Amazon Technologies, Inc.v.Jeffrey S. Wax

Trademark Trial and Appeal Board

Mar 30, 2012

No. 91187118 (T.T.A.B. Mar. 30, 2012)

With ref

Mailed: 3/30/12

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Amazon Technologies, Inc.
v.
Jeffrey S. Wax
_____

Opposition No. 91187118
to application Serial No. 78001126
filed on March 27, 2000
_____

Linda K. McLeod and Stephanie H. Bald of Finnegan,
Henderson, Farabow, Garrett & Dunner for Amazon
Technologies, Inc.

Jeffrey S. Wax, pro se.
______

Before Quinn, Kuhlke and Wellington,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

On March 27, 2000, Jeffrey S. Wax (“applicant”) and
Steven M. Freeland jointly filed an intent-to-use
application to register the mark AMAZON VENTURES, in typed
form and with VENTURES disclaimed, for “investment
management, raising venture capital for others, investment
consultation, and capital investment consultation.”1 Amazon

1 Application Serial No. 78001126. Mr. Freeland assigned his
interest in the mark and application to Mr. Wax on October 20,
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Opposition No. 91187118
2
Technologies, Inc. (“opposer”) opposes registration of the
mark under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, when used in
connection with applicant’s services, so resembles opposer’s
previously-used and registered mark AMAZON.COM (and
variations thereof) for a variety of services, including
credit card services and providing a searchable on-line
database featuring goods and services of others in the field
of finances, as to be likely to cause confusion. In its
“revised” amended notice of opposition, filed January 27,
2010, opposer also asserts additional claims, which are
addressed below. In his answer, applicant denies the
salient allegations in the amended notice of opposition, and
asserts as an affirmative defense that he has “constructive
use priority over Opposer’s asserted common law rights and
cited registrations.”2
Relevant Prior Decisions and ACR Stipulation
This case has a rather extensive, tortured history,
including multiple motions for sanctions and multiple
motions for summary judgment. While that entire history
need not be rehashed here, suffice it to say that in its
order of August 31, 2010, the Board granted applicant’s
cross-motion for summary judgment on opposer’s claim that

2008, prior to commencement of this opposition, as recorded in
the Assignment Branch records at Reel 4007, Frame 0486.
2 We note that applicant is an attorney.
Opposition No. 91187118
3
the assignment of the involved application from Mr. Freeland
to Mr. Wax violated Section 10 of the Trademark Act, and
accordingly dismissed that claim. In the same order, the
Board denied opposer’s motion for summary judgment on its
claim that the original joint owners of the involved
application did not have a continuing bona fide intention to
use the applied-for mark. Later, in its order of December
21, 2011, the Board denied the parties’ subsequently-filed
cross-motions for summary judgment3 on opposer’s claims of
priority and likelihood of confusion and dilution (the
“cross-motions”).
In the December 21, 2011 order, the Board noted the
already “extensive” record in this proceeding, and
recommended that the parties consider resolving it by means
of the Board’s accelerated case resolution (“ACR”)
procedure, “either on the current record, or on the current
record as supplemented by the parties ….” Order of December
21, 2011 at p. 8. Ultimately, in their February 8, 2012
stipulation, the parties agreed to resolve this proceeding
via ACR, based on the evidence submitted with their cross-
motions for summary judgment, each of which was denied in
the Board’s December 21, 2011 order. In other words, the

3 Applicant filed his motion for summary judgment on opposer’s
claims of priority and likelihood of confusion and dilution on
June 14, 2011, and opposer filed its cross-motion on the same
claims on July 19, 2011.

