A&P Enterprises, LLCDownload PDFTrademark Trial and Appeal BoardMar 29, 2019EX (T.T.A.B. Mar. 29, 2019) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: March 29, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re A&P Enterprises, LLC _____ Serial No. 87267034 _____ Kevin P. Hartley of Trust Tree Legal PC, for A&P Enterprises, LLC. Peter Dang, Trademark Examining Attorney, Law Office 121, Richard White, Managing Attorney. _____ Before Taylor, Kuczma, and Larkin, Administrative Trademark Judges. Opinion by Larkin, Administrative Trademark Judge: A&P Enterprises, LLC (“Applicant”) seeks registration on the Principal Register of the mark shown below for “beauty spa services, namely, cosmetic body care; cosmetic skin care services, namely, make-up application and facials; day spa services, namely, nail care, Serial No. 87267034 - 2 - manicures, pedicures and nail enhancements; hair salon services for men, women, and children,” in International Class 44.1 The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that it so resembles the registered mark shown below for “hair salon services for children; beauty spa services for children, namely, nail care, manicures, pedicures, hair cutting and styling, cosmetic make-up services, and ear piercing,”2 in International Class 44, as to be likely, when used in connection with 1 Application Serial No. 87267034 was filed on December 13, 2016 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s claim of first use of the mark and first use of the mark in commerce at least as early as July 1, 2013. The application originally covered services in Classes 35, 41, and 44. As noted below, Applicant divided the application during prosecution, and retained the Class 44 services in the parent application that is before us on appeal. The mark is described as follows: “The mark consists of the stylized word ‘GIGGLES’ with a small star dotting the letter ‘I’. Underneath ‘GIGGLES’ is a horizontal line followed by a stylized ‘&’ symbol and the stylized word ‘GLAM’ followed by three small stars. Underneath the horizontal line and ‘& GLAM’ are the stylized words ‘SALON BOUTIQUE PARTIES’ with a small star in between each word.” Applicant has disclaimed the exclusive right to use SALON, BOUTIQUE, and PARTIES apart from the mark as shown. 2 The cited Registration No. 4784237 issued on August 4, 2015. The mark is described as follows: “The mark consists of the wording ‘GIGGLES KIDS SALON’. The word ‘GIGGLES’ is in stylized font with the first letter ‘G’ in pink, the letter ‘I’ in yellow, the second letter ‘G’ in green, the third letter ‘G’ in red, the letter ‘L’ in purple, the letter ‘E’ in blue, the letter ‘S’ in orange, and all such letters outlined in black. The words ‘KIDS SALON’ are in black and positioned below and offset to the right of the aforementioned word ‘GIGGLES’, within a black-bordered and white-shaded rectangle.” The colors pink, yellow, green, red, purple, blue, orange, white, and black are claimed as a feature of the mark. The registrant has disclaimed the exclusive right to use KIDS SALON apart from the mark as shown. Serial No. 87267034 - 3 - the services identified in the application, to cause confusion, to cause mistake, or to deceive. When the Examining Attorney made the refusal final, Applicant divided the application, filed an appeal as to the parent application, and requested reconsideration, 4 TTABVUE, which was denied. 5 TTABVUE. The case is fully briefed. We affirm the refusal to register. I. Record on Appeal The record on appeal consists of Applicant’s specimens of use, and the following additional evidence pertinent to the appeal:3 1. Screenshots of Google search engine results regarding Applicant’s salon and boutique and the salon operated by the owner of the cited registration, made of record by Applicant;4 2. Third-party webpages offered by the Examining Attorney to show that the word “glam” in Applicant’s mark is commonly used in the beauty industry and would not be viewed as a source-identifier in Applicant’s mark;5 3 Some of the evidence in the application file pertains to issues that are not before us, and that evidence has not been considered in this opinion. 4 September 16, 2017 Response to Office Action at 10-20; March 19, 2018 Response to Office Action at 10-15. All citations to the record in this opinion are to the application file in the Trademark Status & Document Retrieval (“TSDR”) database. 5 April 4, 2018 Final Office Action at 2-17. Serial No. 87267034 - 4 - 3. Third-party webpages offered by the Examining Attorney to show that the same companies offer the services identified in the application and cited registration under the same mark;6 4. Third-party registrations of GIGGLE-formative marks for child-related goods and services, made of record by Applicant;7 5. Third-party webpages displaying GIGGLE-formative marks for salon and beauty services, made of record by Applicant;8 and 6. Third-party registrations of GIGGLE-formative marks for dentistry services in Class 44, made of record by Applicant.9 Applicant also attached to its main brief a copy of a third-party registration, 7 TTABVUE 30-31, a photograph of a container of Light n’ Lively cottage cheese, id. at 32-33, and a copy of the Board’s decision in In re FabFitFun, Inc. (Serial No. 86847381).10 Id. at 34-50. The Examining Attorney did not address these materials in his brief, but we will consider the registration and photograph if they have any probative value. 6 Id. at 18-48. 7 October 4, 2018 Request for Reconsideration at 53-94. 8 Id. at 95-124. 9 Id. at 125-128. 10 As evidenced by the Table of Authorities in Applicant’s main brief, 7 TTABVUE 4, the Board’s FabFitFun decision had been reported at 127 USPQ2d 1670 (TTAB 2018) when Applicant filed the brief. Applicant’s attachment of a copy of the decision from the TTABVUE file in Serial No. 86847381 was unnecessary. Serial No. 87267034 - 5 - II. Analysis of Likelihood of Confusion Refusal Section 2(d) of the Trademark Act prohibits registration of a mark that so resembles a registered mark as to be likely, when used on or in connection with the goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C. § 1052(d). Our determination of likelihood of confusion under § 2(d) is based on an analysis of all probative facts in the record that 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, 567 (CCPA 1973). We must consider each du Pont 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). Two key factors in every § 2(d) case are the similarity or dissimilarity of the marks and goods or services, because 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.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). According to Applicant, “the relevant factors include the similarity or dissimilarities of the marks in their entireties, the similarity or dissimilarity of established, likely-to-continue trade channels, and [the lack of] actual confusion between [the] marks.” 