Clinical Research Management, Inc.

Trademark Trial and Appeal Board

Jan 25, 2013

No. 85264478 (T.T.A.B. Jan. 25, 2013)

Mailed: 1/25/2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Clinical Research Management, Inc.
________

Serial Nos. 85264433, 85264461 and 85264478
_______

John D. Gugliotta of Patent, Copyright & Trademark Law Group for
Clinical Research Management, Inc.

Jeri Fickes, Trademark Examining Attorney, Law Office 107 (J.
Leslie Bishop, Managing Attorney).
_______

Before Quinn, Adlin and Masiello,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Clinical Research Management, Inc. filed, on March 11,
2011, applications to register the following marks
(respectively, serial nos. 85264433, 85264461 and 85264478):

The word “CLINICAL” is disclaimed. The application includes the
following statements:
The mark consists of the stylized wording
“CLINICAL RM” in blue, with a double helix
THIS OPINION IS NOT
A PRECEDENT OF THE
TTAB
Ser. Nos. 85264433, 85264461 and 85264478

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consisting of circles in shades of green and
blue bonds separating the words “CLINICAL”
and “RM.” The colors blue and green are
claimed as a feature of the mark.

ClinicalRM (in standard characters);
and

The word “CLINICAL” is disclaimed. The application includes the
following statements:
The mark consists of the stylized wording
“CLINICAL RM” in blue and stylized wording
“ADVANCE. ACCELERATE. ACHIEVE.” in green
below, with a double helix consisting of
circles in shades of green and blue bonds
separating the words “CLINICAL” and “RM.”
The colors blue and green are claimed as a
feature of the mark.

Each of the applications includes the identical recitation of
services as follows:
medical and scientific research, namely,
conducting clinical trials on behalf of
medical, biopharmaceutical and biotechnology
companies and government agencies to assist
them with clinical research; providing
medical and scientific research information
in the field of pharmaceuticals and clinical
trials on behalf of medical,
biopharmaceutical and biotechnology
companies and government agencies (in
International Class 42).
Ser. Nos. 85264433, 85264461 and 85264478

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Each of the applications sets forth dates of first use anywhere
and in commerce of May 1, 2011.
The trademark examining attorney refused registration in
each application under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground that applicant’s mark, when used
in connection with applicant’s services, so resembles the
previously registered marks shown below, owned by the same
entity, as to be likely to cause confusion.

Registration No. 3533224, issued November 18, 2008, for:
clerical services for export and import
agencies (in International Class 35);

equity or research financial investment in
the field of pharmaceutical venture
companies in the U.S. to facilitate product
development (in International Class 36); and

medical testing, medical research,
inspection of medicines, providing medical
information, namely, providing information
about medicines, diagnostic preparations and
pre-clinical compounds to assist in
licensing-out activities of promising pre-
clinical compounds and act as an
intermediary between U.S. and Japanese
pharmaceutical companies; providing research
information on pre-clinical compounds for
new drugs; co-development of candidate
compounds for new drugs for others; medical
and pharmaceutical research and development
Ser. Nos. 85264433, 85264461 and 85264478

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consulting services (in International Class
42).
The registration includes the following statement: “The mark
consists of ‘RM’ and design.”1

Registration No. 3589769, issued March 17, 2009, for:
clerical services for export and import
agencies; providing medical information,
namely, providing information about
medicines, diagnostic preparations and pre-
clinical compounds to assist in licensing-
out activities of promising pre-clinical
compounds and act as an intermediary between
U.S. and Japanese pharmaceutical companies
(in International Class 35);

equity and research financial investment in
the field of pharmaceutical venture
companies in the U.S. to facilitate product
development (in International Class 36); and

medical testing, medical research,
inspection of medicines; providing research
information on pre-clinical compounds for
new drugs; co-development of candidate
compounds for new drugs for others; medical
and pharmaceutical research and development
consulting services (in International Class
42).

