Blue Cloud, LLC.

Trademark Trial and Appeal Board

Dec 13, 2017

No. 86533812 (T.T.A.B. Dec. 13, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: December 13, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Blue Cloud, LLC.
_____

Serial No. 86533812
_____

Keith Fraser of The Fraser Firm PC,
for Blue Cloud, LLC.
Tara L. Bhupathi, Trademark Examining Attorney, Law Office 124,
Lydia Belzer, Managing Attorney.
_____

Before Cataldo, Wolfson and Masiello,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
Blue Cloud, LLC (“Applicant”) seeks registration on the Principal Register of the
mark CORSA (in standard characters) for “eyewear” in International Class 9.1
The Trademark Examining Attorney has refused registration under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as

1 Application Serial No. 86533812 was filed on February 12, 2015 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention
to use the mark in commerce. In response to a requirement by the Examining Attorney,
Applicant submitted the following translation: The English translation of “CORSA” in the
mark is “RACE.”
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intended to be used in connection with the goods identified in the application, so
resembles the mark CORSA COLLECTIONS (in standard characters,
“COLLECTIONS” disclaimed), previously registered on the Principal Register for the
following services:
Retail store services featuring luggage, travel bags, business cases, handbags,
small leather goods, jewelry, timepieces, travel accessories, covers and
accessories for cell phones and tablets, cosmetic bags, footwear, eyewear, and
household gifts, in International Class 35,2

as to be likely to cause confusion, to cause mistake, or to deceive.
After the Examining Attorney made the refusal final, Applicant appealed to this
Board. We affirm the refusal to register.
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods and services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d)

2 Registration No. 4869258 issued on December 15, 2015. The registration includes the
following translation: The English translation of “CORSA” in the mark is “MOVING
SWIFTLY.”
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goes to the cumulative effect of differences in the essential characteristics of the goods
[or services] and differences in the marks.”).
Strength of the Mark in the Cited Registration
Applicant argues that a “considerable number of third parties use similar marks.”3
In support of this contention, Applicant introduced into the record with its December
28, 2016 Response to the Examining Attorney’s final Office Action screenshots from
third-party internet websites displaying various “CORSA” formative marks and
website addresses in connection with a variety of goods, including the following:4
CorsaMiglia.com displays a photograph of luggage with a Ferrari
automobile, although it is not clear whether “CorsaMiglia” is solely the
name of the website or also a mark for goods or services;

Orbino.com offers for sale leather Corsa iPod Touch cases;

Pillastore.com offers for sale Corsa eyewear (not Applicant’s);

Overstock.com offers for sale Serengetti Corsa GG6875 Sport
sunglasses;

Amazon.com.uk offers for sale a Corsa Leather Grip/Travel
Bag/Weekend Bag, although the price therefor is listed in pounds, and
it is not clear to what extent, if any, this webpage will be viewed by
consumers in the United States.

3 4 TTABVUE 19.
Page references herein to the application record refer to the downloadable .pdf version of the
United States Patent and Trademark Office (USPTO) Trademark Status & Document
Retrieval (TSDR) system. References to the briefs refer to the Board’s TTABVUE docket
system.
4 At .pdf 42-51.
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Applicant also made of record with the same response copies of the following five
third-party registrations, all issued on the Principal Register to different entities (all
marks are in standard characters):5
Registration No. 5068354 for the mark DE CORSA (translated as “the
trip”) for “luggage;”

Registration No. 3933750 for the mark ROSSA CORSA (translated
as “racing red”) for numerous bags, cases and boxes made of leather
and imitation leather; various food items; and advertising, business
management and retail store services featuring jewelry, watches,
textiles, leather products, cars and food;

Registration No. 4824059 for the mark VIA CORSA (translated as
“street racing”) for “printed periodicals in the field of travel; series of
non-fiction books in the field of travel guides;”

Registration No. 4673535 for the mark SUPERCORSA (no
translation) for various bicycle parts and accessories; knapsacks,
travel bags and sports bags; and items of clothing;

Registration No. 4449900 for the mark MOTOCORSA (CORSA
translated as “race”) f o r “motorcycle dealership services.”

