Checkpoint Systems, Inc.

Trademark Trial and Appeal Board

Dec 15, 2020

87780579 (T.T.A.B. Dec. 15, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: December 15, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Checkpoint Systems, Inc.
_____

Serial No. 87780579
_____

Todd A. Benni and Lindsie A. Everett of McDonald Hopkins, LLC,
for Checkpoint Systems, Inc.
Jacquelyn A. Jones, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
_____

Before Taylor, Shaw and Lebow,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
Checkpoint Systems, Inc. (“Applicant”) seeks registration on the Principal
Register of the mark NEO (in in standard characters) for, as amended, “Electronic
components for use with electronic article surveillance antennas for monitoring
assets; Electronic components for use with RFID reader antennas for monitoring
assets” in International Class 9.1

1 Application Serial No. 87780579 was filed on February 1, 2018, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b). The original identification included “electronic article
Serial No. 87780579
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The Trademark Examining Attorney has finally refused registration of
Applicant’s mark under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the
ground that it is likely to be confused with the standard character mark in
Registration No. 5778094, PLEIADES NEO, for, in relevant part, “antennas” in
International Class 9.2
Applicant appealed the final refusal to this Board and requested reconsideration.
After the Examining Attorney denied the request for reconsideration, the appeal was
resumed. We affirm.
I. Evidentiary Issues
Before proceeding to the merits of the refusal, we first address an evidentiary
matter. Applicant attached to its appeal brief a 508 page submission comprising
Exhibits A through K.3 The Examining Attorney objects to Exhibits E4 through I and

surveillance antennas for monitoring assets” and “RFID reader antennas for monitoring
assets.”
2 Issued June 18, 2019. The registration states: “The wording ‘PLEIADES NEO’ has no
meaning in a foreign language.” The registration includes other goods and services not cited
by the Examining Attorney as a bar to registration. During prosecution, the Examining
Attorney also cited, but subsequently withdrew, Registration No. 49000355 (NEO POWER
MAG) and Registration No. 5314318 (NEOLINE and design) as a bar to registration.
3 7 TTABVUE 27-535. Citations in this opinion to the briefs and other materials on appeal
refer to TTABVUE, the Board’s online docketing system. Turdin v. Tribolite, Ltd., 109
USPQ2d 1473, 1476 n.6 (TTAB 2014). Specifically, the number preceding TTABVUE
corresponds to the docket entry number, and any numbers following TTABVUE refer to the
page number(s) of the docket entry where the cited materials appear. Page references to the
application record refer to the online database of the USPTO’s Trademark Status &
Document Retrieval (“TSDR”) system. All citations to documents contained in the TSDR
database are to the downloadable .pdf versions of the documents.
4 To the extent Applicant attached as Exhibit E an email from the Examining Attorney to its
counsel stating that the six-month reply clause in the Final Office Action was in error to
support the new evidence, the inadvertent inclusion of the reply cause does not justify
Applicant’s untimely submissions.
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K, arguing that the evidence is untimely because it was presented by Applicant for
the first time in its brief.5 Notably, Applicant did not respond to the objection. We
additionally note that the materials attached as Exhibit J, namely the TSDR record
of cited Registration No. 5778094 for the mark PLEIADES NEO and an office action
issued in connection with its underlying application, also were made of record for the
first time with Applicant’s brief.6
Rule 2.142(d) of the Trademark Rules of Practice, 37 C.F.R. § 2.142(d), provides
in pertinent part that the “record in an application should be complete prior to the
filing of an appeal” and that “[e]vidence should not be filed with the Board after the
filing of a notice of appeal.” Because the materials designated as Exhibits E through

