Foundation Institute for Neurological Diseases

Trademark Trial and Appeal Board

Dec 9, 2020

88273693 (T.T.A.B. Dec. 9, 2020)

Mailed: December 9, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Foundation Institute for Neurological Diseases
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Application Serial No. 88273693
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Glen L. Nuttall of Klein, O’Neill & Singh, LLP
for Foundation Institute for Neurological Disorders.

Joshua S. Toy, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
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Before Bergsman, Shaw and Pologeorgis, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

The Foundation Institute for Neurological Diseases (Applicant) seeks registration
on the Principal Register of the mark PERIMETER OF HOPE, in standard character
form, for the services listed below:
Charitable fundraising and financing research for finding
cures for neurological diseases; Accepting, administering
and distributing monetary charitable contributions to fund
and promote medical research, education, patient support
services and other activities relating to neurological
diseases; Charitable fundraising services by means of
organizing and conducting special events; Charitable
foundation services, namely, providing fundraising
activities, funding, scholarships and/or financial assistance
for patients having neurological diseases and their family
This Opinion Is Not a
Precedent of the TTAB
Precedent of the TTAB
PrePrecedent of the TTAB
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members; Charitable foundation services, namely,
providing financial support to patients having neurological
disorders for the purposes of relocation, financial planning
and legal planning; Charitable foundation services,
namely, providing financial support to family members of
patients having neurological disorders for pursuing
educational opportunities; Charitable services, namely,
providing financial assistance to meet the legal, relocation,
financial planning, and other special needs of patients
having neurological diseases; and Financial consulting
services in the field of dealing with a neurological disease,
in International Class 36.1
The Examining Attorney refused to register Applicant’s mark 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 PERIMETER INSTITUTE, in standard character
form, for, inter alia, “charitable fundraising services; charitable services, namely
granting funds to charitable organizations and awarding scholarships and financial
awards to students,” in International Class 36, as to be likely to cause confusion.2
Registrant disclaimed the exclusive right to use the word “Institute.”
We base our determination under Section 2(d) 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)

1 Serial No. 88273693 filed January 23, 2019, under Section 1(a) of the Trademark Act,
15 U.S.C. § 1051(a), based on Applicant’s July 31, 2016 claim of first use of the mark
anywhere and in commerce.
2 Registration No. 5093579 registered December 6, 2016. This is a multiple class registration
registered for activities in International Classes 35, 36, 37 and 41. A multiple-class
application may be viewed as a group of applications for registration of one mark in
connection with goods or services in particular classes, all combined into one application.
Generally, an applicant is in the same position that he or she would have been if they had
filed several single-class applications instead. G&W Labs., Inc. v. G W Pharma Ltd.,
89 USPQ2d 1571, 1574 (TTAB 2009). In this appeal, the Section 2(d) refusal involves only
the services in International Class 36.
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(“DuPont”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 113
USPQ2d 2045, 2049 (2015). See also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). “In discharging this duty, the thirteen DuPont
factors ‘must be considered’ ‘when [they] are of record.’” In re Guild Mortg. Co., 912
F.3d 1376, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests. Inc.,
105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)) and DuPont, 177 USPQ at
567. “Not all of the DuPont factors are relevant to every case, and only factors of
significance to the particular mark need be considered.” Cai v. Diamond Hong, Inc.,
901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018), (quoting In re Mighty Leaf
Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)). See also 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.”).
“Each 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 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 [or services] and
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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 [or services].’”)
(quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375,
1380 (Fed. Cir. 2002)).
I. The similarity or dissimilarity and nature of the services.
In determining whether the services are related, we must consider the services as
Applicant and Registrant described them 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, Inc. v. Houston Comput. Servs. Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the
question of registrability of an applicant’s mark must be decided on the basis of the
identification of goods [or services] set forth in the application regardless of what the
record may reveal as to the particular nature of an applicant’s goods [or services], the
particular channels of trade or the class of purchasers to which the sales of goods [or
services] are directed.”); Paula Payne Prods. v. Johnson Publ’g Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective descriptions of goods [or
services]”).
We do not read limitations into the description of services of services.
i.am.symbolic, 123 USPQ2d at 1748; Squirtco v. Tomy Corp., 697 F.2d 1038, 216
USPQ 937, 940 (Fed. Cir. 1983) (“There is no specific limitation and nothing in the
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inherent nature of Squirtco’s mark or goods that restricts the usage of SQUIRT for
balloons to promotion of soft drinks. The Board, thus, improperly read limitations
into the registration”); In re Thor Tech Inc., 90 USPQ2d 1634, 1638 (TTAB 2009) (“We
have no authority to read any restrictions or limitations into the registrant’s
description of goods.”). Therefore, we may not look to extrinsic evidence about
Applicant’s or Registrant’s actual services, customers, or channels of trade. See
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987) (quoting CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ
198, 199 (Fed. Cir. 1983)); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981) (citing
Kalart Co., Inc. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958)).
The description of services in the cited registration is “charitable fundraising
services; charitable services, namely granting funds to charitable organizations and
awarding scholarships and financial awards to students.” The description of services
in the application at issue include “charitable fundraising services by means of
organizing and conducting special events” and “charitable foundation services,
namely, providing fundraising activities, funding, scholarships and/or financial
assistance for patients having neurological diseases and their family members.”3