7 TTABVUE 9. Applicant argues that the “[t]he most important factor in this case—and the primary focus of [its] brief—is the dissimilarity of the marks.” Id. In its discussion of this factor, Applicant also discusses the sixth du Pont factor, the number and nature of similar marks in use with similar services. Serial No. 87267034 - 6 - Id. at 19-25. Finally, Applicant discusses the prior registration of two other GIGGLES-formative marks in Class 44. Id. at 25-26. The Examining Attorney responds that “the key considerations are the similarity and relatedness of the [services], the similarity of the trade channels of the [services], and the similarity of the marks.” 9 TTABVUE 4. The Examining Attorney also addresses Applicant’s claim that the cited mark is weak and entitled to only a limited scope of protection, id. at 14-18, and Applicant’s argument regarding the absence of evidence of actual confusion. Id. at 19-20. We begin with the second and third du Pont factors. A. Similarity or Dissimilarity of the Services and Channels of Trade The second du Pont factor “considers ‘[t]he similarity or dissimilarity and nature of the goods or services as described in an application or registration,’” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (quoting du Pont, 177 USPQ at 567), while the third du Pont factor “considers ‘[t]he similarity or dissimilarity of established, likely-to-continue trade channels.” Id. at 1052 (quoting du Pont, 177 USPQ at 567). Our analysis under these factors is based on the identifications of services in the application and the cited registration. Id.; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161- 63 (Fed. Cir. 2014). There are multiple Class 44 services identified in the application, but “likelihood of confusion must be found as to the entire class of services identified if there is likely to be confusion as to any service that comes within the recitation of services in that class.” Primrose Retirement Cmtys., LLC v. Edward Rose Senior Serial No. 87267034 - 7 - Living, LLC, 122 USPQ2d 1030, 1033 (TTAB 2016) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)). The services identified in the application are “beauty spa services, namely, cosmetic body care; cosmetic skin care services, namely, make-up application and facials; day spa services, namely, nail care, manicures, pedicures and nail enhancements; hair salon services for men, women, and children,” while the services identified in the cited registration are “hair salon services for children; beauty spa services for children, namely, nail care, manicures, pedicures, hair cutting and styling, cosmetic make-up services, and ear piercing.” Where services are broadly identified in an application or registration, “we must presume that the services encompass all services of the type identified.” Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). The “hair salon services for men, women and children” identified in the application encompass, and are thus partially identical to, the “hair salon services for children” identified in the cited registration. Similarly, the “day spa services, namely, nail care, manicures, [and] pedicures” identified in the application encompass the age-specific services identified in the cited registration as “beauty spa services for children, namely, nail care, manicures, [and] pedicures.”11 These latter sets of services are deemed to be legally identical. 11 For our purposes, there is no meaningful distinction between a “day spa” and a “beauty spa.” The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed form or regular fixed editions. 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); In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). We take judicial notice that a “day spa” is a “commercial establishment offering cosmetic and Serial No. 87267034 - 8 - In view of the partial identity of the hair salon services and the legal identity of the nail care, manicure, and pedicure services, and the fact that “Applicant presented no argument or evidence regarding the relatedness of the [services],” In re FabFitFun, 127 USPQ2d 1670, 1672 n.5 (TTAB 2018), “there is no need for us to further consider the relatedness of the [services].” Id. at 1672.12 The second du Pont factor strongly supports a finding of a likelihood of confusion. With respect to the third du Pont factor, Applicant argues that it “targets a discrete subset of customers through distinct marketing channels.” 7 TTABVUE 27. According to Applicant, the “salon industry is an especially localized industry, meaning its marketing channels are particularly geographically specific,” id., its “salon and boutique is located in northern middle Tennessee” while “the registrant of the Cited Mark is located in Boca Raton in southern Florida,” id. at 28, and all of its marketing flows directly from it to current or potential customers “in a limited geographic area.” Id. All of these arguments are unavailing on the third du Pont factor. Applicant “seeks a geographically unrestricted registration under which it might expand throughout the United States.” Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 393 (Fed. Cir. 1983). The cited registration is also therapeutic services such as manicures, pedicures, facial treatments, and massages, without overnight accommodation.” AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (retrieved March 19, 2019 from freedictionary.com). 12 The Examining Attorney also made of record third-party webpages showing that these services, and others identified in the application and cited registration, are commonly offered under the same mark. April 4, 2018 Final Office Action at 18-48. Applicant does not address this evidence. Serial No. 87267034 - 9 - geographically unrestricted, which presumptively gives the registrant “the exclusive right to use its mark throughout the United States.” Id. See also In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 n.4 (TTAB 1987). This is not a concurrent use proceeding, and in analyzing the du Pont factors regarding channels of trade and classes of consumers, we cannot consider the possible geographically separate uses of the subject marks by Applicant and the registrant. Id. Instead, “[b]ecause the services described in the application and the cited registration are identical, we presume that the channels of trade and classes of purchasers are the same.