Canal Holdings, LLCv.Canal Capital Inc.

Trademark Trial and Appeal Board

Jun 26, 2019

92062198 (T.T.A.B. Jun. 26, 2019)

`

Hearing: June 25, 2019 Mailed: June 26, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Canal Holdings, LLC
v.
Canal Capital Inc.
_____

Cancellation No. 92062198
_____

Roger A. Gilcrest of Ice Miller, LLP for Canal Holdings, LLC.

Anthony S. King of WPAT, PC for Canal Capital Inc.
_____

Before Cataldo, Bergsman and Lynch, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Canal Capital Inc. (Respondent) is the owner of Registration No. 4484514 for the
mark CANAL CAPITAL (in standard characters) for the services listed below:
Business advisory services, consultancy and information;
Business consultation services; Business consulting
services relating to the integration of the areas of business
process technology, organizational learning, change
management, and operational sustainability, in Class 35;
and
Financial advisory and consultancy services; Financial
analysis and consultation; Financial analysis, namely,
This Opinion Is Not a
Precedent of the TTAB
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compiling and analyzing statistics, data and other sources
of information for financial purposes, in Class 36.1
Respondent disclaimed the exclusive right to use the word “Capital.”
Canal Holdings, LLC (Petitioner) has petitioned to cancel Registration No.
4484514 under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that Respondent’s mark CANAL CAPITAL for the identified services so resembles
Petitioner’s previously used mark CANAL HOLDINGS for providing capital
investment services, private equity fund investment services, mezzanine fund
investment services, and management of capital investment funds as to be likely to
cause confusion.
In addition, in the third amended petition for cancellation, Petitioner also seeks
to cancel Respondent’s registration on the following grounds:
(1) nonownership by Respondent’s predecessor as of the filing date of the
application for the involved registration;
(2) fraud by Respondent’s predecessor in naming himself as the original applicant
instead of Respondent;
(3) nonuse as of the filing date of the application for the involved registration;
(4) invalid assignment of the involved registration from the predecessor to
Respondent;
(5) abandonment of the involved mark based on such invalid assignment; and

1 Registered February 18, 2014, based on application Serial No. 85971600 filed June 27, 2013.
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(6) false suggestion of a connection with Petitioner under Trademark Act Section
2(a), 15 U.S.C. § 1052(a).
Respondent, in its Answer, denied the salient allegations in the third amended
petition for cancellation.
I. Preliminary Issues
A. Websites without URLs
Petitioner attempted to introduce copies of Respondent’s website through a notice
of reliance.2 Because the copies of the website did not include the URL or date the
website was accessed, the webpages sought to be introduced are inadmissible.
Trademark Rule 2.122(e)(2), 37 C.F.R. § 2.122(e)(2); see also Alcatraz Media Inc. v.
Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1759 (TTAB 2013) (objection to
Internet printouts from petitioner’s website showing the dates accessed and printed
and URL information on the grounds that petitioner failed to authenticate the
documents by testimony overruled), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.);
Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012) (web pages
inadmissible for lack of URL and date accessed); Calypso Tech. Inc. v. Calypso Capital
Mgmt. LP, 100 USPQ2d 1213, 1216-19 (TTAB 2011) (detailed discussion of why
certain documents, accompanied by adequate authentication, were admissible and
why certain other documents, lacking in specifically-addressed authentication
elements, including absent URLs or dates accessed printed, were not admissible).

2 38 TTABVUE 347 and 348.
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Likewise, the excerpt from Petitioner’s LinkedIn webpage is inadmissible for the
same reason.3
B. Respondent’s discovery deposition
Tarek Elalaily, Respondent’s designated Fed. R. Civ. P. 30(b)(6) witness, failed to
appear at his noticed discovery deposition.4 Petitioner did not file a motion to compel
the attendance of Mr. Elalaily after he failed to appear at the deposition. In its brief,
Petitioner requests that the Board sanction Respondent for its failure to cooperate
during discovery.5 However, in such circumstances, it is incumbent upon the
aggrieved party to file a motion to compel.
If a party that served a request for discovery receives a
response thereto that it believes to be inadequate, but fails
to file a motion to challenge the sufficiency of the response,
it may not thereafter be heard to complain about the
sufficiency thereof.
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 523.04
(2019); see also Midwestern Pet Foods Inc. v. Societe des Produits Nestle S.A., 685 F.3d
1046, 103 USPQ2d 1435, 1439 (Fed. Cir. 2012) (Board did not abuse its discretion by
refusing to strike plaintiff’s evidence where defendant failed to follow up on plaintiff’s
offer to produce the evidence at a mutually agreeable time and place and in view of
defendant’s failure to file a motion to compel); H.D. Lee Co. v. Maidenform Inc.,
87 USPQ2d1715, 1719 (TTAB 2008) (party that receives response it believes
inadequate but fails to file a motion to test sufficiency of response, may not thereafter