With regard to the internet and third-party registration evidence, we note that
the “existence of [third party] registrations is not evidence of what happens in the
market place or that customers are familiar with them.” AMF Inc. v. American
Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973). Nevertheless,
in determining the degree of weakness, if any, in the shared terms, we must
“adequately account for the apparent force of [third-party use] evidence,” regardless
of whether “specifics” pertaining to the extent and impact of such use have been
proven. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671,

5 At .pdf 30-41.
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1674-5 (Fed. Cir. 2015). “[E]xtensive evidence of third-party use and registrations is
‘powerful on its face,’ even where the specific extent and impact of the usage has not
been established.” Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v.
New Millennium Sports, S.L.U., 797 F3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir.
2015), citing to Juice Generation, 115 USPQ2d at 1674.
Turning first to the internet evidence, Applicant has made of record a total of,
at best, five third-party uses of CORSA formative marks: two in connection with
eyewear, including sunglasses, and the rest in connection with leather mobile
phone cases, travel bags and luggage. As discussed above, one of the websites is
located in the United Kingdom and another does not appear to use a CORSA
formative as a mark. While Applicant has not presented specific evidence concerning
the extent and impact of these uses, it nevertheless presented “evidence of these
marks being used in internet commerce” for eyewear and additional goods sold under
the services identified in the cited registration. Jack Wolfskin 116 USPQ2d at 1136;
see also Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1072 (TTAB
2011) (internet printouts “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”). However, unlike cases in which extensive evidence of third-party
use and other evidence in the record was found to be “powerful on its face” inasmuch
as “a considerable number of third parties use [of] similar marks was shown,” Juice
Generation, 115 USPQ2d at 1674, Applicant has presented, at most, five such uses,
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well short of the volume of evidence found convincing in Jack Wolfskin and Juice
Generation.
We turn next to the five third-party registrations introduced into the record
by Applicant. Registration No. 5068354 for the mark DE CORSA is arguably closest
to the involved marks in appearance and sound, translates to “the trip,” and identifies
luggage. Registration No. 3933750 for the mark ROSSA CORSA differs from the
marks at issue due to the presence of the term ROSSA, translates to “racing red” and
identifies leather goods, advertising services and retail store services that do not
feature eyewear. Registration No. 4824059 for the mark VIA CORSA also differs in
appearance, sound and meaning from the involved marks, translating to “street
racing,” and identifies travel guides. Registration No. 4673535 for the mark
SUPERCORSA also differs in appearance and sound, connotes a “super race,” and
identifies bicycle parts, sports bags and clothing items. Registration No. 4449900 for
the mark MOTOCORSA similarly differs inasmuch as it connotes a motocross or
motorcycle race and identifies motorcycle dealerships. None of the third-party
registrations recite goods or services relating to eyewear; only two of the third-party
registrations identify goods sold by the owner of the cited registration; and none of
the marks are as similar to the cited registration, which translates to “swiftly moving
collections,” as is Applicant’s mark, which translates to race.
The totality of the evidence presented by Applicant fails to show that the term
CORSA as it appears in the marks is significantly weak in connection with the
involved goods or services. Therefore, while we can agree based upon translations
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that the term CORSA in the cited mark connotes speed, movement or travel, and thus
may be afforded a slightly narrower scope of protection than that afforded a fanciful
term, the evidence does not show that it should be afforded such a narrow scope of
protection that it would allow registration of Applicant’s mark.
Thus, we find based on this record that the mark in the cited registration is not so
weak as to be entitled to only a narrow scope of protection.
Similarity or Dissimilarity of the Marks
We address the du Pont likelihood of confusion factor focusing on “the similarity
or dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression.” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)
(quoting du Pont, 177 USPQ at 567). “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).
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, our analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
Serial No. 86533812
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dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). On the other hand, there is nothing improper
in stating that, for rational reasons, more or less weight has been given to a particular
feature of a mark, provided the ultimate conclusion rests on a consideration of the
marks in their entireties. In re Nat’l Data, 224 USPQ at 751.
The only difference between the marks CORSA and CORSA COLLECTIONS is the
presence of the disclaimed word “COLLECTIONS” in the registered mark.
Disclaimed matter is often “less significant in creating the mark’s commercial
impression.” In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001).
However, while a disclaimed term … may be given little weight … it may not be
ignored.” M2 Software Inc. v. M2 Communications Inc., 450 F.3d 1378, 78 USPQ2d
1944, 1948-49 (Fed. Cir. 2006). We take judicial notice of the following definition of
“collection” from OxfordDictionaries.com/definition/collection: “a group of things or
people; a group of accumulated items of a particular kind.”6 The disclaimed term
“COLLECTIONS” in the registered mark thus describes a feature of the recited
services, namely, that the retail store services provide a group of things or
accumulated items, including eyewear, for sale. “Regarding descriptive terms, this
court has noted that the ‘descriptive component of a mark may be given little weight