3 Applicant’s description of services has an extensive list of activities separated by semicolons.
Applicants use semicolons to separate distinct categories of services within a single class. 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).
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Registrant’s “charitable fundraising services” encompasses Applicant’s
“charitable fundraising services by means of organizing and conducting special
events.” Likewise, Registrant’s “charitable services, namely granting funds to
charitable organizations and awarding scholarships and financial awards to
students” encompasses Applicant’s “charitable foundation services, namely,
providing fundraising activities, funding, scholarships and/or financial assistance for
patients having neurological diseases and their family members.” Where services are
broadly identified in an application or registration, “we must presume that the
services encompass all services of the type identified.” Sw. Mgmt., Inc. v. Ocinomled,
Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015) (where the services in an application or
registration are broadly described, they are deemed to encompass all the goods of the
nature and type described therein), quoted in In re Country Oven, Inc., 2019 USPQ2d
443903, * 4 (TTAB 2019) and cited in In re AC Webconnecting Holding B.V., 2020
USPQ2d 11048, *11-12 (TTAB 2020).
Accordingly, Applicant’s identified services are in part legally identical to
Registrant’s listed services. 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 we find
any item encompassed by the description of services in a particular class in the
application and registration related. 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
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re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (“[I]t 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.”).
Applicant, in its brief and reply brief, does not contest that the services are related.
Thus, this factor weighs heavily in favor of a finding of likelihood of confusion.
II. Established, likely-to-continue channels of trade and classes of
consumers.
Because the services described in the application and the cited registration are in
part legally identical, we presume that the channels of trade and classes of
purchasers are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012) (identical goods are presumed to travel in same channels of
trade to same class of purchasers) (cited in Cai, 127 USPQ2d at 1801 (“With respect
to similarity of the established trade channels through which the goods reach
customers, the TTAB properly followed our case law and ‘presume[d] that the
identical goods move in the same channels of trade and are available to the same
classes of customers for such goods….’”); In re Inn at St. John’s, LLC, 126 USPQ2d
1742, 1745 (TTAB 2018), aff’d mem. (No. 18-2236) (Fed. Cir. September 13, 2019)
(“Because the services described in the application and the cited registration are
identical, we presume that the channels of trade and classes of purchasers are the
same.”).
Accordingly, the third DuPont factor also weighs in favor of a finding of likelihood
of confusion.
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III. The number and nature of similar marks in use in connection with
similar services.
Applicant contends that its evidence of third-party use of the word “Perimeter” as
a part of marks used in connection with charitable fundraising services “establishes
that at least the PERIMETER portion of the registered mark [PERIMETER
INSTITUTE] is weak and diluted and entitled to only a narrow scope of protection in
connection with charitable fundraising services and other charitable services.”4
To support its contention, Applicant submitted the evidence listed below:5
● Perimeter Association (centralparknyc.org)
The Perimeter Association is a program of the Women’s
Committee that provides funding for the improvement and
maintenance of Central Park’s six-mile perimeter which
runs from the Park’s wall to the street curb. Over 100
residential buildings, clubs, and community organizations
around the park contribute to support this effort.6
● “Perimeter Bicycling Association of America Inc. is a membership supported
501(c)(3) organization. Our mission is to support charities, community health and
wellness by producing bicycling events. … Since 1983 more than 100 local, national
and international non-profit charities have raised over $100 million for their own