3 38 TTABVUE 509.
4 38 TTABVUE 797-802.
5 Petitioner’s Brief, p. 27 (41 TTABVUE 28).
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complain about its insufficiency); Time Warner Entm’t Co. v. Jones, 65 USPQ2d 1650,
1656 (TTAB 2002) (having failed to file motion to compel, defendant will not later be
heard to complain that interrogatory responses were inadequate). Accordingly, the
Board will not draw any adverse inferences from Tarek Elalaily’s failure to appear at
his deposition.
C. Email correspondence introduced through a notice of reliance.
Petitioner sought to introduce email correspondence through a notice of reliance
purportedly relevant to issues raised in the pleadings.6 Email correspondence is not
the type of evidence admissible through a notice of reliance and, therefore, we have
not given it any consideration. See Trademark Rule 2.122(g), 37 C.F.R. § 2.122(g)
(“The types of evidence admissible by notice of reliance are identified in paragraphs
(d)(2) [pleaded registration of a party] and (e)(1) [printed publications and official
records] and (2) [Internet materials] of this section and § 2.120(k) [discovery
deposition, answer to interrogatory, admission or written disclosure].”); see also
Trademark Rule 2.123(k), 37 C.F.R. § 2.123(k) (“Evidence not obtained and filed in
compliance with these sections will not be considered.”).
II. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Respondent’s registration file.7 Only Petitioner introduced any
testimony and evidence, consisting of the following:

6 39 and 40 TTABVUE.
7 Thus, it was unnecessary for Petitioner to introduce Respondent’s registration file because
it was already part of the record. 38 TTABVUE 16-62, 218-219, and 367.
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1. A notice of reliance on the following items:
a. The assignment of Respondent’s registration to Respondent from Tarek
Mostafa Elalaily;8
b. A copy of the file for Petitioner’s application Serial No. 86447763 for the
mark CANAL HOLDINGS (in standard character format) for “capital
investment services; private equity fund investment services; mezzanine
fund investment services; management of capital investment funds,” in
Class 36;9
c. A copy of the file for Petitioner’s application Serial No. 86447767 for the
mark CANAL HOLDINGS and design, shown below, for “capital
investment services; private equity fund investment services; mezzanine
fund investment services; management of capital investment funds,” in
Class 36;10

8 38 TTABVUE 64-66. Having introduced the assignment once, Petitioner need not have
introduced it a second time. 38 TTABVUE 364-365.
9 38 TTABVUE 68-140. Having introduced the application file once, Petitioner need not have
introduced it a second and third time. 38 TTABVUE 221-228, 241-289, 370-377, and 390-438.
10 38 TTABVUE 142-215. Having introduced the application file once, Petitioner need not
have introduced it a second and third time. 38 TTABVUE 230-239, 290-337, 379-388 and 440-
486.
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d. A copy of a receipt from the Virginia State Corporation Commission to
Tarek Elalaily for filing the articles of incorporation and a copy of the
articles of incorporation;11
e. A copy Respondent’s 2013 Annual Report;12
f. Copies of Respondent’s website (canalcapital.me);13
g. A copy of a declaration signed by Tarek Elalaily derived from an
unidentified teas.uspto.gov document;14
h. Copies of Petitioner’s website at canalholdings.us;15
i. Copies of Petitioner’s website at canalmezz.com;16
j. Copies of Petitioner’s website at canalcapital.com;17 and
k. An excerpt from the LinkedIn webpage of Tarek Elalaily;18
2. Notice of reliance on Respondent’s responses to Petitioner’s first set of requests
for admission;19

11 38 TTABVUE 340-342.
12 38 TTABVUE 344-345.
13 38 TTABVUE 350-360. Having introduced those webpages once, Petitioner did not have to
introduce them a second time. 38 TTABVUE 511-513.
14 38 TTABVUE 362.
15 38 TTABVUE 488-490.
16 38 TTABVUE 492-501.
17 38 TTABVUE 503-507.
18 38 TTABVUE 515-517.
19 38 TTABVUE 548-566. Denials to admission requests cannot be submitted under notice of
reliance. Trademark Rule 2.120(k)(3)(i), 37 C.F.R. § 2.120(k)(3)(i); N.Y. Yankees P’ship v. IET
Prods. & Servs., Inc., 114 USPQ2d 1497,1501 n.11 (TTAB 2015) (Board considered only
opposer’s admissions, not denials, in response to applicant’s requests for admission); Turdin
v. Trilobite, Ltd., 109 USPQ2d 1473, 1477 (TTAB 2014) (concurrent use defendant’s objection
to submission of denial to admission request sustained; “rule does not extend to denials”);
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3. Notice of reliance on Respondent’s responses to Petitioner’s first set of requests
for production of documents;20
4. Notice of reliance on Respondent’s responses to Petitioner’s first set of
interrogatories;21
5. Testimony declaration of Kevin Coyne, Petitioner’s founder and Chief
Executive Officer.22
III. Standing
Standing is a threshold issue in every inter partes case. See Empresa Cubana Del
Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014);
John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB 2010). To
establish standing in an opposition or cancellation proceeding, a plaintiff must prove
that it has a “real interest” in the proceeding and a “reasonable” basis for its belief of