6 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v.
J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular
fixed editions. In re Hotels.com, L.P., 87 USPQ2d 1100, 1103 (TTAB 2007), aff’d, 573 F.3d
1300, 91 USPQ2d 1532 (Fed. Cir. 2009); In re Jonathan Drew, Inc., 97 USPQ2d 1640, 1642
n.4 (TTAB 2011).

Serial No. 86533812
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in reaching a conclusion on the likelihood of confusion.’” Cunningham v. Laser Golf
Corp., 55 USPQ2d 1842, 1846 (Fed. Cir. 2000), quoting, In re Nat’l Data, 224 USPQ
at 752. Applicant, while arguing that the marks “are significantly different not only
in appearance, but meaning, connotation, commercial impression and sound,”7
nonetheless acknowledges that “both Registrant’s mark and Applicant’s mark share
the dominant first term ‘Corsa.’”8 The term CORSA comprising Applicant’s mark is
identical in appearance and sound to CORSA in the registered CORSA
COLLECTIONS mark.
With regard to meaning, the Examining Attorney introduced with her May 19, 2015
Office Action an internet translation from Italian into English of the word CORSA as
“race.”9 In its November 10, 2015 response thereto, Applicant introduced into the
record portions of the file history of the application underlying the cited registration.
Therein, the owner of the cited registration states that it:
has translated “corsa” as moving swiftly. The word “corsa” in fact has a
number of different translations, including run or running, ride, rush or
trip or journey. Applicant first started its business selling luggage.
Using the word “corsa” in connection with its retail stores would suggest
to customers familiar with Italian or the meaning of CORSA, a trip or
traveling.10

Applicant argues that
Registrant contended that its mark “bears no logical relationship” with
the racing connotations of the other registered mark [ROSSA CORSA

7 4 TTABVUE 8.
8 Id.
9 At .pdf 6.
10 At .pdf 14. Registrant raised this argument in response to a refusal of registration under
Section 2(d).
Serial No. 86533812
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discussed above]. Rather, Registrant stated that “CORSA
COLLECTIONS” would “suggest to consumers…a trip or traveling.”

In Juice Generation, supra, the court found that such prior statements
made by a Registrant to the USPTO to overcome a refusal “are
particularly important” and have some estoppel effect when that
Registrant subsequently seeks to oppose another registration on the
same or similar grounds. (Juice Generation, supra, at 1340). Here,
Registrant’s statements establish that the two marks, when viewed in
their entirety, have different commercial impressions and that no
reasonable consumer would attribute the same connotation or
impression to Applicant’s mark “CORSA” as it would to Registrant’s
mark “CORSA COLLECTIONS”.11

Unlike the circumstances discussed by the Court in Juice Generation, the owner of
the CORSA COLLECTIONS mark is not a party to this ex parte appeal. Its
statements in arguing against a likelihood of confusion refusal during prosecution of
its underlying application may nonetheless be taken at face value with regard to the
meaning of its mark. With her December 3, 2015 Office Action, the Examining
Attorney introduced the following definition of “race:” – “a competition of speed, as in
running or riding;” “to move rapidly or at top speed.”12 Further, and as discussed
above, the term CORSA may mean “trip,” “moving swiftly,” “race” or “racing”
depending on the context in which it appears. Thus, CORSA appears to have several
related contextual meanings, and the mere fact that Applicant’s translation is “race”
while the translation in the cited registration is “moving swiftly” does not create a
significant difference in connotation, given that a race is a competition of speed, the
object of which is moving swiftly. Furthermore, while the owner of the registered