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1745 (TTAB 2018) (citing In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). The third du Pont factor thus also strongly supports a finding of a likelihood of confusion. B. The Number and Nature of Similar Marks for Similar Services The sixth du Pont factor “considers ‘[t]he number and nature of similar marks in use on similar goods [or services].’” Omaha Steaks Int’l Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1693 (Fed. Cir. 2018) (quoting du Pont, 177 USPQ at 567). “The purpose of introducing evidence of third-party use is ‘to show that customers have become so conditioned by a plethora of such similar marks that customers have been educated to distinguish between different [such] marks on the bases of minute distinctions.’” Id. (quoting Palm Bay Imps., Inc. v. Veuve Cliquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005) (internal quotation omitted)). Serial No. 87267034 - 10 - Applicant claims that “the word ‘Giggles’ is frequently used in connection with children’s goods and services, generally, and children’s salon services, specifically,” and that there are “more than 41 registered trademarks for child-related goods and services that include the word ‘GIGGLES’” and “at least ten different salons with word ‘GIGGLES’ in the name, spread over nine states.” Id. at 20. Applicant argues that “marks based on a word or phrase that is very common in an industry are weak, because the public will look to other elements to identify the source,” and that “[e]ven minimal differences can be sufficient to distinguish an applied-for mark from a weak mark.” 7 TTABVUE 19. According to Applicant, “[b]ecause Applicant’s Mark and the Cited Mark do not share any common elements beyond the weak ‘GIGGLES’ element, there is no likelihood of confusion between the two marks.” 7 TTABVUE 22. The Examining Attorney responds that Applicant’s “cited registrations appear to be for goods and services that are predominantly different from or unrelated to those identified in applicant’s application,” that “it appears that none of these cited registrations are similar or closely related to applicant’s and registrant’s beauty- related services,” and that “several of these cited registrations have been cancelled or abandoned . . . .” 9 TTABVUE 16-17. He concludes that “the few similar third-party registrations submitted by applicant are insufficient to establish that the word ‘GIGGLES’ is weak or diluted.” Id. at 16. The Examining Attorney does not similarly attack the quantity or quality of Applicant’s use evidence, but argues instead that it “does not obviate a likelihood of confusion.” Id. at 17. He distinguishes the FabFitFun case cited by Applicant on the ground that the marks here are more similar than Serial No. 87267034 - 11 - those in that case, such that any weakness of the GIGGLE element of the marks in this case is less significant in the overall analysis of likelihood of confusion than was the weakness of the SMOKING HOT element of the marks in FabFitFun. Id. He concludes that even if the cited mark is considered weak, it is “still entitled to protection under Section 2(d) against the registration by a subsequent user of a similar mark for closely related services.” Id. at 18. We turn first to Applicant’s registration evidence. Applicant made of record 40 third-party registrations of GIGGLE-formative marks,13 but none of them covers the services identified in the application and cited registration.14 Applicant has made no showing of the relatedness of the goods and services in these registrations to hair salon services for children, or nail care, manicure, and pedicure services for children, 13 October 4, 2018 Request for Reconsideration at 53-94. Applicant included the cited registration among these registrations. Id. at 88. The number of different registered marks is actually fewer than 40 because multiple registrations of the same or similar marks are commonly owned. Registrations with the same owner are Nos. 2875880 and 2851196 (id. at 55-56); Nos. 3636705 and 3122969 (id. at 57, 61); Nos. 5232783, 4733880, 4299656, 4126879, 4006394, and 3939046 (id. at 66, 69-70, 77, 86, 93); Nos. 4176948 and 4176958 (id. at 72-73); Nos. 4211928 and 4211022 (id. at 74-75) and Nos. 4478775 and 4733880 (id. at 82, 84). 14 Five registrations, Nos. 4211922, 211928, 4299656, 4733880, and 4810499 (id. at 74-75, 77, 86, 89), are not presented in their entireties, but their first pages indicate that they do not cover services in Class 44. The 40 registrations cover goods such as CDs, DVDs, and films; soaps; linens; jewelry; children’s clothing; baby and child products; books; school supplies, paper products, and writing implements; games; and furniture; and services such as retail store services featuring various goods; conducting classes in child language development through music; providing classes in exercise and gymnastic instruction; science instruction for preschoolers; children’s entertainment and amusement centers; restaurant services; planning and conducting parties such as birthday parties; television programs; providing a website promoting healthy life habits; providing information regarding children’s brands and products; child care; and yoga instruction. Applicant also made of record two registrations of GIGGLES-formative marks for dentistry services, id. at 125-128, which Applicant claims shows that the PTO has allowed registration of such marks in Class 44. 7 TTABVUE 25-26. We discuss them below. Serial No. 87267034 - 12 - and the registrations thus have little, if any, probative value. In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) (third-party registrations of similar marks for goods other than those at issue did not show weakness of cited mark); FabFitFun, 127 USPQ2d at 1674 n.11 (18 third-party registrations “for a variety of goods that are unrelated to those at issue” found to have “little, if any, probative value as to the weakness of the cited mark”); Inn at St. John’s, 126 USPQ2d at 1745 (where subject restaurant services were identical, third-party registrations for other services had little probative value). Applicant also made of record eight third-party uses, on pages from LinkedIn, Booksy, Facebook, Google, or company websites, of “Giggle” or “Giggles” in the names or marks of children’s salons.15 We reproduce several of them below. 16 15 October 4, 2018 Request for Reconsideration at 95-124. Applicant claimed 10 such uses, but included its own salon and the registrant’s salon in that number. 7 TTABVUE 20. 16 Id. at 96-97 (google.com). Serial No. 87267034 - 13 - 17 18 17 Id. at 98-101 (booksy.com). 18 Id. at 114-122 (facebook.com). Serial No. 87267034 - 14 - 19 “‘Evidence of third-party use of similar marks on similar [services] is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.’” FabFitFun, 127 USPQ2d at 1674 (quoting Palm Bay Imps., 73 USPQ2d at 1693). “Internet printouts, such as those offered by Applicant, ‘on their face, show that the public may have been exposed to those internet websites and therefore may be aware of the advertisements contained therein.’” Id. (quoting Rocket Trademarks Pty Ltd v. Phard S.p.A., 98 USPQ2d 1066, 1072 (TTAB 2011)). While Applicant has not presented specific evidence concerning the extent, exposure, and impact of these uses, “[i]n determining the degree of weakness, if any, of the shared term[ ] [Giggles], we must ‘adequately account for the apparent force of [third-party use and registration] evidence,’ regardless of whether ‘specifics’ pertaining to the extent and impact of such use[s] have been proven.” Inn at St. John’s, 126 USPQ2d at 1746 (quoting Jack 19 Id. at 123-124. Serial No. 87267034 - 15 - Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015)). As the Federal Circuit has explained, “extensive evidence of third-party registration and use is ‘powerful on its face,’ even where the specific extent and impact of the usage has not been established.” Jack Wolfskin, 116 USPQ2d at 1136 (citing Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015)). The third-party use evidence here “reflects a more modest amount of evidence than that found convincing in Jack Wolfskin and Juice Generation wherein ‘a considerable number of third parties’ use [of] similar marks was shown.’” FabFitFun, 127 USPQ2d at 1674 (quoting Juice Generation, 115 USPQ2d at 1674).20 There are fewer third-party uses here than in FabFitFun, where 10 were shown, 127 USPQ2d at 1674,21 and half of the uses here involve marks or names that, unlike the 20 In Jack Wolfskin, there were at least 14 third-party registrations and uses, 116 USPQ2d at 1136 n.2, and in Juice Generation, there were at least 26. 