Jeffrey Rutgard

Trademark Trial and Appeal Board

Feb 8, 2017

No. 86566847 (T.T.A.B. Feb. 8, 2017)

THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB

Mailed: February 8, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
________

In re Rutgard
________

Serial No. 86566847
_______

Travis D. Wilson, Esq.
for Jeffrey Rutgard.

Marcie R. Frum Milone, Trademark Examining Attorney, Law Office 116,
Christine Cooper, Managing Attorney.
_______

Before Quinn, Shaw, and Hightower,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
Jeffrey Rutgard (“Applicant”) filed an application to register on the Principal
Register the mark ISIGHT4ALL (in standard characters) for “charitable services,
namely, providing health care services in the nature of ophthalmologic services to
disadvantaged and underserved individuals” in International Class 44.1
The Trademark 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, when

1 Application Serial No. 86566847, filed March 17, 2015 pursuant to Section 1(a) of the
Trademark Act, 15 U.S.C. § 1(a), alleging first use anywhere and first use in commerce on
November 22, 2013.
Application Serial No. 86566847

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used in connection with Applicant’s services, so resembles the previously registered
mark for the identified services shown below as to be likely to cause confusion.

Provision of training in respect of blindness prevention,
blindness treatment, eye disease and eye health care;
educational services, namely, providing classes, seminars,
workshops, and medical and surgical training on site, and
fellowship training in the field of blindness prevention,
blindness treatment, eye disease and eye health care;
arranging and conducting educational conferences,
seminars and courses in the field of blindness prevention,
blindness treatment, eye disease and eye health care (in
International Class 41);

Medical and scientific research services in respect of
blindness prevention, blindness treatment, eye disease and
eye health care (in International Class 42); and

Provision of medical services and medical treatment
services for indigenous communities; providing
information about medical services, namely, providing
information in relation to eye health services, prevention
of blindness and raising awareness of eye health (in
International Class 44).2

2 Registration No. 4545732, issued June 10, 2014. The following statements appear in the
registration: “The mark consists of the stylized wording ‘SIGHT FOR ALL A SHARED
VISION’ in black, with a design of two intersecting yellow circles appearing above the
wording. The color(s) yellow and black is/are claimed as a feature of the mark.”
Application Serial No. 86566847

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When the refusal was made final, Applicant appealed.3 Applicant and the
Examining Attorney filed briefs.
Applicant argues that the marks, when considered in their entireties, are
different. Applicant also contends that the services are different, and that the
Examining Attorney’s contrary conclusion is based on generalized language. Further,
according to Applicant, the relevant purchasers are sophisticated, and there has been
no actual confusion between the marks.
The Examining Attorney maintains that the marks are similar, with both sharing
the word SIGHT and the phonetically identical wording FOR ALL and 4ALL. Also,
the Examining Attorney asserts that the services overlap, as well as the intended
audience therefor, namely, those who cannot afford or would otherwise not have
access to the eye health care of the types rendered by Applicant and Registrant. The
Examining Attorney submitted screenshots of Registrant’s website.
Our determination under Section 2(d) is based on an analysis of all of the 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 (CCPA 1973). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the similarities between the services. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).

3 Shortly before the appeal was filed, Applicant revoked the power of attorney for Matthew
H. Swyers as counsel of record. Current counsel entered an appearance upon his filing of the
appeal brief. TBMP § 114.03 (Jan. 2017).
Application Serial No. 86566847

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As to the second du Pont factor regarding the similarity of the services, the
services do not have to be identical or even competitive for confusion to be likely.
“[L]ikelihood of confusion can be found ‘if the respective [services] are related in some
manner and/or if the circumstances surrounding their marketing are such that they
could give rise to the mistaken belief that they emanate from the same source.’” Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed.
Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).
“The [services] need only be sufficiently related that consumers would be likely to
assume, upon encountering the [services] under similar marks, that the [services]
originate from, are sponsored or authorized by, or are otherwise connected to the
same source.” In re Davia, 110 USPQ2d 1810, 1815 (TTAB 2014) (citing Coach). The
issue here, of course, is not whether purchasers would confuse the services, but rather
whether there is a likelihood of confusion as to the source of these services. L’Oreal
S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830
(TTAB 1984).
In comparing the services, we must look to the services as 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, 1162 (Fed. Cir. 2014) (quoting
Octocom Sys., Inc. v. Houston Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990)); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011).
Applicant’s recitation of services reads “charitable services, namely, providing health
care services in the nature of ophthalmologic services to disadvantaged and
Application Serial No. 86566847

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underserved individuals”; Registrant’s services include, in relevant part, “provision
of medical services and medical treatment services for indigenous communities;
providing information about medical services, namely, providing information in
relation to eye health services, prevention of blindness and raising awareness of eye
health; and medical and scientific research services in respect of blindness
prevention, blindness treatment, eye disease and eye health care.”
We find that the services are essentially identical in certain aspects, and
otherwise are highly similar eye health care services. Both Applicant and Registrant
provide medical services featuring eye care to underserved populations, which may
include indigenous communities as specified in Registrant’s recitation of services.
While both Applicant and Registrant’s services may be charitable in nature, the
services are, as identified, medical health care services. Registrant’s mission is to
“empower communities to deliver comprehensive, evidence-based, high-quality eye
health care through the provision of research, education and equipment.” (Dec. 29,
2015 Office Action, p. 11). Registrant’s website touts that it annually provides 10,000
hours of donated time by eye care specialists for sight-saving activities. (Dec. 29, 2015
Office Action, p. 7). Registrant’s website also indicates the following:
Sight For All raises funds to deliver eye health care
projects free of charge to our partner countries and
communities.

