Information Builders, Inc.v.DreamBox Learning, Inc.

Trademark Trial and Appeal Board

Sep 13, 2019

91233986 (T.T.A.B. Sep. 13, 2019)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: September 13, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
Information Builders, Inc.
v.
DreamBox Learning, Inc.
_______
Opposition No. 91233986
to Application Serial No. 87050163
_______
Ira E. Silfin of Mandelbaum Silfin Economou LLP for Information Builders, Inc.
Grace Han Stanton and Daniel Glenn of Perkins Coie LLP for DreamBox Learning,
Inc.
_______
Before Cataldo, Shaw and Dunn, Administrative Trademark Judges.
Opinion by Shaw, Administrative Trademark Judge:
DreamBox Learning, Inc. (“Applicant”) seeks registration of the mark1
ASSIGNFOCUS, in standard characters, for goods and services identified as:
Children’s educational software and computer game
software; educational software and computer game
software both featuring mathematics instruction and for
generating progress reports related thereto; computer

1 Application Serial No. 87050163, filed on April 25, 2016 under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), alleging a date of first use anywhere and in commerce of April 11,
2016.
Opposition No. 91233986
2
software for creating, customizing and assigning lessons,
homework and study topics, in International Class 9; and
Application service provider (ASP) featuring children’s
educational software and computer game software;
application service provider (ASP) featuring instructional
educational software and computer game software in the
field of mathematics and for generating progress reports
related thereto; online non-downloadable software for
creating, customizing and assigning lessons, homework
and study topics, in International Class 42.
Information Builders, Inc. (“Opposer”) opposes registration of Applicant’s mark on
the ground of priority and likelihood of confusion under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d). Opposer pleaded ownership of the following registered
marks:
Mark Reg. No. Goods
FOCUS 16522652 Computer programs for data base
management
FOCUS 2821942 3 Computer software for database management;
computer software for use in decision support
systems; computer software for use in enterprise
reporting and analysis systems and for building
applications for the management and tracking of
data for enterprise reporting systems; computer
database programs for use in connection with
decision support, analysis, and reporting
programs; computer software development tools
for use in developing decision support, analysis,
and reporting systems and applications; computer
software, namely, client/server reporting, analysis
and decision support tools; computerized
database, reporting, and analysis software for use
on corporate intranet web sites; enterprise server
software for use in web based data publishing,
reporting, and analysis solutions; computer
software for accessing databases by means of
global computer networks to generate reports;

2 Issued July 30, 1991; renewed.
3 Issued March 16, 2004; renewed.
Opposition No. 91233986
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Mark Reg. No. Goods
software development tools for making reporting
and analysis available through global computer
network worldwide websites and for extending the
functionality of enterprise reporting and analysis
systems on to global computer networks; and
computer software for accessing and updating
databases through global computer networks
WEBFOCUS 22485624 Computer programs for data base
management
WEBFOCUS 26852495 Computer software for, inter alia, database
management and generating reports

Applicant denied the salient allegations of the notice of opposition.6
I. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of the involved application. The case is fully briefed.
Opposer submitted the following evidence:
1. The testimonial declaration of Gerald D. Cohen, Opposer’s Chief Executive
Officer, with exhibits relating to Opposer’s FOCUS-formative marks; and
2. Opposer’s notice of reliance comprising status and title copies of its
trademark registrations and a listing of opposition and cancellation
proceedings relating to its FOCUS-formative marks.

4 Issued March 3, 1997; renewed.
5 Issued September 14, 1993; renewed.
6 4 TTABVUE. Applicant’s Answer also interposed three “affirmative defenses.” The first
affirmative defense, failure to state a claim, was not pursued in Applicant’s brief and is
therefore waived. See Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419,
1422 (TTAB 2014). The other two “affirmative defenses” are more in the nature of
amplifications of its denials and have been treated as such. See generally TRADEMARK TRIAL
AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 311.02(d) (June 2018).
Opposition No. 91233986
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Applicant submitted the following evidence:
1. The testimonial declaration of Nigel Green, Applicant’s Senior Vice
President of Personalization and Learning Innovation, with exhibits
relating to Applicant’s software;
2. Applicant’s first notice of reliance comprising excerpts from the Westlaw
Corporate Records & Business Registrations database for active businesses
incorporating the term FOCUS in their name; and
3. Applicant’s second notice of reliance comprising third-party registrations
and applications for FOCUS-formative marks for use with software;
internet evidence relating to use of the foregoing FOCUS-formative marks;
and internet evidence relating to use of other FOCUS-formative marks in
connection with software by third parties.
II. Preliminary Matters
Applicant moves to strike five of Opposer’s U.S. registrations for FOCUS-
formative marks, introduced via Opposer’s notice of reliance, on the ground that these
registrations were not pleaded in the notice of opposition.7 Applicant argues that “the
Unpled Registrations cannot form part of likelihood of confusion allegations.”8

