4Sight Construction Group, LLC

Trademark Trial and Appeal Board

Nov 19, 2015

No. 86243775 (T.T.A.B. Nov. 19, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: November 19, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re 4Sight Construction Group, LLC
_____

Serial No. 86243775
_____

Donna P. Gonzales of Lathrop & Gage LLP,
for 4Sight Construction Group, LLC.
Nicole Nguyen, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
_____

Before Mermelstein, Lykos and Greenbaum,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
4Sight Construction Group, LLC (“Applicant”) seeks registration on the
Principal Register of the mark

Serial No. 86243775
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for
Contractor services, namely, review of and remedial
recommendations for building plumbing, electrical and
mechanical systems for others; Furnace installation and
repair; General construction contracting; General
contractor services, namely, plumbing, heating and air
conditioning, carpentry, drywall, painting, electrical,
building and framing contractor services; Plumbing;
Plumbing and gas and water installation; Plumbing
contractor services; Plumbing services; Repair or
maintenance of industrial furnaces in International Class
37.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark, when used in connection with the identified services, is likely to
cause confusion with the mark FORESITE (in standard characters) on the Principal
Register for
Real estate management; real estate and facilities
valuation services; real estate and facilities portfolio
administration, namely, building management; real
estate brokerage; real estate listing; real estate
syndication; real estate portfolio management; leasing of
real estate; and consultation services related thereto; real
estate consulting and advisory services in International
Class 36,
and

1 Application Serial No. 86243775 was filed on April 6, 2014, based upon Applicant’s claim
of first use anywhere and use in commerce since at least as early as December 28, 2010.
The mark is described as follows: “The numeral ‘4’ precedes the word ‘sight’ with the word
‘construction’ underneath. Around the numeral ‘4’ are three points of a compass consisting
of a half-circle with three points which would represent north, west, and south on a
compass.” Color is not claimed as a feature of the mark. In addition, the word
CONSTRUCTION has been disclaimed.

Serial No. 86243775
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Real estate development; real estate site selection and
development in International Class 37.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Evidentiary Issue
Before proceeding to the merits of the refusal, we address an evidentiary matter.
To support its argument that there are differences between developers and
contractors, and also between developers and builders, Applicant attached to its
reply brief printouts of Internet search results, a newspaper article and two blogs,
none of which previously were made of record.3
“The record in the application should be complete prior to the filing of an appeal.
The Trademark Trial and Appeal Board will ordinarily not consider additional
evidence filed with the Board by the appellant or by the examiner after the appeal
is filed.” 37 C.F.R. § 2.142(d). See In re Compania de Licores Internacionales S.A.,
102 USPQ2d 1841, 1843 (TTAB 2012). The applicant has the responsibility to make
sure that the record is complete prior to filing a notice of appeal. In re Van
Valkenburgh, 97 USPQ2d 1757, 1768 n.32, 1769 (TTAB 2011).
As was the case in Compania de Licores, 102 USPQ2d at 1843, Applicant in the
instant proceeding had the opportunity to present this evidence during ex parte
prosecution or when the application was remanded to the Examining Attorney after

2 Reg. No. 335632 issued December 11, 2007, Section 8 accepted and Section 15
acknowledged.
3 4 TTABVUE 15-35.
Serial No. 86243775
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the appeal was filed, but Applicant did not do so.4 Inasmuch as the printouts
submitted with Applicant’s reply brief were not timely made of record during
examination, they are stricken and we have given them no further consideration.
Id. See also, e.g., In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1165 n.3
(TTAB 2013) (new evidence submitted with reply brief is “untimely and therefore
not part of the record for this case”); In re HSB Solomon Assocs., LLC, 102 USPQ2d
1269, 1274 (TTAB 2012) (printouts submitted with reply brief not considered).
II. Applicable Law
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905 (Fed. Cir. 2012); and In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods or services. See
Federated Foods, Inc. v. Fort Howard 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 [or services] and differences
in the marks.”).

