Ajay Pondicherry

Trademark Trial and Appeal Board

Jun 29, 2020

88300249 (T.T.A.B. Jun. 29, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 29, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Ajay Pondicherry
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Serial No. 88300249
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Gene Bolmarcich of the Law Offices of Gene Bolmarcich
for Ajay Pondicherry.
Dezmona Mizelle-Howard, Trademark Examining Attorney, Law Office 110,
Chris A. F. Pedersen, Managing Attorney.
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Before Kuhlke, Lykos and Coggins,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:

Ajay Pondicherry (“Applicant”) seeks to register on the Principal Register the
standard character mark BLOCK PARTY1 for “Online marketing services for

1 Applicant’s mark appears on the drawing page as “Block Party” but retains a claim as to
standard characters and not special form. The presentation of the mark on the drawing page
does not change the nature of the mark from a standard character mark to a special form
mark. See Trademark Rule 2.52(a), 37 C.F.R. § 2.52(a) (setting forth requirements for
standard character mark). See also In re Calphalon Corp., 122 USPQ2d 1153, 1158-61 (TTAB
2017) (applicant’s amendment of mark from SHARPIN to SharpIn did not transform mark
from standard character to special form). Our references to Applicant’s mark in this opinion
in all uppercase letters reflects the fact that a term registered as a mark in standard
character format is not limited to any particular font style, size, or color.
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mortgage, real estate, and personal finance professionals” in International Class 35.2
Registration was refused under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground that Applicant’s applied-for mark so resembles the
registered standard character mark BLOCK PARTY SUITES (SUITES disclaimed)
on the Supplemental Register for “mobile advertising for others; outdoor advertising;
renting of advertising spaces” in International Class 35,3 that it is likely to cause
confusion or mistake or to deceive.
When the refusal was made final, Applicant appealed and subsequently filed a
request for reconsideration which was denied. The appeal is now briefed. We affirm.
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. DuPont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”). See
also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). We must consider each DuPont factor for which there is evidence and
argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-
63 (Fed. Cir. 2019). When analyzing these factors, the overriding concerns are not
only to prevent buyer confusion as to the source of the services, but also to protect the