7 Applicant’s Br., p. 4, 25 TTABVUE 10. The registrations are FOCUS FORECASTING (Reg.
Nos. 2223450 and 2223457), FOCUS (Reg. No. 2606298), OMNIFOCUS (Reg. No. 3755093),
WEBFOCUS MAGNIFY (Reg. No. 3831741), and PC/FOCUS (Reg. No. 1300245). Applicant
also moves to strike six cancelled registrations for FOCUS-formative marks, but we have not
considered these because cancelled registrations are evidence only that the registrations
issued. See Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601, 1606 (TTAB 2018).
8 Applicant’s Br., p. 4, 25 TTABVUE 10.
Opposition No. 91233986
5
Opposer admits that it did not plead the registrations in its notice of opposition but
argues that they were properly included in its trial evidence.9
Opposer may not use the unpleaded registrations as a basis for the opposition,
such as for purposes of removing priority as an issue in the case or for proving
standing. FUJIFILM SonoSite, Inc. v. Sonoscape Co., Ltd., 111 USPQ2d 1234, 1235
(TTAB 2014) (“[A] plaintiff cannot use an unpleaded registration as a basis for the
opposition”). However, Opposer may still use the unpleaded registrations to make its
case. The unpleaded registrations, made of record via a notice of reliance, “like third-
party registrations, may be considered for ‘whatever probative value’ [they] may lend
to opposer’s showing under the du Pont factors in its case in chief.” Id. (quoting Safer,
Inc. v. OMS Invests., Inc., 94 USPQ2d 1031, 1035 (TTAB 2010)). The motion to strike
is denied and we will consider the five unpleaded registrations for “whatever
probative value” they may have.
III. Standing and Priority
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015). Our primary
reviewing court, the U.S. Court of Appeals for the Federal Circuit, has enunciated a
liberal threshold for determining standing, namely that a plaintiff must demonstrate
that it possesses a “real interest” in a proceeding beyond that of a mere intermeddler,
and “a reasonable basis for his belief of damage.” Empresa Cubana Del Tabaco at

9 Opposer’s Reply Br., p. 1, 26 TTABVUE 5.
Opposition No. 91233986
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1062 (citing Ritchie v. Simpson, 170 F.3d 1902, 50 USPQ2d 1023, 1025-26 (Fed. Cir.
1999)). A “real interest” is a “direct and personal stake” in the outcome of the
proceeding. Ritchie v. Simpson, 50 USPQ2d at 1026.
In this case, Opposer made of record by notice of reliance copies of its pleaded
registrations for FOCUS-formative marks. In view thereof, Opposer has established
its standing. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1844 (Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982). In addition, priority is not an issue in the opposition as
to the marks and the goods covered by the pleaded registrations. See King Candy Co.
v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
IV. Likelihood of Confusion
Our determination of the issue is based on an analysis of all the probative facts in
evidence relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic Distilling Co., Inc.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the goods and the
similarities between the marks. 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.”).
Because Opposer’s FOCUS mark in Registration No. 2821942, and the goods
identified therein, are most similar to Applicant’s mark and its identified goods, we
Opposition No. 91233986
7
focus our likelihood of confusion analysis on this FOCUS mark. If we do not find a
likelihood of confusion with this registered mark and its goods, then there would be
no likelihood of confusion with the marks in the other registrations. See In re Max
Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
1. The strength of Opposer’s FOCUS mark, including the number of similar
marks in use in connection with similar services
We first analyze the strength of Opposer’s mark to determine the scope of
protection to which it is entitled. In determining the strength of a mark, we consider
both its inherent strength based on the nature of the mark itself and its commercial
strength, based on marketplace recognition of the mark. See In re Chippendales USA,
Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is
measured both by its conceptual strength (distinctiveness) and its marketplace
strength (secondary meaning).”); Top Tobacco, L.P. v. N. Atl. Operating Co., Inc., 101
USPQ2d 1163, 1171-72 (TTAB 2011) (the strength of a mark is determined by
assessing its inherent strength and its commercial strength); Tea Bd. of India v.
Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006); MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION § 11:83 (5th ed. 2019) (“The first enquiry
focuses on the inherent potential of the term at the time of its first use. The second
evaluates the actual customer recognition value of the mark at the time registration
is sought or at the time the mark is asserted in litigation to prevent another’s use.”).
Opposition No. 91233986
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A. Inherent strength
Opposer argues that “FOCUS is totally arbitrary as applied to IBI’s software.”10
Applicant does not argue otherwise. We find that FOCUS is an arbitrary term when
used in connection with computer database software because the mark consists of “a
known word used in an unexpected or uncommon way.” 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. Inc. v. Veuve
Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005) (arbitrary terms are conceptually strong trademarks).
B. Commercial strength
Commercial strength is the extent to which the relevant public recognizes a mark
as denoting a single source. Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d at
1899. In other words, it is analogous to acquired distinctiveness. For purposes of
analysis of likelihood of confusion, a mark’s renown “varies along a spectrum from
very strong to very weak.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC,
857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (internal quotations omitted).
Under the fifth du Pont factor, the “fame” of a mark plays a “dominant” role in the
du Pont analysis, as famous marks “enjoy a wide latitude of legal protection.” Recot,
Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); see also
Palm Bay Imps., 73 USPQ2d at 1694 (“[A] strong mark . . . casts a long shadow which

