Cade R. Herzog

Trademark Trial and Appeal Board

Aug 23, 2019

87856199 (T.T.A.B. Aug. 23, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 23, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Cade R. Herzog
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Serial No. 87856199
_____

Neal E. Friedman of Davis & Bujoldn PLLC,
for Cade R. Herzog.
Dezmona Mizelle-Howard, Trademark Examining Attorney, Law Office 110,
Chris A. F. Pedersen, Managing Attorney.
_____

Before Shaw, Greenbaum and Larkin,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Cade R. Herzog (“Applicant”) seeks registration on the Principal Register of the
mark ON TARGET DIGITAL (in standard characters, DIGITAL disclaimed) for
Advertising agencies, namely, promoting the goods and
services of others, in International Class 35.1

1 Application Serial No. 87856199 was filed on March 29, 2018, based upon Applicant’s claim
of first use anywhere and use in commerce since at least as early as March 2, 2012.
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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
Applicant’s mark, when used in connection with the identified services, so resembles
the mark ALWAYS ON TARGET (in standard characters), registered on the Principal
Register for
advertising and advertisement services; advertising and
marketing services, namely, promoting the goods and
services of others; advertising and publicity services,
namely, promoting the goods, services, brand identity and
commercial information and news of third parties through
print, audio, video, digital and on-line medium;
development, operation and administration of digital
signage systems and digital advertising systems for others,
namely, providing advertising space by electronic means
and global computer information networks; advertising,
namely, mobile advertising using advertising delivered
through mobile devices such as cell phone, PDAs and
mobile computing products, in International Class 35,2
as to be likely to cause confusion, mistake or deception.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Applicable Law
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

2 Registration No. 3863626 issued on October 19, 2010; Section 8 & 15 Affidavits accepted
and acknowledged.
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(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 or 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)
goes to the cumulative effect of differences in the essential characteristics of the goods
[or services] and differences in the marks.”); see also In re i.am.symbolic, llc, 866 F.3d
1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis
considers all DuPont factors for which there is record evidence but ‘may focus … on
dispositive factors, such as similarity of the marks and relatedness of the goods’”)
(quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375,
1380 (Fed. Cir. 2002)). We have considered each du Pont factor that is relevant and
for which there is evidence of record. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450
F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (even within du Pont list, only
factors that are “relevant and of record” need be considered).
A. Similarity of the Services and Channels of Trade
Under the second and third du Pont factors, we base our evaluation on the services
as they are identified in the application and cited registration. See In re Detroit
Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018); In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). Applicant, in his
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brief, concedes that the services are similar, and does not otherwise address these
factors.3
Here, the “advertising and advertisement services” and “advertising and
marketing services, namely, promoting the goods and services of others” identified in
the registration encompass, and therefore are legally identical to, the “advertising
agencies, namely, promoting the goods and services of others” identified in the
application. See In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB
2015) (“Applicant’s broadly worded identification of ‘furniture’ necessarily
encompasses Registrant’s narrowly identified ‘residential and commercial
furniture.’”). Because some of the services in the application and cited registration
are legally identical, we need not further consider the relatedness of the services. See
SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 938-39 (Fed. Cir. 1983)
(holding that a single good from among several may sustain a finding of likelihood of
confusion); Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ
986, 988 (CCPA 1981) (likelihood of confusion must be found if there is likely to be
confusion with respect to any item that comes within the identification of goods or
services in the application).
Given the in-part legal identity of the identified services, and the lack of
restrictions or limitations in the application or registration as to their nature,
channels of trade, or classes of customers, we must presume that the channels of

