Column5 Consulting Group, LLC

Trademark Trial and Appeal Board

Oct 21, 2019

87832629 (T.T.A.B. Oct. 21, 2019)

Mailed: October 21, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Column5 Consulting Group, LLC
_____

Application Serial No. 87832629
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Steven J. Laureanti of Spencer Fane LLP for Column5 Consulting Group, LLC.

Hunter Bayliss, Trademark Examining Attorney, Law Office 113,
Myriah Habeeb, Managing Attorney.
_____

Before Taylor, Bergsman and Coggins, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Column5 Consulting Group, LLC (Applicant) seeks registration on the Principal
Register of the mark COLUMN5, in standard character form, for “Business
management and consultation; Consultation services in the field of enterprise
performance management, process improvements, and organizational effectiveness,”
in Class 35.1

1 Application Serial No. 87832629, filed March 13, 2018, under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), based on Applicant’s claim of first use anywhere and first use in
commerce at least as early as January 1, 2005.
This Opinion Is Not a
Precedent of the TTAB
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The Examining Attorney refused registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the
registered mark COLUMN FIVE, in standard character form, for, inter alia, the
services set forth below as to be likely to cause confusion:
Advertising and marketing consultancy; Advertising and
marketing services provided by means of indirect methods
of marketing communications, namely, social media,
search engine marketing, inquiry marketing, internet
marketing, mobile marketing, blogging and other forms of
passive, sharable or viral communications channels;
Creative marketing design services; Design of advertising
materials for others, in Class 35.2
When the Examining Attorney made the refusal final, Applicant appealed and
requested reconsideration. After the Examining Attorney denied the request for
reconsideration, the Board resumed the appeal. We affirm the refusal to register.
I. Preliminary Issue
With his denial of Applicant’s request for reconsideration, the Examining
Attorney, submitted evidence of third parties advertising the services in both
Applicant’s and Registrant’s descriptions of services.3 Applicant, for the first time in
its Reply Brief, objected to this evidence.4 Applicant’s objection is overruled because