115 USPQ2d at 1673 n.1. 21 Applicant cites two non-precedential Board decisions, In re Big Kahuna Donuts, 2017 WL 4310826,Serial No. 86774996 (TTAB August 28, 2017) and In re Colorbar Cosmetics Private Ltd., 2015 WL 7772721, Serial No. 86323815 (TTAB November 20, 2015), in support of its claim that the cited mark is weak. 7 TTABVUE 22. “Non-precedential decisions are not binding on the Board, but may be cited to and considered for whatever persuasive value they may hold.” In re Fiat Grp. Mktg. & Corporate Commc’ns S.p.A., 109 USPQ2d 1593, 1596 n.6 (TTAB 2014). These non-precedential cases do not aid Applicant. In Big Kahuna Donuts, the applicant made of record 14 third-party uses of BIG KAHUNA marks for restaurant services. Although the Board found that these uses “did not effectively demonstrate that the cited mark is commercially weak for coffee and coffee shops,” 9 TTABVUE 9-10 (Serial No. 86774996), they nevertheless “illustrate[d] the manner in which the expression BIG KAHUNA is used in the marketplace.” Id. at 10. The Board found this evidence useful, when coupled with dictionary definitions of BIG KAHUNA “and other usage examples,” to show that “the expression BIG KAHUNA has a laudatory suggestiveness and is commonly used to suggest size, importance, or greatness in general.” Id. Because of “the laudatory nature of BIG KAHUNA,” which was the point of similarity of the marks in that case, they were sufficiently different to avoid a likelihood of confusion even though the case was a “very close” one. Id. at 10-11. Unlike in Big Kahuna Donuts, Applicant does not argue that “Giggles” is laudatory or otherwise conceptually weak. 7 TTABVUE 23 (arguing that the nature of the Serial No. 87267034 - 16 - marks here, begin with a word other than “Giggle(s).”22 These uses have less probative value on the issue of weakness than uses that are structurally similar to those here because, as discussed below, the lead word in a mark is often its most memorable source-identifying feature. Cf. Juice Generation, 115 USPQ2d at 1673 n.1 (third-party marks beginning with the words “peace” and “love” (e.g., PEACE LOVE AND PIZZA) showed weakness of opposer’s marks incorporating the phrase PEACE & LOVE). Nonetheless, we find that Applicant’s use evidence shows that the word “Giggles” in the marks is somewhat weak in connection with children’s salon services and that some consumers have been exposed to its use in connection with those services. The sixth du Pont factor thus weighs slightly in favor of a finding of no likelihood of confusion. See FabFitFun, 127 USPQ2d at 1675 (finding that the “relative weakness of the component term SMOKIN’ HOT common to both marks weighs somewhat in favor of a finding of no likelihood of confusion”). relevant services “is not at all suggested by the word ‘GIGGLES’ standing alone”). In Colorbar Cosmetics, the applicant “made of record a substantial number of hair and beauty salon websites showing use of the terms COLOR BAR, COLORBAR, and COLOUR BAR as components of their trade names.” 15 TTABVUE 9 (Serial No. 86323815) (listing 32 of them as “[r]epresentative trade names of this type”). Id. at 9-10. This quantum of evidence is far greater than that in FabFitFun or in this case, and is on the order of the evidence in Juice Generation. 22 October 4, 2018 Request for Reconsideration at 96-101 (Sniggles & Giggles Kids Salon in Baton Rouge, Louisiana), 108-109 (Snips and Giggles salon in Oconomowoc, Wisconsin), 110- 113 (Snips & Giggles hair salon in Princeton, West Virginia), and 123-124 (Klips & Giggles in Orange Park, Florida, which is referred to on the site as “Klips”). Serial No. 87267034 - 17 - C. Similarity or Dissimilarity of the Marks The first du Pont factor is “‘the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.’” Palm Bay Imps., 73 USPQ2d at 1691 (quoting du Pont, 177 USPQ at 567). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)). “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) (quotation omitted). “The proper perspective on which the analysis must focus is on the recollection of the average customer, who retains a general rather than specific impression of marks.” In re i.am.symbolic, 127 USPQ2d 1627, 1630 (TTAB 2018) (citations omitted).23 “‘[S]imilarity is not a binary factor but is a matter of degree.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting In re Coors 23 Applicant identifies the customers of its services as “adults and families,” but claims that the customers of the services of the registrant are “kids.” 7 TTABVUE 28. The Examining Attorney correctly responds that because there are no relevant restrictions or limitations as to trade channels and classes of customers in the identifications of services, “the presumption is that the[y] move in all trade channels normal for such services and are available to all potential classes of ordinary consumers of such services.” 9 TTABVUE 7. The services identified as “hair salon services for . . . children” are, by definition, rendered to children. The “beauty spa services for children, namely, nail care, manicures, [and] pedicures” that comprise, or are encompassed within, the identifications of services are, by definition, also rendered to children. The record, including webpages regarding Applicant’s and the registrant’s salons, shows that although these services are rendered to children, they are generally purchased by their parents or other responsible adults. September 16, 2017 Serial No. 87267034 - 18 - Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1062 (Fed. Cir. 2003)). Where, as here, the involved goods or services are identical, “the degree of similarity between the marks necessary to support a determination that confusion is likely declines.” i.am.symbolic, 127 USPQ2d at 1630 (citing Bridgestone Ams. Tire Operations, LLC v. Fed. Corp., 673 F.3d. 