Opposition No. 91187118
4
parties chose not to supplement the record prior to final
decision. The Board approved the parties’ ACR stipulation
in its order of February 13, 2012. As a result of the
parties’ approved ACR stipulation, the ACR record in this
case relates only to opposer’s claims of priority and
likelihood of confusion and dilution (which were the only
claims at issue in the parties’ cross-motions for summary
judgment). Therefore, opposer has effectively declined to
pursue its claim that the original joint owners of the
involved application did not have a continuing bona fide
intention to use the applied-for mark, and we have not
further considered that claim.
The Record and Evidentiary Objections
In their ACR stipulation, the parties agreed that this
case will be resolved “based on the parties’ cross-motions
for summary judgment, responses and reply briefs filed in
support thereof, and evidence and testimony submitted
therewith, the subject Application Serial No. 78001126, and
the pleaded registrations attached to Opposer’s Revised
Amended Notice of Opposition.” Accordingly, and more
specifically, the record includes:
(1) The pleadings, including copies of
the registration certificates for,
and printouts from Office records
concerning, opposer’s pleaded
registrations;

(2) The file of the opposed
application;
Opposition No. 91187118
5
(3) Documents from the files of
opposer’s pleaded registrations,
TESS printouts of third-party
registrations, printouts from
opposer’s website, applicant’s
discovery requests and opposer’s
discovery responses, all submitted
with applicant’s motion for summary
judgment and/or applicant’s
response to opposer’s cross-motion;

(4) The declarations of Stephanie H.
Bald, one of opposer’s attorneys,
submitted with opposer’s response
to applicant’s motion for summary
judgment and cross-motion, and
opposer’s reply brief, respectively
(“Bald Dec. I” and “Bald Dec. II”),
the Declaration of Craig Berman
(“Berman Dec.”), opposer’s Vice
President of Public Relations,
submitted with opposer’s response
and cross-motion, and the
Declaration of Stephen Kolozsvary
(“Kolozsvary Dec.”), Vice President
for Ad Services Operations for
nonparty VMS, submitted with
opposer’s response and cross-
motion; and

(5) The exhibits to opposer’s
declarations, which include
opposer’s and third-parties’ annual
reports, copies of articles and
news reports, excerpts from books,
copies of opposer’s advertisements,
dictionary definitions, TESS
printouts of third-party
applications and registrations,
printouts from TTABVue concerning
Board proceedings, copies of
complaints from federal district
court cases, opposer’s discovery
requests and applicant’s responses
thereto, printouts from
applicant’s, opposer’s and third-
party websites, applicant’s
discovery deposition transcript,
opposer’s press releases, third-
party reports on famous brands,
Opposition No. 91187118
6
domain name records, and copies of
opposer’s advertisements and
reports thereon.

The parties stipulated that this evidence is
“authentic” and “properly of record,” but that it remains
subject to certain objections made in connection with the
parties’ cross-motions for summary judgment. ACR
Stipulation ¶¶ 3, 5. For the reasons stated in the Board’s
order of December 21, 2011 at pp. 4-5, applicant’s
objections to opposer’s unpleaded registrations are
sustained, but applicant’s other objections are overruled,
and applicant’s motion to strike is denied.
The Parties
Opposer is an online retailer, which began selling
books via its website in 1995. Berman Dec. ¶ 8. Opposer
grew quickly, expanded the offerings on its website and had
its initial public offering in 1997. Id. ¶¶ 9-13. The
evidence of record establishes opposer’s ownership, and the
validity, of the following pleaded registrations, the
applications for which were filed before applicant’s filing
date:
AMAZON.COM, in typed form, Registration
No. 2078496, issued July 15, 1997 for
“computerized on line ordering service
featuring the retail distribution of
books”; [Renewed; Section 15 Affidavit
acknowledged];

AMAZON.COM, in typed form, Registration
No. 2167345, issued June 23, 1998 for
“computerized on line search and
Opposition No. 91187118
7
ordering service featuring the wholesale
and retail distribution of books, music,
motion pictures, multimedia products and
computer software in the form of printed
books, audiocassettes, videocassettes,
compact disks, floppy disks, CD ROMs,
and direct digital transmission”;
[Renewed; Section 15 Affidavit
acknowledged];

AMAZON.COM, in typed form, Registration
No. 2559936, issued April 9, 2002 for
“retail department stores; retail on-
line department stores; retail
convenience stores; retail on-line
convenience stores; computerized on-line
ordering featuring general merchandise
and general consumer goods; providing an
on-line commercial information
directory; providing a searchable
database in the field of business
information available via a global
computer network; dissemination of
advertising for others via an on-line
electronic communications network;
providing a searchable on-line
advertising guide featuring the goods
and service of other on-line vendors;
database management services”;
“providing a searchable on-line database
featuring goods and services of others
in the field of finances, banking, real
estate and vehicles”; and “computer
services, namely, providing search
engines for locating information,
resources, and the websites of others on
a global computer network; providing a
wide range of general interest
information via a global computer
network; and providing electronic
greeting cards via a global computer
network”; [Section 8 Affidavit accepted;
Section 15 Affidavit acknowledged];