Life Zone Inc. v. Middleman Grp. Inc., 87 USPQ2d 1953, 1957 (TTAB 2008) (denials to
requests for admission inadmissible). “[U]nlike an admission (or a failure to respond which
constitutes an admission), the denial of a request for admission establishes neither the truth
nor the falsity of the assertion, but rather leaves the matter for proof at trial. Cf. Fed. R.Civ.
P. 36(b).” See Life Zone Inc. v. Middleman Grp. Inc., 87 USPQ2d at 1957 n.10.
20 38 TTABVUE 605-715. If no documents exist which are responsive to a document request,
a party’s response that no documents exist may be made of record. See City Nat’l Bank v.
OPGI Mgmt. GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668, 1674 n.10 (TTAB 2013)
(responses to document production requests are admissible solely for purposes of showing
that a party has stated that there are no responsive documents); ShutEmDown Sports Inc.
v. Lacy, 102USPQ2d 1036 n.7 (TTAB 2012) (written responses to document requests
indicating that no documents exist may be submitted by notice of reliance).
We interpret Respondent’s statement that “[a] diligent search and reasonable inquiry has
been conducted in an effort to comply with this demand. Registrant is currently unable to
comply with this demand because the laptop on which these documents were stored crashed
and is currently undergoing attempted data recovery” as “no documents exist.”
21 38 TTABVUE 742-782.
22 38 TTABVUE 806-840.
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damage. See Empresa Cubana, 111 USPQ2d at 1062; Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185, 189 (TTAB 1982).
Respondent’s registration at issue in this proceeding has been cited as a Section
2(d) bar to the registration of Petitioner’s applications for CANAL HOLDINGS and
CANAL HOLDINGS and design.23 Because the USPTO refused to register the
applications for Petitioner’s marks based on a likelihood of confusion with
Respondent’s registration, Petitioner has a real interest in cancelling Respondent’s
registration and a reasonable belief that the registration blocking its applications is
causing it damage. Petitioner therefore has a cause of action under the Trademark
Act to seek cancellation of the Respondent’s registration. See Empresa Cubana Del
Tabaco v. Gen. Cigar Co., 111 USPQ2d at 1062.
Once a plaintiff shows standing on one ground, it has the right to assert any other
grounds in a cancellation proceeding. See Corporacion Habanos SA v. Rodriquez,
99 USPQ2d 1873, 1877 (TTAB 2011) (because petitioners alleged standing as to at
least one ground, primarily geographically deceptively misdescriptive, they may
assert any other legally sufficient claims including those under Section 2(a), the Pan
American Convention and fraud); Enbridge, Inc. v. Excelerate Energy LP, 92 USPQ2d
1537, 1543 n.10 (TTAB 2009), citing Liberty Trouser Co. v. Liberty & Co., Ltd.,
222 USPQ 357, 358 (TTAB 1983).

23 38 TTABVUE 75 and 149.
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IV. Priority
“A party claiming prior use of a registered mark may petition to cancel the
registration on the basis of such prior use pursuant to section 14 of the Lanham Act.
15 U.S.C. Section 1064.” West Florida Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122,
31 USPQ2d 1660, 1662 (Fed. Cir. 1994). However, “a presumption of validity attaches
to” Respondent’s involved registration, and Petitioner, the alleged prior user, bears
the burden of proving its claim of priority by a preponderance of the evidence. Id.;
Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d
1307, 1309 (Fed. Cir. 1989); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100,
1105-06 (TTAB 2007).
“To establish priority, the petitioner must show proprietary rights in the mark
that produce a likelihood of confusion…. These proprietary rights may arise from a
prior registration, prior trademark or service mark use, prior use as a trade name,
prior use analogous to trademark or service mark use, or any other use sufficient to
establish proprietary rights.” Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156,
64 USPQ2d 1375, 1378 (Fed. Cir. 2002) [internal citations omitted]; Otto Roth & Co.
v. Universal Foods Corp., 640 F.2d 1317, 1320, 209 USPQ 40, 43 (CCPA 1981).
In the absence of evidence establishing earlier use of its mark, a party may rely
for priority purposes on the filing date of the application that matured into its
registration. Section 7(c) of the Trademark Act, 15 U.S.C. § 1057(c); see also Brewski
Beer Co. v. Brewski Bros. Inc., 47 USPQ2d 1281, 1283-84 (TTAB 1998); Am. Standard
Inc. v. AQM Corp., 208 USPQ 840, 842 (TTAB 1980). Because Respondent did not
introduce any testimony or other evidence, the earliest date on which it may rely to
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prove priority is June 27, 2013, the filing date for the application underlying the
registration at issue.
Kevin Coyne, Petitioner’s founder and Chief Executive Officer, testified that
Petitioner had used the marks CANAL HOLDINGS and CANAL HOLDINGS and
design in connection with its investment, management and consultation services at
least as early as March 2006.24 To corroborate his testimony regarding priority, Mr.
Coyne introduced copies of proposals dated May 18, 2005 and September 24, 2007,
featuring the CANAL HOLDINGS marks.25 Further, Mr. Coyne authenticated the
archival webpages Petitioner introduced through a notice of reliance showing use of
the CANAL HOLDINGS marks as early as March 17, 2009.26
Petitioner has proven through uncontroverted testimony and evidence that it has
priority of its CANAL HOLDINGS marks for its investment, management and
consultation services.
V. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973) (“DuPont”) cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 135
S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co., 315