1 It would appear to our eye that the intersection of the letters “R”
and “M” may form the additional letter “X” in each of registrant’s
marks. However, this is not reflected in the marks’ descriptions,
notwithstanding that “RX” is a commonly accepted abbreviation for
“medical prescription.” The American Heritage Abbreviations
Dictionary (3d ed. 2005) (of which we take judicial notice).
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The registration includes the following statement: “The mark
consists of ‘RM REQMED’ and design.”
When the examining attorney issued a final refusal,
applicant filed a request for reconsideration. Upon denial of
the request, applicant filed an appeal in each application.
Applicant and the examining attorney have filed briefs.
The three appeals involve common issues of law and fact,
and the evidentiary records and arguments are essentially
identical or otherwise very similar. Accordingly, the Board
will decide the appeals in this single opinion.
Evidentiary Issue
Before turning to the merits of the appeal, we first direct
our attention to an evidentiary matter. Applicant submitted for
the first time with its appeal brief evidence identified as
Exhibits A-F. The examining attorney, in her brief, objected to
the untimely submission of this evidence.
Trademark Rule 2.142(d) provides that the record in an
application should be complete prior to the filing of an appeal.
The Board will ordinarily not consider additional evidence filed
after the appeal is filed. See TBMP § 1207.01 (3d ed. rev.
2012) and cases cited therein. Accordingly, the examining
attorney’s objection is sustained, and we have not considered
applicant’s untimely evidence in reaching our decision.

Ser. Nos. 85264433, 85264461 and 85264478

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Arguments
Applicant states that its marks are derived from its
company name, Clinical Research Management, Inc., and that the
only commonality between its marks and registrant’s marks is the
presence of the letters “RM.” Applicant argues that this
commonality is insufficient to cause a likelihood of confusion.
As to the services, applicant states that it is solely involved
in medical and scientific research activities for others, and
that, unlike registrant, applicant has never been involved in
raising venture capital or licensing products it develops.
Applicant further states that “[w]hile there may be some
similarity between the nature of the two businesses, there is a
greatly different emphasis in terms of control and overall
breadth of activities.” (Brief, p. 7). Applicant goes on to
argue that “[w]hile there may appear to be some similarity or
overlap on first review, there is really quite a bit of
difference between coordinating the development and licensing of
drugs with money that one raised versus being solely in the
market of providing contracted research staff and services in
support of customer research activities.” (Brief, p. 7).
Applicant also contends that the relevant purchasers are
sophisticated and, given the nature of the services, likely to
exercise greater care in their purchasing decisions. As to
actual confusion, applicant claims that it is unaware of any
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instances thereof. Pursuant to the examining attorney’s
inquiry, applicant made the following statements (Response,
9/3/11): “Applicant does not believe that ‘RM’ has any meaning
or significance in the industry in which the goods and/or
services are manufactured/provided, and that such wording is not
a ‘term of art’ within applicant’s industry. Further, applicant
does not believe that ‘RM’ is a commonly recognized acronym for
‘research management’ within the medical, biomedical, or
biopharmaceutical industries.”2 In urging reversal of the
refusal, applicant timely submitted an excerpt from its website,
and an Internet article about registrant and its business.
The examining attorney maintains that each of applicant’s
marks is similar to each of registrant’s marks, and that the
services overlap and/or are closely related. To show that some
of the services are related the examining attorney relied on
five third-party registrations.
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 issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,

2 To the extent that applicant argues that the letters “RM” in
registrant’s mark may be recognized as an abbreviation for “Required
Medicine,” there is little in the record to support this. (See
evidentiary issue, supra).
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177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated
by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in the
marks”). We will consider these two factors, together with any
other relevant du Pont factors, in making our decision.
We will confine our likelihood of confusion analysis to the
refusal based on the mark shown in Registration No. 3533224,
consisting of the stylized letters “RM” and a globe design
because, in view of the similarity between this mark and that of
each of applicant’s marks, this cited registration presents the
strongest case for each refusal. That is, if confusion is
likely between those marks, there is no need for us to consider
the likelihood of confusion with the other cited mark which
includes additional wording; while if there is no likelihood of
confusion between each of applicant's marks and the cited mark
comprising the letters “RM” and design, then there would be no
likelihood of confusion with the other cited mark. In re Max
Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
Ser. Nos. 85264433, 85264461 and 85264478

