Legion of Good Will aka LGW

Trademark Trial and Appeal Board

Aug 10, 2018

No. 87164803 (T.T.A.B. Aug. 10, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 10, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Legion of Good Will aka LGW
_____
Serial No. 87164803
_____
Phillip Thomas Horton of the Law Office of Philip Thomas Horton
for Legion of Good Will aka LGW.

Jonathon Schlegelmilch, Trademark Examining Attorney, Law Office 108,
Steven R. Berk, Managing Attorney.1
_____
Before Cataldo, Wolfson and Hightower,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
Applicant, Legion of Good Will aka LGW, seeks registration on the Principal
Register of the mark LEGION OF GOOD WILL, in standard characters, identifying
the following services:

1 This application was previously assigned to Trademark Examining Attorney Natalie Polzer
during examination and was reassigned to Jonathon Schlegelmilch for preparation of the
brief on appeal.
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Charitable services, namely, organizing and developing projects that aim to
improve the lives of underprivileged and impoverished people, in International
Class 35; and

Education services in the nature of early childhood instruction, in
International Class 41.2

The Examining Attorney has finally refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with eight
registered marks issued to Goodwill Industries International Inc. on the Principal
Register for various formatives of GOODWILL, alone and with other wording and
designs, identifying a variety of goods and services, notably, Registration No. 5010715
for the mark GOODWILL (in standard characters) identifying numerous goods and
services including the following:
Charitable services, namely, accepting charitable donations of a wide variety
of goods for resale to the public, for purposes of providing education, training,
career, and other personal opportunities and services to benefit people with
disabilities and disadvantaging conditions;

Charitable services, namely, organizing and conducting volunteer programs,
in International Class 35; and

Child and adult day care services, in International Class 43.3

The Examining Attorney further refused registration under Sections 1 and 45 of
the Trademark Act, 15 U.S.C. § 1051 and § 1127 on the ground that Applicant failed

2 Application Serial No. 87164803 was filed September 8, 2016, alleging January 20, 2009
and October 30, 1986 as dates of first use of the mark in commerce in connection with the
services identified in International Classes 35 and 41, respectively, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a).
3 Registration No. 5010715 issued August 2, 2016. The registration also recites goods in
International Class 9, additional services in International Classes 35, 36, 41, 42, 43, 44 and
45, and collective membership services in International Class 200.
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to submit a verified substitute specimen of use in connection with its recited services
in both classes.
After the final Office Action, Applicant appealed. Applicant and the Examining
Attorney filed briefs.4 We affirm the refusals to register for the reasons set out below.
I. Evidentiary Objections
In its brief on appeal, Applicant appended dictionary definitions of the terms
comprising its mark,5 and printouts from its internet webpage.6 Applicant further
made reference in its brief to a third-party registration, assertedly for a mark similar
to the mark in the cited registration.7 Applicant did not introduce into the record
during prosecution of its involved application a copy of the asserted third-party
registration. In his brief, the Examining Attorney objects to these materials and
references as constituting “new evidence” on the basis that none of them were
properly introduced into the record.8
It is well-settled that the Board may take judicial notice of dictionary definitions,
including online dictionaries which exist in printed format. See In re Cordua Rests.
LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014); In re CyberFinancial.Net Inc., 65

4 Applicant did not submit a reply brief.
5 4 TTABVUE 15-16.
Page references herein to the application record refer to the downloadable .pdf version of the
USPTO’s Trademark Status & Document Retrieval (TSDR) system. References to the briefs
refer to the Board’s TTABVUE docket system.
6 Id. at 17-21.
7 Id. at 9.
8 6 TTABVUE 5.
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USPQ2d 1789, 1791 n.3 (TTAB 2002); see also Univ. of Notre Dame du Lac v. J. C.
Gourmet Food Imps. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983). In accordance with this established practice, we hereby exercise
our discretion to take judicial notice of the definitions appended to Applicant’s brief,
and the Examining Attorney’s objection thereto is overruled.
However, the Board does not take judicial notice of applications or registrations;
they must be proved by competent evidence. See, e.g., In re Jonathan Drew Inc., 97
USPQ2d 1640, 1644 n.11 (TTAB 2011) (stating that “the Board’s well-established
practice is not to take judicial notice of registrations that reside in the USPTO”);
Beech Aircraft Corp. v. Lightning Aircraft Co., 1 USPQ2d 1290, 1293 (TTAB 1986)
(“[W]e do not take judicial notice of application and registration files that reside in
the Patent and Trademark Office on the basis of their mere identification in briefs,
pleadings and evidentiary submissions.”). As a result, the referenced third-party
registration is not evidence in this appeal, and it will not be given any consideration.
The Examining Attorney’s objection thereto is sustained.
With regard to the printouts from Applicant’s website, it further is well-settled
that the evidentiary record in an application should be complete prior to the filing of
an appeal. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d); Trademark Board Manual
of Procedure (TBMP) §§ 1203.02(e), 1207.01 (June 20179); Trademark Manual of
Examining Procedure (TMEP) § 710.01(c) (Oct. 2017). The proper procedure for an