24 Coyne Testimony Decl. ¶13 (38 TTABVUE 808). Mr. Coyne provides a detailed description
of Petitioner’s services in paragraphs 9 and 10. (38 TTABVUE 807-808).
25 38 TTABVUE 823-831
26 38 TTABVUE 492.
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F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each DuPont
factor that is relevant or 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);
ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015)
(“While we have considered each factor for which we have evidence, we focus our
analysis on those factors we find to be relevant.”). “[E]ach case must be decided on its
own facts and the differences are often subtle ones.” Indus. Nucleonics Corp. v. Hinde,
475 F.2d 1197, 177 USPQ 386, 387 (CCPA 1973) (internal citations removed). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the similarities between the goods or services. See In re Chatam Int’l
Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in the marks.”); 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.,
64 USPQ2d at 1380)).

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A. The strength of Petitioner’s CANAL HOLDINGS marks, including the
number and nature of similar marks in use in connection with similar
services.

In determining the strength of a mark, we consider both its inherent or conceptual
strength based on the nature of the mark itself and its commercial strength, based
on the marketplace recognition of the mark. See In re Chippendales USA, Inc., 622
F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured
both by its conceptual strength (distinctiveness) and its marketplace strength
(secondary meaning).”); Top Tobacco, L.P. v. North Atlantic Operating Co., Inc., 101
USPQ2d 1163, 1171-72 (TTAB 2011) (the strength of a mark is determined by
assessing its inherent strength and its commercial strength); Tea Bd. of India v.
Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006); MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION § 11:83 (5th ed. 2019) (“The first enquiry
focuses on the inherent potential of the term at the time of its first use. The second
evaluates the actual customer recognition value of the mark at the time registration
is sought or at the time the mark is asserted in litigation to prevent another’s use.”).
Market strength is the extent to which the relevant public recognizes a mark as
denoting a single source. Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d at 1899.
In other words, it is similar to acquired distinctiveness. For purposes of analysis of
likelihood of confusion, a mark’s renown may “var[y] along a spectrum from very
strong to very weak.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857
F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (internal quotations omitted).
The proper standard is the mark’s “renown within a specific product market,” id., and
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“is determined from the viewpoint of consumers of like products,” id. at 1735, and not
from the viewpoint of the general public.
The wording “Canal Holdings” used in connection with investment, management
and consultation services is an arbitrary term because it does not describe, or suggest,
any quality or characteristic of those services.27 See Alberto-Culver Co. v. Helene
Curtis Indus., Inc., 167 USPQ 365, 370 (TTAB 1970).
The fact that a word or term may be found in a dictionary
does not indicate that the word is lacking in trademark
significance unless the dictionary meaning of the word is
descriptive of the goods in connection with which it is used.
That is, the capability of a dictionary word to function as a
trademark must be determined by the simple expedient of
exploring what meaning, if any, does it possess as applied
to a particular product. In this regard, it must be
recognized that while a word may have a meaning or
descriptive significance as applied to one product, it may
not have such a significance as applied to a different
product. Insofar as “COMMAND” is concerned, although it
may in a round about manner possess some suggestive
characteristics of hair care products, it is, in essence, an
arbitrary mark as applied to such goods.
Id. Accordingly, Petitioner’s CANAL HOLDINGS marks when used in connection
with investment, management and consultation services are inherently or
conceptually strong.