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The Services
We first turn to consider the second du Pont factor
regarding the similarity/dissimilarity between the services. It
is well settled that the involved services need not be identical
or competitive, or even offered through the same channels of
trade, to support a holding of likelihood of confusion. It is
sufficient that the respective services of applicant and
registrant are related in some manner, and/or that the
conditions and activities surrounding the marketing of the
services are such that they would or could be encountered by the
same persons under circumstances that could, because of the
similarity of the marks, give rise to the mistaken belief that
they originate from the same source. See Hilson Research, Inc.
v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB
1993); and In re International Telephone & Telegraph Corp., 197
USPQ 910, 911 (TTAB 1978). The issue, of course, is not whether
purchasers would confuse the services, but rather whether there
is a likelihood of confusion as to the source of the services.
In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
We make our determination regarding the similarities
between the services, channels of trade and classes of
purchasers based on the services as they are identified in the
application and registration, respectively. Octocom Systems
Inc. v. Houston Computers Services, Inc., 918 F.2d 937, 16
Ser. Nos. 85264433, 85264461 and 85264478

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USPQ2d 1783, 1787 (Fed. Cir. 1990). Where the services in a
cited registration and/or application are broadly identified as
to their nature and type, such that there is an absence of any
restrictions as to the channels of trade and no limitation as to
the classes of purchasers, it is presumed that in scope the
recitation of services encompasses all the services of the
nature and type described therein, that the identified services
are offered in all channels of trade which would be normal
therefor, and that they would be purchased by all potential
buyers thereof. Paula Payne Products Co. v. Johnson Publishing
Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973); Kalart Co. v.
Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958); and
In re Elbaum, 211 USPQ 639 (TTAB 1981).
In the instant case, applicant’s services are identified,
in part, as “providing medical and scientific research
information in the field of pharmaceuticals and clinical trials
on behalf of medical, biopharmaceutical and biotechnology
companies and government agencies” in Class 42; and registrant’s
services are identified, in part, as “providing research
information on pre-clinical compounds for new drugs” in Class
42. In the context of likelihood of confusion in the present
case, it is sufficient if likelihood of confusion is found with
respect to use of the mark on any of the services that comes
within the recitation of services in the applications. Tuxedo
Ser. Nos. 85264433, 85264461 and 85264478

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Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209
USPQ 986, 988 (CCPA 1981); and Apple Computer v. TVNET.Net,
Inc., 90 USPQ2d 1393, 1398 (TTAB 2007).
Applicant’s and registrant’s services overlap to the extent
that both involve providing research information about drugs
(i.e., pharmaceuticals). Applicant has not provided any
evidence to establish a meaningful distinction between the
services for purposes of the likelihood of confusion analysis.
The fact that applicant’s Class 42 information services focus on
clinical pharmaceuticals whereas registrant’s Class 42
information services focus on pre-clinical pharmaceuticals is an
insufficient basis upon which to distinguish the services as
they are worded in the applications and registration. Although
applicant and registrant may render the services at different
stages of drug development, the services are complementary and
otherwise closely related, with both being types of services
that are part of the same process in bringing a pharmaceutical
to the market. Further, registrant’s specific services of
“providing research information on pre-clinical compounds for
new drugs” are not restricted as to prospective purchasers
(unlike some of registrant’s other services), so we must presume
that the relevant purchasing classes include medical,
biopharmaceutical and biotechnology companies and government
agencies, that is, the same purchasers of applicant’s services.
Ser. Nos. 85264433, 85264461 and 85264478

