken. Hilson neither pleaded abandonment as a ground for relief in the petition for cancellation nor promptly moved to amend the petition to set forth an abandonment claim after it learned of facts which, Hilson contends, establish such a claim. See: Fed.R.Civ.P. 15(a) and Trademark Rule 2.115. [FN25] Moreover, our reading of the record convinces us that the abandonment issue was never tried, either expressly or implicitly, by the parties. See: Fed.R.Civ.P. 15(b). To allow Hilson to raise a new ground for relief for the first time at final hearing would constitute an undue surprise for Society which had no notice until well after trial that an abandonment claim would be advanced by Hilson. Cf. The Chicago Corp. v. North American Chicago Corp., 20 USPQ2d 1715, 1717 n. 5 (TTAB1991) [applicant's contention, raised for first time in its final brief, that opposer lacks proprietary rights is untimely]. See also: P.A.B. Produits et Appareils de Beaute v. Satinine Societa In Nome Colletivo di S.A.e.M. Usellini, 570 F.2d 328, 196 USPQ 801 (CCPA1978).
*20 In view thereof, no consideration has been given to Hilson's allegations, raised in its final briefs on the case, of abandonment.
Conclusion
We determine the issue of likelihood of confusion in this case based on our opinion of that ultimate issue in light of our conclusions regarding the relevant du Pont factors. In the case before us, the factors weighing in Society's favor are the differences in the services, sophistication of purchasers and the lack of actual confusion. We believe, however, that these factors are outweighed by the substantial similarities in the marks, that the services are rendered to the same classes of purchasers, and that past practice shows Society has associated itself with others in the field in the marketing of human resource products. Moreover, there is no evidence of third-party use of "HR" marks, in the particular stylized form used by Hilson and Society, on similar services. We concede that Society's survey results (although questionable), combined with the other factors in favor of Society, may raise a doubt as to our decision. Moreover, we readily recognize that Society's mark has been widely seen throughout the human resource management field. Nonetheless, any doubt must be resolved in favor of Hilson as the prior user and against Society as the newcomer. See: Century 21 Real Estate Corp. v. Century Life of America, --- F.2d ----, 23 USPQ2d 1698, 1701 (Fed.Cir.1992); and Broderick & Bascom Rope Co. v. Goodyear Tire & Rubber Co., 531 F.2d 1068, 189 USPQ 412 (CCPA1976) [rule applies even as against newcomer which floods the market with advertising and sales].
As shown by the record, Society, on at least two occasions, sponsored or endorsed others' products. We think that Society, in adopting a mark substantially similar to that used by one who advertised in Society's magazine and who was an exhibitor at Society's annual conference, acted at its own peril. See: State Historical Society v. Ringling Bros. Barnum & Bailey Combined Shows, Inc., 190 USPQ 25 (TTAB1976); and American Rice, Inc. v. H.I.T. Corp., 231 USPQ 793 (TTAB1986). We emphasize that the substantial similarities in the marks weigh heavily in our analysis. Contrary to Society's protestations, Hilson is not acquiring exclusive rights in the letters "HR" per se in the industry. We recognize that the letters "HR" appear as a component of designations used throughout the human resource industry. However, Hilson does have exclusive rights in its HR mark, vis-a-vis Society's mark, in the particular stylized form shown in Hilson's registration. It is the fact that the identical letters are displayed in such a substantially similar fashion that causes the problem in this case. In this regard, we note that Hilson has not objected to any of the third-party marks cited by Society. To our eyes, far more than any of these marks, Society's mark comes the closest to Hilson's mark in terms of overall commercial impression.
*21 We are accordingly persuaded that there is a likelihood that consumers encountering the similar HR marks of the parties, as used in connection with their respective services, will be confused into mistakenly believing that Hilson's psychological and personality examination services are somehow sponsored by or associated with Society.
Decision: The opposition is sustained and registration to applicant is refused. The petition for cancellation is granted and Registration No. 1,583,065 will be cancelled in due course.
J.E. Rice
E.J. Seeherman
T.J. Quinn
Members, Trademark Trial and Appeal Board
FN1. The Board, on September 10, 1991, approved the parties' stipulation to consolidate, thereby allowing the parties to present the opposition and cancellation proceedings on the same record and briefs.