3 “For purposes of this appeal, Applicant does not contest that the services, as described in
the cited registration only, are similar to the services as described in Applicant’s application.”
App. Br., 7 TTABVUE 8.
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trade and classes of purchasers for these services are the same. See In re Viterra Inc.,
671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods and
services are presumed to travel in same channels of trade to same class of
purchasers).
The second and third du Pont factors strongly support a likelihood of confusion
determination.
B. The Strength of the Cited Mark
Under the sixth du Pont factor, we consider “[t]he number and nature of similar
marks in use on similar goods [or services].” du Pont, 177 USPQ at 567. Evidence of
third-party use bears on the strength or weakness of a cited mark. i.am.symbolic, 123
USPQ2d at 1751. If the evidence establishes that the consuming public is exposed to
third-party uses of similar marks for similar goods or services, it “is relevant to show
that a mark is relatively weak and entitled to only a narrow scope of protection.” Palm
Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1693 (Fed. Cir. 2005).
Applicant contends that “[t]he mark element ‘Target’ and/or ‘On Target’ common
to the cited registered mark and Applicant’s mark has weak trademark significance
for the relevant services” and is therefore entitled to a narrow scope of protection.4 As
support, Applicant points to a dictionary entry from Merriam-Webster online which
defines “on-target” as an adjective meaning “exactly appropriate : accurate on-target

4 App. Br., 7 TTABVUE 5.
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advice,” three articles or blogposts about advertising that use the term “on target” in
a manner purportedly consistent with the dictionary meaning, an article that uses
the term “target” several times in relation to advertising but does not include the
term “on target,” and 27 third-party registrations for TARGET-inclusive marks for
advertising and promotional services, only one of which includes the term “on
target.”5
Applicant’s argument is largely based on the faulty premise that “target” and “on
target” are close enough in meaning that evidence of third party use of “target” alone
is relevant to our determination of the strength or weakness of the term “on target.”
However, in the advertising context, “target” is a noun defined as “one to be
influenced or changed by an action or event: Children were the target of the new
advertising campaign,” and the verb forms “targeted,” “targeting” and “targets” are
defined as “to design for or direct toward a specific object or audience: targeted the ad
campaign toward seniors.”6 Because “on-target” is a recognized adjective defined
above as “exactly appropriate,” with no specific definition in the advertising context,
and the noun “target” and the related verb forms have different meanings with
specific definitions in the advertising context, Applicant’s evidence of terms other

5 Attached to September 21, 2018 Response to Office Action, TSDR pp. 15-203. References to
the application file are to the downloadable .pdf version.
6 We take judicial notice of this definition from
https://www.ahdictionary.com/word/search.html?q=target based on THE AMERICAN
HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, Fifth Edition (2019), accessed on
August 20, 2019. See Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. 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).
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than “on target” (with or without a hyphen) has little probative value as to whether
“on target” is a weak term when used in association with advertising and promotional
services.7
A single third-party registration for the mark RIGHT ON TARGET identifies
mail order catalog services and wholesale distributorships featuring various
advertising and promotional products, such as pens, letter openers and mugs. This
evidence is not probative because the services here are legally identical in part, and
Applicant made no showing that the services identified in the third-party registration
are related to the advertising services in the cited registration.8 See Omaha Steaks
Int’l v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1694 (Fed.
Cir. 2018) (error to rely on third-party evidence of similar marks for dissimilar goods,
as Board must focus “on goods shown to be similar”). And the three examples of third-
party use of “on target” in association with advertising services show use of the
wording only as part of a title of material about target marketing (e.g., “FTC Fact
Sheet: Advertising on Target” and an ideafit.com blog posted on September 18, 2008
titled “On-Target Advertising”), or in an informational manner (e.g., blog posted on
November 1, 2017 on the Strategic Funding website, titled “3 Key Ways to Determine
if Your Advertising Budget is on Target”: “Advertising is certainly an important