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The examining attorney submitted, in an attempt to show
that the services are related, five use-based third-party
registrations showing that the same entity has registered the
same mark for various services rendered at both the pre-clinical
and clinical trial phases. “Third-party registrations which
cover a number of differing goods and/or services, and which are
based on use in commerce, although not evidence that the marks
shown therein are in use on a commercial scale or that the
public is familiar with them, may nevertheless have some
probative value to the extent that they may serve to suggest
that such goods or services are of a type which may emanate from
a single source.” In re Mucky Duck Mustard Co., 6 USPQ2d 1467,
1470 n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988). See
also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86
(TTAB 1993).
Given the relatedness of the services, we expect them to
move in similar if not identical drug research trade channels,
and be rendered to the same classes of purchasers, including
biopharmaceutical, biotechnical and governmental entities. The
extrinsic evidence relied upon by applicant (the properly
introduced portions of applicant’s and registrant’s websites)
does not serve to limit the recitations of services in the
applications and registration upon which we have focused. See
In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986)
Ser. Nos. 85264433, 85264461 and 85264478

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(evidence that relevant goods are expensive wines sold to
discriminating purchasers must be disregarded given the absence
of any such restrictions in the application or registration).
Thus, the factors of the similarity between the services,
and the overlap in trade channels and classes of purchasers
weigh in favor of a finding of likelihood of confusion. If
these services were rendered under similar marks, confusion
would be likely to occur among purchasers.
The Marks
We next direct our attention to the du Pont factor of the
similarity/dissimilarity between each of the applied-for marks
and the registered mark shown in Registration No. 3533224. We
must compare the marks in their entireties as to appearance,
sound, connotation and commercial impression to determine the
similarity or dissimilarity between them. Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1690 (Fed. Cir. 2005), quoting In re E. I.
du Pont de Nemours & Co., 177 USPQ at 567. The test, under the
first du Pont factor, is not whether the marks can be
distinguished when subjected to a side-by-side comparison, but
rather whether the marks are sufficiently similar in terms of
their overall commercial impression that confusion as to the
source of the services offered under the respective marks is
likely to result. Moreover, in comparing the marks, we are
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mindful that where, as here, the services are closely related in
part, the degree of similarity necessary to find likelihood of
confusion need not be as great as where there is a recognizable
disparity between the services. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d
1104, 1108 (TTAB 2007); and Schering-Plough HealthCare Products
Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
Registrant’s mark comprises the stylized letters “RM”
accompanied by a globe background design. It is well settled
that one feature of a mark may be more significant than another,
and it is not improper to give more weight to the dominant
feature in determining the commercial impression created by the
mark. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985) (“There is nothing improper in stating
that, for rational reasons, more or less weight has been given
to a particular feature of a mark, provided the ultimate
conclusion rests on consideration of the marks in their
entireties. Indeed, this type of analysis appears to be
unavoidable.”).
Where both words/letters and a design comprise the mark (as
in registrant’s mark), then the words/letters are normally
accorded greater weight because the words/letters are likely to
make an impression upon purchasers, would be remembered by them,
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and would be used by them to request the services. CBS, Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983) (“in a
composite mark comprising a design and words, the verbal portion
of the mark is the one most likely to indicate the origin of the
goods to which it is affixed”); In re Appetito Provisions Co., 3
USPQ2d 1553, 1554 (TTAB 1987); and Kabushiki Kaisha Hattori
Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB 1985). See also
Giant Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565,
218 USPQ 390 (Fed. Cir. 1983). In registrant’s mark, the
literal portion of the mark, namely the letters “RM,” is the
dominant portion, and is accorded greater weight over the
background globe design feature when comparing this mark to each
of applicant’s marks.
We now turn to compare each of applicant’s marks
individually with registrant’s mark.
Application Serial No. 85264433
Applicant’s mark “consists of the stylized wording
‘CLINICAL RM’ in blue, with a double helix consisting of circles
in shades of green and blue bonds separating the words
‘CLINICAL’ and ‘RM.’. The colors blue and green are claimed as
a feature of the mark.” The word “CLINICAL” is disclaimed.
As in registrant’s mark, applicant’s mark likewise is
dominated by the literal portion, in this case “CLINICAL RM.”
This portion is likely to make an impression upon purchasers,
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would be remembered by them, and would be used by them to
request the services. In turn, the literal portion is dominated
by the letters “RM.” The word “CLINICAL” is disclaimed and,
given the nature of the services, the word lacks source-
indicating significance. Consumers are more likely to perceive
the letters “RM,” which are emphasized by thicker letters in a
dark color, as the source-indicating feature of the mark, rather
than the descriptive word “CLINICAL.” See, e.g., In re Dixie
Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed.
Cir. 1997) (affirming Board’s finding that “DELTA,” not the
disclaimed generic term “CAFÉ,” is the dominant portion of the
mark THE DELTA CAFÉ); and In re Binion, 93 USPQ2d 1531, 1534
(TTAB 2009) (finding that “BINION’S,” not the disclaimed
descriptive wording “ROADHOUSE,” is the dominant portion of the
mark BINION’S ROADHOUSE). The dominant portion of applicant’s
mark, “RM,” is identical to the literal portion of registrant’s
mark. In discussing the dominant portion of the marks, we
recognize, of course, that the marks ultimately must be compared
in their entireties. When this comparison is made, we find that
the marks are similar in sound, appearance and meaning. Because
of the similarities between the marks, applicant’s and
registrant’s marks engender similar overall commercial
impressions. The presence of the stylized lettering and designs
in both marks, and the color features and additional word
Ser. Nos. 85264433, 85264461 and 85264478

