Decisions · 86140341
In re Integrated Embedded (d/b/a Barr Group)
Serial No. 86140341 · Decided 2016-09-27 · Section 2(d) Ex Parte Appeal
What happened
The USPTO’s refusal to register the name BARR GROUP for IT training, engineering, and expert witness services was upheld because (1) BARR GROUP is perceived primarily as a surname (the co-founder Michael Barr is prominently featured in the company’s marketing, and over 13,000 people bear the surname BARR in the U.S.) and (2) the mark is too similar to the already-registered mark BARR for engineering and computer consulting services, with several types of services being legally the same.
The marks
Applicant
BARR GROUP (standard characters; GROUP disclaimed)
IT training services; Training services in the field of design of computer hardware, integrated circuits, communications hardware and software and computer networks for others in International Class 41; Engineering services in the field of design of computer hardware, integrated circuits, communications hardware and software and computer networks for others in International Class 42; and Expert witness services in legal matters in the field of design of computer hardware, integrated circuits, communications hardware and software and computer networks for others in International Class 45
Cited registration
BARR
Engineering services; consulting services in the fields of engineering and scientific studies; technical consultation in the field of the environment; professional computer consulting services; computer software and web site design for others in International Class 42
How the marks compared
| Dimension | Finding | What the Board said |
|---|---|---|
| sound | Similar | BARR GROUP and BARR share the identical dominant element BARR; adding the generic word GROUP does not meaningfully change how consumers say or remember the mark. |
| appearance | Similar | BARR GROUP wholly incorporates BARR; the only difference is the nondistinctive, disclaimed word GROUP appended after the common element. |
| meaning | Similar | Both marks carry only the surname significance of BARR; GROUP merely signals an aggregation of persons led by someone named BARR and adds no independent meaning. |
| commercial impression | Similar | The marks convey commercial impressions that are far more similar than dissimilar because BARR is the sole distinctive element in both marks. |
The marks are highly similar overall because BARR GROUP completely incorporates the registered mark BARR and the only additional word (GROUP) is disclaimed and nondistinctive.
du Pont factors that bore on the outcome
| # | Factor | Weight | What the Board found |
|---|---|---|---|
| 1 | Similarity of the marks | Dispositive — Favored Refusal | BARR GROUP wholly encompasses the cited BARR, and the disclaimed GROUP adds little, so the marks convey highly similar impressions. |
| 2 | Relatedness of the goods or services | Dispositive — Favored Refusal | The registrant’s engineering services encompass the applicant’s more narrowly identified engineering services. |
| 5 | Fame of the prior mark | Neutral | No evidence established the cited mark as famous, and none was required. |
| 6 | Number and nature of similar marks in use | Neutral | The third-party BARR registrations covered such varied goods that their probative value was significantly diminished. |
| 7 | Nature and extent of actual confusion | Neutral | Three years of concurrent use without reported confusion carried little weight. |
| 8 | Length of concurrent use without actual confusion | Neutral | Client-sophistication evidence made this factor neutral or only slightly helpful to the applicant. |
Why this decision is significant
Precedential dual-ground affirmance: a disclaimed generic term (GROUP) added to a surname does not avoid a 2(e)(4) surname refusal where the eponymous founder is front-and-center in marketing, and Rule 2.142(g) limits reopening after remand — with a full 2(d) affirmance besides.
Research significance is Trademark Valet's editorial rating of how useful a decision is to practitioners. It is not a statement of precedential weight — that is the separate Precedential field, which comes from the Board.
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The original record
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