AMAZON.COM AUCTIONS, in typed form with
AUCTIONS disclaimed, Registration No.
2518043, issued December 11, 2001 for
“commodity trading for others”; [Section
8 Affidavit accepted; Section 15
Affidavit acknowledged];
Opposition No. 91187118
8

AMAZON.COM, in typed form, Registration
No. 3411872, issued April 15, 2008 for
“credit card services; and charge card
services”;

, Registration No. 3414814,
issued April 22, 2008 for “credit card
services; and charge card services”;

, Registration No. 2789101,
issued December 2, 2003 for “advertising
services, namely, dissemination of
advertising for others via an on-line
electronic communications network;
business management; business
administration; retail department
stores, retail on-line department
stores; retail convenience stores; on-
line retail convenience stores;
computerized on-line ordering featuring
general merchandise and general consumer
goods; providing an on-line commercial
information directory; providing a
searchable database in the field of
business information available via a
global computer network; providing a
searchable on-line advertising guide
featuring the goods and services of
other on-line vendors; database
management services; electronic
classified advertising services; on-line
classified advertising services,
electronic auction services; and on-line
auction services”; [Section 8 Affidavit
accepted; Section 15 Affidavit
acknowledged];

, Registration No. 2696140,
issued March 11, 2003 for “computer
services, namely, providing search
engines for locating information,
resources, and the websites of others on
the internet; providing a wide range of
general interest information via the
internet; providing electronic greeting
cards via the internet”; [Section 8
Opposition No. 91187118
9
Affidavit accepted; Section 15 Affidavit
acknowledged];

, Registration No. 2684128,
issued February 4, 2003 for “providing
interactive chat rooms for transmission
of messages among computer users and
subscribers concerning general
merchandise and general consumer goods,
product reviews and purchase information
on the Internet”; [Section 8 Affidavit
accepted; Section 15 Affidavit
acknowledged]; and

AMAZON.COM OUTLET, in typed form with
OUTLET disclaimed, Registration No.
2649373, issued November 12, 2002 for
“electronic retailing services via
computer featuring books, music,
videotapes, audiocassettes, compact
discs, floppy discs and CD-Roms, printed
matters, phonographs, recorded music,
toys, household electronic appliances;
applied electronic machines and
apparatus, photography instruments,
musical instruments and fittings
thereof; photographs, stationery,
jewelry, horological instruments and
parts thereof, motor vehicles and parts
and accessories thereof, manual and
power tools, measuring instruments,
physical and chemical instruments,
chemicals, soaps, perfumery, cosmetics,
paints, adhesive for industrial
purposes, preservatives, leather,
imitation leather, bags and their
substitutes, umbrellas, walking sticks,
saddlery, materials for building and
construction, furniture, fabric, indoor
ornaments of textile, tobacco (not of
medical use), smokers articles, plants,
pharmaceuticals, lights, irons and
steels, pots, tableware, heaters,
cosmetic utensils, yarns and thread for
textile use, kitchen and household
utensils, games and playthings,
electronic publications and greeting
cards; and providing an on-line
searchable database featuring books,
Opposition No. 91187118
10
music, videotapes, audiocassettes,
compact discs, floppy discs and CD-Roms,
printed matters, phonographs, recorded
music, toys, household electronic
appliances; applied electronic machines
and apparatus, photography instruments,
musical instruments and fittings
thereof; photographs, stationery,
jewelry, horological instruments and
parts thereof, motor vehicles and parts
and accessories thereof, manual and
power tools, measuring instruments,
physical and chemical instruments,
chemicals, soaps, perfumery, cosmetics,
paints, adhesive for industrial
purposes, preservatives, leather,
imitation leather, bags and their
substitutes, umbrellas, walking sticks,
saddlery, materials for building and
construction, furniture, fabric, indoor
ornaments of textile, tobacco (not of
medical use), smokers articles, plants,
pharmaceuticals, lights, irons and
steels, pots, tableware, heaters,
cosmetic utensils, yarns and thread for
textile use, kitchen and household
utensils, games and playthings,
electronic publications and greeting
cards”; [Section 8 Affidavit accepted;
Section 15 Affidavit acknowledged].