27 The word “Canal” is defined “an artificial waterway for navigation, irrigation, etc.,” “a long
narrow arm of the sea penetrating far inland,” “a tubular passage for food, air, etc., especially
in an animal or plant; a duct,” “a channel; watercourse.” Dictionary.com based on the
RANDOM HOUSE UNABRIDGED DICTIONARY (2019) accessed June 25, 2019. The Board may
take judicial notice of dictionary definitions, including online dictionaries that exist in printed
format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d
594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96
USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB
2006). The definition of the word “Holdings” is discussed below.
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With respect to the commercial strength of the CANAL HOLDINGS marks, Kevin
Coyne testified that:
1. Petitioner has been using the marks since at least as early as March 2006;28
2. Petitioner offers its investment, management and consultation services to
clients throughout the United States;29
3. Petitioner has placed “several millions of dollars in financing to a wide variety
of closely-held companies”;30
4. “Petitioner has garnered substantial unsolicited referrals from existing clients
for Petitioner’s Investment, Management and/or Consultation Services, or
otherwise through attendance at investment conferences and word-of-mouth
referrals.”;31 and
5. “All of the foregoing engagements, advertising, and publicity of Petitioner’s
Investment, Management and/or Consultation Services under the CANAL
HOLDINGS mark have resulted in extremely strong recognition of the CANAL
HOLDINGS brand in the business finance market.”32
While Mr. Coyne’s testimony shows that Petitioner is commercially successful as
corroborated by the fact that it has been rendering its services since at least 2006, it
does not show that Petitioner’s marks are commercially strong. For example, in the

28 Coyne Testimony Decl. ¶13 (38 TTABVUE 808).
29 Id. at ¶24 (38 TTABVUE 810).
30 Id. at ¶27 (38 TTABVUE 810).
31 Id. at ¶30 (38 TTABVUE 811).
32 Id. at ¶31 (38 TTABVUE 811).
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field of capital investment services and the management of those funds, “several
millions of dollars,” while important, does not appear to be so significant as to
establish the renown of Petitioner’s marks. In this regard, Petitioner has not
introduced any testimony or other evidence placing Petitioner’s success in context
with competitors and whether competitors limit their business development to
attendance at unidentified conferences and referrals from clients. Also, Mr. Coyne
provides conclusory statements regarding recognition without any corroborating
evidence. Accordingly, Petitioner has failed to meet its burden of proving that its
CANAL HOLDINGS marks are commercially strong.
Finally, Respondent, in its brief, contends that there are a large number of similar
marks in use. As indicated above, Respondent did not introduce any testimony or
evidence during its testimony period and, therefore, we may not consider
Respondent’s unsupported assertions. See Gemtron Corp. v. Saint-Gobain Corp., 572
F.3d 1371, 91 USPQ2d 1409, 1415 (Fed. Cir. 2009) (reasoning that a party’s “unsworn
attorney argument … is not evidence” and thus cannot rebut record evidence); Enzo
Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir.
2005) (“Attorney argument is no substitute for evidence.”); cf. In re Simulations
Publ’ns, Inc., 521 F.2d 797, 187 USPQ 147, 148 (CCPA 1975) (where appellant
argued that the magazines at issue deal with unrelated subject matter, the court held
that “[s]tatements in a brief cannot take the place of evidence.”).
Considering the record as a whole, we find that Petitioner’s CANAL HOLDINGS
marks are appropriately placed in the middle of the spectrum of “very strong to very
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weak.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 122 USPQ2d at
1734 (quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed.
Cir. 2003)); Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d at 1059 (“The
commercial strength of Petitioner’s TAO mark outweighs any conceptual weakness.”).
B. The similarity or dissimilarity of the marks in their entireties in terms
of appearance, sound, connotation, and commercial impression.
We now turn to the DuPont likelihood of confusion factor focusing on the similarity
or dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. DuPont, 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); accord Krim-Ko Corp. v. Coca-Cola Bottling Co.,
390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in
either form, spelling or sound alone is likely to cause confusion.”) (citation omitted).
“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) (quoting Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012)).
Respondent’s mark is CANAL CAPITAL in standard characters. Petitioner’s
marks are CANAL HOLDINGS and CANAL HOLDINGS and design.33 Because the

33 Third Amended Petition for Cancellation ¶¶15 and 16 (29 TTABVUE 22).
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design element in Petitioner’s mark arguably contains an additional point of
difference with Respondent’s mark, we confine our analysis to the issue of likelihood
of confusion between Respondent’s mark and CANAL HOLDINGS without a design.
That is, if confusion is likely between those marks, there is no need for us to consider
the likelihood of confusion with CANAL HOLDINGS and design; the word marks
would be a sufficient basis for us to determine the similarity of the marks. Conversely,
if there is no likelihood of confusion between Respondent’s mark and CANAL
HOLDINGS, then there would be no likelihood of confusion with the mark with
design elements. See, e.g., In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB
2010).
The marks are similar because they share the word “Canal.” The dominant part
of the marks CANAL CAPITAL and CANAL HOLDINGS is the word “Canal.” The
word “Capital” in Respondent’s mark is descriptive and has been disclaimed.34
Likewise, the word “Holdings” in Petitioner’s mark is descriptive.35 It is well-settled
that disclaimed, descriptive matter may have less significance in likelihood of
confusion determinations. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128
USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405,