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); Viterra, 101 USPQ2d at 1908; In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); and Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992)). At the same time, we have found above that the word “Giggles” that is common to the marks is somewhat weak, and this weakness suggests that the cited mark, which we find below to be dominated by that word, is entitled to a slightly narrower scope of protection than if it contained a stronger dominant element. See Juice Generation, 115 USPQ2d at 1674 (in inter partes context, the “weaker an opposer’s mark, the closer an applicant’s mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection”). Response to Office Action at 19 (Applicant’s website directed to persons “[s]eaching for fun and unique gifts for girls and boys”); March 19, 2018 Response to Office Action at 14 (Google search results for registrant’s salon stating that “[w]e believe a haircut should be an enjoyable experience for kids and parents alike” and that “[w]e cater to your child’s haircut with train, plane, and automobile styling chairs”); April 4, 2018 Final Office Action at 5 (offering “‘Glam Girl Spa Parties’ for your little girl’s special occasion”); October 4, 2018 Request for Reconsideration at 100-101 (containing reviews of children’s haircuts written by adults). Cf. Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1472 (TTAB 2016) (parents play a role in the purchase of ice cream and pharmaceutical preparations consumed by children). Accordingly, the average customers for the relevant identical services are adult members of the general public who purchase the services for children. Serial No. 87267034 - 19 - For ease of reference in following our analysis below, we again reproduce the applied-for and cited marks as they appear together in Applicant’s main brief: 7 TTABVUE 24.24 Applicant makes an extended argument regarding the dissimilarity of the marks. 7 TTABVUE 9-19; 10 TTABVUE 5-9. According to Applicant, the “heart of the disagreement between the Applicant and the Examiner concerns how the alliterative, lilting phrase ‘GIGGLES & GLAM’ is treated in the likelihood of confusion analysis.” 10 TTABVUE 5. The lynchpin of Applicant’s position on that issue is its argument that “Giggles & Glam” is what it calls a “unitary phrase” and that “the commercial impression created by ‘GIGGLES & GLAM’ is distinct from the impression created by its components.” Id. at 11-12. Applicant criticizes the Examining Attorney for “plac[ing] too much emphasis on the ‘GIGGLES’ element at the expense of these other elements,” and for violating the so-called “anti-dissection” rule, which Applicant 24 We reiterate that the display of the marks together does not reflect the permitted mode of comparison under the first du Pont factor. Serial No. 87267034 - 20 - argues “dictates that marks are not to be dissected but rather are to be considered as a whole in a likelihood of confusion analysis.” Id. (citing In re Hearst Corp., 982 F.2d 493, 25 USPQ2d 1238 (Fed. Cir. 1992)). Applicant concludes that “consumers will interpret Applicant’s Mark as ‘GIGGLES & GLAM’ and the Cited Mark as ‘GIGGLES’,” and “the marks therefore create quite different commercial impressions.” Id. The Examining Attorney’s arguments are all grounded in his claim that the word “Giggles” dominates both marks. 9 TTABVUE 8-9. He argues that “the descriptive word ‘GLAM’ in applicant’s mark is less significant when comparing the marks” because it “is commonly used in the beauty industry to describe beauty and cosmetic services as ‘glamorous,’ such that consumers are less likely to view it as a source identifier,” 9 TTABVUE 10, and that the design features of the marks “are also less significant, because consumers are more likely to remember the word portions of the marks.” Id. at 11. He concludes that giving greater weight in the comparison of the marks in their entireties to the dominant word “Giggles” does not violate the anti- dissection rule because “the commercial impression of both marks are [sic] dominated by the word ‘GIGGLES’” and the marks are otherwise similar in appearance and commercial impression. Id. at 14. The marks must be considered in their entireties, but “‘in articulating reasons for reaching a conclusion on the issue of confusion, 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 consideration of the marks in Serial No. 87267034 - 21 - their entireties.’” Detroit Athletic Co., 128 USPQ2d at 1051 (quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)). We will first determine the dominant portions of the marks because Applicant and the Examining Attorney disagree on that issue with respect to Applicant’s mark. Both marks contain words and designs. “In the case of a composite mark containing both words and a design, ‘the verbal portion of the mark is the one most likely to indicate the origin of the goods [or services] to which it is affixed.’” Viterra, 101 USPQ2d at 1908 (quoting CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983)); see also In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018). Applicant and the Examining Attorney essentially agree that the words in each mark, not the designs, are the elements “most likely to indicate the origin of the goods [or services] to which it is affixed.” Viterra, 101 USPQ2d at 1908 (internal quotation marks omitted). Applicant acknowledges that “purchasers tend to recall the word elements of trademarks (e.g. the phrase ‘GIGGLES & GLAM’) rather than design elements, as the word elements are what consumers use to refer to or request services”), 7 TTABVUE 13, while the Examining Attorney argues that “[a]lthough applicant’s and registrant’s marks both have design elements and stylizations, these elements are less significant when comparing the marks,” and that “the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.” 9 TTABVUE 10. Serial No. 87267034 - 22 - They disagree, however, on which words in Applicant’s marks are dominant.25 As noted above, the Examining Attorney argues that “Giggles” is the dominant portion of the mark, 9 TTABVUE 10, while Applicant claims that “[p]otential purchasers are likely to perceive and remember the phrase ‘GIGGLES & GLAM’ as a whole,” 10 TTABVUE 7, and that consumers viewing Applicant’s mark will “pair” “Glam” with “Giggles” because of the ampersand between the words, the substantially larger font of the word GLAM in comparison to the descriptive and disclaimed words “salon,” “boutique,” and “parties,” the division of Applicant’s mark into two parts by the horizontal line, and the initial capitalization of the words “Giggles” and “Glam” in the mark. Id. at 8. According to Applicant, “the relevant comparison for 2(d) purposes— at a minimum—is between the alliterative phrase ‘GIGGLES & GLAM’ in Applicant’s mark and the standalone word ‘GIGGLES’ in the Cited Mark (notwithstanding the other word and stylized elements of the respective marks).” Id. at 7. The relevant comparison is, of course, between both marks in their entireties, but we agree with the Examining Attorney that “Giggles” should be given greater weight in that comparison than the other elements in Applicant’s mark. “Giggles” is the first word in Applicant’s mark and the words in the mark that follow “Giggles” have little or no source-identifying capacity. The words “salon,” “boutique,” and “parties” have been disclaimed,26 and the word “glam” means 25 Neither Applicant nor the Examining Attorney addresses the dominant portion of the cited mark, but our analysis and conclusion regarding the dominant portion of Applicant’s mark apply to the cited mark as well for the reasons discussed below. 