4 Instead, Applicant submitted with its April 20, 2015 Request for Reconsideration only a
two-page printout from Registrant’s website, which we discuss below.
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A. The Similarities and Dissimilarities Between the Marks
We begin by comparing Applicant’s mark with Registrant’s mark
FORESITE in their entireties in terms of sound, appearance, meaning and
commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). “The proper test
is not a side-by-side comparison of the marks, but instead ‘whether the marks are
sufficiently similar in terms of their commercial impression’ such that persons who
encounter the marks would be likely to assume a connection between the parties.”
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713,
1721 (Fed. Cir. 2012) (internal citation omitted). The focus is on the recollection of
the average purchaser, who normally retains a general rather than a specific
impression of trademarks. In re Binion, 93 USPQ2d 1531 (TTAB 2009); Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Our analysis cannot be predicated on dissection of the involved marks. Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161 (Fed. Cir. 2014). Rather, we are obliged to consider the marks in their
entireties. Id. See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212
USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected
and considered piecemeal; rather, it must be considered as a whole in determining
likelihood of confusion.”). Nonetheless, 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 a consideration of the marks in
Serial No. 86243775
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their entireties. Stone Lion, 110 USPQ2d at 1161. For instance, as our principal
reviewing court has observed, “[t]hat a particular feature is descriptive or generic
with respect to the involved goods or services is one commonly accepted rationale for
giving less weight to a portion of the mark.” See In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Applicant argues that the differences in the marks in appearance due to the
additional wording and design element in Applicant’s mark are sufficient to
distinguish them, and that the marks create different commercial impressions. The
Examining Attorney focuses on the aural similarities between Registrant’s mark
FORESITE and the literal element 4SIGHT in Applicant’s mark, which she
contends is the most distinctive portion, and therefore the strongest source
identifying element, of Applicant’s mark.5
Although the marks are not identical, they are similar in that the term 4SIGHT
in Applicant’s mark is phonetically equivalent to the entirety of Registrant’s mark
FORESITE. See Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461, 462
(TTAB 1985) (“the word portion of applicant’s mark ‘SEYCOS’, is virtually the
phonetic equivalent of opposer’s ‘SEIKO’ mark and is, in fact, the phonetic
equivalent of the plural of opposer’s mark”). In certain circumstances, similarity in
sound alone may be sufficient to find the marks confusingly similar. In re 1st USA
Realty Prof’ls, Inc., 84 USPQ2d 1581, 1986 (TTAB 2007); In re White Swan Ltd., 8

5 As Applicant points out, the Examining Attorney refers to Registrant’s mark as
FORESIGHT, rather than FORESITE, throughout her brief. This typographical error is of
no consequence to our analysis, which focuses on Registrant’s mark as it is spelled in the
registration.
Serial No. 86243775
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USPQ2d 1534, 1535 (TTAB 1988). Moreover, although both 4SIGHT and
FORESITE are spelled differently than the common term “foresight,” which is
defined as “an act of looking forward,” they both would be easily recognized as
spelling variations of, and phonetically equivalent to, the properly-spelled word.6
The addition to Applicant’s mark of the highly descriptive (if not generic) word
CONSTRUCTION, which has been disclaimed, is not sufficient to distinguish the
marks. 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 National Data, 224 USPQ at 752); In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code
Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often
“less significant in creating the mark’s commercial impression”). Furthermore, the
wording 4SIGHT is larger, darker, and more visually prominent than the additional
disclaimed word CONSTRUCTION in Applicant’s mark, and the word
CONSTRUCTION is relatively small and appears in a lighter font than the other
elements in Applicant’s mark.
To the extent consumers would recognize the design element in Applicant’s mark
as a partial compass, the design enhances the “forward looking” meaning of the