2 Registration No. 4647849, registered December 2, 2014. The registration also includes
services in Class 42 that were not cited as part of the refusal.
3 5-8 TTABVUE. References to the request for reconsideration and briefs on appeal refer to
the Board’s TTABVUE docket system. Coming before the designation TTABVUE is the
docket entry number; and coming after this designation are the page references, if applicable.
Citations to the examination record refer to the Trademark Status and Document Retrieval
System (TSDR), by page number, in the downloadable .pdf format.
4 Applicant’s Reply Brief, pp. 2 and 4-5 (13 TTABVUE 4 and 6-7).
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it is not timely and because the Examining Attorney is allowed to submit evidence in
a denial to a request for reconsideration.
First, Applicant is required to raise the objection in its main brief to allow the
Examining Attorney time to respond. By raising the objection in its Reply Brief,
Applicant foreclosed the Examining Attorney from responding. Cf. Grote Indus., Inc.
v. Truck-Lite Co., LLC, 126 USPQ2d 1197, 1199 (TTAB 2018) (“Objections raised for
the first time in a reply brief are untimely because they effectively foreclose the
adverse party from responding to the objections.”); Productos Lacteos Tocumbo S.A.
de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1927 (TTAB 2011)
(objection on the basis that the witness had not been previously disclosed waived
where not renewed in main brief and raised for first time in rebuttal brief), aff’d, 188
F.Supp.3d 222 (D.D.C. 2016), aff’d, 743 F. App’x 457, 128 USPQ2d 1172 (D.C. Cir.
2018); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1104 (TTAB 2007)
(objection raised at trial waived when petitioner waited until its reply brief to renew
objections).
Second, if the Examining Attorney, upon consideration of a request for
reconsideration (made with or without new evidence), does not find the request
persuasive, and issues an action continuing the refusal or requirement, the
examining attorney may submit therewith new evidence directed to the issue(s) for
which reconsideration is sought. In re Davey Products Pty Ltd., 92 USPQ2d 1198,
1201 (TTAB 2009) (“evidence attached to a request for reconsideration submitted
with a notice of appeal, and evidence attached to a denial of the request for
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reconsideration, is considered to have been filed prior to appeal, and is part of the
application record on appeal.”); In re Giger,78 USPQ 1405, 1406-07 (TTAB 2006)
(“Inasmuch as applicants sought reconsideration after the examining attorney’s final
refusal, the examining attorney was permitted to submit evidence in response to this
request and applicants’ request that we not consider such evidence is denied.”); see
also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) §§ 1204
and 1207.04 (June 2019).
II. 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 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 In re Guild
Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019); 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). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
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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., 308 F.3d
1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
A. The similarity or dissimilarity of the marks.
We turn first 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 test 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.” Coach Servs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). Under actual
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marketing conditions, consumers do not necessarily have the luxury of making side-
by-side comparisons between marks, and must rely upon their imperfect
recollections. Dassler KG v. Roller Derby Skate Corp., 206 USPQ 255, 259 (TTAB
1980).
Applicant is seeking to register the mark COLUMN5 and the registered mark is
COLUMN FIVE. The numeral “5” in Applicant’s mark is equivalent to the word
“Five” in the registered mark. Consumers readily understand that “5” is the
numerical representation of the word “Five.” Thus, the marks COLUMN5 and
COLUMN FIVE are identical in pronunciation, connotation and commercial
impression. In addition, the marks are similar in appearance inasmuch as they both
begin with the word “Column” followed by either the numeral “5” or the word “Five.”
See Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1025 (TTAB 2009) (finding
that petitioner’s mark DESIGNED2SELL is phonetically identical to respondent’s
mark DESIGNED TO SELL because the “marks are also highly similar visually, with
the sole differences being the substitution in respondent’s mark of the short
preposition ‘to’ for the number ‘2’ between the two dominant words, and the use of
spaces between them” and because “the spaces that respondent places between the
words do not create a distinct commercial impression from petitioner’s presentation
of his mark as one word.”).
Applicant argues, “[c]onsumers will not fail to notice the difference between the
single word (containing an Arabic numeral) in [Applicant’s] Mark [COLUMN5] and
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the two words (containing no numerals) in Registrant’s Mark [COLUMN FIVE].”5 We
disagree. Although the registered mark is presented with a space – COLUMN FIVE
– and Applicant’s mark is presented without a space – COLUMN5 – as noted above,
consumers are likely to view and verbalize Applicant’s mark as “Column Five,” based
on normal English pronunciation. Thus, the presence or absence of a space between
the two parts of the marks and Applicant’s substitution of the numeral “5” for the
word “five” are inconsequential differences that even if noticed or remembered by
consumers do not serve to distinguish the marks. See Giersch, 90 USPQ2d at 1025
(finding that DESIGNED TO SELL creates the same commercial impression as
DESIGNED2SELL); see also In re Iolo Tech., LLC, 95 USPQ2d 1498, 1499 (TTAB
2010) (finding ACTIVECARE and ACTIVE CARE confusingly similar); Seaguard
Corp. v. Seaward Int’l, Inc., 223 USPQ2d 48, 51 (TTAB 1984) (SEA GUARD and
SEAGUARD are “essentially identical”); In re Best W. Family Steak House, Inc., 222
USPQ 827, 827 (TTAB 1984) (“there can be little doubt that the marks
[BEEFMASTER and BEEF MASTER] are practically identical and indeed applicant
has not argued otherwise.”); Stock Pot, Inc. v. Stockpot Rest., Inc., 220 USPQ 52, 54
(TTAB 1983), aff’d 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no
question that the marks of the parties [STOCKPOT AND STOCK POT] are
confusingly similar. The word marks are phonetically identical and visually almost
identical.”).