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“CLINICAL” in applicant’s mark, are insufficient to distinguish
the marks when they are used in connection with related
services.
The similarity between the marks weighs in favor of a
finding of likelihood of confusion.
Application Serial No. 85264461
Applicant’s mark consists of ClinicalRM in standard
characters; given the absence of the additional words and/or
design features in applicant’s other marks, this presents the
strongest case for affirmance. Again, due to the highly
descriptive nature of the word “CLINICAL,” this mark is
dominated by the letters “RM.” These letters are identical to
the literal dominant portion of registrant’s mark. The
stylization of the letters and the globe design in registrant’s
mark are insufficient to distinguish the marks.
When the marks are compared in their entireties, they are
similar in sound, appearance, meaning and overall commercial
impression. Thus, the similarity between the marks weighs in
favor of a finding of likelihood of confusion.
Application Serial No. 85264478
Applicant’s mark “consists of the stylized wording
‘CLINICAL RM’ in blue and stylized wording ‘ADVANCE. ACCELERATE.
ACHIEVE.’ in green below, with a double helix consisting of
circles in shades of green and blue bonds separating the words
Ser. Nos. 85264433, 85264461 and 85264478

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‘CLINICAL’ and ‘RM.’ The colors blue and green are claimed as a
feature of the mark.” The word “CLINICAL” is disclaimed.
The literal portion of applicant’s mark dominates over the
design portion. In turn, the “CLINICAL RM” portion dominates
the literal portion inasmuch as the wording “ADVANCE.
ACCELERATE. ACHIEVE.” is in much smaller font, appearing below
“CLINICAL RM.” And, as is the case explained above, the word
“CLINICAL” is disclaimed, leaving the letters “RM” as the
dominant portion.
Once again, the dominant portion of applicant’s mark is
similar to the dominant portion of registrant’s mark. In
discussing the dominant portion of the marks, we again recognize
that the marks ultimately must be compared in their entireties.
When this comparison is made, we find that the marks are similar
in sound, appearance, meaning and overall commercial impression.
The additional elements in the marks are insufficient to
distinguish the marks when used in connection with similar
services. The similarity between the marks weighs in favor of a
finding of likelihood of confusion.
Other Factors
The sixth du Pont factor focuses on the number and nature
of similar marks in use on similar goods and/or services.
Although hardly the most probative factor in this case, the
absence in the record before us of any third-party uses or
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registrations of “RM” marks in the pharmaceutical research
information field tends to show that registrant’s mark is unique
or at least not coexisting with similar marks in the field.
Thus, there is no evidence to indicate that relevant purchasers
who may avail themselves of the involved services are accustomed
to distinguishing between marks based on other differences
between the marks. See Sterling Drug Inc. v. Sebring, 515 F.2d
1128, 185 USPQ 649, 652 (CCPA 1975) (“Since the record is devoid
of any evidence that any other merchant of any product has used
or is using [opposer’s design mark] as a trademark, we feel it
most likely that its appearance on such products as are here
involved would be taken as an indication of common origin.”).
Given the nature of the services at issue, even in the
absence of any evidence on the point, it is reasonable for us to
assume that the relevant purchasers are likely to exercise some