34 October 15, 2013 Office Action in Respondent’s registration prosecution history. The word
“Capital” is defined, inter alia, as “the wealth, whether in money or property, owned or
employed in business by an individual, firm, corporation, etc.,” and “pertaining to financial
capital.” Synonyms for “Capital” include “principal, investment, assets, stock.”
Dictionary.com based on the RANDOM HOUSE UNABRIDGED DICTIONARY (2019) accessed June
25, 2019.
35 The word “Holdings” is defined, inter alia, as “legally owned property, especially stocks,
bonds, or real estate.” Dictionary.com based on the RANDOM HOUSE UNABRIDGED
DICTIONARY (2019) accessed June 25, 2019.
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1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms,
this court has noted that the ‘descriptive component of a mark may be given little
weight in reaching a conclusion on the likelihood of confusion.’”) (quoting In re Nat’l
Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)); In re Code
Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often
“less significant in creating the mark’s commercial impression”). There is nothing
improper in stating that, for rational reasons, more or less weight has been given to
a particular feature of a mark, such as a common dominant element, provided the
ultimate conclusion rests on a consideration of the marks in their entireties. In re
Nat’l Data Corp., 224 USPQ at 751; see also In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012).
Further, the significance of the word “Canal” in the parties’ marks as the
dominant element is reinforced by its position as the first word in the marks. See In
re Detroit Athletic Co., 128 USPQ2d at 1049 (finding “the identity of the marks’ two
initial words is particularly significant because consumers typically notice those
words first”); Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent
part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark
and the first word to appear on the label); Century 21 Real Estate Corp. v. Century
Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering
the marks, consumers will first notice the identical lead word); In re Integrated
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Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (noting that the dominance of
BARR in the mark BARR GROUP is reinforced by its location as the first word in the
mark); Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)
(“it is often the first part of a mark which is most likely to be impressed upon the
mind of a purchaser and remembered”).
Because the marks CANAL CAPITAL and CANAL HOLDINGS share the
dominant word “Canal,” they are similar in appearance, sound, meaning and
commercial impression. Moreover, the words “Capital” and “Holdings” have similar
meanings inasmuch as both mean assets. Where, as here, “the dominant portion of
both marks is the same, then confusion may be likely notwithstanding peripheral
differences.” In re Denisi, 225 USPQ 624, 624 (TTAB 1985). The peripheral
differences in this case fail to distinguish the marks. Consumers familiar with
Petitioner’s CANAL HOLDINGS upon encountering the mark CANAL CAPITAL
may mistakenly believe that CANAL CAPITAL is a variation or new line of the
CANAL HOLDINGS services with which they already know because of the word
“Canal.”
We find that CANAL CAPITAL is similar to CANAL HOLDINGS in terms of its
appearance, sound, meaning and commercial impression.36
C. The similarity or dissimilarity and nature of the services.
Respondent’s mark CANAL CAPITAL is registered for the services listed below:

36 Respondent admitted that “the CANAL CAPITAL mark has the same commercial
impression as CANAL HOLDINGS.” Respondent’s Response to Petitioner’s Request for
Admission No. 255 (38 TTABVUE 558).
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Business advisory services, consultancy and information;
Business consultation services; Business consulting
services relating to the integration of the areas of business
process technology, organizational learning, change
management, and operational sustainability, in Class 35;
and
Financial advisory and consultancy services; Financial
analysis and consultation; Financial analysis, namely,
compiling and analyzing statistics, data and other sources
of information for financial purposes, in Class 36.
“Petitioner is a private equity firm providing capital investment services; private
equity fund investment services; mezzanine fund investment services; and the
management of capital investment funds.”37 “Petitioner originates, evaluates, closes,
and manages portfolio company investments. Portfolio companies typically will
participate in the manufacturing, value-added distribution, and industrial/business
services’ sectors. Investment capital is typically utilized for management/leveraged
buyouts, strategic add-on acquisitions, recapitalizations, and other growth
opportunities.”38 “Post-closing, Petitioner provides extensive financial, operational,
and strategic guidance to all stakeholders involved in our portfolio companies.”39
Petitioner’s Investment Services include providing
investment capital and strategic insight to the owners and
management teams of closely-held companies. Companies
seek Petitioner’s investment to finance organic growth,
add-on acquisitions, recapitalizations, and ownership
transitions and, accordingly, Petitioner’s Investment
Services include providing consulting financial
advisory and consultancy services, financial
analysis and consultation and financial analysis,

37 Coyne Testimony Decl. ¶9 (38 TTABVUE 807).
38 Id.
39 Id.
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including, compiling and analyzing statistics, data
and other sources of information for financial
purposes, such as for business valuation attendant
to investment. (Emphasis added).40
Further, Petitioner assists with “the development of management teams that have
the appropriate executive talent, and provides incentives to succeed.”41
Accordingly, as part of Petitioner’s Investment and
Management Services, Petitioner provides services that
may be described as including business advisory
services, business consultation services and/or
business consulting services as well as financial
advisory and consultancy services; financial
analysis and consultation services; and/or financial
analysis services.42 (Emphasis added).
Petitioner’s services “include a variety of finance and business advisory services, such
as valuation and turnaround consulting for clients.”43 Specifically, Petitioner’s
activities include “business advisory services especially with respect to such things
as managing change (including changes in enterprise management) and operational
sustainability.”44
On its website, Petitioner advertises that it is a “Strategic Financial Partner[s]”
offering “active support” in “Criteria, Process, Structure, CEOs, and Portfolio.”45 In