Amended Notice of Opposition Ex. A; Bald Dec. I Exs. 1-8.
As noted, applicant is an attorney. At the time
applicant filed the involved application, he worked for a
patent law firm in Silicon Valley. Applicant “intended to
create the Amazon Ventures business to help individuals and
businesses (with or without an intellectual property
portfolio) raise capital from venture capital firms, angel
investors, equity investment companies, or other interested
parties.” Applicant’s Reply Brief and Response to Opposer’s
Cross-Motion at pp. 9-10. According to applicant’s website,
Opposition No. 91187118
11
Amazon Ventures also assists with “management of financial
matters including maintaining financial records, and
management and investment of capital received. We prepare
financial reports ….” Bald Dec. I ¶ 25 and Ex. 917.
Standing and Priority
Opposer’s standing to oppose registration of
applicant’s mark is established by its pleaded
registrations, which the record shows to be valid and
subsisting, and owned by opposer. See, e.g., Cunningham v.
Laser Golf Corp., 222 F.3d 943, 945, 55 USPQ2d 1842, 1844
(Fed. Cir. 2000) (party’s ownership of pleaded registration
establishes standing).
In addition, and as set forth in the December 21, 2011
order denying the parties’ cross-motions, because opposer’s
pleaded registrations are of record, priority is not an
issue with respect to the services covered by opposer’s
pleaded registrations. Penguin Books Ltd. v. Eberhard, 48
USPQ2d 1280, 1286 (TTAB 1998) (citing King Candy Company v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108,
110 (CCPA 1974)). These services include:
• “credit card services; and charge
card services” (Registration No.
3411872 for AMAZON.COM);

• “commodity trading for others”
(Registration No. 2518043 for
AMAZON.COM AUCTIONS); and

Opposition No. 91187118
12
• “providing a searchable on-line
database featuring goods and services
of others in the field of finances,
banking …” (Registration No. 2559936,
for AMAZON.COM)

In addition, opposer has established common law priority of
use of, among others, the marks AMAZON.COM, AMAZON PAYMENTS,
AMAZON MOBILE PAYMENTS and the trade name “Amazon.com
Payment, Inc.” in connection with “payment services.”
Berman Dec. ¶¶ 16-19 and Exs. 8-9. Opposer’s “payment
services” allow “individuals and small businesses to accept
credit card payments.” Id. ¶ 18.
Likelihood of Confusion
“We determine likelihood of confusion by focusing on …
whether the purchasing public would mistakenly assume that
the applicant’s [services] originate from the same source
as, or are associated with,” opposer’s services. In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). We consider all probative
facts in evidence which are relevant to the likelihood of
confusion factors set forth in In re E.I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Opposer
must establish that there is a likelihood of confusion by a
preponderance of the evidence. Cunningham, 222 F.3d at 943,
55 USPQ2d at 1848.