26 September 16, 2017 Response to Office Action at 1. Serial No. 87267034 - 23 - “glamour,” a desired end result of using Applicant’s services.27 The first position of the word “Giggles” in Applicant’s mark, and the non-source identifying nature of the words that follow “Giggles,” provide rational reasons to find that “Giggles” is the dominant portion of the mark.28 See, e.g., Detroit Athletic Co., 128 USPQ2d at 1049- 50 (Board properly focused on the words DETROIT ATHLETIC as the dominant portions of the marks DETROIT ATHLETIC CO. and DETROIT ATHLETIC CLUB because DETROIT ATHLETIC were the first words in the marks and the words CO. and CLUB were non-source identifying and had been disclaimed). The word “Giggles” is also the largest and most visually prominent word in Applicant’s mark,29 as shown in the application drawing: and in Applicant’s original specimen of use:30 27 We take judicial notice that “glam” means “extravagantly showy glamour.” MERRIAM- WEBSTER DICTIONARY (merriam-webster.com, last accessed on March 26, 2019). There are multiple examples in the record of uses of “glam” to suggest “glamour” in connection with the services identified in the application. April 4, 2018 Final Office Action at 2-17. 28 The same is true with respect to the cited mark, in which the first word “Giggles” appears above the generic and disclaimed term “kids salon.” 29 The same is again true with respect to the cited mark, in which the word “Giggles” appears in large, brightly colored script above the words “kids salon” in non-descript lowercase letters. 30 Applicant submitted substitute specimens comprising webpages and signage that display the mark as it appears in the original specimen. September 16, 2017 Response to Office Action at 14-17. Serial No. 87267034 - 24 - 31 The prominence of the word “Giggles” in Applicant’s mark also provides a rational reason to find that it is the dominant element of the mark. See, e.g., Bd. of Regents, Univ. of Tex. Sys. v. S. Illinois Miners, LLC, 110 USPQ2d 1182, 1188 (TTAB 2014). Applicant argues that “it is highly unlikely any consumer referring to Applicant or Applicant’s Services would shorten the phrase ‘GIGGLES & GLAM’ to either the word ‘giggles’ or the word ‘glam’ standing alone.” 7 TTABVUE 12. Applicant cites no evidence for its claim, and there is record evidence suggesting that Applicant would be referred to simply as “Giggles.” Most significantly, Applicant itself has shortened the phrase “Giggles & Glam” in its mark simply to “Giggles” in identifying itself and its services on its website: 31 December 13, 2016 Application at 3. Serial No. 87267034 - 25 - 32 33 32 September 16, 2017 Response to Office Action at 18-19. 33 December 13, 2016 Application at 4. A Google page regarding Applicant’s salon also displays a photograph that contains what appears to be interior signage displaying the word “Giggles” in large lettering. September 16, 2017 Response to Office Action at 11. Serial No. 87267034 - 26 - In addition, a consumer review of Applicant’s salon posted on Facebook referred to Applicant as “Giggles”: 34 The Board and its primary reviewing court have long recognized “the penchant of consumers to shorten marks.” In re Bay State Brewing Co., 117 USPQ2d 1958, 1961 (TTAB 2016) (citing In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 219 (CCPA 1978) (Rich, J., concurring) (“the users of language have a universal habit of shortening full names—from haste or laziness or just economy of words”)). In determining the dominant portion of Applicant’s mark, we find it significant that Applicant itself shortened the applied-for mark, including the self-styled “unitary phrase” “Giggles & Glam,” to “Giggles” alone in advising prospective customers that “Giggles is the place to shop!” and that “Giggles is located at The Streets of Indian Lakes Mall, next door to Rack Room Shoes,” and that a customer referred to Applicant as “Giggles” in reviewing Applicant’s services. Applicant’s identification of itself as “Giggles” encourages customer to do the same, and the record shows that at least one 34 March 19, 2018 Response to Office Action at 11. There are a few other customer reviews included in the results of Applicant’s Google search on the term “GIGGLES & GLAM.” One of them on yelp.com is truncated, and the others do not refer to Applicant by name. Applicant and its salon are referred to primarily as “Giggles & Glam Salon” in excerpts from other websites that are included in the search results. Id. The registrant similarly identified itself as “Giggles” in the results of a Google search regarding the registrant that Applicant made of record. Id. at 14. Serial No. 87267034 - 27 - has actually done so. This evidence provides another rational reason—perhaps the most compelling one—to find that “Giggles” is the dominant portion of Applicant’s mark because it is the “term most likely to be remembered by consumers” and “used in calling for the services” or in otherwise referring to Applicant. In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009). We find that “Giggles” is the dominant portion of both marks, and we turn now to the required comparison of the marks in their entireties, giving greater weight in that comparison to the shared dominant word “Giggles” than to the other elements of the marks. Applicant argues that “the appearance, sound, sight, and commercial impression of ‘GIGGLES & GLAM SALON •BOUTIQUE •PARTIES’ derives [sic] significant contribution from all of these distinguishing words,” 7 TTABVUE 22-23, and that “the words ‘GLAM,’ ‘BOUTIQUE,’ and ‘PARTIES,’ in particular, contribute as much or more to the commercial impression that [sic] ‘GIGGLES,’ as these terms signify to consumers a particular type of service (cosmetic services and parties) that is not at all suggested by the word ‘GIGGLES’ standing alone.” Id. at 23. Applicant also argues that the Examining Attorney “did not give appropriate weight to the design elements of the two marks,” including the “star over the ‘I’ in Giggles, a horizontal line leading into the ‘& Glam,’ which is followed by three small stars, and small stars separating the words ‘salon,’ ‘boutique,’ and ‘parties[’] below the horizontal line.” Id. at 23. Applicant claims that these features “more than adequately differentiate [the marks] by giving viewers substantially different visual, semantic, and commercial Serial No. 87267034 - 28 - impressions.” Id. Applicant concludes that “[b]ecause Applicant’s Mark and the Cited Mark do not share any common elements beyond the weak ‘GIGGLES’ element, there is no likelihood of confusion between the two marks.” Id. at 22. The Examining Attorney argues that the marks are similar “in structure and appearance, because both have the word ‘GIGGLES’ in large font and have descriptive wording such as ‘SALON’ underneath.” 