11 4 TTABVUE 10-11.
12 At .pdf 4. Definition from ahdictionary.com, American Heritage Dictionary of the English
Language, Fifth Ed. (2015).
Serial No. 86533812
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mark may have “first started its business selling luggage,”13 we must evaluate the
mark in connection with the services identified in the cited registration, which
include “retail store services featuring … eyewear.” In the contexts of eyewear and
retail stores featuring eyewear, respectively, it is likely that customers would
perceive CORSA to have the same meaning. Even if we view the term CORSA in the
CORSA COLLECTIONS mark as connoting a trip or traveling, that connotation is
not so far removed from racing or moving swiftly toward a destination.
We acknowledge that the additional term COLLECTIONS serves to visually and
aurally distinguish the Applicant’s mark and the cited mark. However, the only term
in Applicant’s mark is CORSA and it is the only distinctive term in the registered
mark. This common identical term in both marks results in marks that, as discussed
above, are similar in sound, appearance, meaning, and commercial impression. The
presence of the additional term COLLECTIONS would not be likely to distinguish
the marks since it would merely indicate that the owner of the cited registration offers
a group of products under its mark. See In re Jewelmasters, Inc., 221 USPQ 90 (TTAB
1983) (JEWELMASTERS for retail jewelry store services held likely to be confused
with MASTER JEWELER’S COLLECTION for jewelry); and Drexel Enterprises, Inc.
v. Prescolite Mfg. Corp., 148 USPQ 92 (TTAB 1965) (HERITAGE COLLECTION,
Collection disclaimed, for lighting fixtures confusingly similar to HERITAGE for a
line of furniture). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261,
62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (“Given the dominance of the word ‘Packard’

13 Applicant’s November 10, 2015 communication at .pdf 14.
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in PACKARD TECHNOLOGIES and HP’s heavy involvement in the technology
field, this court agrees with the Board that the similarities in the marks [PACKARD
TECHNOLOGIES and HEWLETT PACKARD] outweigh the differences.
Substantial evidence supports the Board’s finding that the marks are similar in their
entireties”).
Furthermore, we note that CORSA, the word which the marks share in common,
and the only word comprising Applicant’s mark, is also the first word in the mark in
the cited registration. Presto Products, Inc. v. Nice-Pak Products Inc., 9 USPQ2d
1895, 1897 (TTAB 1988) (“…[it is] a matter of some importance since it is often the
first part of a mark which is most likely to be impressed upon the mind of a purchaser
and remembered.”). See also Palm Bay Imps., 73 USPQ2d at 1692 (“The presence of
this strong distinctive term as the first word in both parties’ marks renders the marks
similar, especially in light of the largely laudatory (and hence non-source identifying)
significance of ROYALE.”).
We find, as a result, that the differences between the marks are outweighed by
their similarity in appearance, sound and meaning. Considered in their entireties, we
find that the marks convey similar overall commercial impressions. This du Pont
factor thus supports a finding that confusion is likely.
Relatedness of the Goods and Services, Their Trade Channels and Consumers
We next consider the du Pont factors addressing the similarity of the goods and
services, the channels of trade in which they may be encountered and the purchasers
to whom they are marketed. We are mindful that the test is not whether consumers
Serial No. 86533812
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would be likely to confuse these goods and services, but rather whether they would
be likely to be confused as to their source. In re Anderson, 101 USPQ2d 1912, 1919
(TTAB 2012). Therefore, to support a finding of likelihood of confusion, it is not
necessary that the goods and services be identical or even competitive. It is sufficient
that the goods and services are related in some manner, or that the circumstances
surrounding their marketing are such that they would be encountered by the same
persons in situations that would give rise, because of the marks, to a mistaken belief
that they originate from the same source or that there is an association or connection
between the sources of the goods and services. In re Thor Tech Inc., 90 USPQ2d 1634,
1635 (TTAB 2009).
We must look to the goods and services as identified in the involved application
and cited registration, not to any extrinsic evidence of actual use. Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir.
2014). Because there are no limitations as to channels of trade or classes of
purchasers in the recitation of goods or services in either the cited registration or the
application, we must presume that the identified goods and services move in all
channels of trade normal for such goods and services and are available to all potential
classes of ordinary consumers of such goods and services. See Citigroup Inc. v. Capital
City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re
Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ
639, 640 (TTAB 1981).
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Applicant’s goods are “eyewear” and the services in the cited registration are
“retail store services featuring [inter alia] eyewear.” In support of the refusal of
registration, the Examining Attorney introduced with her June 28, 2016 Office action
printouts from four third-party internet websites offering both eyewear and online
retail store services featuring eyewear under the same marks, including: OGI
Eyewear; Crap Eyewear; Tom’s; and Warby Parker.14 With her January 23, 2017 final
Office Action, the Examining Attorney introduced into the record screenshots from
the following four additional websites that also offer eyewear and online retail store
services featuring eyewear under the same marks: Dita; Matsuda; Pixel Eyewear;
Native Eyewear.15 This evidence demonstrates that at least eight third parties
identify eyewear as well as retail services featuring eyewear under the same mark.
In addition, the Examining Attorney introduced into the record with her June 28,
2016 Office Action copies of nine use-based, third-party registrations for marks
identifying both eyewear and various retail services featuring eyewear. The following
examples are illustrative:16
Registration No. 4654297 for the mark SENECA EYEWEAR (in standard
characters) for “eyeglasses; eyewear; on-line retail store services featuring
eyewear and eye glasses.”