10 Opposer’s Br., p. 14, 24 TTABVUE 18.
Opposition No. 91233986
9
competitors must avoid.”). A famous mark is one that has “extensive public
recognition and renown.” Relevant factors include sales, advertising, length of use of
the mark, market share, brand awareness, licensing activities, and variety of goods
bearing the mark. Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1720 (Fed. Cir. 2012).
In contrast, the sixth du Pont factor requires us to consider the number and nature
of similar marks in use on similar goods or services. Du Pont, 177 USPQ at 567. In
this regard, the Federal Circuit has stated that evidence of the extensive registration
and use of a term by others can be “powerful” evidence of weakness. 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); Juice Generation, Inc. v. GS
Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015).
Opposer argues that its mark is famous: “By every criterion—sales, advertising,
and length of use—IBI’s mark is extremely famous in the marketplace for computer
software.”11 In support of its claim that its FOCUS mark is famous, Opposer points
to sales of FOCUS software since 1975; thirty million dollars in annual sales of
FOCUS software; two million dollars spent annually on advertising for FOCUS
software; numerous favorable products reviews in the press and elsewhere; long-
running training programs and support provided by Opposer; and multiple
registrations of FOCUS-formative marks.12

11 Opposer’s Br., p. 21, 24 TTABVUE 25.
12 Cohen Dec., 15 TTABVUE.
Opposition No. 91233986
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Although we have no context within which to put Opposer’s sales revenues and
advertising expenditures, we find they are nevertheless significant in absolute terms.
Similarly, Opposer’s long use of its mark, since 1975, weighs in favor of finding that
Opposer’s mark has significant commercial strength. The favorable press reviews are
less probative because they are somewhat dated, particularly in light of the rapidly
evolving nature of the software industry.13 But the fact that Opposer continues to sell
and support updated versions of its FOCUS software products suggests Opposer has
maintained an elevated degree of recognition. Considered as a whole, the evidence
establishes that a substantial number of software consumers have been exposed to
Opposer’s FOCUS mark in connection with Opposer’s software. This evidence
suggests that Opposer’s mark is commercially strong.
Applicant, however, argues “there is extensive evidence in the record that FOCUS
and FOCUS-formative marks are commonly used for various software offerings”14
and “the scope of protection afforded to IBI’s FOCUS mark should therefore be put
into a narrow context and the Board should find that the public will look to other
mark elements to distinguish the parties’ respective marks.”15
Applicant made of record a number of registrations comprising marks including
the term FOCUS for various types of software.16 Applicant also included internet
excerpts showing use in connection with some of the registered marks.17 We find that