7 The presence or absence of a hyphen does not change the meaning of the terms. Cf. Mag
Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1712 (TTAB 2010) (hyphen did not
distinguish MAGNUM from MAG-NUM).
8 Reg. No. 4943963, attached to September 21, 2018 Response to Office Action, TSDR p. 15-
20.
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investment that can lead to more sales. So, how do you know if your advertising
budget is on target?”).9
On this record, we find ON TARGET in connection with advertising to be
arbitrary, as a “known word used in an unexpected or uncommon way.” See Nautilus
Grp., Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330, 71 USPQ2d 1173, 1180-81
(Fed. Cir. 2004) (defining an arbitrary mark as a “known word used in an unexpected
or uncommon way” and observing that such marks are typically strong); see also Palm
Bay, 73 USPQ2d at 1692 (arbitrary terms are conceptually strong trademarks). The
small quantity of use evidence (at best, printouts from three websites), is insufficient
to demonstrate the weakness of the cited mark, as it “falls short of the ‘ubiquitous’ or
‘considerable’ use of the mark components present in Juice Generation and Jack
Wolfskin Ausrustung Fur Draussen GmbH & Co. v. Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015).” i.am.symbolic, 123 USPQ2d at 1751;
cf. Primrose Retirement Communities, LLC v. Edward Rose Senior Living, LLC, 122
USPQ2d 1030 (TTAB 2016) (weakness found based on at least 85 actual uses of
ROSE-formative marks for similar services, eight similar third-party registrations,
expert testimony and other evidence regarding the common nature of ROSE-
formative marks in the industry, and testimony by opposer that it did not vigorously
enforce its mark).

9 September 21, 2018 Response to Office Action, TSDR pp. 49-50, 51-64, and 65-72,
respectively.
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Considering all the evidence regarding strength, we find that the cited mark is
not weak, and we accord it a normal scope of protection. See Bell’s Brewery, Inc. v.
Innovation Brewing, 125 USPQ2d 1340, 1347-48 (TTAB 2017) (inherently distinctive
marks are entitled to a normal scope of protection).
C. Similarity of the Marks
We next compare ALWAYS ON TARGET and ON TARGET DIGITAL, in standard
characters, “in their entireties as to appearance, sound, connotation and commercial
impression.” Detroit Athletic, 128 USPQ2d at 1048 (quoting du Pont, 177 USPQ at
567); see also Palm Bay, 73 USPQ2d at 1691. “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.” Cai v. Diamond Hong,
Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quotation omitted).
Because similarity is determined based on the marks in their entireties, our
analysis is not predicated on dissecting the marks into their various components.
Stone Lion Capital Partners v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161 (Fed. Cir. 2014); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005,
212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected
and considered piecemeal; rather, it must be considered as a whole in determining
likelihood of confusion.”). 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 consideration of the marks in
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their entireties.” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985).
Further, the marks “must be considered … in light of the fallibility of memory ….”
In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014)
(quotation omitted). We focus on the recollection of the average consumer – here, an
ordinary consumer of advertising services – who normally retains a general rather
than a specific impression of trademarks. See id. at 1085; Geigy Chem. Corp. v. Atlas
Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971). And we bear in
mind that where, as here, services are legally identical in part, “the degree of
similarity necessary to support a conclusion of likely confusion declines.” Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722
(Fed. Cir. 2012) (quotation omitted).
Applicant’s mark is ON TARGET DIGITAL and the cited mark is ALWAYS ON
TARGET, both in standard characters. The marks look and sound similar because of
the common wording ON TARGET, important considerations in the analysis for
consumers “calling for” the services. See Viterra, 101 USPQ2d at 1911. As the first
part of Applicant’s mark, ON TARGET “is most likely to be impressed upon the mind
of a purchaser and remembered,” Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9
USPQ2d 1895, 1897 (TTAB 1988) and Palm Bay, 73 USPQ2d at 1692. Also, the
remaining part of Applicant’s mark, DIGITAL, consists of descriptive wording that
Applicant disclaimed, thereby diminishing its significance in the comparison of
marks. See Dixie Rests., 41 USPQ2d at 1533-34; Nat’l Data, 224 USPQ at 752. In the
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cited mark ALWAYS ON TARGET, the adverb ALWAYS modifies, and emphasizes
the prominence of, the adjective ON TARGET. Consequently, ON TARGET is the
most memorable element of the cited mark, despite its position as the trailing term
in that mark. While each mark, considered in its entirety, contains an additional word
that adds a visual and phonetic element not found in the other mark, because the
dominant term ON TARGET in the marks is identical, we find them similar overall
in appearance and sound. See Nat’l Data, 224 USPQ at 751; see also Stone Lion, 110
USPQ2d at 1161.
Applicant argues that the marks have different meanings, with Applicant’s mark
ON TARGET DIGITAL suggesting that Applicant’s advertising services “are targeted
at the digital marketplace,” while the advertising services identified in the cited
registration “will always – and with emphasis on the mark element “Always” (the
first mark element in ALWAYS ON TARGET) – be just right for the cited registrant’s
customers.”10 This argument is unpersuasive. As discussed above, ON TARGET is
the dominant portion of both marks. The connotation and commercial impression of
the marks is very similar because the common element, ON TARGET, applied to
advertising services, suggests the desirable attribute of successfully advertising to
particular consumers. Consumers who encounter ON TARGET DIGITAL could
mistakenly believe that it represents a variation on the cited mark ALWAYS ON
TARGET specific to the digital realm, used to identify advertising services from a
single source. See Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424,