Registration No. 4905761 for the mark WOODZEE (in standard characters) for
“eyewear, namely prescription eyewear, reading glasses; online wholesale and
retail store services featuring sunglasses, prescription eyewear, reading
glasses, cases for eyeglasses and sunglasses, and toothbrushes.”

14 At .pdf 8-16.
15 At .pdf 7-14.
16 At .pdf 3-40.
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Registration No. 4932464 for the mark JUNK (in stylized form) for “eyewear,
namely, sunglasses; on-line retail store services featuring [inter alia]
sunglasses.”

As a general proposition, although use-based, third-party registrations alone are not
evidence that the marks shown therein are in use or that the public is familiar with
them, they nonetheless may have some probative value to the extent they may serve
to suggest that the goods are of a kind that emanate from a single source. See In re
Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988). In this case, the totality of the internet and
third-party registration evidence demonstrates that the identified goods and services
may emanate from the same sources under the same marks. In our likelihood of
confusion analysis, these findings under the second du Pont factor support a finding
that confusion is likely.
With its November 10, 2015 response to the Examining Attorney’s first Office
Action, Applicant submitted the declaration of its CEO, Steve Khroyan, in which he
declares that Applicant intends to use its CORSA mark to identify eyewear; and that
it sells its eyewear exclusively online and not through retail stores.17 However, the
identification of goods in the involved application is “eyewear” without any
limitations as to the channels of trade in which it will be offered. Similarly, there is
nothing in the recitation of services in the cited mark that restricts the identified
“retail store services” solely to “brick and mortar” retail stores to the exclusion of

17 At .pdf 21.
Serial No. 86533812
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online retail store services. Thus, Applicant’s arguments seeking to impose
limitations on the services in the cited registration are unavailing, as would be any
limitation to Applicant’s trade channels that Applicant may seek to include in its
identification of goods. In the absence of trade channel limitations in either recitation
of goods or services, we presume Applicant’s eyewear is offered in all customary trade
channels, including retail stores.
“We have no authority to read any restrictions or limitations into the registrant’s
description of [services].” In re Thor Tech Inc., 90 USPQ2d at 1638. Nor may an
applicant restrict the scope of the services covered in the cited registration by
argument or extrinsic evidence. In re Midwest Gaming & Entertainment LLC, 106
USPQ2d 1163, 1165 (TTAB 2013); In re La Peregrina Ltd., 86 USPQ2d 1645, 1647
(TTAB 2008); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986).
Summary
Considering all the evidence of record, including any evidence not specifically
discussed herein, we find that the marks in their entireties are similar and that the
identified goods and services are related and registrant’s services provide a trade
channel in which such goods as Applicant’s goods may be encountered. Applicant’s
modest evidence of third-party use and registration of similar marks is insufficient to
mitigate in favor of a finding of no likelihood of confusion. We find therefore that
Applicant’s mark is likely to cause confusion with the mark in the cited registration
when used in association with the identified goods and services.
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Decision: The refusal to register Applicant’s mark on the ground of likelihood of
confusion is affirmed.