5 Applicant’s Brief, p. 5 (10 TTABVUE 8).
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We find that the marks are similar in their entireties in terms of appearance,
sound, connotation and commercial impression.
B. The similarity or dissimilarity and nature of the services.
With respect to the DuPont factor of the similarity of the services, the case law is
clear that it is not necessary that the services of Applicant and Registrant be similar
or competitive, or even that they move in the same channels of trade to support a
holding of likelihood of confusion. It is sufficient that the respective 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 producer. See Coach Servs., 101 USPQ2d at 1722;
Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB 2010);
In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1584 (TTAB 2007); In re Int’l Tel.
& Tel. Corp., 197 USPQ 910, 911 (TTAB 1978).
Under this DuPont factor, the Examining Attorney need not prove, and we need
not find, similarity as to each activity listed in the description of services. It is
sufficient for a refusal based on likelihood of confusion that relatedness is established
for any activity encompassed by the identification of services in a particular class in
the application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209
USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB
2015), aff’d 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); In re Aquamar, Inc.,
115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (“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.”).
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In this case, the Examining Attorney has shown this relatedness of the services
by submitting a number of third-party registrations showing that a single mark has
been adopted by various entities for both services of the types identified in Applicant’s
application and those of the types identified in the cited registration.6 Third-party
registrations which individually cover a number of different items and which are
based on use in commerce serve to suggest that the listed services are of a type that
may emanate from a single source. See In re Infinity Broad. Corp., 60 USPQ2d 1214,
1217-1218 (TTAB 2001). For example, the third-party registrations listed below are
owned by different parties and registered for both “advertising and marketing
consultancy” services as recited in the cited registration and “business management
and consultation” services identical to those recited in Applicant’s application:7
•Registration No. 4780344 for the mark SPRY VISION;
•Registration No. 4763641 for the mark BRILLIANT THINGS;
•Registration No. 4764609 for the mark CRISP CLARITY;
•Registration No. 5256719 for the mark TWENTYTHREE MANAGEMENT;
•Registration No. 4880908 for the mark CREATIVE HACKERS TESTING
PROGRESSIVE IDEAS; and
•Registration No. 5069692 for the mark YOUR PATHWAY TO BUSINESS
REBIRTH.

6 See June 27, 2018 Office Action (TSDR 10-35) and January 16, 2019 Office Action (TSDR
10-48).
7 June 27, 2018 Office Action (TSDR 10-35).
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And the third-party registrations listed below are registered for both advertising and
marketing services like those of Registrant and services similar or the same as
Applicant’s “consultation services in the field of enterprise performance management,
process improvements, and organizational effectiveness”:8
•Registration No. 4253338 for the mark AFFIRMA;
•Registration No. 5022015 for the mark BACKERCAMP;
• Registration No. 5253924 for the mark 3COTECH;
•Registration No. 5516983 for the mark IF YOU’RE NOT REMARKABLE,
YOU’RE INVISIBLE; and
•Registration No. 5468281 for the mark Q.
Finally, the Examining Attorney proffered that in his June 27, 2018 and January
16, 2019 Office Actions and his May 1, 2019 Denial of the Request for
Reconsideration, he submitted examples of 19 different entities providing services of
the types identified in both the application and the cited registration.9 The third-
party Internet evidence listed below is representative:
•VCFO website (vcfo.com) advertising its “business management and
consultation services,” including “marketing for businesses, market analysis for
others, marketing plan preparation for others.”10

8 January 16, 2019 Office Action (TSDR 10-28).
9 Examiner’s Brief, unnumbered p. 10 (12 TTABVUE 11).
10 June 27, 2018 Office Action (TSDR 63).
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•Lowe Total Accounting website (loweaccounting.com) advertising its “Business
Management & Consultation” services, including business management services,
market positioning, market research and promotional programs, and developing
marketing strategies.11
•digital {parameter} website (digitialparameter.com) advertising its “business
management and consultation” expertise and its “branding, graphic design, logo
design, search engine organization and per-click advertising.”12
•Prime Care America website (primecareamerica.com), a healthcare financial
services and placement company, advertising its “Business Management and
Consultation” services, including marketing.13
•Accenture website (Accenture.com) advertising its “Finance and Enterprise
Performance” services and “marketing strategy” services.14
•Devine Solutions Group website (devinesolutionsgroup.com) is a “Business
Development Consultant” advertising itself as a “one-source digital marketing and
business development agency” that offers marketing services, including website
content, and implementing new business methodologies to transform the business
“from being person dependent to process dependent” (i.e., consultation services in the
field of process improvements, and organizational effectiveness).15