5 The exhibits consists of an email communication between Applicant and the Examining
Attorney regarding appeal procedures, (Exh. E) 7 TTABVUE 414; excerpts from dictionaries
and the website of the National Aeronautics and Space Administration, (Exh. F.) id. at TSDR
15-30; screenshots from the EarthSky website regarding a star cluster, (Exh. G) id. at TSDR
431-44; screenshots from Registrant’s website and screenshots of an article from
BusinessWire discussing Applicant, (Exh. H) id. at TSDR 445-51; the definition of “neo” taken
from Merriam-Webster.com, (Exh. I) id. at TSDR 452-54; and screenshots from Registrant’s
website, Intelligence-Airbus.dscom, (Exh. K). Id. at TSDR 483-535.
Exhibits A-D of Applicant’s brief comprise office actions and responses made of record
during prosecution of the application, and Applicant also attached the Examining Attorney’s
brief as Exhibit A to its reply brief. This material is duplicative and the Board discourages
the practice. In re SL&E Training Stable Inc., 88 USPQ2d 1216, 1220 n.9 (TTAB 2008)
(attaching as exhibits to brief material already of record requires Board to determine whether
attachments had been properly made of record and adds to the bulk of the file); ITC Entm’t
Grp. Ltd. v. Nintendo of Am. Inc., 45 USPQ2d 2021, 2022-23 (TTAB 1998) (submission of
duplicative papers is a waste of time and resources, and is a burden on the Board). Applicant
can simply cite to the record evidence it intends to rely upon for statements and arguments
made in its brief.
6 7 TTABVUE 461-482. The registration is, of course, already of record, albeit in an alternate
electronic format. Also included in the exhibit are plain copies of previously cited
Registrations Nos. 5314318 (NEOLINE) and Registration No. 4900355 (NEO POWER MAG).
These registrations also were previously introduced during the prosecution of Applicant’s
application, again in another format.
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K to Applicant’s appeal brief were not made of record during prosecution, they are
untimely. Accordingly, the Examining Attorney’s objection is sustained and, except
as noted below, these materials and any arguments solely directed thereto will not be
considered.7
Applicant contends that it did not have an opportunity to file a request for
reconsideration of the final refusal with regard to the PLEIADES NEO mark and
further states that it submitted arguments and evidence regarding the Examining
Attorney’s refusal based on that mark with its brief. If Applicant wished to
supplement its evidence, it should have filed with the Board a separately captioned
request for remand for the purpose of submitting additional evidence to rebut the
likelihood of confusion refusal. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d) (“If the
appellant or the examining attorney desires to introduce additional evidence after an
appeal is filed, the appellant or the examining attorney should submit a request to
the Board to suspend the appeal and to remand the application for further
examination.”). See also, e.g., In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694,
1696 (TTAB 1992). Such a request for remand would also have had to include a
showing of “good cause” (i.e., an explanation as to why the evidence was not made of
record prior to appeal), along with the additional evidence sought to be introduced.
See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE §§
1207.01, 1207.02 and 1209.04 (2020).

7 We hasten to add that even if we were to consider these materials, our decision would be
the same.
Serial No. 87780579
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With respect to the definitions of the word “neo” which comprise a part of Exhibit
F and Exhibit K, and argued by Applicant in its brief, the Board may take judicial
notice of dictionary definitions that exist in printed format or have regular fixed
editions, and we do so here.8 See In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4
(TTAB 2014); In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002).
II. Likelihood of Confusion Analysis
A. Applicable Law
Section 2(d) of the Trademark Act prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). Our determination of likelihood of confusion under Section 2(d) is based on
an analysis of all probative facts in the record that are relevant to the likelihood of
confusion factors set forth in In re E.I. DuPont de Nemours & Co. (“DuPont”), 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). We must consider each DuPont factor
for which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376,
129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). In any likelihood of confusion analysis,
two key considerations are the similarities between the marks and the similarities

8 The definitions at Exhibit F define “neo,” as “near-earth objects” and “a combining form
meaning ‘new,’ ‘recent,’ ‘revived,’ ‘modified,’ used in formation of compound words” by
Dictionary.com, https://www.dictionary.com/browse/neo, and as an abbreviation for “near-
earth object: an object in space such as an asteroid, come, or meteoroid that sometimes passes
close to the earth,” by the CAMBRIDGE ADVANCED LEARNER’S DICTIONARY &
THESAURUS, https://dictionary.combridge.org/us/dictionary/english/neo, both accessed on June 18,
2020. The definition at Exhibit I, retrieved from Merriam-Webster.com dictionary, Merriam-
Webster, https://www.merriam-webster.com/dictionary/neo, accessed 17 Jun. 2020 defines
“neo” as “new.”
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between the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). We discuss below these and other relevant factors.
B. Similarity of the Goods, Channels of Trade, Classes of
Purchasers
We first compare the goods under the second DuPont factor. In making our
determination regarding the relatedness of the goods, we must look to the goods as
identified in Applicant’s application and the cited registration. See In re Detroit
Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018); In re Dixie
Rests., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); see also Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
It is not necessary that the respective goods be identical or even competitive in order
to find that they are related for purposes of our likelihood of confusion analysis.
Confusion may occur if the respective goods are “related in some manner and/or if the
circumstances surrounding their marketing are such that they could give rise to the
mistaken belief that [the goods] emanate from the same source.” Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012)
(quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); see also In
re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed.
Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
Evidence of relatedness may include news articles and/or evidence from computer
databases showing that the relevant services are used together or used by the same
purchasers; advertisements showing that the relevant goods are advertised together
or sold by the same manufacturer or dealer; and/or copies of prior use-based
Serial No. 87780579
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registrations of the same mark for both Applicant’s goods and the goods listed in the
cited registration. See, e.g., In re Davia, 110 USPQ2d 1810, 1817 (TTAB 2014) (finding
pepper sauce and agave related where evidence showed both were used for the same
purpose in the same recipes and thus consumers were likely to purchase the products
at the same time and in the same stores). The issue is not whether purchasers would
confuse the goods, but rather whether there is a likelihood of confusion as to the
source of these goods. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012);
In re Rexel Inc., 223 USPQ 830, 832 (TTAB 1984).
As noted above and repeated for convenience, Applicant’s goods are identified as
“electronic components for use with electronic article surveillance antennas for
monitoring assets” and “electronic components for use with RFID reader antennas
for monitoring assets” and Registrant’s goods are identified as “antennas.”
The Examining Attorney maintains that the respective goods are “closely related
in terms of their nature, purpose, channel of trade, and class of purchasers.”9 To
support her position, the Examining Attorney made of record evidence from the
websites ArcAntenna.com, LairdConnect.com, BarCodesInc.com,
HoneyWellAidC.com, SkyRFID.com, Zebra.com, AtlasRFIDStore.com, and
GAOFID.com, showing that the same entity provides both goods of the types
identified in Applicant’s application and the cited registration under the same mark
and/or sold through the same trade channels for use by the same classes of
consumers. The websites evidence is described below:

9 7 TTABVUE 10.
Serial No. 87780579
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ArcAntenna.com – showing that RFID antennas and RFID
antenna cables are offered by Arcadian Incorporated in the
same channels of trade for use together by the same class
of consumers;10
LairdConnect.com – showing that Laird Technologies
manufactures RFID antennas and antenna accessories and
electronic components, and markets them under the same
mark, in the same trade channels, for use together by the
same class of consumers;11
BarCodesInc.com – showing that Barcodes offers RFID
antennas, readers, inventory system, software, printers,
tags, labels, inlays, and wristbands by various
manufactures, which all travel in the same trade channels
for complementary use by the same class of consumers;12
HoneyWellAidC.com – showing that Honeywell
manufactures and offers RFID readers and a variety of
electronic components under the same mark, and that the
goods travel in the same channels of trade for
complementary use by the same class of consumers;13
SkyRFID.com – showing that Sky RFID Inc. manufactures
and offers a variety of RFID antennas and antenna
accessories, including RFID cables and end connectors,
RFID readers, and RFID tags, that travel in the same
channels of trade for complementary use by the same
consumers;14
Zebra.com – showing that Zebra manufactures and sells
RFID readers, antennas and printers, under the same
mark, and that the goods travel in the same channels of
trade for complementary use by the same class of
consumers;15

10 February 21, 2020 Office Action, TSDR at 7-13.
11 Id. at TSDR 14-23.
12 Id. at TSDR 24-25.
13 Id. at TSDR 26-31.
14 Id. at TSDR 32-55.
15 Id. at TSDR 56-58.
Serial No. 87780579
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AtlasRFIDStore.com – showing that AtlasRFIDstore offers
RFID antennas, tags, readers, systems, and electronic
components for antennas, manufactured by various
entities, which travel through the same trade channels and
are marketed for complementary use to the same class of
consumers;16 and
GAORFID.com – showing that GAO RFID Inc. offers RFID
antennas, electronic components, tags, readers, and
peripherals under the same mark, and that the goods
travel through the same channels of trade for
complementary use by the same class of consumers.17
The Examining Attorney also made of record webpage evidence from M2Inc.com,
RadioShack.com, and MSCDirect.com that shows more generally that the same entity
provides antennas and their parts and markets them through the same channels of
trade for complementary use by the same classes of consumers.18
We find the third-party use evidence sufficient to show that Applicant’s electronic
components for use with RFID reader antennas for monitoring assets are
commercially related to Registrant’s broadly worded antennas (which would
encompass reader antennas for RFID use), such goods all being devices that may be
used together to track inventory that consumers may believe emanate from the same
source. Moreover, we find such complementary relationship between the goods from
the face of the respective identifications. See, e.g., Martin’s Famous Pastry Shoppe,
223 USPQ at 1290 (holding bread and cheese to be related because they are often
used in combination and noting that “[s]uch complementary use has long been