4 Applicant’s Brief, p. 6 (6 TTABVUE 7).
5 Applicant’s May 6, 2020 Request for Reconsideration (TSDR 11-44). Citations to the
examination record refer to the USPTO’s Trademark Status and Document Retrieval system
(TSDR), by page number, in the downloadable .pdf format.
We do not include the Perimeter School (perimeterschool.org) (TSDR 24-29) because that
organization is using the COVENANT FUND for its fundraising activities. See TSDR 24 (“We
invite you to invest in the Covenant Fund to make a significant impact in the lives of our
covenant community.”). In addition, we do not consider PERIMETER CHURCH
(perimeter.org) (TSDR 30-32) because the webpages Applicant submitted show that entity
raising money for its own operations rather than fundraising for others.
6 Id. at TSDR 11.
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organizations. Perimeter Bicycling Members support this goal by participating in our
events.” (eltourdetucson.org).7
● PERIMETER COLLEGE DEVELOPMENT at Georgia State University
(perimeter.gsu.edu) is the fundraising arm of Perimeter College to fund scholarships.8
● PERIMETER CARES (perimetercares.org) raised money to fund school lunches,
school supplies and clothing.9
● PERIMETER FAMILY FOUNDATION (charitynavigator.org) is a philanthropic
charitable organization.10
● PERIMETER MEDIA AND CULTURE PROJECTS INCORPORATED
(charitynavigator.org) is a charitable organization dedicated to the arts, culture and
humanities.11
The Court of Appeals for the Federal Circuit has explained that “evidence of third-
party use bears on the strength or weakness of an opposer’s mark.” Juice Generation,
Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). “The
weaker an opposer’s mark [or a registrant’s mark], the closer an applicant’s mark can
come without causing a likelihood of confusion and thereby invading what amounts
to its comparatively narrower range of protection.” Id. See also Palm Bay Imps., Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d

7 Id. at TSDR 16.
8 Id. at TSDR 23.
9 Id. at TSDR 33-38.
10 Id. at TSDR 39-41.
11 Id. at TSDR 42-44.
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1689, 1693 (Fed. Cir. 2005) (“Evidence of third-party use of similar marks on similar
goods is relevant to show that a mark is relatively weak and entitled to only a narrow
scope of protection.”); In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063
(Fed. Cir. 2003) (third-party use can establish that mark is not strong).
The six third-party webpages showing use of the word “Perimeter” used as a part
of a mark in connection with charitable fundraising services falls short of the
“ubiquitous” or “considerable” use of the mark components in Juice Generation,
115 USPQ2d at 1671 (uncontradicted testimony of a “considerable number” of third-
party uses of similar marks, along with third-party registrations) or Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U.,
797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (“extensive” evidence, of not
only third-party registrations, but also “of these marks being used in the internet
commerce” for the relevant goods).12 On this record, Registrant’s mark is not so weak
as to be afforded such a limited scope of protection as Applicant seeks. Accordingly,
the number and nature of similar marks in use in connection with charitable
fundraising services is a neutral factor.
Nevertheless, we note that Registrant’s mark PERIMETER INSTITUTE is an
inherently strong mark. Merriam-Webster.com defines the word “Perimeter, inter
alia, as “the boundary of a closed plane figure,” “a line or strip bounding or protecting