Opposition No. 91187118
13
Fame
It is well-settled that where fame exists, it “plays a
‘dominant role in the process of balancing the DuPont
factors,’ … and ‘[f]amous marks thus enjoy a wide latitude
of legal protection.’” Bose Corp. v. QSC Audio Products,
Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir.
2002)(quoting Recot Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d
1894, 1897 (Fed. Cir. 2000)). Indeed, a strong mark “casts
a long shadow which competitors must avoid.” Kenner Parker
Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22
USPQ2d 1453, 1456 (Fed. Cir. 1992).
Furthermore, fame remains “a dominant factor in the
likelihood of confusion analysis … independent of the
consideration of the relatedness of the goods.” Recot, 214
F.3d 1322, 54 USPQ2d at 1898. In fact, “when a product
reaches the marketplace under a famous mark, special care is
necessary to appreciate that products not closely related
may nonetheless be confused as to source by the consumer
because of the fame of the mark.” Bose Corp., 293 F.3d
1367, 63 USPQ2d at 1310.
While consumer surveys may provide direct evidence of
fame, they are not necessary. Rather, “fame of a mark may
be measured indirectly, among other things, by the volume of
sales and advertising expenditures of the goods traveling
under the mark, and by the length of time those indicia of
Opposition No. 91187118
14
commercial awareness have been evident.” Id., 293 F.3d
1367, 63 USPQ2d at 1305. Other relevant factors include
“length of use of the mark, market share, brand awareness,
licensing activities, and variety of goods bearing the
mark.” Coach Services Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012).
Here, opposer’s AMAZON.COM mark is its primary
trademark and domain name, and we will focus our attention
on this mark. AMAZON.COM is the address for the website
through which opposer offers the bulk of its goods and
services, and opposer has used AMAZON.COM continuously for
its goods and services since 1995. Berman Dec. ¶ 8.
Opposer has established that the mark was famous prior to
applicant’s filing date, and that the mark is even more
famous today. Specifically, before the filing date of
applicant’s intent-to-use application:
• opposer’s net sales to U.S. customers
exceeded $1.8 billion; Berman Dec. ¶¶
64, 66;

• while the exact figures are
confidential, opposer’s annual
marketing and advertising
expenditures, “a significant amount”
of which are attributable to the
United States, were substantial, and
exceeded $100 million; id. ¶¶ 73-74;

• in 1999 opposer was named “Marketer
of the Year” by Advertising Age, in
an article entitled “Dot-commerce:
World’s biggest e-tail brand writes
Opposition No. 91187118
15
book on marketing savvy”; id. ¶ 72
and Ex. 36;

• opposer received unsolicited media
attention in, among many other
publications, the Los Angeles Times,
the Washington Post, the New York
Times, the New York Post, the Chicago
Tribune, Business Week, the Atlanta
Journal and Constitution, and the
Miami Herald; Bald Dec. I ¶ 4 and
Exs. 50-119; and

• opposer received unsolicited media
attention on national television and
radio, including reports on CNBC,
CNN, NPR and ABC; Id.

Opposer’s fame has only increased since applicant filed his
involved application. Specifically, from applicant’s filing
date through 2011:
• opposer’s net sales to U.S. customers
have exceeded $35 billion; Berman
Dec. ¶¶ 65-66;

• opposer’s advertising expenditures in
the United States, while
confidential, have exceeded $1
billion; id. ¶¶ 73-74;

• Newsday, the Miami Herald and the
Boston Globe referred to opposer as a
“household name,” the Washington Post
and San Diego Union-Tribune referred
to opposer as “famous” and the New
York Times, Pittsburgh Post-Gazette,
Milwaukee Journal Sentinel, Chicago
Tribune, Boston Herald, St.
Petersburg Times, Baltimore Sun,
Philadelphia Inquirer, Harvard
Business Review and CNN referred to
opposer as “well known”; Bald Dec. I
Exs. 123, 127-129, 131, 145, 146,
150, 155, 157, 165, 171, 189, 208 and
263;

Opposition No. 91187118
16
• Since 2001, Interbrand has ranked
opposer among the 80 most famous
global brands, and in 2011,
Interbrand ranked opposer #9 on its
list of “Best Retail Brands”;4 Berman
Dec. ¶ 86; Bald Dec. I ¶ 27 and Ex.
919; and

• Since 2002 Fortune magazine has
ranked opposer as one of the 500
largest corporations in the United
States; Berman Dec. ¶ 87.

According to Barron’s, “E-commerce now starts and ends with
Amazon ….” Id. Ex. 260. At least 17 books reference the
AMAZON or AMAZON.COM marks in their titles. Id. Exs. 514-
529, 531.
In short, the evidence of record clearly establishes
that opposer’s AMAZON.COM mark is famous for its services,
and significantly so.5 Moreover,
[t]he law has clearly been well settled
for a longer time than this court has
been dealing with the problem to the
effect that the field from which
trademarks can be selected is unlimited,
and there is therefore no excuse for
even approaching the well-known
trademark of a competitor, that to do so
raises “but one inference – that of
gaining advantage from the wide
reputation established by appellant in

4 The list ranks Coach #8 and Dell #10.
5 While applicant attempts to make much of the difference
between the marks AMAZON and AMAZON.COM, the distinction is not
particularly relevant, nor is it significant, as explained below.
Indeed, the evidence establishes that both marks are famous, and
in any event, since the 1990’s, “the national media and Amazon’s
consumers have referred to and identified Amazon.com as simply
AMAZON.” Berman Dec. ¶ 14. Opposer has introduced substantial
evidence that AMAZON alone was a famous mark before applicant’s
intent-to-use filing date. Bald Dec. II Exs. 946-1146.