16 Id. at TSDR 59-62.
17 Id. at TSDR 63-75.
18 Id. at TSDR 76-98.
Serial No. 87780579
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recognized as a relevant consideration in determining a likelihood of confusion”); In
re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009) (holding medical
MRI diagnostic apparatus and medical ultrasound devices to be related, based in part
on the fact that such goods have complementary purposes because they may be used
by the same medical personnel on the same patients to treat the same disease); Polo
Fashions, Inc. v. La Loren, Inc., 224 USPQ 509, 511 (TTAB 1984) (holding bath
sponges and personal products, such as bath oil, soap, and body lotion, to be related
because they are complementary goods that are likely to be purchased and used
together by the same purchasers). In making our finding that the goods are
complementary and related, we need not consider the similarity of each good
identified in the application because “it is sufficient for finding a likelihood of
confusion if relatedness is established for any item encompassed by the identification
of goods within a particular class in the application.” In re Aquamar, Inc., 115
USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun
Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA (1981)).
We are unpersuaded by Applicant’s argument that the goods cannot be related
merely because they are complementary of each other and may be used together, and
as Applicant cites no authority in its efforts to convince us to deviate from prevailing
case law. We also find unavailing Applicant’s unsupported argument that
Registrant’s goods “[i]n reality … would never be complementary or used with the
Applied-For Goods.” Applicant’s br. p. 16.19 As stated, we must look to the goods as

19 7 TTABVUE 21.
Serial No. 87780579
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identified in Applicant’s application and the cited registration when determining
whether the goods are related. See In re Detroit Athletic 128 USPQ2d at 1052. It is
well established that an applicant may not restrict the scope of its goods or the scope
of the goods covered in the cited registration by extrinsic argument or evidence. See,
e.g., In re Midwest Gaming & Entm’t 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, 764-65 (TTAB 1986).
With respect to the third DuPont factor, Applicant maintains that the trade
channels and classes of consumers are dissimilar, arguing that its target consumers
are commercial retail businesses, while Registrant’s consumers are commercial
corporations or government bodies. Applicant’s br. p. 7.20 However, like our analysis
of the relatedness of the goods, we base our determination regarding the similarities
between the channels of trade and classes of purchasers on the identifications in the
subject application and the cited registration. Octocom Sys., Inc. v. Hous. Comput.
Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Canadian Imperial
Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Neither
Applicant’s application nor the cited registration contain any limitations as to
channels of trade or classes of customers, and we may not read any such limitations
into them. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir.
1983), quoted in In re Mr. Recipe, 118 USPQ2d 1084, 1091 (TTAB 2016). Accordingly,
we must presume that Applicant’s and Registrant’s goods move in all channels of

20 7 TTABVUE 8.
Serial No. 87780579
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trade that would be normal for such goods, and that they would be purchased by all
potential customers. See CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed.
Cir. 1983); Squirtco v. Tomy, 216 USPQ at 939; In re Linkvest S.A., 24 USPQ2d 1716,
1716 (TTAB 1992). As noted above, the record in this case shows that both antennas,
on the one hand, and electronic components for use with RFID reader antennas for
monitoring assets, on the other hand, are sold online and often with the aid of a sales
representative. Thus, at a minimum, the channels of trade and classes of purchasers
overlap.
The DuPont factors concerning the similarity of the marks, trade channels and
classes of consumers favor a finding of likelihood of confusion.
C. Comparison of the Marks
1. Strength of the Cited Registered Mark
Before discussing the degree of similarity of the marks, we address Applicant’s
evidence and arguments concerning the strength or weakness of the cited mark, as
this may impact the scope of protection accorded the cited registration. The strength
of a mark may be assessed based on its conceptual strength arising out of the nature
of the mark itself and its commercial strength derived from the marketplace
recognition of the mark. See In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d
1681, 1686 (Fed. Cir. 2010).
Because Registrant’s mark is registered, it is presumptively valid and distinctive
for the identified goods. Trademark Act Sections 7(b) and 33(a), 15 U.S.C. §§ 1057(b)
and 1115(a); In re Fiesta Palms LLC, 85 USPQ2d 1360, 1363 (TTAB 2007).
Serial No. 87780579
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Nonetheless, we may acknowledge the weakness of a registered mark in the course
of a DuPont analysis. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1517-18
(TTAB 2016).
Applicant contends that the cited mark PLEIADES NEO is weak in its entirety
and only entitled to a narrow scope of protection, particularly arguing that:
[T]he common term of both marks is “NEO”, which is
descriptive and “weak” as applied to the relevant goods
under the Cited Registration (e.g., antennas and satellites
that are used in space)[.] Consequently, the Cited
PLEIADES NEO Mark should be afforded only a narrow
scope of protection. Supporting the foregoing conclusion is
the fact that the term “NEO” is an acronym for “near earth
objects”… [and] that this acronym is well known within the
Cited Registrant’s industry. In fact, that the Cited Mark as
a whole is weak because the “PLEIADES” portion of the
mark is, at best, highly suggestive. Pleiades is the name of
a star cluster near the Orion constellation. (Internal
citation omitted).
Applicant’s br., p. 8.21
Although “near-earth object” is one record definition of the term NEO, we are not
convinced by the definition alone that consumers seeing the term in connection with
Registrant’s antennas – the goods at issue in this case – would attribute that meaning
to the term. There also is no evidence of record showing that PLEIADES is the name
of a star cluster and, even if there were, we would not be convinced that the term is
suggestive of Registrant’s identified antennas.
At bottom, the cited mark issued on the Principal Register without a claim of
acquired distinctiveness pursuant to Section 2(f) of the Trademark Act, 15 U.S.C