40 Id. at ¶10.
41 Id. at ¶11 (38 TTABVUE 808).
42 Id. at ¶12 (38 TTABVUE 808).
43 Id. at ¶¶15 and 20 (38 TTABVUE 809). “Turnaround” is defined, inter alia, as “the time
between the making of an investment and receiving a return.” Dictionary.com based on the
RANDOM HOUSE UNABRIDGED DICTIONARY (2019) accessed June 15, 2019. Thus, turnaround
consulting includes evaluating a prospective investment.
44 Id. at ¶37 (38 TTABVUE 812).
45 38 TTABVUE 488-499.
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this regard, Coyne Exhibit 13, includes a “Letter of Interest” which as part of the due
diligence for a proposed transaction, Petitioner will “commence a full examination of
Seller and its business operations.”46 See also Exhibit A, “Additional Information
Requested,” which presents preliminary information and timetable for the
transaction.47 Subsequently, Petitioner’s client engaged Petitioner to perform the
following services:
Investment Banking Services: Canal, on behalf of IDM,
will perform the following (collectively, the “Investment
Banking Services”):
i. Develop an offer: Canal will assist the shareholders
of IDM to structure a successful offer for the USDS
division.
ii. Conduct due diligence: Canal will develop detailed
knowledge of IOS’s USDS division, its customers,
key human and intellectual assets, issues which
may arise from operations in Mexico, and issues
related to the circumstances of the division’s parent
company International Outsourcing Services, then
prepare a highly targeted synopsis of the business
and the investment opportunity.
iii. Negotiate and close: Canal will assist in the
negotiations for the purchase of IOS, advise on deal
strategy and seek to bring the negotiations to a
successful conclusion.48
As described above, Petitioner’s services include financial, operational, and
strategic guidance to its clients. Petitioner’s operational and strategic guidance

46 Paragraph 3 (38 TTABVUE 826).
47 38 TTABVUE 828.
48 Coyne Exhibit 15 (38 TTABVUE 838).
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services are related to Respondent’s Class 35 “business advisory services, consultancy
and information” services.
Likewise, Respondent’s Class 36 description of services – “financial advisory and
consultancy services; financial analysis and consultation; financial analysis, namely,
compiling and analyzing statistics, data and other sources of information for financial
purposes” – is broad enough to encompass “the valuations, fairness opinions and
thorough due diligence related to acquisitions, the taking of strategic equity stakes,
loans, and trades and the development of bank financing and well as private
placements” offered by Petitioner.49 Thus, these services overlap and are legally
equivalent.
D. Established, likely-to-continue channels of trade and classes of
consumers.

Petitioner provides its services to owners and management teams of closely-held
companies.50 Because Respondent’s “business advisory services, consultancy and
information,” “business consultation services,” and “financial advisory and
consultancy services; financial analysis and consultation; financial analysis, namely,
compiling and analyzing statistics, data and other sources of information for financial
purposes” have no restrictions or limitations as to their channels of trade and classes
of consumers, we must presume that Respondent’s services are rendered in all the
normal channels of trade and to all the classes of consumers who would use business
advisor and financial services, including owners and management teams of closely-

49 Coyne Testimony Decl. ¶38 (38 TTABVUE 812).
50 Coyne Testimony Decl. ¶¶10 and 12 (38 TTABVUE 807-808).
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held companies. See Viterra, 101 USPQ2d at 1908 (quoting Hewlett-Packard Co. v.
Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002));
Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261
(Fed. Cir. 2011); CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir.
1983).
Moreover, because we do not read limitations into the identification of services,
we must presume that Respondent’s business and financial consulting services are
offered in the same channels of trade and to the same classes of consumers as
Petitioner’s financial, operational, and strategic guidance services. See In re
i.am.symbolic, LLC, 123 USPQ2d at 1748; Squirtco v. Tomy Corp., 697 F.2d 1038,
216 USPQ 937, 940 (Fed. Cir. 1983) (“There is no specific limitation and nothing in
the inherent nature of Squirtco’s mark or goods that restricts the usage of SQUIRT
for balloons to promotion of soft drinks. The Board, thus, improperly read limitations
into the registration”); In re Thor Tech, 90 USPQ2d 1634, 1638 (TTAB 2009) (“We
have no authority to read any restrictions or limitations into the registrant’s
description of goods.”).51