Opposition No. 91187118
17
the goods bearing its mark,” and that
all doubt as to whether confusion,
mistake, or deception is likely is to be
resolved against the newcomer,
especially where the established mark is
one which is famous and applied to an
inexpensive product bought by all kinds
of people without much care.

Specialty Brands, Inc. v. Coffee Bean Distributors, Inc.,
748 F.2d 669, 223 USPQ 1281, 1285 (Fed. Cir. 1984) (quoting
Planters Nut & Chocolate Co. v. Crown Nut Co., Inc., 305
F.2d 916, 134 USPQ 504, 511 (CCPA 1962)); see also, Kenner
Parker Toys, 963 F.2d at 350, 22 USPQ2d at 1456.
This du Pont factor weighs in opposer’s favor.
Similarity of the Marks
We consider the similarities and dissimilarities of the
parties’ marks in appearance, sound, meaning, and commercial
impression. Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). The test is not whether the
marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in their entireties that confusion as to the source
of the services offered under the respective marks is likely
to result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). As the fame
of a mark increases, and here opposer’s AMAZON.COM marks
Opposition No. 91187118
18
enjoy significant fame, the degree of similarity between the
marks necessary to support a conclusion of likely confusion
declines. Bose Corp. v. QSC Audio Products Inc., 293 F.3d
1367, 63 USPQ2d at 1311-12.
In this case, the parties’ marks, AMAZON.COM and AMAZON
VENTURES, are similar in sound, appearance and meaning, and
the marks create similar overall commercial impressions
because AMAZON is the dominant component of each. Indeed,
with respect to opposer’s AMAZON.COM mark, it is well-
settled that the “.com” top-level domain indicator is not
distinctive. In re Oppedahl & Larson LLP, 373 F.3d 1171, 71
USPQ2d 1370, 1374 (Fed. Cir. 2004);6 see also, In re theDot
Communications Network LLC, 101 USPQ2d 1062 (TTAB 2011) and
In re Martin Container, Inc., 65 USPQ2d 1058, 1060 (TTAB
2002). Similarly, with respect to applicant’s mark AMAZON
VENTURES, the disclaimed word VENTURES is at best merely
descriptive of applicant’s services. Bass Pro Trademarks,
LLC v. Sportsman’s Warehouse, Inc., 89 USPQ2d 1844, 1851
(TTAB 2008)(disclaimer may constitute admission of
descriptiveness). In fact, applicant’s identification of
services includes “raising venture capital for others,” and

6 We cannot help but notice that in In re Oppedahl & Larson,
in dicta, the Federal Circuit specifically considered a
hypothetical involving opposer’s AMAZON.COM mark, and indicated
that “[i]n that setting, the addition of ‘.com’ adds no source-
identifying significance, which is likely to be the case in all
but the most exceptional case.” In re Oppedahl & Larson, 373
F.3d, 71 USPQ2d at 1173.
Opposition No. 91187118
19
opposer has introduced evidence that well over 100 marks
containing a disclaimer of the word VENTURES are registered
by third parties in connection with venture capital,
financial or investment services. Bald Dec. I ¶ 10 and Exs.
591-780. Third-party registrations such as those opposer
relies on here are “competent to show that others in a
particular area of commerce have adopted and registered
marks incorporating a particular term. We can also note
from such registrations that the term or feature common to
the marks has a normally understood meaning or
suggestiveness in the trade ….” In re Hamilton Bank, 222
USPQ 174, 177 (TTAB 1984); see also, American Lebanese
Syrian Associated Charities, Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1029 (TTAB 2011)(“third-party
registrations may be used in the manner of a dictionary to
show that a mark or a portion of a mark is descriptive or
suggestive …”). In short, it is well-settled that merely
descriptive or otherwise non-distinctive elements of a mark,
such as “.com” and VENTURES in this case, may be given less
weight. Cunningham, 222 F.3d at 943, 55 USPQ2d at 1846.
Furthermore, the fame of opposer’s AMAZON.COM mark magnifies
the similarities between AMAZON.COM and AMAZON VENTURES.
Kenner Parker Toys, 963 F.2d at 350, 22 USPQ2d at 1457.7