FN2. Application Serial No. 74/010,782, filed December 14, 1989, alleging dates of first use of March 8, 1989.
FN3. Registration No. 1,583,065, issued February 13, 1990. The words "Human Resource Management" are disclaimed apart from the mark.
FN4. Registration No. 1,590,288, issued April 3, 1990.
FN5. Hilson makes no further mention of fraud as a ground for relief. We particularly note that Hilson's characterization in its brief of the issues in these consolidated proceedings does not include fraud. Accordingly, we have given no consideration to the allegation of fraud.
FN6. The status and title copy is of Society's Registration No. 1,660,176, issued October 8, 1991 for the mark shown below (lined for the color blue)
for the same services as those recited in its involved application. Hilson filed a petition to cancel (No. 20,331) this registration. The cancellation proceeding was suspended pending the final outcome of these proceedings.
FN7. In addition to Registration No. 1,660,176 cited above, Society has introduced a copy of Registration No. 1,642,778, issued April 30, 1991 for the mark HRMAGAZINE in typed letters for "magazines covering human resource management."
FN8. Testimony may be submitted in declaration form only if the parties so stipulate in writing. See: Trademark Rule 2.123(b). There is no such stipulation in this case. However, Hilson made no objection on this basis, but rather, in its briefs, Hilson considered the evidence as if properly of record. We therefore view Hilson's conduct to be a waiver of any objection, and we likewise have treated the declarations and related exhibits as if properly of record. We also note that, in three instances, the declarants later were deposed and their testimony is of record.
FN9. The notices of reliance on Society's own responses to certain of Hilson's interrogatories and requests for admissions are superfluous inasmuch as Hilson relied upon all of the discovery responses. See: Trademark Rules 2.120(j)(5) and 2.120(j)(7).
FN10. Some of the parties' testimony, both trial and discovery, has been designated as "confidential" pursuant to the parties' protective agreement.
FN11. Trademark Rule 2.120(j)(2) essentially provides, among other things, that the discovery deposition of a third-party witness cannot be offered in evidence except in limited circumstances. One of those circumstances involves a third-party witness whose discovery deposition was taken and who is, during the testimony period of the party offering the deposition, out of the United States (unless it appears that the absence of the witness was procured by the party offering the deposition). Another situation is when such exceptional circumstances exist as to make it desirable, in the interest of justice, to allow the deposition to be used.
FN12. Society also objects to the testimony under Fed.R.Civ.P. 32 and Fed.R.Evid. 403 on the ground that it is speculative, that it confuses the issues, and that it is prejudicial to Society.
While we have ruled that the testimony is admissible, to the extent that the objections are well taken, as for example, when the witness engaged in speculation on the ultimate question of likelihood of confusion, we, of course, have not given any weight to such testimony. See: The Mennen Co. v. Yamanouchi Pharmaceutical Co., Ltd., 203 USPQ 302, 305 (TTAB1979). We hasten to add that even if the Harvey deposition were excluded, we would reach the same result in this case.
FN13. In an opposition, when an opposer properly has introduced a status and title copy of a pleaded registration, the issue of priority does not arise. See: King Candy Co., Inc. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA1974). However, the Board has taken the position that the same is not necessarily true in a cancellation proceeding. See, e.g.: SCOA Industries, Inc. v. Kennedy & Cohen, Inc., 188 USPQ 411 (TTAB1975), appeal dismissed, 530 F.2d 953, 189 USPQ 15 (CCPA1976). Thus, a status and title copy of a petitioner's pleaded registration may not be enough to show that petitioner has superior rights. That is to say, the petitioner must show that it was the first to use the mark or, if no evidence is presented by the respondent and the petitioner owns a registration, that it has the earliest filing date of the applications which matured into the registrations.
FN14. In its response to one of Society's requests for admission, Hilson admitted that it is not claiming the exclusive right to use the letters "HR" per se in the human resources management field (Response, Req. for Admission no. 70). Moreover, in its brief (pp. 14-15), and at oral hearing, Hilson asserted that it makes no claim to exclusive rights to the letters "HR" per se, but rather claims exclusive rights only to the letters "HR" in stylized form with a common right leg of the "H" and left leg of the "R".
FN15. Society's proof includes testimony and evidence, including Hilson's admissions regarding certain third-party uses.