6 We take judicial notice of the above definition from the Merriam-Webster online dictionary
www.merriam-webster.com. The Board may take judicial notice of dictionary definitions,
Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist
in printed format or have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375,
1377 (TTAB 2006).
Serial No. 86243775
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literal element 4SIGHT, which consumers will view and pronounce the same as
FORESITE and the properly spelled word “foresight.” The design element in
Applicant’s mark therefore does not distinguish Applicant’s mark from Registrant’s
mark. Where marks consist of words and a design, the words normally are given
greater weight because they would be used by consumers to discuss, recommend or
request the services. In re Dakin's Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB
1999); In re Appetito Provisions Co., 2 USPQ2d 1553, 1554 (TTAB 1987). See CBS
Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983) (“in a composite
mark comprising a design and words, the verbal position of the mark is the one
most likely to indicate the origin of the goods to which it is affixed.”).
For these reasons, we find that 4SIGHT is the dominant term in Applicant’s
mark, and accordingly, it is entitled to more weight in our analysis. In coming to
this conclusion, we do not discount the presence of the additional wording and
design in Applicant’s mark. However, for the reasons discussed above, we find that
the term 4SIGHT in Applicant’s mark is more prominent, and more likely to be
remembered by consumers, than the other elements of the mark.
The marks also engender the same meanings and commercial impressions in
that 4SIGHT, the dominant term in Applicant’s mark, and FORESITE, the entirety
of Registrant’s mark, appear to be variations of the common word “foresight,”
which, as noted above, means “looking forward.” We are simply unpersuaded by
Applicant’s unsupported assertion that the connotations of Applicant’s mark
and Registrant’s mark FORESITE differ.
Serial No. 86243775
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The term 4SIGHT in Applicant’s mark is identical in sound to the entirety of
Registrant’s mark FORESITE. As a result, we find that, when viewed in their
entireties, the marks and FORESITE are more similar than they are
different and, overall, convey similar commercial impressions. That is to say, the
marks appear to be variations of the common word “foresight,” and point to a
common source. This du Pont factor thus favors a finding of likelihood of confusion.
B. Relatedness of the Services and Channels of Trade
We next consider the services and channels of trade. We must make our
determinations under these factors based on the services as they are identified in
the registration and application. See Dixie Rests., 41 USPQ2d at 1534. See also
Stone Lion, 110 USPQ2d at 1161; Hewlett-Packard Co. v. Packard Press Inc., 281
F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). It is
settled that it is not necessary that the respective services be identical or even
competitive in order to find that they are related for purposes of our likelihood of
confusion analysis. That is, the issue is not whether consumers would confuse the
services themselves, but rather whether they would be confused as to the source of
the services. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). The respective
services need only be “related in some manner and/or if the circumstances
surrounding their marketing [be] such that they could give rise to the mistaken
belief that [the services] emanate from the same source.” Coach Servs., 101 USPQ2d
at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).
Serial No. 86243775
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See also In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
Applicant argues that the services identified in the application differ, and
operate independently from, the services identified in the registration. In making
this argument, Applicant has asked the Board to take judicial notice that “Applicant
and Registrant’s services are substantially different,” and that “real estate
development,” as used in Registrant’s identification of services, “is usually thought
of as the development of land (i.e., without any buildings).” (emphasis in original).7
The Examining Attorney has objected to this request.8
Although the Board may take judicial notice of dictionary definitions, as we have
done in this case, Applicant has not provided the Board with a dictionary definition
or any other record evidence of the meaning of “real estate development.” And,
although the Board may take judicial notice of commonly accepted facts, that
“Applicant and Registrant’s services are substantially different” and Applicant’s
proposed definition of “real estate development” are not such facts. Compare In re
Major League Umpires, 60 USPQ2d 1059, 1060 n.2 (TTAB 2001) (taking judicial
notice that the National League is part of Major League Baseball), and In re Brown-
Forman Corp., 81 USPQ2d 1284, 1286 TTAB 2006) (denying request for judicial
notice that Moulin Rouge is a famous nightclub in Paris and that its name served as
the title of a film starring Nicole Kidman that was nominated for an Academy

7 7 TTABVUE 13-14.
8 9 TTABVUE 15.
Serial No. 86243775
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Award). We therefore sustain the objection, and do not take the requested judicial
notice.
Applicant also points to a printout from Registrant’s website, which Applicant
attached to its April 20, 2014 Request for Reconsideration, as evidence that
Applicant and Registrant provide different services. However, what Applicant and
Registrant actually offer under their respective marks is not relevant. We are bound
by the identifications of services in the application and registration, respectively,
and cannot limit the services to what Applicant’s evidence shows them currently to
be. Stone Lion, 110 USPQ2d at 1162; see also In re Thor Tech Inc., 90 USPQ2d
1634, 1637-38 (TTAB 2009) (“we must also analyze the similarity or dissimilarity
and nature of the goods based on the description of the goods set forth in the
application and the registration at issue … we may not limit or restrict the trailers
listed in the cited registration based on extrinsic evidence.”).
Contrary to Applicant’s unsupported contention that Applicant’s and
Registrant’s identified services are “substantially different,” we find them to be
commercially related. As evidence of this commercial relationship, the Examining
Attorney submitted with the July 25, 2014 Office Action ten third-party use-based
registrations which include construction or general contractor services on the one
hand, and real estate management, brokerage, leasing or development services on
the other. Some examples are: Reg. No. 2808956 for the mark NEXT > EDGE; Reg.
No. 2822411 for the mark ; Reg. No. 3169917 for the mark TSO; Reg. No.
Serial No. 86243775
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3849012 for the mark A VOLT INFORMATION SCIENCES COMPANY; and Reg.
No. 4167341 for the mark THE FEDERATED COMPANIES.
We find these registrations persuasive evidence that the services are of a kind
that may emanate from a single source under a single mark. See In re Mucky Duck
Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). See also In re Anderson, 101
USPQ2d 1912, 1919 (TTAB 2012); In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785-86 (TTAB 1993).
The Examining Attorney also submitted printouts from ten third-party websites
showing a variety of companies providing both construction and general contracting
services such as those identified in the application, and various real estate services
including real estate brokerage, leasing, property management and development,
such as those identified in the registration, under the same mark. A representative
sample includes the websites of JLL,9 Douglas Wilson Companies,10 Casilio
Companies,11 Blackledge Real Estate,12 Maven,13 and Kitchell.14
Based upon the evidence of record, we find that consumers would believe that
Applicant’s identified construction and general contracting services are related to
Registrant’s various identified real estate services, and may emanate from a
common source.