11 Id. at 64.
12 Id. at 65.
13 Id. at 70.
14 Id. at 71-72.
15 May 1, 2019 Denial of Request for Reconsideration (5 TTABVUE 29-33 and 6 TTABUVE
2-10).
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•Holt Management & Consulting website (marketingholt.com) advertises
consulting services in the field of process improvement, as well as marketing and
advertising services.16
Applicant argues that Applicant and Registrant “offer distinctly different services
in conjunction with their respective Marks.”17 However, the issue is not whether
purchasers would confuse the services, but rather whether there is a likelihood of
confusion as to the source of these services. In re Cook Med. Techs. LLC, 105 USPQ2d
1377, 1380 (TTAB 2012); Helene Curtis Indus. Inc. v. Suave Shoe Corp., 13 USPQ2d
1618, 1624 (TTAB 1989); In re Rexel Inc., 223 USPQ 830 (TTAB 1984). It is only
necessary that there be a viable relationship between the two to support a finding of
likelihood of confusion. In re Concordia Int’l Forwarding Corp., 222 USPQ 355, 356
(TTAB 1983).
Specifically, Applicant contends that its “business management and consultation
services” are in the field of enterprise performance management whereas Registrant
offers “advertising and marketing services for indirect methods of marketing
communications in the fields of social media, search engine marketing, inquiry
marketing, blogging, and other forms of viral communication channels.”18 Applicant
has mistakenly interpreted the description of services. The TRADEMARK MANUAL OF

16 Id. at (6 TTABVUE 11-16).
17 Applicant’s Brief, p. 5 (10 TTABVUE 8).
18 Id. at p. 6 (10 TTABVUE 9).
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EXAMINING PROCEDURE (TMEP) § 1402.01(a) (October 2018) reads, in pertinent part
as follows:
Semicolons should generally be used to separate distinct
categories of goods or services within a single class. For
example, “cleaners, namely, glass cleaners, oven cleaners,
and carpet cleaners; deodorants for pets” is an acceptable
identification in Class 3. In this example, the word
“cleaners” names the category covering “glass cleaners,
oven cleaners, and carpet cleaners.” The semicolon prior to
“deodorants for pets” indicates that the deodorants are a
separate category of goods from the cleaners. See In re
Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1166
(TTAB 2013) (finding that, because a semicolon separated
the two relevant clauses in registrant’s identification, its
“restaurant and bar services” is a discrete category of
services that stands alone and independently as a basis for
likelihood-of-confusion analysis, and is not connected to
nor dependent on the services set out on the other side of
the semicolon).
Applying the USPTO practice described above, Applicant’s description of services
has two distinct parts:
(i) “Business management and consultation”: and
(ii) “Consultation services in the field of enterprise performance management,
process improvements, and organizational effectiveness.”
Registrant’s description of services has four distinct parts:
(i) “Advertising and marketing consultancy”;
(ii) “Advertising and marketing services provided by means of indirect methods
of marketing communications, namely, social media, search engine
marketing, inquiry marketing, internet marketing, mobile marketing,
blogging and other forms of passive, sharable or viral communications
channels”;
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(iii) “Creative marketing design services”; and
(iv) “Design of advertising materials for others.”
Accordingly, Applicant’s attempt to restrict its “business management and
consultation services” to the field of enterprise performance management and to
restrict Registrant’s “advertising and marketing consultancy” to the field of “indirect
methods of marketing communications in the fields of social media, search engine
marketing, inquiry marketing, blogging, and other forms of viral communication
channels” fails because it does not comport with USPTO practice.
Finally, the evidence shows that “consultation services in the field of enterprise
performance management, process improvements” includes marketing. For example,
•Accely website (accely.com) explains that
Enterprise Performance Management is basically a set of
management processes, often supported by technology,
that help to improve the strategic decisions people in
organisations [sic] make every day. … Performance
Management is therefore a modern umbrella term for a set
of management approaches that enable organisations [sic]
to define and execute their strategy, and to measure and
monitor performance in order to inform strategic decision
making and learning.
In the first step to Enterprise performance management
model, organisations [sic] start with defining their
strategy, then move on to measuring performance, then use
these indicators to analyse [sic] performance in order to
extract insights and make better informed decisions which
lead to actions and performance improvements. Let’s look
briefly at each of these steps:
Strategic Planning …
Performance Measurement and Monitoring …
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Business Intelligence (BI), Analytics and Modelling – In
this step organisations [sic] use their performance data and
metrics to analyse performance. This step is all about
creating a solid evidence-base to inform decision making.
Examples of analytics, BI and modelling approaches
include marketing and sales analytics, customer
analysis or click stream analysis.19 (Emphasis added).
•HR Technologies website (hrtechnologies.com) posted an article “Connecting
People and Plans with Enterprise Performance Management (EPM)” (December 17,
2018). The article states, “The most successful enterprise planning strategies should
encompass all aspects of business from marketing and sales to human
resources and finance.”20 (Emphasis added).
•Prophet One website (prophetone.com) advertises its Enterprise Performance
Management services as follows:
Enterprise Performance Management
Understand, Analyze, and Report Better With Hyperion
Prophet One helps organizations plan, budget, forecast and
report on business performance as well as consolidate and
finalize financial results. Put simply, we help organizations
“close the books.” We work with CFOs and the office of
finance to better provide our expertise and experience. We
can also work with other functions of the business such as;
[sic] HR, sales, marketing and IT to use EPM for
operational planning, budgeting and reporting.21
(Emphasis added).
We find that Applicant’s “business management and consultation” services are
related to Registrant’s “advertising and marketing consultancy” services and that