13 See, e.g., Ex. 13 to Cohen Dec., 15 TTABVUE 365 (a 1993 excerpt from Crain’s New York
Business), and Ex. 29, 16 TTABVUE 43 (a 1991 promotional brochure produced by Opposer).
14 Applicant’s Br., p. 19, 25 TTABVUE 25.
15 Id. at 26.
16 Applicant’s second notice of reliance, Ex. 1; 22 TTABVUE 12-150.
17 Id., Ex. 3, 22 TTABVUE 172-264.
Opposition No. 91233986
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some of the third-party marks introduced by Applicant have little probative value
because they differ significantly from Opposer’s mark. For example, FOCUSED ON
INTEGRITY, FOCUSED FITNESS, FOCUSED ON PHOTOGRAPHY, AND FOCUX,
among others, have sufficiently different wording or connotation so as to makes them
dissimilar to Opposer’s mark.
In addition, many of the third-party marks are registered for goods that are
unrelated to Opposer’s goods. For example, CatFocus for catastrophe modeling
software, SMARTFOCUS for video software, NSFOCUS for network security
software, INFOCUS for multimedia device management, ROADFOCUS for lighting
control software, POWERFOCUS for game software, and FOCUS! also for game
software, are all used in connection with software that is unrelated to Opposer’s
database software. Cf. In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744,
1751 (Fed. Cir. 2017) (extensive use of similar marks by third parties for the same or
similar goods or services also is relevant to a mark’s commercial strength) (emphasis
added).
However, the following nineteen examples are relevant because they are most
similar in structure to Opposer’s mark and goods:
Mark Registration Goods or Services
MICRO FOCUS

1461698 Computer programs and program
instruction manuals supplied as a unit
SHARP FOCUS 1596157 Computer programs and instruction
manuals sold therewith, for use in health
care and physician referral services,
nurse information protocols, marketing
and patient satisfaction surveys, and
management of membership data
Opposition No. 91233986
12
Mark Registration Goods or Services
SubroFocus 3104059 Application service provider (ASP)
featuring software in the field of
insurance fraud technology, namely,
subrogation recovery opportunities
FlowFocus 3712733 Computer software for determining,
and optionally providing a method to
visually indicate, the logical flow of
operations for a user of a multimedia
player or multimedia recorder sold as an
integral component of computer software
that manages, controls and plays back
digital media files
SUPPLYFOCUS 3660283 Providing temporary use of online non-
downloadable computer programs that
record, analyze, assess, compare and
report data for the purpose of supply
chain information management
specifically designed for the healthcare
industry

4591168 Computer software and computer
programs, namely, compilers, assemblers,
visual development software, software
tools and utilities for use in creating,
modeling, monitoring, controlling,
administering and managing applications
and other programs and for providing
secure communications and data
exchange between programs and
computers in a distributed or networked
environment; program and application
development software, software tools and
utilities for use in designing, developing,
writing, tracking changes in and
implementing user-specific applications,
secure communications applications,
digital certificate implementation and
verification, and general purpose
applications programs . . . ; and
Design and development of computer
software for others . . . .
BENEFITFOCUS 4565511 Downloadable mobile application for
research of employee benefits, quotation
of rates and fees, comparison of benefits
Opposition No. 91233986
13
Mark Registration Goods or Services
and policies, purchase and enrollment in
benefits programs and electronic display
of information about enrolled benefits
Deep Focus 4740669 Downloadable mobile applications in
the fields of entertainment and marketing
for promoting consumer brands and
interacting with others by uploading,
downloading, and interacting with user-
generated content, and retrieving
information about businesses, products,
and services; and
Providing temporary use of mobile
applications for uploading, downloading,
and interacting with user-generated
content, and retrieving information about
businesses, products, and services in the
fields of entertainment, education,
marketing, advertising and promotion
ContentFocus 5197997 Online non-downloadable web-based
technology application system designed
for use in connecting cloud services for
seamless integration into web and mobile
applications, analyzing and integrating
cloud services, and providing content
distribution platforms
CORSEARCH FOCUS 5189395 Providing on-line non-downloadable
software for searching, viewing,
analyzing, managing, saving, tracking
and retrieving information related to
trademarks and trademark searches

In addition, Applicant included excerpts from eight internet web pages showing
use of FOCUS-formative marks by third parties in connection with software-related
goods and services.18 These excerpts reference software such as “FOCUS Compliance
Software” for use in connection with affordable housing compliance and monitoring,
“Focus School Software” for use in connection with the “information demands” of