21 7 TTABVUE 13.
Serial No. 87780579
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§1141(f), in whole or in part, or a disclaimer of the term NEO. Given the lack of
evidence showing any intrinsic conceptual weakness of the PLEIADES NEO mark,
we find Registrant’s PLEIADES NEO mark is entitled to the normal scope of
protection accorded to an inherently distinctive mark.
Applicant introduced into the record copies of various third-party registrations
issued to different entities for NEO- formative marks to support its argument that
the term NEO is weak or so widely used that the cited PLEIADES NEO mark is only
entitled to a narrow scope of protection. While we have reviewed the third-party
registrations made of record with Applicant’s Request for Reconsideration,22 we focus
on the registrations Applicant highlighted in its January 8, 2020 Response to Office
Action,23 which directly addresses the Section 2(d) refusal based on Registration No.
5778094 for the mark PLEIADES NEO for “antennas” as a bar to registration.24 The
registrations are highlighted below:

22 Applicant’s June 17, 2019 Request for Reconsideration at TSDR 25-34, 73-81. With the
exception of Registration No. 4900355 for the mark NEO POWER MAG which was
reintroduced by Applicant in its January 8, 2020 Response, the goods listed in these
registrations are not in antenna-, merchandise surveillance- or asset monitoring-related
industries and thus have no probative value. See In re i.am.symbolic, llc, 866 F.3d 1315, 123
USPQ2d 1744, 1751 (Fed. Cir. 2017) (disregarding third-party registrations for other types
of goods where the proffering party had neither proven nor explained that they were related
to the goods in the cited registration). Similarly, the applications for NEO-formative marks
introduced by Applicant in the Request for Reconsideration have no value because pending
applications are evidence only of the fact that they have been filed. In re Toshiba Med. Sys.
Corp., 91 USPQ2d 1266, 1270 n.8 (TTAB 2009).
23 Applicant’s January 8, 2020 Office Action at TSDR 16-17 and 23-33.
24 Registration No. 5778094 for the mark PLEIADES NEO is involved in this proceeding and,
as such, has no value as a third-party registration. Registration No. 5609560 for the
composite mark NEOVO SIGNAGE and design issued pursuant to Section 44 and no Section
8 affidavit has been filed.
Serial No. 87780579
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Registration No. Mark Relevant Goods25
5417767 NEORTX antennas
4900355 NEO POWER MAG mobile magnetic antenna mount
2923657 NEON GENESIS
EVANGELION
electrical communication machines
and apparatus, namely, radio
receivers and antennas

Evidence of third-party use and registration of a term in the relevant industry is
considered in the likelihood of confusion analysis. Juice Generation, Inc. v. GS Enters
LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015); Jack Wolfskin
Ausrustung Fur Draussen GmbH v. New Millennium Sports, S.L.U., 797 F.3d 1363,
116 USPQ2d 1129, 1136 (Fed. Cir. 2015).
Where there is no record evidence of third-party use, as is the case here, third-
party registration evidence may show conceptual weakness by showing that a term
carries a highly suggestive or descriptive connotation in the relevant industry. See
Juice Generation, 115 USPQ2d at 1675 (“Third party registrations are relevant to
prove that some segment of the composite marks which both contesting parties use
has a normally understood and well-recognized descriptive or suggestive meaning,
leading to the conclusion that that segment is relatively weak.”) (Citations omitted).
See also i.am.symbolic, 123 USPQ2d at 1751 (active third-party registrations may be
relevant to show that a mark or a portion of a mark is descriptive, suggestive, or so
commonly used that the public will look to other elements to distinguish the source
of the goods or services).