FN16. However, in this case one of the difficulties in comparing the services is determining the exact point where Society's "association services" end and its ancillary services begin.
FN17. The document is captioned "Inventory Of SHRM Programs, Revised 01/11/91". (S1039)
FN18. It is noted that William M. Mercer, Incorporated and Mercer Meidinger Hansen, Inc. have the same address and phone number and would appear to be, for all practical purposes, the same entity.
FN19. In saying this, we are mindful that a few courts have taken a different approach in trademark infringement cases, namely, they have indicated that the failure of a party to conduct a survey, especially if the party has the financial means to do so, may give rise to the inference that the results of the survey would be unfavorable. See, e.g.: Mushroom Makers, Inc. v. R.G. Barry Corp., 441 F.Supp. 1220, 196 USPQ 471 (S.D.N.Y.1977), aff'd, 580 F.2d 44, 199 USPQ 65 (2d Cir.1978), cert. denied, 439 U.S. 1116, 200 USPQ 832 (1979); Eagle Snacks, Inc. v. Nabisco Brands, Inc., 625 F.Supp. 571, 228 USPQ 625 (D.C.N.J.1985); and Universal City Studios, Inc. v. Nintendo Co., 746 F.2d 112, 223 USPQ 1000 (2d Cir.1984). Cf.: Merriam-Webster Inc. v. Random House Inc., --- F.Supp. ----, 26 USPQ2d 1161, 1166-67 (S.D.N.Y.1993). This approach is not without its critics. See: A. Robin and H. Barnaby, Trademark Surveys: Heads You Lose, Tails They Win, 73 TMR 436, 445 (1983); and B. Keller, A Survey of Survey Evidence, Litigation (American Bar Assoc. Fall 1992) ["a troubling trend, [with] little logic to commend it"].
FN20. Hilson used a very slightly modified questionnaire at Society's 1990 annual show.
FN21. This is buttressed by the testimony of certain respondents to the questionnaire who indicated that, in answering the questions, they were concerned with only the similarities between the marks; they gave no consideration to any other factor, most importantly, the services rendered under the marks.
FN22. Question 6 was rotated so that some respondents heard Society mentioned first and others heard Hilson mentioned first. The survey indicates that "[t]his was done to avoid any possible bias which might be induced by the order in which the names were presented to the respondents." (survey, p. 4). Questions "2 and 4 were included as follow-ups to provide more information about the issues explored in questions 1 and 3 respectively, and question 5 was included primarily for analytical purposes." (survey, p. 4). We note that the answers to questions 2 and 4 show that none of the respondents specifically identified Hilson as one which Society either competes with or endorses.
FN23. The members' lack of specific knowledge about Society's activities also serves to undermine Society's contention that its knowledgeable members will know when they are dealing with Society and when they are dealing with someone else. We note that all of Society's declarants (seventeen), as well as its witnesses, testified to the effect that professional associations such as Society do not compete with or endorse vendors in the human resource management profession. Although this belief unanimously was expressed by Society's witnesses, the notion hardly was adopted by the survey respondents, many of whom did not know one way or the other.
FN24. Society filed, after publication and four days before its application matured into a registration, a disclaimer of "Society For Human Resource Management" with the proposed substitute drawing. The Office, to date, has not acted on the proposed amendment. In the event that Society ultimately prevails in these proceedings and Society still wishes to pursue its proposed amendment, Society should file either a formal amendment under Section 7(e), or a petition to the Commissioner, under Trademark Rule 2.146, to invoke his supervisory authority, vacate the issuance of the registration, restore it to application status, and direct the Examining Attorney to consider the amendment. However, Society should be aware that an amendment to the mark, whether offered before or after registration, will be allowed only if the amendment does not alter materially the character of the mark. Trademark Rules 2.72(a) and 2.173(a), and Section 7(e) of the Act. See: In re John LaBatt Ltd., 26 USPQ2d 1077 (Comr.1992).
FN25. If, after the filing of a pleading, a plaintiff learns of information which would serve as the basis for an additional claim, the plaintiff should move promptly to amend its pleading to assert the additional matter. Cf.: Trans Union Corp. v. Trans Leasing International, Inc., 200 USPQ 748 (TTAB1978).