degree of care when it comes to buying the pharmaceutical
research information services. It is settled, however, that
even sophisticated purchasers are not immune from source
confusion, especially in cases such as the instant one involving
similar marks and closely related services. Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000).
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
Ser. Nos. 85264433, 85264461 and 85264478

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1970) (“Human memories even of discriminating purchasers...are
not infallible.”). See also Kos Pharmaceuticals Inc. v. Andrx
Corp., 369 F.3d 700, 70 USPQ2d 1874, 1887-88 (3d Cir. 2004). We
find that the similarities between the marks and the services
sold thereunder outweigh any sophisticated purchasing decision,
especially in the absence of evidence relating to the degree of
care in making the decision. See HRL Associates, Inc. v. Weiss
Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss
Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks
outweigh sophisticated purchasers, careful purchasing decision,
and expensive goods). Thus, this factor is given less weight in
view of the similarities between the marks and the services.
Applicant’s assertion, in an ex parte proceeding, of the
contemporaneous use of applicant’s and registrant’s marks since
May 2011 without actual confusion is entitled to little weight.
See In re Majestic Distilling Co., Inc., 65 USPQ2d at 1205
(“uncorroborated statements of no known instances of actual
confusion are of little evidentiary value”). See also In re
Bisset-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973)
(stating that self-serving testimony of applicant’s corporate
president’s unawareness of instances of actual confusion was not
conclusive that actual confusion did not exist or that there was
no likelihood of confusion). In re Binion, 93 USPQ2d at 1536;
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In re 1st USA Realty Professionals Inc., 84 USPQ2d 1581, 1588
(TTAB 2007); and In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27
(TTAB 1984). In any event, the record is devoid of probative
evidence relating to the extent of use of applicant’s and
registrant’s marks and, thus, whether there have been meaningful
opportunities for instances of actual confusion to have occurred
in the marketplace. See Cunningham v. Laser Golf Corp., 55
USPQ2d at 1847; and In re Wilson, 57 USPQ2d 1863, 1869 (TTAB
2001) (“[I]nasmuch as we have heard from neither registrant nor
the Highland Orange Association in this appeal, we cannot
conclude that, in fact, no instances of actual confusion ever
occurred.”). Accordingly, the du Pont factor of the length of
time during and conditions under which there has been
contemporaneous use without evidence of actual confusion is
considered neutral.
Many of applicant’s arguments are based on the evidence
attached to its appeal brief. So as to be clear, we have
decided this case on the evidence properly made of record, which
does not include any of the evidence untimely submitted with
applicant’s appeal brief. Based on the record before us, we
find that the du Pont factors, on balance, weigh in favor of a
finding of likelihood of confusion between each of applicant’s
marks and the mark shown in registrant’s Registration No.
3533224. The factors involving the services, namely the
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similarity between the services, and the overlap in trade
channels and classes of purchasers, tip the scales in favor of
affirming the refusals.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6
USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register in each application is
affirmed.