Jose M. Romaguera

Trademark Trial and Appeal Board

Apr 22, 2016

No. 85875816 (T.T.A.B. Apr. 22, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: April 22, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Jose M. Romaguera
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Serial No. 85875816
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Samuel F. Pamias, Esq. of Hoglund & Pamias, PSC
For Jose M. Romaguera.
Andrew Rhim, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
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Before Seeherman, Kuhlke and Shaw,
Administrative Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:
Jose M. Romaguera (“Applicant”), an individual, has appealed from the final
refusal of the Trademark Examining Attorney to register THE
ENTREPRENEURIAL SPARK in standard characters, with ENTREPRENEURIAL
disclaimed, for the following services:
Education services, namely, providing classes, seminars, workshops and
publication of books all in the fields of business development, business
management and business opportunities (Class 41).1

1 Application Serial No. 85875816, filed March 14, 2013, based on Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b) (intent-to-use). The application also includes goods in
Serial No. 85875816
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Registration has been refused pursuant to Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), in view of Registration No. 4487393 for SPARK, in standard
characters, for, inter alia, “higher education services, namely, providing professional
development, executive education, community conversations, and corporate learning
events, namely, seminars and conferences in the fields of business, technology,
religion, education, health care, psychology, and engineering.”2 It is the Examining
Attorney’s position that Applicant’s mark, if used for his goods and services, so
resembles the mark SPARK in the cited registration that it is likely to cause
confusion or mistake or to deceive.
We affirm the refusal to register.
Our determination of the issue of likelihood of confusion under Section 2(d) of the
Trademark Act is based on an analysis of all of the probative facts in evidence that
are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., Inc.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods and/or services. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). See also In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).

Class 16. However, the Examining Attorney has refused registration only with respect to
the services in Class 41.
2 Issued February 18, 2014. The registration also includes services in Classes 35 and 43,
but the refusal is not based on the registration for these services.
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Turning first to the factor of the similarity or dissimilarity of the services, the
services in the cited registration include providing “corporate learning events,
namely, seminars and conferences” in the field of business. Applicant’s education
services, which include “providing classes, seminars, workshops” in the fields of
business development, business management and business opportunities, are legally
identical; both involve providing seminars in the same field, since the more specific
“business development, business management and business opportunities” identified
in Applicant’s application are “in the field of business,” as described in the cited
registration. Applicant points out that the cited registration also includes “a variety
of higher education services, such as events in the nature of education, community
conversations and corporate learning events,” and that the conferences identified
“include several topics, such as business, technology, religion, education, health case
[sic], psychology and engineering.” Brief, 4 TTABVUE 17. However, this does not
affect the fact that Applicant’s and the Registrant’s services are, in part, legally
identical. The fact that some of the Registrant’s other services may reach a different
consumer from the potential consumer of Applicant’s services does not mean that the
legally identical services of Applicant and Registrant would not be directed to the
same consumers. On the contrary, because the services are in part legally identical,
and neither identification contains any restrictions, we must presume that the
services will travel in the same channels of trade and be offered to the same classes
of customers. See American Lebanese Syrian Assoc. Charities Inc. v. Child Health
Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011); see also In re Viterra Inc., 671
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F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on
this legal presumption in determining likelihood of confusion). These du Pont factors
favor a finding of likelihood of confusion.
We next consider the du Pont factor of the similarity or dissimilarity of the marks,
keeping in mind that when marks would appear on virtually identical goods or
services, as they do here, the degree of similarity necessary to support a conclusion of
likely confusion declines. Century 21 Real Estate Corp. v. Century Life of America,
970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). We compare the marks in their
entireties as to appearance, sound, connotation and commercial impression. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1692 (Fed. Cir. 2005). Applicant’s mark is THE
ENTREPRENEURIAL SPARK; the cited mark is SPARK. Obviously these marks are
similar to the extent that Applicant’s mark contains the word SPARK, which is the
entirety of the cited mark. Applicant’s mark does include the additional words THE
ENTREPRENEURIAL which, as Applicant points out, changes the number of words,
alphabetical characters, length and syllables in its mark from that of SPARK per se.
However, a slavish comparison of the marks, and the differences between them, is
not the proper analysis. “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, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted).
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The descriptive word “ENTREPRENEURIAL” in Applicant’s mark3 provides
additional information about the word SPARK, while as used in the mark the article
“THE” has no source-indicating significance. See In re Thor Tech Inc., 90 USPQ2d
1634, 1635 (TTAB 2009) (in marks WAVE and THE WAVE, “[t]he addition of the
word ‘The’ at the beginning of the registered mark does not have any trademark
significance”). These words merely serve to emphasize the word SPARK, which is the
dominant word in the mark. Therefore, although these words add to the length of the
mark and add additional sounds, they do not serve to distinguish Applicant’s mark
from the cited mark; the word SPARK still remains as a recognized word in
Applicant’s mark that is not subsumed into the rest of the phrase. As for connotation,
Applicant is correct that the word “spark” has several meanings, including “a small
particle of a burning substance thrown out by a body in combustion” or “the discharge
in a spark plug,”4 and that such meanings would not be applicable when the term is
used as part of the phrase THE ENTREPRENEURIAL SPARK. However, the word
“spark” also has the meaning, “anything that activates or stimulates; inspiration or
catalyst”;5 when this term is used, alone, in connection with the services identified in