18 Id., Ex. 4, 22 TTABVUE 265-311.
Opposition No. 91233986
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school districts, “Focus” software for use in connection with a variety of enterprise
applications, and “Focus Works” software for use in connection with food safety.
The above-listed FOCUS-formative marks are used in connection with software
that is, arguably, at least as closely related to Opposer’s software as Applicant’s. For
example, MICRO FOCUS is used in connection with “Computer programs and
program instruction manuals supplied as a unit,” SHARP FOCUS is used in
connection with software for “health care and physician referral services, nurse
information protocols, marketing and patient satisfaction surveys, and management
of membership data,” SUPPLYFOCUS is used in connection with “computer
programs that record, analyze assess, compare and report data for the purpose of
supply chain information management,” and BENEFITFOCUS is used in connection
with software for “research of employee benefits, quotation of rates and fees,
comparison of benefits and policies, purchase and enrollment in benefits programs.”
All of these software programs manipulate data and thus are likely to have the same
database driven functions found in both Opposer’s and Applicant’s software.
The third-party registrations and evidence of use suggest that the term FOCUS
is not as strong as Opposer argues and undercuts Opposer’s claim to fame. But taken
as a whole, the third party registrations and evidence of use fall short of the
“voluminous” evidence required to establish that FOCUS is so commonly used that
the public will look to other elements to distinguish the source of the goods or services.
Cf. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675,
1673 n.1 (Fed. Cir. 2015); Jack Wolfskin Ausrustung Fur Draussen GmbH & Co.
Opposition No. 91233986
15
KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1362, 116 USPQ2d 1129, 1136
(Fed. Cir. 2015 (discussing “voluminous evidence” of registration and use of paw print
design elements). See also Primrose Retirement Communities, LLC v. Edward Rose
Senior Living, LLC, 122 USPQ2d 1030 (TTAB 2016) (weakness found based on at
least 85 actual uses of ROSE-formative marks for similar services, eight similar
third-party registrations, expert testimony and other evidence regarding the common
nature of ROSE-formative marks in the industry, and testimony by opposer that it
did not vigorously enforce its mark). Here, unlike the plaintiff in Primrose Retirement
Communities, Opposer has shown that it actively enforces its rights in the FOCUS
marks, and has successfully curtailed the unauthorized use or registration of a
number of FOCUS-formative marks.19
In sum, the totality of the third-party evidence relating to the sixth du Pont factor
fails to show that Opposer’s FOCUS mark is commercially weak. As a result, the
evidence fails to show that the cited mark should be afforded such a narrow scope of
protection that it would weigh in favor of finding a likelihood of confusion. But it
rebuts Opposer’s claim that its FOCUS marks are famous and therefore very strong.
We accord Opposer’s mark a normal degree of strength, and thus a normal scope of
protection, as to its identified goods in the likelihood of confusion analysis. Cf. Joseph
Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733,
1735 (Fed. Cir. 2017) (per curiam) (fame in the Section 2(d) context is not an all-or-

19 Opposer’s notice of reliance, 19 TTABVUE 103-73.
Opposition No. 91233986
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nothing measure and a showing of some fame “warrants reasonable weight, among
the totality of the circumstances”). This factor is neutral.
2. The similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression
We next consider the marks, comparing them for similarities and dissimilarities
in appearance, sound, connotation and commercial impression. See Palm Bay Imps.,
73 USPQ2d at 1692. Similarity in any one of these elements is sufficient to support a
determination of likelihood of confusion. See Krim-Ko Corp. v. The Coca-Cola 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.”).
Applicant’s mark is ASSIGNFOCUS whereas Opposer’s mark is simply FOCUS.
Opposer argues that the ASSIGN portion of Applicant’s mark is descriptive because
Applicant’s software “allow[s] teachers to set assignments for students.”20 According
to Opposer, “[t]his leaves FOCUS as the primary portion of the DreamBox
trademark.”21 For its part, Applicant argues that its “ASSIGNFOCUS Mark is
distinguishable from IBI’s FOCUS mark in terms of sight, sound and meaning,
despite the shared FOCUS term.”22 Applicant points out that “the additional element
‘ASSIGN’ is important in setting DreamBox’s Mark apart visually from IBI’s FOCUS
Mark, particularly since it is the first term to appear in DreamBox’s Mark and thus
more likely to be noticed and remembered in the minds of consumers.”23