19 May 1, 2019 Denial of Request for Reconsideration (5 TTABVUE 26).
20 Id. at 6 TTBVUE 17.
21 Id. at 7 TTABVUE 10).
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Applicant’s “consultation services in the field of enterprise performance management,
process improvements, and organizational effectiveness” is closely related to
Registrant’s “advertising and marketing consultancy” services.
C. Established, likely-to-continue channels of trade and classes of
consumers.
The third-party websites advertise their companies’ “business management and
consultation” services and “advertising and marketing consultancy” together and,
thus, offer them in the same channels of trade to the same classes of consumers. For
example,
•VCFO website (vcfo.com) advertises
VirtualController and vController services include
business management and consultation services in the
nature of budgeting, forecasting and accounting services.
* * *
vCMO Business marketing consulting services, marketing
for business, market analysis for others, market plan
preparation for others, and public relations services;
outsourced marketing for business, outsourced market
analysis for others, outsourced market plan preparation for
others, outsourced public relations services.
* * *
vTeam … Business management consultation … business
marketing consulting services, namely, marketing for
business, market analysis for others, marketing plan
preparation for others and public relations services.
* * *
STARTUP STAFFING Services include business
marketing consulting services, marketing for businesses,
market analysis for others, market plan preparation for
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others, public relation services, and employment recruiting
services.22
•Lowe Total Accounting website (loweaccounting.com) advertising its “Business
Management & Consultation” services, which include:
•Strategic Growth Panning: …
•Market Positioning: Identifying and leveraging the
company’s marketing position and competitive advantage,
including market research and promotional programs.
•Financial Strategy: …
•Marketing Strategies: We develop comprehensive short-
term and long-range business plans that will guide the
growth of your company. These plans include
merchandising, marketing, and operational strategies and
set quantifiable, measureable goals.23
• digital {parameter} website (digitialparameter.com) advertises that it “is
comprised of expert web design and development, marketing and advertising
specialists, and online business consultation and brand development.”24
•Cascadia Pacific Marketing (cascadiapacificmarketing.com) advertises “Sales,
marketing, training, and business management and consultation.”25
In addition, as noted above, “consultation services in the field of enterprise
performance management, process improvements” includes marketing. That means
that marketing personnel may be involved in the decision to engage a company to

22 January 27, 2018 Office Action (TSDR 63).
23 Id. at 64.
24 Id. at 66.
25 Id. at 69.
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render “consultation services in the field of enterprise performance management,
process improvements.”
We find that Applicant’s services and Registrant’s services are offered in some of
the same channels of trade to some of the same classes of consumers.
D. The conditions under which sales are made.
Applicant contends that consumers for both Applicant’s and Registrant’s services
exercise a high degree of purchaser care.
As stated in [Applicant’s] December 27, 2018 Office Action
Response, [Applicant’s] clients (including Amtrak, NBC
Universal, New Balance, etc.) comprise large national and
global entities that are highly discerning and that utilize
professional buyers and/or executive-level decision makers
to enter into contracts with Appellant. See December 27,
2018 Office Action Response, pp. 5-6. Registrant’s clients,
including Nike, Samsung, and Honeywell, are similarly
sophisticated. Id. Even the least sophisticated hypothetical
consumer cannot retain either [Applicant’s] or Registrant’s
services without initiating a conversation with [Applicant]
or Registrant and entering into a dialogue that
communicates the consumer’s unique situation and desired
service outcomes. The consumer will be required to
evaluate [Applicant’s] or Registrant’s proposed services in
detail before signing a contract, thereby preventing
consumer confusion or which services emanate from which
source.26
There are two problems with Applicant’s argument. First, we must compare
Applicant’s and Registrant’s respective services as they are identified in the
application and the cited registration. See Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys.,