25 The registrations may include additional goods and services which are not relevant to this
proceeding.
Serial No. 87780579
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In this case, Applicant’s third-party registration evidence does not establish
conceptual weakness of the term NEO in Registrant’s PLEIADES NEO mark. Of the
three third-party registrations Applicant made of record, two are for marks that do
not comprise the term NEO as a recognizable component of the mark. Only a single
registration, i.e., NEO POWER MAG, is for a mark that is similar to the PLEIADES
NEO mark at issue in this proceeding. The existence of a single registration is not
enough to narrow the scope of protection of the cited registration. See Mr. Recipe, 118
USPQ2d at1089 (“[O]ne third-party registration has little probative value, especially
in the absence of evidence that the mark is in use on a commercial scale or that the
public has become familiar with it.”). In view thereof, we accord Registrant’s mark
PLEIADES NEO an ordinary scope of protection.
As stated, Applicant introduced no evidence of third-party use of NEO- formative
marks. The three third-party registrations listed above do not demonstrate
commercial weakness based on third-party use. See In re Morinaga Nyugyo
Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016) (“Applicant’s citation of
third-party registrations as evidence of market weakness is unavailing because third-
party registrations, standing alone, are not evidence that the registered marks are in
use on a commercial scale, let alone that consumers have become so accustomed to
seeing them in the marketplace that they have learned to distinguish among them by
minor differences.”); Midwest Gaming & Entm’t, 106 at 1167 n.5 (“[T]he mere
existence of third-party registrations is not evidence that the registered marks are
actually in use or that the public is familiar with them.”).
Serial No. 87780579
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Because Applicant has not demonstrated any conceptual or commercial weakness
in the cited PLEIADES NEO mark, it is entitled to the protection afforded an
inherently distinctive mark.
2. The Similarity or Dissimilarity of the Marks
Under the first DuPont factor concerning the similarity or dissimilarity of the
marks, we compare the marks in their entireties for similarities and dissimilarities
in appearance, sound, connotation and overall commercial impression. DuPont, 177
USPQ at 567; Detroit Athletic, 128 USPQ2d at 1048. “Similarity in any one of these
elements may be sufficient to find the marks confusingly similar.” In re Inn at St.
Johns, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d mem., 777 F. App’x (Fed.
Cir. 2019) (quoting In re Davia, 110 USPQ2d at 1812). “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.” Zheng Cai v.
Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018), cert.
denied, 139 S. Ct. 1550 (April 15, 2019) (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. In
re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015). However, “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
Serial No. 87780579
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consideration of the marks in their entireties.” In re Nat’l Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
We compare Applicant’s mark NEO with the cited mark PLEIADES NEO and find
they are similar in appearance and sound in that they each include, or solely consist
of, the word “NEO.” The only difference between the two marks is the addition of the
word “PLEIADES” to the cited mark, which does not suffice to distinguish them.
Likelihood of confusion is not necessarily avoided between otherwise confusingly
similar marks merely by adding or deleting other matter. If an important or, as in
the case here, significant (or sole) portion of both marks is the same, then the marks
may be confusingly similar notwithstanding some differences. See, e.g., Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161
(Fed. Cir. 2014) (affirming TTAB’s finding that applicant’s mark STONE LION
CAPITAL incorporated the entirety of the registered marks LION CAPITAL and
LION, and that the noun LION was the dominant part of both parties’
marks); Toshiba Med. Sys. Corp., 91 at 1269 (finding TITAN and VANTAGE TITAN
confusingly similar); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (holding
CAREER IMAGE (stylized) for retail women’s clothing store services and CREST
CAREER IMAGES (stylized) for uniforms likely to cause confusion); Hewlett-Packard
v. Packard Press, 62 USPQ2d at 1004 (finding that, even though applicant’s mark
PACKARD TECHNOLOGIES, with “TECHNOLOGIES” disclaimed, does not
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incorporate every feature of opposer’s HEWLETT PACKARD marks, a similar overall
commercial impression is created).
We are unconvinced that, as Applicant suggests, the word PLEIADES dominates
the cited PLEIADES NEO mark because the word “NEO,” an acronym for “near earth
objects,” is descriptive and weak as applied to the relevant goods (e.g., antennas and
satellites that are used in space) identified in the cited registration. Not only did the
Examining Attorney confine her discussion of the cited goods to “antennas,” but
Registrant’s identification does not include “antennas that are used in space,” even
though it recites various satellite products. While we recognize that the broadly
identified term “antennas,” defined in part as “a usually metallic device (such as a
rod or wire) for radiating or receiving radio waves // a TV antenna,”26 encompasses
antennas of all types, there is no evidence showing that antennas are commonly used
in space or how such antennas would relate to near earth objects. As previously
discussed and reiterated here, we find no conceptual weakness in the word NEO that
lends dominance to the term PLIEADES in the cited mark.
Further, while Applicant correctly states that the first term in a compound mark
is often found to be the dominant term, Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9
USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the first part of a mark which is most
likely to be impressed upon the mind of a purchaser and remembered”), that is not
always the case. Here, we do not find that either term dominates Registrant’s