7 While opposer appears to plead ownership of “an overall
family of marks,” Amended Notice of Opposition ¶ 13, it did not
introduce evidence or present arguments concerning its alleged
Opposition No. 91187118
20
There is no evidence of record to establish that the
term “AMAZON” has a particular meaning in connection with
the parties’ services; to the contrary, we find that the
term is arbitrary. In any event, to the extent that
purchasers perceive any meaning conveyed by the term, the
connotation would be the same for both parties’ marks.
We therefore find that the parties’ marks are
confusingly similar. This du Pont factor weighs in
opposer’s favor.
Similarity of the Parties’ Services and Channels of Trade
It is well-settled that consumer confusion may arise
even if the parties’ goods and/or services are not “similar
or competitive, or even offered through the same channels of
trade.” Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d
1100, 1109 (2007). Rather
[i]t is sufficient that the respective
goods [and/or services] of the parties
are related in some manner, and/or that
the conditions and activities
surrounding the marketing of goods
[and/or services] are such that they
would or could be encountered by the
same persons under circumstances that
could, because of the similarity of the
marks, give rise to the mistaken belief
that they originate from the same
source.

Kohler Co., 82 USPQ2d at 1109.

family of marks, and we have therefore considered each of
opposer’s pleaded marks individually, rather than as part of an
alleged “family.”
Opposition No. 91187118
21
Here, opposer has established its ownership of a
registration for AMAZON.COM for “credit card services,”8 and
has introduced undisputed evidence that many third-party
marks are registered for credit card services on the one
hand, and venture capital and/or investment services on the
other. Bald Dec. I ¶ 13 and Exs. 856-892. This evidence
suggests that these services are related. In re 1st USA
Realty Professionals, Inc., 84 USPQ2d 1581, 1584 (TTAB
2007); see also, Recot, 214 F.3d 1322, 54 USPQ2d at 1898 (in
considering whether pet and human food are related, the
Board erred in not considering evidence that “several large
[third-party] companies produce and sell both pet and human
food”); In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-86 (TTAB 1993). Opposer has also established prior
common law rights in AMAZON.COM (and AMAZON PAYMENTS, among
others) for “payment services,” and the third-party
registrations upon which opposer relies show that such
services may be offered by the same entity under the same
marks which are also used for investment management or
venture capital services, thereby suggesting that these

