​FocusVision Worldwide, Inc. v. Information Builders, Inc., 2021 USPQ2d 638 (Fed. 2021)
 
FocusVision provides services to businesses that wish to conduct marketing research, including online access to software for use in collecting, storing, and sharing data from consumer surveys.
In 2016, It applied to register the mark FOCUSVISION in International Class 42.
FOCUSVISION was intended to register under Class 42 for providing “temporary use of online software for conducting and analyzing market research as well as for use in data collection and data management in the field of market research.” One interesting fact of Class 42 is that Class 42 consists of scientific and technological services rather than goods, and appliers need to submit the proof of the services which the trademark is clearly visible.
IBI opposed FocusVision’s application under 15 U.S.C § 1052(d) arguing that FocusVision’s mark will create a likelihood of confusion with IBI’s current mark. IBI relied its argument based on two related IBI registrations on its principal registered mark FOCUS. The first was registered in 1991, for computer programs for data/base management. The second was registered in 2004, for “computer software for database management” as well as for “computer database programs for use in connection with decision support, analysis, and reporting programs.”
15 U.S.C § 1052(d) claims that trademark by which the goods of the applicant shall be refused if it “Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.”
Likelihood of confusion is generally determined by reviewing a set list of factors; and in the Federal Circuit, these are called the DuPont factors. And the Board looked into many of the DuPont factors including the similarity of the goods and services, similarity of the marks, the similarity of trade channels, the sales conditions and purchaser sophistication (whether or not the purchaser in general has knowledge and experience to evaluate the products), and the strength of IBI’s FOCUS marks – supports a finding of likelihood of confusion and denied registration of the FOCUSVISION mark. FocusVision appealed the Board’s decision. On appeal, FocusVision challenged the Board’s analysis on several DuPont factors including the 1) similarity of the marks, 2) the similarity of the goods and service at issue, 3) the similarity of the trade channels, 4) the sale conditions and purchaser sophistication, 5) the fame of IBI’s FOCUS marks, and 6) actual confusion.
A (The First DuPont)
FocusVision argues that the Board improperly dissected its mark to focus on its FOCUS component, rather than considering the mark as a whole.
As long as the Board considers “all of the features of the mark,” “it is not improper to state that, for rational reasons, more or less weight has been given to a particular feature of the mark, provided the ultimate conclusion resets on consideration of the marks in their entireties.” The addition of Vision does not change the meanings of the FOCUS. FOCUS works as first term in both marks and will most likely create confusion.
B (The Second DuPont)
FocusVision argues that the Board conflated “database management” and “database programs” (IBI’s goods) and “data collection and data management” (FocusVision’s services).
Even though FocusVision’s services are not identical to IBI’s services, they are still closely enough related to support a finding of likelihood of confusion.
C (The Third and Fourth DuPont)
The Third and Fourth DuPont aims to compare both parties’ trade channels and classes of consumers. FocusVision argued that its system is unique because it provides its pertinent service only through its own online portal. It also argued that the relative high prices of its service comparing with IBI’s should be enough for purchasers to exercise a higher degree of care, which should have made confusion less likely.
D (The Fifth and sixth DuPont)
The Fifth and Sixth DuPont concerns the fame of IBI’s FOCUS marks and whether similar marks are used on similar goods. The Board correctly concluded that IBI’s FOCUS marks are legally presumed to be valid and at least suggestive. (A mark that is suggestive may be registered, but a mark that is merely descriptive may not be registered without showing that it has acquired secondary meaning)
E (The Seventh and Eighth DuPont)
The Seventh and Eighth DuPont factors concern actual confusion between the marks, especially the nature and extent of any actual confusion and the length of time during and conditions under which there has been concurrent use without evidence of actual confusion. The Board found these factors to be neutral.
The court affirmed the Board’s decision and denied IBI’s motion to strike.