26 We take judicial notice of this definition taken from Merriam-Webster.com dictionary,
Merriam-Webster, https://www.merriam-webster.com/dictionary/antennas, Accessed 7 Dec.
2020.
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PLEIADES NEO mark and, given the mark’s grammatical structure, PLEIADES
may be viewed as a modifying term.
We point out, too, that both marks are in standard charters and, as such, their
display is not limited to any particular font style, size, or color. We therefore must
consider that both marks might be used in any stylized display, including the same
or similar lettering style. See In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1909-
10; Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253,
1259 (Fed. Cir. 2011); In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1886
(TTAB 2018) (literal elements of standard character marks may be presented in any
font style, size or color).
Applicant also maintains that the “added ‘PLEIADES’ term differentiates the
cited Mark from the Applied-For Mark since consumers are more likely to attach
different meanings to the Cited Mark and the Applied-For Mark.” Applicant’s br. p.
11.27 That is so, Applicant urges, because the term NEO in its mark imparts an
arbitrary meaning, whereas in Registrant’s mark NEO of “is likely to be taken by
consumers as an acronym for ‘near earth objects.’” Id.28 We find this argument
unavailing. The record does not show that any particular meaning would be ascribed
to the word NEO in either Applicant’s mark or the cited mark. Given the
complementary nature of the goods, to the extent any meaning would be attributed
to NEO, it would be the same in both marks. While the addition of the word

27 7 TTABVUE 16.
28 Id.
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PLEIADES to the cited mark adds to its overall impression, as stated, its inclusion is
not sufficient to distinguish Applicant’s mark from the cited mark in connotation or
commercial impression. Instead, because of the similarities between the two marks,
and the syntax of Applicant’s mark, consumers are likely to perceive the respective
marks as variant marks used by a single entity to identify and distinguish companion
product lines.
Applicant’s reliance on M2 Software, Inc. v. M2 Comm., Inc., 450 F.3d 1378 (Fed.
Cir. 2006), to support its contention that the respective marks are unlikely to be
confused, is misplaced. In M2 Software v. M2 Comm., as aptly explained by the
Examining Attorney:
[T]he Court in M2 [Software v. M2 Comm.] found that the
marks “M2” and “M2 COMMUNICATIONS” were similar
but that the nature of the parties’ goods and their
purchasers and channels of trade were different. … The
Court found that the Board did not err in finding no
likelihood of confusion based on its findings that “the
unrelated nature of the parties’ goods and the fact that the
marks are used in different channels of trade and with
respect to different purchasers, outweigh . . . the similarity
of the marks.” (Internal citation omitted). By contrast, in
the instant case, Applicant’s goods are highly related and
complementary to Registrant’s goods.
In comparing the marks, we must consider them in their entireties. Thus,
although we have taken into account the differences between them, we nonetheless
find that despite these differences, they are more similar than dissimilar and
engender similar commercial impressions when considered overall.
The DuPont factor of the similarity of the marks thus favors a finding of likelihood
of confusion.
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D. Sophistication of the Relevant Consumers/Costs of the
Respective Goods
Applicant maintains that the likelihood of consumer confusion is “reduced by the
fact that the purchasers of the Parties’ respective goods are sophisticated, and
exercise a great care in purchasing those goods.” Applicant’s brief, p. 16.29 Applicant
explains that its consumers are “sophisticated, professional, commercial businesses
who are seeking to purchase goods that will assist with theft prevention in
commercial retail stores,” while the consumers purchasing the Registrant’s goods are
“sophisticated, professional, commercial corporations or government bodies looking
for products to aid with various industries or needs, including defense, security,
maritime, agriculture, forest and environment, and land administration and
mapping.” Applicant’s reply br. p. 7.30 As stated, neither identification has any
limitations as to classes of purchasers. Accordingly, we cannot presume that the
purchasers of Applicant’s and the Registrant’s goods will be limited to professionals,
commercial corporations and businesses or government bodies. That is, the respective
goods may be sold to small business owners or individuals who will not be as
discerning or exercise a heightened degree of care in their purchasing decisions. See
Stone Lion Capital 110 USPQ2d at 1163 (affirming that TTAB properly considered
all potential purchasers for recited services, including both sophisticated and
unsophisticated investors, since precedent requires consumer care for likelihood-of-
confusion decision be based “on the least sophisticated potential purchasers”).