9 TTABVUE 12. He contends further that the dominant word “Giggles” in both marks “appears in the largest font on the upper left portion of the marks” and that “[b]elow this wording are several other beauty-related terms such as ‘GLAM’, ‘SALON’, ‘BOUTIQUE’, ‘PARTIES’, and ‘KIDS SALON’. In fact, both marks have the term ‘SALON’. Thus, the commercial impression of both marks as wholes is created by the word ‘GIGGLE’ used for beauty- related services.” Id. According to the Examining Attorney, “the commercial impression of both marks is that of the dominant wording ‘GIGGLES’ used for beauty and cosmetic services.” Id. at 13. With respect to appearance, as discussed above, the word “Giggles” is the first and most prominent element in both marks, and we agree with the Examining Attorney that its positioning above, and in relation to, the other elements in the marks is similar in both marks. We are mindful that “[t]he proper perspective on which the analysis must focus is on the recollection of the average customer, who retains a general rather than specific impression of marks,” i.am.symbolic, 127 USPQ2d at 1630, and that “marks ‘must be considered . . . in light of the fallibility of human memory’ and ‘not on the basis of side-by-side comparison.’” St. Helena Hosp., 113 Serial No. 87267034 - 29 - USPQ2d at 1085 (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977)). The average consumer of Applicant’s services having a “general rather than specific impression” of the cited composite mark, and a fallible memory, is unlikely to notice, much less distinguish, the subtle design details in Applicant’s mark that Applicant argues “more than adequately differentiate [the marks] by giving viewers substantially different visual, semantic, and commercial impressions.” 7 TTABVUE 23.35 Applicant’s mark is likely to be viewed as similar in appearance to the cited mark as the cited mark is remembered. We find that the marks are similar in appearance when considered in their entireties. As to sound, the marks are similar because each begins with the identical dominant lead word “Giggles,” but there would be some differences in the number of words and syllables in the marks if they were verbalized as they appear in the application and registration drawings (i.e., as “Giggles kids salon” and “Giggles & Glam salon boutique parties”). We find that the similarities engendered by the identical lead word “Giggles” would still outweigh the differences in that scenario because the different sounding words have little, if any, source-identifying capacity, but this verbalization appears artificial and decidedly unlikely given “the penchant 35 As discussed above, Applicant downplays the significance of these design features elsewhere in its brief. Applicant argues that “the fonts [in its mark] are not relevant” because “the proper focus when analyzing Applicant’s Mark is on the recollection of the average purchaser” because “purchasers tend to recall the word elements of trademarks (e.g. the phrase ‘GIGGLES & GLAM’) rather than design elements, as the word elements are what consumers use to refer to or request services.” 7 TTABVUE 12-13 (emphasis supplied by Applicant). Even if Applicant’s mark is recalled visually as “Giggles & Glam,” however, the marks would be similar in appearance for the reasons discussed above. Serial No. 87267034 - 30 - of consumers to shorten marks,” Bay State Brewing, 117 USPQ2d at 1961, as reflected in the record evidence showing that both marks have been shortened to “Giggles” alone. On the basis of the structure and contents of the marks and the evidence of their shortening to “Giggles,” the most likely verbalization of both marks appears to be as “Giggles” alone, which would make the marks identical in sound. We must consider the marks as drawn, of course, rather than as they actually are or may be used, FabFitFun, 127 USPQ2d at 1676, but even if Applicant’s mark were verbalized as “Giggles & Glam,” as Applicant posits, 7 TTABVUE 16, “Giggles” and “Giggles & Glam” are similar in sound because they consist of or begin with the identical lead source-identifying word. We find that the marks are likely to be at least similar, if not identical, when they are verbalized. Finally, with respect to connotation and commercial impression, Applicant argues that the marks “convey entirely different commercial impressions and meanings,” 10 TTABVUE 7, that “consumers will interpret Applicant’s Mark as ‘GIGGLES & GLAM’ and the Cited Mark as ‘GIGGLES,’” and that the “marks therefore create quite different commercial impressions,” id. at 9, but Applicant never identifies those “entirely different commercial impressions and meanings.” As noted above, Applicant denies that “Giggles” describes or suggests the nature of the relevant services, 7 TTABVUE 23, and it is not clear from the record whether the word carries its literal meaning in the context of the relevant services,36 or some other meaning. But 36 We take judicial notice that “giggle” means “a light silly laugh.” MERRIAM-WEBSTER DICTIONARY (merriam-webster.com, last accessed on March 27, 2019). Serial No. 87267034 - 31 - regardless of whether it has any specific meaning, Applicant does not argue, and there is nothing in the record to suggest, that it has a different meaning in the marks when they are used in connection with identical services. Cf. Coach Servs., 101 USPQ2d at 1721-22 (COACH mark had different meanings as applied to educational materials and luxury leather goods). Applicant also does not explain how the addition of the word “Glam” to the word “Giggles” in Applicant’s mark gives the mark as a whole a different meaning from the cited mark, and we see no basis in the record for any such different meaning. We agree with the Examining Attorney that the word “Glam” in Applicant’s mark “does not change the similar commercial impression created by both marks, because it only reinforces that both marks are used in the beauty industry,” 9 TTABVUE 13, where “glamour” resulting from children’s salon care may be a source of mirth. Both marks connote generally that their owners will provide a fun experience in the course of rendering children’s hair or nail care in their salons.37 We find that the marks are similar in meaning when considered in their entireties. The marks as a whole are, at a minimum, more similar than different in all means of comparison. Cf. FabFitFun, 127 USPQ2d at 1677 (marks I’M SMOKING HOT and SMOKIN’ HOT SHOW TIME for cosmetics found to be “more dissimilar than similar” in appearance, sound, and meaning). The first du Pont factor supports a finding of a likelihood of confusion. 37 Both marks seem to suggest a fun experience for both parents and children. As one reviewer of Applicant’s salon put it, “[w]e love this place for our two boys, and they love it too!” March 19, 2018 Response to Office Action at 11. Serial No. 87267034 - 32 - D. Absence of Actual Confusion The eighth du Pont factor “examines ‘the length of time during and conditions under which there has been concurrent use without evidence of actual confusion.’” Guild Mortg., 129 USPQ2d at 1162 (quoting du Pont, 177 USPQ at 567). Applicant argues that it “has been using Applicant’s Mark since at least 2013,” that it “has received no notice of actual confusion of Applicant’s Mark with the Cited Mark,” and that “[t]his further supports a finding that there is no likelihood of consumer confusion sufficient to prevent registration of Applicant’s Mark.” 7 TTABVUE 29. In Guild Mortg., the Federal Circuit reversed the Board’s decision affirming a refusal to register under Section 2(d) because the Board had failed to consider the applicant’s evidence, in the form of a declaration from its President and CEO, of the absence of actual confusion for over 40 years of concurrent use of the subject marks in the same geographic market. 