9 www.us.jll.com attached to July 25, 2014 Office Action.
10 www.douglaswilson.com attached to July 25, 2014 Office Action.
11 www.casilioco.com attached to July 25, 2014 Office Action.
12 www.blackledgeri.com attached to February 20, 2015 Office Action.
13 www.mavenbrands.com attached to February 20, 2015 Office Action.
14 www.kitchell.com attached to February 20, 2015 Office Action.
Serial No. 86243775
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Considering the channels of trade, because the services are related and the
identifications of services in the application and registration contain no limitations,
it is presumed that the services identified therein move in all channels of trade
normal for those services, and that they are available to all classes of purchasers for
those services, such as commercial and residential property owners. Stone Lion, 110
USPQ2d at 1161. See also Coach Servs., 101 USPQ2d at 1723 (absent limitation
“goods are presumed to travel in all normal channels … for the relevant goods.”). As
neither the application nor the registration contain limitations as to the channels of
trade or classes of purchasers, and in light of the evidence of third party commercial
websites which offer the types of services identified in the application and
registration (see, e.g., www.douglaswilson.com, www.blackledgeri.com,
www.mavenbrands.com), we find them to be the same or similar. See Anderson, 101
USPQ2d at 1920.
In view of the above, the du Pont factors of the similarity of the services and the
channels of trade favor a finding of likelihood of confusion.
C. Purchasing Conditions
With regard to the conditions of sale, Applicant argues that the relevant
consumers of both Applicant’s and Registrant’s identified services are “highly
sophisticated and exercise great care before purchasing either of the parties’
services,” and that such consumers only request “multi-million dollar projects.”15
However, Applicant’s restriction of potential purchasers of Applicant’s or

15 7 TTABVUE 14.
Serial No. 86243775
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Registrant’s identified services is not supported by the identifications, neither of
which is limited to “multi-million dollar projects.” As stated above, we are bound by
the identifications as written in the application and cited registration, and cannot
limit Applicant’s or Registrant’s services – or classes of customers – to what any
evidence may show them to be. Stone Lion, 110 USPQ2d, at 1162 (“It was proper,
however, for the Board to focus on the application and registrations rather than on
real-world conditions, because ‘the question of registrability of an applicant’s mark
must be decided on the basis of the identification of goods set forth in the
application.”); Dixie Rests., 41 USPQ2d at 1534; In re Bercut-Vandervoort & Co., 229
USPQ 763, 764-65 (TTAB 1986).
Despite the lack of evidence regarding the purchasing processes in which
consumers of Applicant’s and Registrant’s services engage, we recognize that some
of the services identified in the application and registration most likely would
involve a certain level of care. On the other hand, the record does not support a
finding that the conditions of sale would outweigh the other du Pont factors. As the
Examining Attorney correctly observed, even sophisticated purchasers are not
necessarily immune from source confusion. Imagineering Inc. v. Van Klassens Inc.,
53 F.3d 1260, 34 USPQ2d 1526, 1530 (Fed. Cir. 1995) (“the record shows that the
buyers of Imagineering’s and Van Klassens’ furniture are sophisticated. While a
sophisticated purchaser might more easily discern distinctions between Van
Klassens’ and Imagineering’s furniture, the record in this case shows that even a
trained furniture salesman could not distinguish the two products.”); HRL Assoc.,
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Inc. v. Weiss Assoc., Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, 902 F.2d 1546, 14
USPQ2d 1840, 1841-42 (Fed. Cir. 1990) (similarities of goods and marks outweigh
sophisticated purchasers, careful purchasing decision, and expensive goods).
This du Pont factor is neutral.
III. Conclusion
We have carefully considered all evidence of record and Applicant’s arguments,
even if not specifically discussed herein, as they pertain to the relevant du Pont
factors. We treat as neutral any du Pont factors for which there is no evidence or
argument of record. In view of the foregoing, we conclude that prospective
purchasers familiar with the registered mark FORESITE for the various real estate
services identified in the registration would be likely to believe, upon encountering
Applicant’s substantially similar mark for the construction and general
contractor services identified in the application, that such services emanate from, or
are sponsored by or affiliated with the same source.
Decision: The Section 2(d) refusal to register Applicant’s mark is
affirmed.