Fifteen years ago three South Australian ophthalmologists
… whilst volunteering on sight-saving projects in Asia, saw
a gap in the provision of eye health services in our
neighbouring developing countries

Application Serial No. 86566847

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This gap spawned the seed of an idea that doctors could
offer something unique to improve the sight of tens of
thousands. By working with their foreign colleagues, areas
of need were identified, and by providing sub-specialty
education and equipping eye clinics, a sustainable sight-
saving model was born. This model became the basis of
Sight For All.
(Dec. 29, 2015 Office Action, p. 10)

Thus, Registrant renders the same type of services offered by Applicant, namely
medical eye care services to underserved populations. To that extent, the services are
identical and, with respect to Registrant’s additional eye health services, they are
otherwise related to Applicant’s eye health services.
Given the legal identity of the services in part, we presume that these services
travel through the same channels of trade to the same classes of customers, including
all usual channels of trade (e.g., eye care clinics), and all normal potential purchasers
for such services, including in this case, ordinary consumers, albeit disadvantaged
ones, who seek eye care. See In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ
721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade
and classes of purchasers are considered to be the same); American Lebanese Syrian
Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028
(TTAB 2011); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994). See also
In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even
though there was no evidence regarding channels of trade and classes of consumers,
the Board was entitled to rely on this legal presumption in determining likelihood of
confusion).
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The legal identity in part between Applicant’s services and Registrant’s services,
the presumed identical trade channels, and the presumed overlap in purchasers are
du Pont factors that weigh heavily in favor of a finding of likelihood of confusion.
With respect to the first du Pont factor dealing with the similarity of the marks,
we must compare Applicant’s mark ISIGHT4ALL with the registered mark SIGHT
FOR ALL A SHARED VISION and design in their entireties as to appearance, sound,
connotation and commercial impression. Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005) (quoting du Pont, 177 USPQ at 567. “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.” Coach Servs., Inc. v.
Triumph Learning LLC, 101 USPQ2d at 1721 (citation omitted).
In comparing the marks, we are mindful that where, as here, the services are
identical in part, the degree of similarity between the marks 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, 101 USPQ2d at
1721; Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992); United Global Media Grp., Inc. v. Tseng, 112
USPQ2d 1039, 1049 (TTAB 2014); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104,
1108 (TTAB 2007).
Application Serial No. 86566847

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Although marks must be considered in their entireties, it is settled that one
feature of a mark may be more significant than another, and it is not improper to give
more weight to this dominant feature in determining the commercial impression
created by the mark. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985) (“There is nothing improper in stating that, for rational reasons, more
or less weight has been given to a particular feature of a mark, provided the ultimate
conclusion rests on consideration of the marks in their entireties. Indeed, this type of
analysis appears to be unavoidable.”).
In general, when wording and a design comprise the mark, as in the case of
Registrant’s mark, then the wording is normally accorded greater weight because the
wording is likely to make an impression upon purchasers, would be remembered by
them, and would be used by them to request the services. CBS, Inc. v. Morrow, 708
F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983) (“in a composite mark comprising a
design and words, the verbal portion of the mark is the one most likely to indicate the
origin of the goods to which it is affixed”); Joel Gott Wines LLC v. Rehoboth Von Gott
Inc., 107 USPQ2d 1424, 1430-31 (TTAB 2013); In re Appetito Provisions Co., 3
USPQ2d 1553, 1554 (TTAB 1987). See also Giant Food, Inc. v. Nation’s Food Serv.,
Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). The design in Registrant’s mark
is not capable of being spoken, and consumers would focus on the literal portion of
the mark, SIGHT FOR ALL A SHARED VISION.
Further, the wording SIGHT FOR ALL appears in thicker, bold font than does A
SHARED VISION, and the words SIGHT FOR ALL comprise the first portion of the
Application Serial No. 86566847