3 Applicant has acknowledged the descriptiveness of this term by disclaiming it in response
to the Examining Attorney’s requirement; in any event, the evidence provided by the
Examining Attorney shows that this term is descriptive of education services in the fields of
“business development, business management and business opportunities.”
4 Applicant’s brief, 4 TTABVUE 14-15, based on definitions from Google Search submitted
with December 24, 2013 response, p. 20.
5 Dictionary.com Unabridged, based on the Random House Dictionary, © 2016). We take
judicial notice of this dictionary definition. University of Notre Dame du Lac v. J. C.
Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
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the cited registration, “higher education services, namely, providing professional
development, executive education, community conversations, and corporate learning
events, namely, seminars and conferences in the fields of business, technology,
religion, education, health care, psychology, and engineering,” the mark SPARK
conveys the same meaning to consumers as the word does in Applicant’s mark.
Therefore, the marks are similar in connotation with, again, Applicant’s mark simply
providing more information about the subject matter of what the SPARK inspires.
The cases cited by Applicant in which no likelihood of confusion was found despite
the presence of a common term are not applicable to the present situation. In those
cases, the added word changed the connotation of the marks, e.g., PEAK and PEAK
PERIOD, Colgate-Palmolive Co. v. Carter-Wallace, Inc., 432 F.2d 1400, 167 USPQ
529 (CCPA 1970); ALL and ALL CLEAR, Lever Brothers Co. v. Barcolene Co., 463
F.2d 1107, 174 USPQ 392 (CCPA 1972). In this case, the term SPARK has the same
meaning, of something that stimulates, in both marks. Overall, the commercial
impression of the marks is the same. Thus, we find that the du Pont factor of the
similarity of the marks favors a finding of likelihood of confusion.
In his brief Applicant contends that there are over 30 registered marks that
include the term SPARK for services in Class 41, and over 100 trademark
applications, and that “many of these trademark registrations identify ‘educational
services” in several fields.” 4 TTABVUE 18. Based on this assertion, Applicant claims
that SPARK is a term that is frequently used when describing educational services,
and that marks in Class 41 that identify such services can and do coexist. The
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problem with this argument is that Applicant did not make of record any such
registrations or applications, and therefore there is no support for his statement.6 We
also note that Applicant does not assert that multiple SPARK marks coexist for
educational services in the field of business, the services identified in Applicant’s
application and the cited registration. Thus, even if there were marks containing the
word SPARK for educational services in other fields, they would not necessarily limit
the scope of protection of the cited registration.7 Applicant has also pointed to other
third-party registrations, which are of record, for wines and alcoholic beverages to
show that certain registrations for such goods co-exist on the register, e.g., Reg. No.
2431506 for FORT SIMON for wines and Reg. No. 1507453 for DON SIMON for wines
and sangria. We are not privy to the records of these various registrations, and
therefore do not know whether there might have been a consent agreement involved,
or limitations as to the strength of the cited mark. Certainly we cannot extrapolate
from some registrations that issued for wine and alcoholic beverages that the very
similar marks at issue here, for identical educational services in the identical field,
can coexist without the likelihood of confusion. It is well-established that we must
assess each application on its own record. See In re Nett Designs Inc., 236 F.3d 1339,
57 USPQ2d 1564 (Fed. Cir. 2001).

6 Third-party applications, even if of record, would have probative value only to the extent
of showing that they were filed.
7 We note that Applicant has made his arguments regarding third-party marks in his
discussion of the du Pont factor of the services, but the arguments themselves go to the
strength of the cited mark.
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The foregoing are all the du Pont factors on which Applicant and the Examining
Attorney have submitted argument and evidence. To the extent that any other factors
are applicable, we treat them as neutral.
Having considered the entire record and arguments, we find that Applicant’s
mark, if used for the identified services in Class 41, is likely to cause confusion with
the mark which is the subject of the cited registration.
Decision: The refusal to register Applicant’s mark THE ENTREPRENEURIAL
SPARK for services in Class 41 is affirmed. Because there was no refusal with respect
to the goods in Class 16, the application for this class will proceed to publication in
due course.