51 Respondent admitted that “‘capital investment services; private equity fund investment
services; mezzanine fund investment services; management of capital investment funds,’
include services that travel in the same trade channels as services described in Registrant’s
Registered Services.” Respondent’s Response to Petitioner’s Request for Admission No. 267
(38 TTABVUE 560); see also Respondent’s Response to Petitioner’s Request for Admission
Nos. 268-269 (38 TTABVUE 561).
Respondent admitted that “Registrant markets its Registered Services to the same
consumers as those of ‘capital investment services; private equity fund investment services;
mezzanine fund investment services; management of capital investment funds.’”
Respondent’s Response to Petitioner’s Request for Admission No. 270 (38 TTABVUE 561);
see also Respondent’s Response to Petitioner’s Request for Admission Nos. 271-272
(38 TTABVUE 562).
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E. Conditions under which sales are made, that is, “impulse” vs. careful,
sophisticated purchasing.

Neither party introduced any testimony or evidence regarding how the relevant
consumers make their purchasing decisions with respect to the services at issue.
Nevertheless, inasmuch as the owners and management teams of closely-held
companies are the relevant purchasers who will encounter the parties’ services and
because of the nature of the services, it is logical that the relevant purchasers will
exercise some degree of purchasing care when deciding to engage a business or
financial advisor.52 However, in cases where there are similar marks, related services,
and similar channels of trade and classes of consumers, even a careful, sophisticated
consumer of these services may not note the differences in the marks. Cunningham
v. Laser Golf Corp., 55 USPQ2d at 1846 (“The alleged sophistication of golfers is
outweighed by the Board’s findings of strong similarity of marks and identity of
goods.”); Weiss Assocs. Inc. v. HRL Assocs., Inc., 902 F.2d 1546, 14 USPQ2d 1840,
1841-42 (Fed.Cir.1990) (similarities in marks and products overshadowed
sophistication of purchasers); In re Research and Trading Corp., 793 F.2d 1276, 230
USPQ 49, 50 (Fed. Cir. 1986) (quoting Carlisle Chem. Works, Inc. v. Hardman &
Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)). Furthermore, careful
purchasers who do notice the difference in the marks will not necessarily conclude

52 We view Mr. Coyne’s testimony that clients do not exercise “particular deliberation or care”
with a high degree of skepticism. Coyne Testimony Decl. ¶26 (38 TTABVUE 810) (“Although
Petitioner’s th[o]rough terms [are] set forth in a written agreement, potential clients
generally purchase them through identification of the provider through a company name or
mark, and with reliance upon the company’s reputation symbolized by a company’s name
without particular deliberation or care.”).
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that there are different sources for the services, but likely will see the marks as
variations of each other, pointing to a single source.53 See, e.g., Kangol Ltd. v.
Kangaroos U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945, 1946 (Fed. Cir. 1992) (“What
is important is not whether people will necessarily confuse the marks, but whether
the marks will be likely to confuse people into believing that the goods they are
purchasing emanate from the same source.”) (citations omitted). Accordingly, we find
this DuPont factor to be neutral.
F. Summary
Because the marks are similar, the services are related and overlapping and we
must presume that Respondent’s service are offered in the same channels of trade
and to the same classes of consumers as Petitioner’s services, regardless of any degree
of consumer care in selecting the services, we find that Respondent’s mark CANAL
CAPITAL for the applied for services is likely to cause confusion with Petitioner’s
previously used mark CANAL HOLDINGS for providing capital investment services,
private equity fund investment services, mezzanine fund investment services, and
management of capital investment funds.
In light of our finding that Respondent’s mark is likely to cause confusion with
Petitioner’s marks, we need not make a determination as to Petitioner’s other claims.

53 Kevin Coyne testified that Petitioner has been using “Canal” as an abbreviated reference
to itself that “clients of Petitioner have come to refer to Petitioner by using ‘CANAL’ as an
abbreviated reference to Petitioner.” Coyne Testimony Decl. ¶¶16, 21, 22 and 43 (38
TTABVUE 809, 810, and 813).
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See Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1478 (TTAB 2017) (citing
Multisorb Tech., Inc. v. Pactiv Corp., 109 USPQ2d 1170, 1172 (TTAB 2013)).54
Decision: The Petition for Cancellation is granted on the ground of likelihood of
confusion and Respondent’s registration will be cancelled in due course.

54 Nevertheless, we note that there is little, if any, evidence that supports any of the other
claims. For example, in its brief, Petitioner referred to the record in its summary judgment
brief to support the other claims rather than any evidence in the trial record. Respondent’s
Brief, pp. 25, 27, 28, 29, 30, 31 (41 TTABVUE 26, 28, 29, 30, 31, 32). The Board pointed out
in its May 30, 2017 order denying Petitioner’s motion for summary judgment that “[e]vidence
submitted in connection with the motion for summary judgment is of record only for
consideration of this motion. To be considered at final hearing, any such evidence must be
properly introduced in evidence during the appropriate trial period.” May 30, 2017 Order, p.
11 n.13 (28 TTABVUE 11).