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literal feature of the mark, appearing above the subordinate words A SHARED
VISION. Thus, the literal portion of Registrant’s mark is dominated by the words
SIGHT FOR ALL. See Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895,
1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be
impressed upon the mind of a purchaser and remembered”).
In view of the above, we find that Registrant’s mark is dominated by the wording,
SIGHT FOR ALL A SHARED VISION, which in turn is dominated by SIGHT FOR
ALL. This dominant literal portion of the cited mark is similar to the entirety of
Applicant’s mark ISIGHT4ALL.
Although we have pointed to the dominant portion of Registrant’s mark, we
acknowledge the fundamental rule in this situation that the marks must be
considered in their entireties. See Jack Wolfskin Ausrustung Fur Draussen GmbH &
Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1134
(Fed. Cir. 2015). We find that the marks as a whole are similar in sound, with
Applicant’s mark vocalized as “Eye Sight For All” and Registrant’s mark as “Sight
For All A Shared Vision.”
As to appearance, the telescoped nature of Applicant’s mark and the additional
wording and design feature of Registrant’s mark give the marks a different look.
Both marks are suggestive and convey the same idea, namely that the goal or
purpose of the services is to provide eye sight for all people. Notwithstanding this
suggestiveness, the record is devoid of any third-party registrations or uses of similar
marks for the types of services involved in this appeal to establish that the cited mark
Application Serial No. 86566847

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is weak. Cf. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. v. Millennium
Sports, S.L.U., 116 USPQ2d at 1136; Juice Generation, Inc. v. GS Enters. LLC, 794
F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015) (evidence of the extensive
registration and use of similar marks by others can be “powerful” evidence of a mark’s
weakness).
The similarities in sound and meaning outweigh the differences in appearance,
thereby giving the marks similar overall commercial impressions. Accordingly, we
find that the marks, when considered in their entireties, are similar. This du Pont
factor weighs in favor of a finding of likelihood of confusion.
As to conditions of sale, Applicant claims that customers for Applicant’s and
Registrant’s respective services are sophisticated buyers who exercise discrimination
when “purchasing” the types of services involved herein: “Due diligence will be
undertaken prior to making an investment to determine that the time, money and
physical effort spent satisfies one’s sense of community, charity and altruism.” (5
TTABVUE 17). Applicant appears to categorize its services strictly as charitable
services, but the services fundamentally are medical health care services. In any
event, Applicant did not introduce any evidence regarding the degree of care exercised
by relevant consumers. Even assuming that Applicant’s and Registrant’s services
may involve a somewhat more thoughtful purchase because the services involve
charitable medical care, it is settled that even careful purchasers are not immune
from source confusion, especially in cases such as the instant one involving similar
marks and related services. See In re Research Trading Corp., 793 F.2d 1276, 230
Application Serial No. 86566847

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USPQ 49, 50 (Fed. Cir. 1986) (citing Carlisle Chemical Works, Inc. v. Hardman &
Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories
even of discriminating purchasers...are not infallible.”)). See also In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993); In re Decombe, 9 USPQ2d
1812 (TTAB 1988). We find that the similarity between the marks and the identity
or close similarity of the services rendered thereunder outweigh any purported
sophisticated purchasing decision. See HRL Associates, Inc. v. Weiss Associates, Inc.,
12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL Associates, Inc.,
902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks
outweigh sophisticated purchasers, careful purchasing decision, and expensive
goods). See also Stone Lion Capital Partners, LP v. Lion Capital LLP, 110 USPQ2d
at 1162-63. This du Pont factor is neutral.
Applicant asserts that he is unaware of any actual confusion between the marks.
It is not necessary, however, to show actual confusion in order to establish likelihood
of confusion. See Weiss Associates Inc. v. HRL Associates Inc., 14 USPQ2d at 1842-43.
Applicant’s assertion, particularly in this ex parte proceeding, is entitled to little
weight. See In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205
(Fed. Cir. 2003) (“uncorroborated statements of no known instances of actual
confusion are of little evidentiary value”). See also In re Bisset-Berman Corp., 476
F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (stating that testimony of applicant’s
corporate president’s unawareness of instances of actual confusion was not conclusive
that actual confusion did not exist or that there was no likelihood of confusion); In re
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Binion, 93 USPQ2d 1531, 1536 (TTAB 2009); In re 1st USA Realty Professionals Inc.,
84 USPQ2d 1581, 1588 (TTAB 2007); In re Kangaroos U.S.A., 223 USPQ 1025, 1026-
27 (TTAB 1984). In any event, the record is devoid of evidence relating to the extent
of use of Applicant’s and Registrant’s marks that would enable us to determine
whether there have been meaningful opportunities for instances of actual confusion
to have occurred in the marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000). Accordingly, the du Pont factor of the
length of time during and conditions under which there has been contemporaneous
use of the marks without evidence of actual confusion is considered neutral.
We conclude that consumers familiar with Registrant’s “medical services and
medical treatment services for indigenous communities; providing information about
medical services, namely, providing information in relation to eye health services,
prevention of blindness and raising awareness of eye health” rendered under the
mark SIGHT FOR ALL A SHARED VISION and design would be likely to believe,
upon encountering Applicant’s “charitable services, namely, providing health care
services in the nature of ophthalmologic services to disadvantaged and underserved
individuals” rendered under the mark ISIGHT4ALL, that the services originated
with or are somehow associated with or sponsored by the same entity.
Decision: The refusal to register is affirmed.