10 App. Br., 7 TTABVUE 6-7.
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1433 (TTAB 2013) (“Purchasers of opposer’s GOTT and JOEL GOTT wines are likely
to assume that applicant’s goods, sold under the mark GOTT LIGHT and design, are
merely a line extension of goods emanating from opposer.”).
Given their overall resemblance in sound, appearance, connotation and
commercial impression, we find ON TARGET DIGITAL and ALWAYS ON TARGET
very similar. This factor weighs in favor of a likelihood of confusion.
D. Purchasing Conditions
Finally, we address Applicant’s contentions pertaining to consumer
sophistication. This argument concerns the fourth du Pont factor, the “conditions
under which and buyers to whom sales are made, i.e., ‘impulse’ vs. careful,
sophisticated purchasing.” du Pont, 177 USPQ at 567. Applicant argues that
consumers of advertising services are business customers who “would be expected to
exercise at least a heightened degree of care in making their purchasing decisions”
because of the “inherent nature of the services,” “the important role that
advertising/promotion plays for businesses and/or the substantial costs associated
with services related thereto[.]”11 The record provides some support for this argument
to the extent that advertising services might be somewhat costly.12

11 App. Br., 7 TTABVUE 13-14.
12 September 21, 2018 Response to Office Action, TSDR 52 (blog post on the ideafit.com
website: “There’s no denying that marketing demands a significant amount of your annual
budget.”) and TSDR 67 (blog post on the Strategic Funding website: “Advertising is certainly
an important investment that can lead to more sales.”).
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However, the relevant customers are not necessarily sophisticated. We find that
even in the business realm, consumers of advertising services would encompass
individual entrepreneurs and small businesses. Thus, the services may be offered to
a broad range of individuals and businesses, with widely varying degrees of
experience, care and sophistication, and we must consider the least sophisticated
such consumer. See Stone Lion, 110 USPQ2d at 1163 (“Accordingly, the Board
properly considered all potential investors for the recited services, including ordinary
consumers seeking to invest in services with no minimum investment requirement.
Although the services recited in the application also encompass sophisticated
investors, Board precedent requires the decision to be based ‘on the least
sophisticated potential purchasers.”).
This factor is neutral.
II. Conclusion
We have considered all the evidence of record and Applicant’s arguments as they
pertain to the relevant du Pont likelihood of confusion factors. We conclude that the
application and cited registration include legally identical services that move through
the same channels of trade to the same classes of purchasers, the marks are very
similar, the cited mark is not weak and is entitled to a normal scope of protection,
and the degree of purchasing care factor is neutral. Ultimately, we find Applicant’s
mark is likely to cause confusion with the cited mark when used in connection with
the services identified in the application.
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Decision: The refusal to register Applicant’s mark ON TARGET DIGITAL is
affirmed.