26 Applicant’s Brief, p. 8 (10 TTABVUE 11).
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Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990). Notwithstanding Applicant’s argument and evidence regarding the actual
scope of its own use and the cited Registrant’s commercial use of its mark, we may
not limit, by resort to extrinsic evidence, the scope of services as identified in the cited
registration or in the subject application. E.g., In re Dixie Rests. Inc., 105 USPQ2d,
41 USPQ2d 1531, 1534 (Fed. Cir. 1997); In re Fisher Scientific Co., 440 F.2d 43, 169
USPQ 436, 437 (CCPA 1971); In re La Peregrina Ltd., 86 SPQ2d 1645, 1646 (TTAB
2008); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986).
Because there are no limitations as to channels of trade or classes of purchasers
in the descriptions of services in the application or cited registration, it is presumed
that Applicant’s and Registrant’s services are offered in all channels of trade normal
for those services, and that they are available to all classes of purchasers for those
services. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d
1253, 1261 (Fed. Cir. 2011); Paula Payne Prods. Co. v. Johnson Publ’g Co., 473 F.2d
901, 177 USPQ 76, 77 (CCPA 1973); Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956,
119 USPQ 139, 140 (CCPA 1958); In re Integrated Embedded, 120 USPQ2d 1504,
1515 (TTAB 2016); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). This
means that the relevant purchasers are not limited to “large national and global
entities that are highly discerning and that utilize professional buyers and/or
executive-level decision makers to enter into contracts.” Relevant purchasers may
include modest-sized companies with modest means that are managed by a few
people who run the day-to-day operations of the company, who are not experts in
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marketing, enterprise performance management and process improvement, and who
are not contract experts, but are in need of the expertise offered by companies such
as Applicant and Registrant. See Stone Lion Capital Partners, 110 USPQ2d at 1163-
64 (recognizing Board precedent requiring consideration of the “least sophisticated
consumer in the class”).
Second, there is no evidence regarding the sales process for either Applicant’s
services or Registrant’s services. Before us is only Applicant’s counsel’s description of
the purchasing process that the relevant consumers are “highly discerning,”
“professional buyers and/or executive-level decision makers,” who meet with
Applicant and Registrant before executing a contract. “Attorney argument is no
substitute for evidence.” Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 76
USPQ2d 1616, 1622 (Fed. Cir. 2005); see also 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).
Even if we assume, as Applicant argues, that based on the inherent nature of the
description of services, consumers would engage Applicant or Registrant to render
their services after some type of vetting process, including assessing the customer’s
needs, interaction with knowledgeable sales personnel, and comparing proposals,
such that consumers will not engage Applicant or Registrant as an impulse purchase,
because the services at issue are marketed under similar marks, even careful,
sophisticated consumers may not note the differences in the marks. See Stone Lion
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Capital Partners, 110 USPQ2d at 1163-64 (“Substantial evidence supports the
Board’s finding that such ordinary consumers “will exercise care when making
financial decisions,” but “are not immune from source confusion where similar marks
are used in connection with related services.”); Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“The alleged sophistication of
golfers is outweighed by the Board’s findings of strong similarity of marks and
identity of goods.”); In re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49,
50 (Fed. Cir. 1986) (“That the relevant class of buyers may exercise care does not
necessarily impose on that class the responsibility of distinguishing between similar
trademarks for similar goods.”).
Under the circumstances, the conditions under which sales are made is a neutral
DuPont factor.
E. The length of time during and conditions under which there has been
concurrent use without evidence of actual confusion.
Applicant asserts that even though Applicant and Registrant have coexisted for
over ten years, Applicant is unaware of any reported instances of actual confusion.27
In this regard, Applicant’s predecessor was the owner of Registration No. 3227622 for
the mark COLUMN 5, in standard character form, for, inter alia, “business
management and consultation” and “management and business consulting services
in the field of Enterprise performance management,” in Class 35.28 When that