12 In Juice Generation, there were at least 26 relevant third-party uses or registrations in the
record. See 115 USPQ2d at 1672 n.1, and, in Jack Wolfskin, there were at least 14.
116 USPQ2d at 1136 n.2.
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an area,” and “outer limits.”13 In addition, it defines the word “Institute,” inter alia,
as “an organization for the promotion of a cause: Association” and “an educational
institution especially one devoted to technical fields.”14 Since Registrant’s description
of services includes “granting funds to charitable organizations and awarding
scholarships and financial awards to students,” PERIMETER INSTITUTE conjures
up the commercial impression of educational or associational boundaries or outer
limits. Thus, we find that PERIMETER INSTITUTE, when viewed in its entirety, is
an arbitrary mark that is inherently or conceptually strong. See Nautilus Grp., Inc.
v. Icon Health & Fitness, Inc., 372 F.3d 1330, 71 USPQ2d 1173 (Fed. Cir. 2004)
(defining an arbitrary mark as a “known word used in an unexpected or uncommon
way” and observing that such marks are typically strong). See also Palm Bay Imps.,
73 USPQ2d at 1692 (arbitrary terms are conceptually strong trademarks).
IV. The similarity or dissimilarity of the marks.
We now turn to the DuPont 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 Inn at St. John’s, LLC, 126
USPQ2d at 1746 (quoting 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

13 Applicant’s May 6, 2020 Request for Reconsideration (TSDR 54).
14 Id. at 55.
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1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely
to cause confusion.”) (citation omitted).
In comparing the marks, we are mindful that where, as here, the services are in
part legally identical, 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.
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721
(Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
“The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Cai, 127 USPQ2d at 1801 (quoting Coach Servs., 101 USPQ2d
at 1721). See also Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685
F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); San Fernando Elec. Mfg. Co. v.
JFD Elec. Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977).
Applicant is seeking to register PERIMETER OF HOPE and the registered mark
is PERIMETER INSTITUTE. The marks are similar in appearance and sound
because they share “Perimeter” as the first word in the marks. As we often have said,
the lead element in a mark has a position of prominence; it is likely to be noticed and
remembered by consumers and play a dominant role in the mark. See In re Detroit
Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the
identity of the marks’ two initial words is particularly significant because consumers
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typically notice those words first”); Palm Bay Imps., 73 USPQ2d at 1692 (“Veuve” is
the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first
word in the mark and the first word to appear on the label); Century 21 Real Estate,
23 USPQ2d at 1700 (upon encountering the marks, consumers will first notice the
identical lead word).
The marks also engender similar, albeit not identical, commercial impressions. As
discussed above the registered mark PERIMETER INSTITUTE engenders the
commercial impression of educational or associational boundaries or outer limits.
PERIMETER OF HOPE engenders the commercial impression of the limits of
expectations. As consumers view the marks in their entireties, they are likely to
perceive Applicant’s PERIMETER OF HOPE as a variation or otherwise related to
Registrant’s PERIMETER INSTITUTE.
We find Applicant’s mark PERIMETER OF HOPE is more similar than dissimilar
to Registrant’s mark PERIMETER INSTITUTE.
Therefore, the first DuPont factor also favors a finding of likelihood of confusion.
V. Conclusion
Because the marks are similar, the services are in part legally identical, and we
presume the services are offered in the same channels of trade to the same classes of
consumers, we find Applicant’s mark PERIMETER OF HOPE for, inter alia,
“charitable fundraising services by means of organizing and conducting special
events; charitable foundation services, namely, providing fundraising activities,
funding, scholarships and/or financial assistance for patients having neurological
diseases and their family members” is likely to cause confusion with the registered
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mark PERIMETER INSTITUTE for “charitable fundraising services; charitable
services, namely granting funds to charitable organizations and awarding
scholarships and financial awards to students.”
Decision: The refusal to register Applicant’s mark PERIMETER OF HOPE under
Section 2(d) of the Trademark Act is affirmed.