20 Green Dec., para. 9, 20 TTABVUE 5.
21 Opposer’s Br., p. 14, 24 TTABVUE 18.
22 Applicant’s Br., p. 16, 25 TTABVUE 22.
23 Id. at 17, 25 TTABVUE 23.
Opposition No. 91233986
17
The marks are similar to the extent that they share the term FOCUS, Opposer’s
entire mark. While there is no rule that likelihood of confusion automatically applies
where one mark encompasses another, in this case, as in many others, the fact that
Opposer’s entire mark is incorporated in Applicant’s mark increases the similarity
between the two. See, e.g., Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 194
USPQ 419, 422 (CCPA 1977) (finding CALIFORNIA CONCEPT marks substantially
similar to prior mark CONCEPT); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266,
1271 (TTAB 2009) (finding applicant’s mark VANTAGE TITAN confusingly similar
to registered mark TITAN); In re U.S. Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)
(finding applicant’s CAREER IMAGE marks similar to registered mark CREST
CAREER IMAGES).
We find that the term ASSIGN modifies the term FOCUS and therefore is
somewhat subordinate to it. In addition, ASSIGN does not change the meaning of the
term FOCUS. Thus, FOCUS is the dominant element of both marks and has the same
meaning or connotation in both marks. We agree with Applicant that the presence of
ASSIGN as the leading term in Applicant’s mark distinguishes it somewhat visually
and aurally from Opposer’s mark, however, this point of distinction does not
significantly diminish the strong similarities in connotation and overall commercial
impression of these two marks.
Opposer also points to its use of other FOCUS-formative marks such as
WEBFOCUS, WEBFOCUS MAGNIFY, FOCUS FORECASTING, OMNIFOCUS,
and PC/FOCUS to argue that it has used a family of marks and therefore consumers,
Opposition No. 91233986
18
upon seeing Applicant’s mark, “are likely to believe that IBI has added another
similar mark to its line.”24 A family of marks is “a group of marks having a
recognizable common characteristic, wherein the marks are composed and used in
such a way that the public associates not only the individual marks, but the common
characteristic of the family, with the trademark owner.” J & J Snack Foods Corp. v.
McDonald’s Corp., 932 F.2d 1460, 1462, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991). The
common element may be a term, a phrase, or a component in the nature of a prefix
or suffix.
Although the record shows that Opposer has used and registered marks such as
FOCUS, PC/FOCUS, FOCUS FORECASTING, and WEBFOCUS, and submitted
examples of its product literature, promotional flyers, website pages advertising, and
reviews, as discussed above, many of these materials are dated. These materials also
are few in number and do not show use of all or even a significant number of the
registered marks together. On this record, we cannot find that consumers who view
these materials will recognize that the single term FOCUS indicates a family,
particularly in light of the third-party use of FOCUS-formative marks. See Marion
Labs. Inc. v. Biochemical/Diagnostics Inc., 6 USPQ2d 1215, 1218-19 (TTAB 1988).
We find that the DuPont factor regarding the similarity of the marks weighs in
favor of a finding that confusion is likely.

24 Opposer’s Br., p. 15, 24 TTABVUE 19.
Opposition No. 91233986
19
3. The similarity or dissimilarity of the goods and services, trade channels, and
purchasers
We next consider the du Pont factors regarding the similarity or dissimilarity of
the parties’ respective goods and services, their channels of trade, and purchasers. It
is not necessary that the goods or services be identical or competitive, or even that
they move in the same channels of trade, to support a finding of likelihood of
confusion. Rather, it is sufficient that they are related in some manner, or that the
circumstances surrounding their marketing are such that they would or could be
encountered by the same persons in situations that would give rise, because of the
similarity of the marks, to a mistaken belief that they originate from the same source
or that there is an association or connection between the sources of the goods and
services. Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721; In re
Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009).
Opposer’s goods encompass a variety of computer software applications for
database management, and feature multiple reporting functions including “for use in
connection with decision support, analysis, and reporting programs,” “for use in web
based data publishing, reporting, and analysis solutions,” and “for accessing
databases by means of global computer networks to generate reports.” Applicant
provides educational software for teaching mathematics, generating progress reports,
and customizing and assigning lessons, homework and study topics.
The parties’ goods and services are related in part because they both include
software with data reporting functions. Opposer’s software is not limited to a
particular field and therefore can be used for data reporting in any field, including
Opposition No. 91233986
20
the educational field. Indeed, Opposer’s founder and CEO, Gerald Cohen, testified
that Opposer’s web version of its FOCUS software, WEBFOCUS, has been used by
several educational institutions such as Learning Circle Education Services,
Delaware County Community College, and Emory University.25 When we consider
the similarity of the parties’ goods and services, it is sufficient for a refusal based on
likelihood of confusion that relatedness is established for any item encompassed by
the identification of goods or 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).
As for the channels of trade and purchasers, Applicant argues that its
ASSIGNFOCUS Tool is a software feature that is wholly
incorporated within the larger DreamBox Learning
software platform that is specifically designed for use by
teachers in elementary and middle schools to customize
math lessons for kids. . . . Thus, DreamBox’s software
travels in a separate trade channel than IBI’s does, and to
wholly different end users (i.e., teachers versus university
administrators, senior management and financial
professionals).26
This argument is unpersuasive. Applicant’s identification of goods and services
contains no limitation as to channels of trade or purchasers. As stated by the Court
of Appeals for the Federal Circuit:
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 set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular

25 Cohen Dec., para. 6, 15 TTABVUE 4; Exh. 3, 4, and 6, 15 TTABVUE 77-83 and 86-89.
26 Applicant’s Br., p. 21, 25 TTABVUE 27.
Opposition No. 91233986
21
channels of trade or the class of purchasers to which the
sales of goods are directed.
Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990). Because the cited registration and application are unrestricted as to
trade channels and purchasers, we must presume that the software and services are
sold through all normal trade channels, including through the Internet to schools,
universities, or educators. See Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d
1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011). If, through these common trade
channels, purchasers were to encounter the parties’ goods and services under the
same or similar marks, it would not be unreasonable for them to assume, mistakenly,
that they originate from the same source.
We find these du Pont factors to favor a finding of likelihood of confusion as to the
parties’ goods and services.
4. Sophistication of purchasers
Applicant contends that the parties’ software is bought by sophisticated
purchasers, as evidenced by the nature and the expertise of their clientele. The
parties’ testimony indicates that the respective goods and services are sold or
marketed to institutions and organizations seeking to manage complex data
functions. For example, Gerald Cohen testified that “FOCUS is used by thousands of
the world’s leading corporations, institutions and government agencies”27 and “[t]he
target market for IBI’s FOCUS software is any organization that has the need to

27 Cohen Dec., para. 4, 15 TTABVUE 3.
Opposition No. 91233986
22
analyze data and make it available to decision makers.”28 Similarly, Nigel Green
testified that “the DreamBox Learning software product is primarily marketed and
sold to elementary schools and middle schools[.]”29 This testimony suggests that
consumers of the parties’ software are large institutions whose buyers would exercise
some degree of care in purchasing the software. This du Pont factor favors a finding
of no likelihood of confusion.
5. Absence of actual confusion
Under the seventh and eighth du Pont factors, we consider the nature and extent
of any actual confusion, in light of the length of time and conditions under which
there has been contemporaneous use of the parties’ subject marks. Du Pont, 177
USPQ at 567. Applicant argues the fact that the parties’ “two marks have peacefully
coexisted for several years without any known instances of actual consumer confusion
is persuasive evidence that there is no likelihood of confusion between the marks.”30
While the absence of actual confusion may weigh against a finding of likelihood of
confusion under appropriate circumstances, the absence of any reported instances of
confusion is meaningful only if the record indicates a reasonable opportunity for
confusion to have occurred. Barbara’s Bakery, Inc. v. Landesman, 82 USPQ2d 1283,
1287 (TTAB 2007). Here, the time within which confusion could have arisen is not
significant, as Applicant claims to have first used its mark in April, 2016. In any

28 Id. at para. 45, 15 TTABVUE 18.
29 Green Dec., para. 6, 20 TTABVUE 3.
30 Applicant’s Br., p. 28, 25 TTABVUE 34.
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23
event, the test under Section 2(d) of the Act is likelihood of confusion, not actual
confusion. This factor is neutral.
6. Conclusion
After considering all of the applicable du Pont factors, we find that Applicant’s
mark, ASSIGNFOCUS, for the identified educational software goods and services is
likely to cause confusion with Opposer’s mark, FOCUS for database software. We find
that the similarity of the marks, the similarity of the respective goods and services,
channels of trade and consumers, outweigh any presumed consumer sophistication.
See HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d,
Weiss Assocs., Inc. v. HRL Assocs., 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).

Decision: The opposition is sustained on the grounds of likelihood of confusion,
and registration of the mark is refused.