27 Applicant’s Brief, pp. 8-9 (10 TTABVUE 9-10).
28 Registered April 10, 2007; cancelled November 17, 2017. See Applicant’s Brief, p. 11 (10
TTABVUE 12).
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registration was cited as a bar to the mark in the cited registration, Registrant argued
its mark COLUMN FIVE for the services in Registrant’s description of services is not
likely to cause confusion with the registered mark COLUMN 5 for, inter alia,
“business management and consultation” and “management and business consulting
services in the field of Enterprise performance management.”
Registrant made the same arguments we rejected in this appeal; that is,
Applicant’s predecessor’s services are in the field of business process design and
execution in conjunction with SAP® brand Enterprise Management software while
Registrant’s services are in the field of web design and development services.29 In
addition, Registrant made the same argument with respect to the conditions under
which sales are made.30 Registrant’s arguments in its Office Action Response have
the same problems that we pointed out with Applicant’s arguments in this appeal.
Moreover, the statements Registrant made during the prosecution of its
application for registration are facts for us to consider but they are not dispositive.
It is well settled that an applicant’s prior inconsistent
statements in its application for registration or in another
proceeding do not give rise to an estoppel in subsequent
proceedings. Institutional Wholesalers v. Saxons Shoppes,
Inc., 170 USPQ 107 (TTAB 1971); Textron, Inc. v. Gillette
Co., 180 USPQ 152, 154 and cases cited therein (TTAB
1973). However, such statements constitute admissions
and may be considered as evidence, albeit not conclusive
evidence, of the truth of the assertions therein. Bakers
Franchise Corp. v. Royal Crown Cola Co., 160 USPQ 192
(CCPA 1969); Maremont Corp. v. Airlift Corp., 174 USPQ
395, 396 (CCPA 1972).

29 April 10, 2018 Request for Reconsideration (4 TTABVUE 27).
30 Id. at 4 TTABVUE 28.
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EZ Loader Boat Trailers, Inc. v. Cox Trailers, Inc., 213 USPQ 597, 599 (TTAB 1982),
aff’d, 706 F.2d 1213, 217 USPQ 986 (Fed. Cir. 1983); see also Interstate Brands Corp.
v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 154 (CCPA 1978) (“That a
party earlier indicated a contrary opinion respecting the conclusion in a similar
proceeding involving similar marks and goods is a fact, and that fact may be received
in evidence as merely illuminative of shade and tone in the total picture confronting
the decision maker. To that limited extent, a party’s earlier contrary opinion may be
considered relevant and competent. Under no circumstances, may a party’s opinion,
earlier or current, relieve the decision maker of the burden of reaching his own
ultimate conclusion on the entire record.”). The USPTO’s allowance of Registrant’s
registration does not bind the Board in this appeal. See In re Nett Designs, Inc.,
236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Sunmarks Inc.,
32 USPQ2d 1470, 1472 (TTAB 1994) (“Section 20 of the Trademark Act, 15 U.S.C.
§ 1070, gives the Board the authority and duty to decide an appeal from an adverse
final decision of the Examining Attorney. This duty may not be delegated by adoption
of conclusions reached by Examining Attorneys on different records.”) (quoting In re
BankAmerica Corp., 231 USPQ 873, 876 (TTAB 1986)).
The fact that an applicant in an ex parte case is unaware of any instances of actual
confusion is generally entitled to little probative weight in the likelihood of confusion
analysis, inasmuch as the Board in such cases generally has no way to know whether
the registrant likewise is unaware of any instances of actual confusion, nor is it
usually possible to determine that there has been any significant opportunity for
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actual confusion to have occurred. See, e.g., Majestic Distilling, 65 USPQ2d at 1205;
In re Opus One Inc., 60 USPQ2d 1812, 1817 (TTAB 2001); In re Jeep Corp., 222 USPQ
333 (TTAB 1984); In re Barbizon Int’l, Inc., 217 USPQ 735 (TTAB 1983).
The Board has identified three factors in an ex parte setting that allows us to
assess the probative value of the absence of any actual confusion (i.e., (i) a long period
of marketing success; (ii) marketing expensive products and services; and (iii) no
reported instances of confusion.). In re Gen. Motors Corp., 23 USPQ2d 1465, 1470-71
(TTAB 1992). In this case, however, Applicant failed to provide any evidence of its
marketing success.
We find that the lack of any reported instances of confusion to be a neutral DuPont
factor.
F. Conclusion
Because the marks are similar, the services are related and are offered in
overlapping channels of trade to the same classes of consumers, we find that
Applicant’s mark COLUMN5 for “Business management and consultation;
Consultation services in the field of enterprise performance management, process
improvements, and organizational effectiveness” is likely to cause confusion with the
registered mark COLUMN FIVE for, inter alia, “Advertising and marketing
consultancy.”
Decision: The refusal to register is affirmed.