2 Application Serial No. 88300249, filed February 13, 2019, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce.
3 Registration No. 5168596, registered March 21, 2017. The registration also includes
services identified as “setup of entertainment-based mobile venues, namely, converted
shipping containers, tents, couches, chairs, bars, bar stools, bar top tables, trusses for lighting
and signage” in International Class 41; however, these services were not cited by the
Examining Attorney as a basis for the refusal.
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registrant from adverse commercial impact due to use of a similar mark by a
newcomer. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir.
1993). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the services. See In re
Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative
effect of differences in the essential characteristics of the goods and differences in the
marks.”). These factors, which are the only DuPont factors argued by the Applicant
and Examining Attorney, are discussed below.
A. The Services
First we compare the services as they are identified in the involved application
and cited registration. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d
1047, 1052 (Fed. Cir. 2018); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Hous.
Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) and
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir.
2002). The services need not be identical or even competitive to find a likelihood of
confusion. On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471,
1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898
(Fed. Cir. 2000). They need only be “related in some manner and/or if the
circumstances surrounding their marketing are such that they could give rise to the
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mistaken belief that [the services] emanate from the same source.” Coach Servs., Inc.
v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012)
(quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). Evidence of
relatedness may include news articles and/or evidence from computer databases
showing that the relevant services are used together or used by the same purchasers;
advertisements showing that the relevant services are advertised together or sold by
the same manufacturer or dealer; and/or copies of prior use-based registrations of the
same mark for both applicant’s services and the services listed in the cited
registration. See, e.g., In re Davia, 110 USPQ2d 1810, 1817 (TTAB 2014) (finding
pepper sauce and agave related where evidence showed both were used for the same
purpose in the same recipes and thus consumers were likely to purchase the products
at the same time and in the same stores). Likelihood of confusion must be found as to
the entire class if there is likely to be confusion with respect to any service that comes
within the identification of services in that class. In re C.H. Hanson Co., 116 USPQ2d
1351, 1355 (TTAB 2015) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648
F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)).
From the identifications alone, we can conclude that Applicant’s and Registrant’s
services may be used together and targeted to the same consumers. Registrant’s
services are unrestricted as to any particular professional field. As such, they may
also be directed towards “mortgage, real estate, and personal finance professionals”
as stated in Applicant’s more narrowly identified “online marketing services.” Cf. In
re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s
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broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s
narrowly identified ‘residential and commercial furniture.’”). Mortgage, real estate
and personal finance professionals seeking “online marketing services” are likely to
also be looking for a compatible advertising service which could potentially include
Registrant’s “mobile advertising for others; outdoor advertising; renting of
advertising spaces.”
In addition, the Examining Attorney submitted use-based, valid and subsisting,
third-party registrations to show that the services are related. By way of illustration,
we highlight the following:
Registration No. 6013379 for the mark for
“advertisement via mobile phone networks … marketing
services, namely, promoting or advertising the goods and
services of others; marketing, advertising, and promoting
the retail goods and services of others through wireless
electronic devices; marketing, promotional and advertising
services provided by mobile telephone connections; mobile
advertising services for others…” in International Class 35;
Registration No. 6005222 for the standard character mark
EMBO for “advertising analysis; advertising services; …
marketing consulting; marketing services; mobile
advertising services for others…” in International Class 35;
Registration No. 5965643 for the mark for “mobile
advertising services for others; marketing, promotional
and advertising services provided by mobile telephone
connections” in International Class 35;
Registration No. 5906903 for the standard character mark
TEN PEAKS DIGITAL for “marketing the goods and
services of others by means of location-based messaging;
mobile advertising services for others; … rental of
advertising space …” in International Class 35;
Registration No. 5834232 for the standard character mark
NEW TRADITION for “advertising and marketing;” …
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“outdoor advertising; preparing and placing outdoor
advertisements for others; … mobile advertising services
for others” in International Class 35; and
Registration No. 5998146 for the mark for
“advertising services … marketing services; rental of
advertising space …” in International Class 35.4
As a general proposition third-party registrations that cover services from both the
cited registration and an Applicant’s application are relevant to show that the
services are of a type that may emanate from a single source under one mark. See,
e.g., Detroit Athletic, 128 USPQ2d at 1051; Hewlett-Packard, 62 USPQ2d at 1004; In
re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel
& Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co.,
6 USPQ2d 1467, 1470 n.6 (TTAB 1988). Just as we must consider the full scope of the
services as set forth in the application and registration under consideration, we must
consider the full scope of the services described in a third-party registration. Because
the benefits of registration are commensurate with the scope of the services specified
in the certificate of registration, a registration that describes services broadly is
presumed to encompass all services of the type described. See Stone Lion, 110
USPQ2d at 1161. See also In re Country Oven, Inc., 2019 USPQ2d 443903, *5-6 (TTAB
2019) (the terms “bakery goods” and “bakery products” in third-party registrations
were sufficiently broad to encompass “bread buns.”).
Applicant, pointing to the specimen supporting registration of the cited mark,

4 See July 2, 2019 Final Office Action and December 30, 2019 Request for Reconsideration.
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argues that the services are distinct.5 Excerpts are reproduced below:

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Applicant contends that because the same specimen was accepted by the Office as
support for both the International Class 35 and 41 services, we can infer that
Registrant’s “provision (i.e. rental) of event spaces was considered a form of ‘mobile
Advertising’ for the user of the space, and [that] the event spaces (or ‘suites’) were
considered ‘advertising spaces’ and ‘outdoor advertising.’”6 Elaborating further,
Applicant takes the position that “mobile advertising” in the identification of services
in the cited registration is vague and that the Examining Attorney has misconstrued
the nature of these services. Applicant urges the Board to consider Registrant’s
specimen in evaluating the nature of the services by applying the principle that “[i]f
an identification of goods or services is technical or vague and requires clarification,
extrinsic evidence of use may be considered to determine the meaning of the
identification.” Edwards Lifesciences Corp. v. Vigilanz Corp., 94 USPQ2d 1399, 1410
(TTAB 2010) (citing In re Trackmobile, 15 USPQ2d 1152, 1154 (TTAB 1990)).
As the case law makes clear, resort to extrinsic evidence is appropriate only in
instances where the description of the goods or services is vague, for example due to
their technical nature. See id. The language in the cited registration of “mobile
advertising services for others” clearly delineates a generally accepted and recognized
International Class 35 service.7 In this instance, because the nature of the services is

5 See June 11, 2019 Response to Office Action, pp. 10-13. As noted earlier, the cited
registration also includes International Class 41 services.
6 Applicant’s Brief, 7 TTABVUE 3.
7 See ACCEPTABLE IDENTIFICATION OF GOODS AND SERVICES MANUAL (“ID Manual”) at
www.uspto.gov, Entry No. 035-2679 showing that “mobile advertising services for others” is
an acceptable identification of services as written, effective as of December 4, 2014. For more
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definite, we apply the more general principle that we compare the services as
identified, rather than by any extrinsic evidence. See, e.g., Octocom, 16 USPQ2d at
1787; Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813, 1815-16 (Fed. Cir. 1987); CBS Inc. v. Morrow, 708 F.2d 1579,
218 USPQ 198, 199 (Fed. Cir. 1983); and Squirtco v. Tomy Corp., 697 F.2d 1038, 216
USPQ 937, 940 (Fed. Cir. 1983). Thus, we cannot presume that such International
Class 35 services are a variation of the outdoor rental of event space services in
International Class 41 as Applicant asks us to conclude.
Insofar as the services are commercially related and complimentary in nature,
and may be directed to the same categories of professionals, we find this DuPont
factor supports a finding of a likelihood of confusion.
B. The Marks