8 Applicant attempts to make much of opposer’s deletion of
various types of “financial services” from some of its pleaded
registrations. We have only considered the current
identifications of goods and services in each of opposer’s
pleaded registrations, and those goods and services for which
opposer has established prior use. Opposer’s deletion of certain
services from its registrations does not mean that it is not
offering other types of financial services, or that opposer is
not offering services which are related to those in applicant’s
involved application.
Opposition No. 91187118
22
services are related. See e.g., Bald Dec. I Exs. 857, 858,
861, 862, 865, 867, 868, 871. In circumstances analogous to
those presented here, where opposer’s mark is quite famous
and the parties’ marks are similar, different types of
financial “services” have been found to be related. See
e.g., In re 1st USA Realty, 84 USPQ2d at 1581 (real estate
brokerage and listing services found to be related to
banking and credit card services); The Corporation of
Lloyd’s v. Louis D’Or of France, Inc., 202 USPQ 313, 316
(TTAB 1979) (“it would not be unreasonable for purchasers
encountering ‘LLOYD’S OF LONDON’ after-shave cologne and
perfume to assume falsely that” a well known insurer “has
licensed, sponsored, recommended, insured or otherwise
guaranteed the quality of these products”); Advantus Capital
Management, Inc. v. Aetna, Inc., 81 USPQ2d 1743 (D. Minn.
2006) (health care insurance plans found to be related to
investment services).
Furthermore, neither opposer’s pleaded Registration No.
3411872 for AMAZON.COM for “credit card services,” nor
applicant’s involved application, contain any limitations
with respect to channels of trade. We therefore presume
that the parties’ services, as recited in the pleaded
registrations and involved application, move in all normal
channels of trade for such financial services. See, e.g.,
Octocom Systems, Inc. v. Houston Computers Services, Inc.,
Opposition No. 91187118
23
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Venture
Out Properties LLC v. Wynn Resorts Holdings, LLC, 81 USPQ2d
1887, 1893 (TTAB 2007). Further, the record establishes
that both parties target their financial services to start-
up and other small businesses. Compare Berman Dec. ¶¶ 18,
22, 58 with Applicant’s Reply Brief at pp. 9-10.
Accordingly, we find that the classes of purchasers for the
parties’ services are at least similar, if not the same.
While applicant claims that opposer’s “credit card
services” are in fact provided by or with a third-party
partner of opposer’s, and that his own financial services
are “specialized,” we are bound to assess likelihood of
confusion based on the identifications of services in
opposer’s pleaded registrations and applicant’s involved
application. Octocom Systems, 918 F.2d at 937, 16 USPQ2d at
1787.
In short, because opposer’s AMAZON.COM mark is famous
and the parties’ marks are similar, the degree of
relatedness necessary to find a likelihood of confusion is
significantly less in this case than it would be in a case
not involving similar marks, or not involving a mark which
is famous. Under the circumstances presented here, we find
that the parties’ services are related, and their channels
of trade and classes of purchasers similar. These du Pont
factors weigh in opposer’s favor.
Opposition No. 91187118
24
Third-Party Use of Similar Marks
To the extent that applicant argues that opposer’s mark
is not entitled to a broad scope of protection because
third-parties are using similar marks, applicant has failed
to introduce any evidence of third-party use. And the
third-party registrations upon which applicant relies are
not evidence of use. Smith Bros. Mfg. Co. v. Stone Mfg.
Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973).
Moreover, applicant’s argument that confusion between
the parties’ marks is not likely because opposer consented
to the registration of AMAZONTAN and AMAZON for cosmetic
preparations is not well-taken. Cosmetic preparations are
entirely different from applicant’s venture capital and
investment services, and there is no evidence that either
AMAZONTAN or AMAZON are currently being used for cosmetic
preparations.
This du Pont factor is neutral.
Conditions of Sale/Sophistication of Purchasers
While applicant argues that consumers of financial
services are sophisticated, he has not introduced any
evidence in this regard. Furthermore, even assuming that
the parties’ customers are sophisticated, it is well-settled
that even sophisticated purchasers are not immune from
source confusion, especially in cases, such as this one,
involving similar marks and related services. See, In re
Opposition No. 91187118
25
Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50
(Fed. Cir. 1986) (citing Carlisle Chemical Works, Inc. v.
Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112
(CCPA 1970)) (“Human memories even of discriminating
purchasers … are not infallible.”); see also, In re Decombe,
9 USPQ2d 1812, 1814-15 (TTAB 1988). We find that the
similarities between the marks and the services sold
thereunder outweigh any sophisticated purchasing decision.
See HRL Associates, Inc. v. Weiss Associates, Inc., 12
USPQ2d 1819, 1823 (TTAB 1989), aff’d, Weiss Associates, Inc.
v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1842
(Fed. Cir. 1990) (similarities of goods and marks outweigh
sophisticated purchasers, careful purchasing decision, and
expensive goods). Thus, to the extent that this du Pont
factor would weigh in favor of applicant, it is outweighed
by the other factors.
Conclusion
After a careful review of all evidence of record and
the parties’ arguments, only some of which have been
specifically addressed here, and based on a preponderance of
the evidence, we find that there is a likelihood of
confusion between opposer’s mark AMAZON.COM and applicant’s
mark AMAZON VENTURES for their respective services.
Opposition No. 91187118
26
In view of our determination on the likelihood of
confusion claim under Section 2(d), we do not reach the
dilution claim under Section 43(c).
Decision: The opposition is sustained and registration
to applicant is refused.