29 7 TTABVUE 21.
30 10 TTABVUE 8.
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Relying on Daddy’s Junky’s Music Stores, Inc. v. Big Daddy’s Fam. Music Ctr.,
109 F.3d 275, 42 USPQ2d 1173, (6th Cir. 1997), Applicant also argues that the
respective goods presumably are expensive goods that are not purchased “on a whim.”
We do not find this unsupported argument persuasive, especially as it pertains to
Registrant’s broadly identified “antennas.”
Even assuming arguendo that Applicant’s and Registrant’s respective goods are
expensive and will be purchased by consumers who will exercise some degree of care
in their purchasing decisions, even knowledgeable and careful purchasers can be
confused as to source, where, as here, similar marks are used in connection with
complementary and related goods. See In re Research Trading Corp., 793 F.2d 1276,
230 USPQ 49, 50 (Fed. Cir. 1986) (citing Carlisle Chemical Works, Inc. v. Hardman
& Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories
even of discriminating purchasers … are not infallible.”)). See also Refreshment Mach.
Inc. v. Reed Indus., Inc., 196 USPQ 840, 843 (TTAB 1977) (selling to a sophisticated
purchaser does not automatically eliminate the likelihood of confusion because “[i]t
must also be shown how the purchasers react to trademarks, how observant and
discriminating they are in practice, or that the decision to purchase involves such
careful consideration over a long period of time that even subtle differences are likely
to result in recognition that different marks are involved”).
We thus find this DuPont factor neutral.
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E. Any Other Established Fact Probative of the Effect of Use
1. Applicant’s Good Faith Adoption of its Mark
Under the thirteenth DuPont factor, the Board may consider any other established
fact probative of the effect of use. Applicant contends that the selection of its mark
was made in good faith, and accordingly, this DuPont factor weighs in favor of a
finding of no likelihood of confusion. While as Applicant points out, a finding of bad
faith intent will weigh against an applicant, good faith adoption and the mere absence
of “evidence of intent to trade on the goodwill of another” typically does not aid an
applicant attempting to establish no likelihood of confusion.” See J & J Snack Foods
Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991);
Apple Computer v. TVNET.net Inc., 90 USPQ2d 1393, 1398 n. 7 (TTAB 2007).
2. Co-Existence of the Prior Cited Marks
While acknowledging that “the decisions of prior USPTO examining attorneys are
not binding on a current case,” Applicant nonetheless contends “the fact that all the
prior-cited marks [i.e., NEO POWER MAG (Registration No. 4900355), NEOLINE
and design (Registration No. 5314318),31 and PLEIADES NEO (Registration No.
5778094] co-exist on the USPTO register and in the marketplace is instructive and
persuasive in this case, as it is evidence that the Applicant’s Applied-For Mark is able
to co-exist with the Cited Mark without a likelihood of consumer confusion or harm
to the Cited Registrant.” Applicant’s br. pp. 12-13.32 Applicant accordingly contends

31 As noted in footnote 2, Registration Nos. 4900355 and 5314318 were withdrawn as a bar
to registration.
32 7 TTABVUE 18-19.
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that its application should not be inconsistent with the treatment and examination
of those marks. Id.33
Because the Board is an administrative tribunal with a narrow jurisdiction over
the right to registration, the co-existence of the prior cited marks (two of them having
been withdrawn as a bar to registration) in the marketplace is neither relevant nor
persuasive. Moreover, and as acknowledged by Applicant, the Board is not bound by
the prior decisions of examining attorneys in allowing marks for registration. While
the USPTO strives for consistency, each case must be decided on its own facts and
record. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001) (“Even if some prior registrations had some characteristics similar to
[Applicant’s] application, the PTO’s allowance of such prior registrations does not
bind the Board or this court.”); In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828
F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987). As such, we are obligated to assess,
and have assessed, the registrability of Applicant’s mark on its own merits and not
simply based on the existence of other registrations.
F. Conclusion
When we consider all of the arguments and evidence relating to the relevant
likelihood of confusion factors, we find that confusion is likely between Applicant’s
mark NEO for “electronic components for use with RFID reader antennas for
monitoring assets” and the cited registered mark PLEIADES NEO for “antennas.”

33 Id.
Serial No. 87780579
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We find so principally due to the similarity of the marks, the relatedness of the goods,
and the overlap in purchasers and trade channels.
Decision: The refusal to register Applicant’s mark NEO is affirmed.