This DuPont likelihood of confusion factor involves an analysis of the similarity or
dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005)
(citing DuPont, 177 USPQ at 567). “Similarity in any one of these elements may be
sufficient to find the marks confusingly similar.” In re Inn at St. John’s, 126 USPQ2d
at 1746) (citing In re Davia, 110 USPQ2d at 1812). “The proper test is not a side-by-
side comparison of the marks, but instead ‘whether the marks are sufficiently similar

information the ID Manual, see Section 1402 “Acceptable Identification of Goods and Services
Manual” of THE TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) (Oct. 2018).
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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, 101 USPQ2d at 1721. Our analysis cannot be predicated on
dissecting the marks into their various components; that is, the decision must be
based on a comparison of the entire marks, not just part of the marks. In re Nat’l
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). See also Franklin
Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“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.”).
Applicant contends that the marks project different meanings when considered in
relation to the identified services. In Applicant’s view, his applied-for mark BLOCK
PARTY “plays on the connection between a neighborhood block party and the
relevance of neighborhoods in the real estate business” while BLOCK PARTY
SUITES “calls attention to the term ‘PARTY SUITES’ and the fact that the sites can
be built out like ‘blocks.’”8
Applicant’s position is unconvincing. In considering Applicant’s mark, we agree
with the Examining Attorney’s assessment that BLOCK PARTY, as opposed to
PARTY SUITES, in the cited mark is dominant. Purchasers are inclined to focus on
the first word or portion in a trademark; in Applicant’s mark, BLOCK PARTY is the
first part. See Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB
1988) (“[It is] a matter of some importance since it is often the first part of a mark

8 Applicant’s Brief, 7 TTABVUE 5.
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which is most likely to be impressed upon the mind of a purchaser and remembered.”);
see also, Palm Bay, 73 USPQ2d at 1692 (finding similarity between VEUVE ROYALE
and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a
‘prominent feature’ as the first word in the mark and the first word to appear on the
label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY
LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead
word”); see also In re Detroit Athletic, 128 USPQ2d at 1049 (finding “the identity of
the marks’ two initial words is particularly significant because consumers typically
notice those words first”). SUITES is generic, and properly disclaimed;9 and therefore
is of diminished significance for purposes of comparing the marks on the likelihood of
confusion question. For this reason consumers are more likely to focus on BLOCK
PARTY, the entirety of Applicant’s mark. And given the strong relationship between
the services as explained above, it is unlikely that consumers will attribute different
meanings to the marks.
Although we have pointed to the identical elements of the marks, we acknowledge
the fundamental rule that the marks must be considered in their entireties. See Jack
Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports,
S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015). Nevertheless, it is
likely that consumers, when encountering Registrant’s mark, will focus on the

9 We draw that conclusion based on the fact that the cited mark is registered on the
Supplemental Register.
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dominant initial portion, namely the term BLOCK PARTY, and assume that
Applicant’s mark is merely a shortened version. The emphasis must be on the
recollection of the average purchaser who normally retains a general, rather than
specific, impression of trademarks. In re Cynosure, Inc., 90 USPQ2d 1644, 1645
(TTAB 2009) (citing Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB
1975)).
In sum, we acknowledge the specific differences in sound and appearance pointed
out by Applicant. These differences, however, are outweighed by the similarities of
the marks. Thus, when comparing the marks overall, they are similar in sight, sound,
connotation and commercial impression. We find this DuPont factor also weighs in
favor of finding a likelihood of confusion.
C. Balancing the Factors
We have carefully considered all of the evidence made of record, as well as all of
the arguments related thereto. Marks that are registered on the Supplemental
Register may constitute a bar to registration under Section 2(d). In re Clorox Co., 578
F.2d 305, 198 USPQ 337, 341 (CCPA 1978). Such is the case here, where we have
highly similar marks and related services which could be provided to the same
categories of professionals, prospective consumers are not likely to understand that
the services emanate from different sources. These findings lead us to the conclusion
that prospective consumers are likely to confuse the source of the involved services.
Decision: The Section 2(d) refusal is affirmed.