129 USPQ2d at 1162-64. Guild Mortg. requires us to consider “argument and evidence related to DuPont factor 8” when they are present, id. at 1162, but Applicant only offers argument here and, in any event, even if we were to accept Applicant’s argument as evidence, it does not show that this factor supports a finding that confusion is not likely. The Federal Circuit recently reminded us that “[a]ttorney argument is no substitute for evidence.” Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) (quoting Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005)). Applicant’s claim of no actual confusion is mere attorney argument, as there is no sworn statement in the record Serial No. 87267034 - 33 - like the one submitted by the applicant in Guild Mortg. 129 USPQ2d at 1163. See also Detroit Athletic Co., 1218 USPQ2d at 1053 (considering and rejecting customer affidavit purporting to show lack of actual confusion). Moreover, unlike in Guild Mortg., where the parties both provided their respective services in southern California, 129 USPQ2d at 1164, Applicant admits, indeed argues, that the geographic markets here are entirely distinct. Applicant claims that the “salon industry is an especially localized industry, meaning its marketing channels are particularly geographically specific,” 7 TTABVUE 27, and that “Applicant and registrant occupy completely different markets and are not in competition” because “Applicant’s salon and boutique is located in northern middle Tennessee” while “the registrant of the Cited Mark is located in Boca Raton in southern Florida.” Id. at 28.38 As a result, “the scope of people being targeted is limited and distinct from those that might be seeking registrant’s services.” Id. As noted above, the current geographic separation of Applicant’s and the registrant’s businesses is not relevant on the second and third du Pont factors, but it is relevant on the eighth. Even if we were to accept Applicant’s unsworn and unilateral claim that no actual confusion has occurred, there has been no realistic opportunity for actual confusion to have occurred because “Applicant and registrant occupy completely different markets and are not in competition.” Id. The absence of actual confusion is not significant where, as here, “there has been little or no opportunity for 38 Unlike Applicant’s claim that there has been no actual confusion, its arguments regarding the locations of Applicant and the cited registrant are supported by record evidence. March 19, 2018 Response to Office Action at 11-14. Serial No. 87267034 - 34 - a meaningful market interplay between the parties . . . .” Justin Indus., Inc. v. D.B. Rosenblatt, Inc., 213 USPQ 968, 976 (TTAB 1981). In any event, “[l]ikelihood of confusion in this context can be established even in the face of evidence suggesting that the consuming public was not actually confused.” Detroit Athletic Co., 128 USPQ2d at 1063 (citing In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003)). The eighth du Pont factor is neutral in our analysis of likelihood of confusion. E. Prior Registrations of GIGGLES-Formative Marks in Class 44 Applicant argues that because there are two registrations of GIGGLES-formative marks for dentistry services in Class 44, its mark should be registered over the cited mark. Applicant claims that these registered marks are similar in nature and structure to those at issue here, and that the United States Patent and Trademark Office (“PTO”) “clearly has an interest in uniform application of the law to trademark applications, both for the sake of making the law clear and administrable and for the sake of fairness to the applicants.” 7 TTABVUE 25-26. We agree with Applicant that consistent application of the Trademark Act is a desired agency goal, but it has long been settled law that the eligibility of marks for registration must be decided on the basis of the facts in each application, and “[e]ven if some prior registrations had some characteristics similar to [Applicant’s] application, the PTO’s allowance of such prior registrations does not bind the Board or [the Federal Circuit].” In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). See also In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d Serial No. 87267034 - 35 - 1632, 1635 (Fed. Cir. 2016) (the PTO must “examine all trademark applications for compliance with each and every eligibility requirement” regardless of the prior treatment of applications involving similar marks). “Neither the Board nor any Trademark Examining Attorney is bound by decisions of Examining Attorneys to register prior marks.” In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017). The fact that the PTO has registered other GIGGLES- formative marks for different services in Class 44 based on different records is simply of no moment on this appeal. F. Conclusion and Balancing of du Pont Factors With one exception, our findings on the relevant du Pont factors either support an ultimate finding of a likelihood of confusion, or are neutral. The services, channels of trade, and classes of consumers are legally identical in part, and these findings strongly support an ultimate finding of a likelihood of confusion. We have also found that the marks are similar in appearance, sound, and connotation and commercial impression when considered in their entireties. Taken together, these factors support a finding of a likelihood of confusion, and they are not rebutted by Applicant’s claim that there has been no actual confusion, which is neutral in our analysis. The record shows that the word “Giggles” is somewhat weak in the context of the relevant services, such that the cited mark, which is dominated by that word, is also somewhat weak. As noted above, the weaker a mark is, “the closer an applicant’s mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection.” Juice Generation, 115 Serial No. 87267034 - 36 - USPQ2d at 1674. Because the cited mark here is only somewhat weak, however, we conclude, on balance, that our findings that the services, channels of trade, and classes of purchasers are identical, and that the marks are similar, outweigh any weakness attributed to the cited mark. We find, on the basis of the record as a whole, that consumers familiar with the cited mark who encounter Applicant’s mark used in connection with identical services are likely to believe mistakenly that those services originate with, or are sponsored or authorized by, the owner of the cited mark. Decision: The refusal to register is affirmed. Copy with citationCopy as parenthetical citation