9 The June 2018 edition of the TBMP issued after this case was submitted to the Board for
decision.
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applicant or examining attorney to introduce evidence after an appeal has been filed
is to submit a written request with the Board to suspend the appeal and remand the
application for further examination. See Trademark Rule 2.142(d), 37 C.F.R.
§ 2.142(d). See also TBMP § 1207.02 and authorities cited therein. We see no reason
why Applicant could not have availed itself of the well-established procedure for
introducing evidence after commencement of its appeal. As a result, the Examining
Attorney’s evidentiary objection is sustained, and the website printouts Applicant
submitted for the first time with its appeal brief are untimely and will not be
considered. See Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d); TBMP § 1203.02(e)
and § 1207.01 and authorities cited therein.
We turn now to the merits of this appeal.
II. Likelihood of Confusion
The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, hereinafter referred to as “du Pont factors”); see also In re Majestic
Distilling Co., 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 relatedness of the goods or services. See In re Chatam Int’l Inc.,
380 F.2d 1340, 71 USPQ2d 1944 (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
Serial No. 87164803
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characteristics of the goods [and services] and differences in the marks.”). We have
considered each relevant du Pont factor for which there is evidence or argument, and
have treated any other factors as neutral. See 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.”). Varying weights may be assigned to each du Pont factor depending
on the evidence presented. Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d
1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1688 (Fed. Cir. 1993) (factors “may play more or less weighty roles in
any particular determination”).
A. Focus on Cited Registration No. 5010715
We determine this appeal based on Applicant’s involved mark and identified
services and the GOODWILL mark that is the subject of cited Registration No.
5010715, identifying, inter alia, the services listed above. If likelihood of confusion is
found as to the mark and services in this registration, it is unnecessary to consider
the other cited registrations. See Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245
(TTAB 2010).
B. Strength of the Cited Mark
We begin by evaluating the strength of the cited mark and the scope of protection
to which it is entitled. The fifth du Pont factor is the “fame” or strength of the prior
mark, and the sixth factor is the number and nature of similar marks in use for
Serial No. 87164803
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similar goods or services. du Pont, 177 USPQ at 567. In determining strength of a
mark, we consider both inherent strength, based on the nature of the mark itself, and
commercial strength or recognition. 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).”).
As noted above, we have taken judicial notice of the definitions of the terms
comprising the marks at issue. “Goodwill” or “good will” is defined as “benevolence;
kindness.”10 “Legion” is defined as “any great number of persons or things;
multitude.”11 Applicant argues
In the instant case, the trademarks at issue share the same, weak,
overlapping term(s), namely GOODWILL. In both marks, the word
“goodwill” retains its defined meaning. However, in Applicant’s mark,
the defined meaning is modified, unlike the [registered] Goodwill Marks.
Therefore, as the case law sets forth above, if the primary similarity as
between the Applicant’s Trademark and that of the registrant are
descriptive in nature, this consideration must also lend to a conclusion
of an absence of a likelihood of confusion under du Pont.12

There is no additional evidence in the record regarding the significance of the term
“goodwill” in relation to the various goods and services identified in the cited
registration. Based upon this evidence, we find that regarding conceptual strength,
the GOODWILL mark is at worst suggestive of the benevolent nature of the services
at issue.

10 4 TTABVUE 16. Definition from dictionary.com/browse/legion?s=t
11 Id. at 15. Definition from dictionary.com/browse/goodwill?s=t
12 Id. at 13.
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We further note that cited Registration No. 5010715 issued on the Principal
Register without a claim of acquired distinctiveness under Trademark Act Section
2(f), 15 U.S.C. § 1052(f). Registration under Section 2(f) of the Trademark Act is a
concession that the mark was merely descriptive of the identified services, at least at
the time of registration. 15 U.S.C. § 1052(f); Yamaha Int’l Corp. v. Hoshino Gakki Co.,
840 F.2d 1571, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988). Similarly, registration on the
Supplemental Register is a concession that the mark was merely descriptive of the
identified services. Quaker State Oil Ref. Corp. v. Quaker Oil Corp., 453 F.2d 1296,
172 USPQ 361, 363 (CCPA 1972); In re Cent. Soya Co., 220 USPQ 914, 916 (TTAB
1984). However, such is not the case with the cited GOODWILL registration.
In addition, Section 7(b) of the Trademark Act provides that a certificate of
registration on the Principal Register shall be prima facie evidence of the validity of
the registration, of the registrant’s ownership of the mark and of the registrant’s
exclusive right to use the mark in connection with the goods or services identified in
the certificate. Absent the filing of a cancellation petition against a cited registration,
during ex parte prosecution, including an ex parte appeal, an applicant will not be
heard on matters that constitute a collateral attack on the cited registration (e.g., the
mere descriptiveness or lack of distinctiveness of the mark). In re Dixie Restaurants,
41 USPQ2d at 1534; In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992). We
thus reject Applicant’s contention that the GOODWILL mark is merely descriptive.
As for marketplace strength, there is no evidence regarding the GOODWILL
mark’s commercial strength, as is typical with ex parte appeals in which the owner
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of the cited registration is not a party. Also, Applicant submitted no evidence that
third parties are using similar GOODWILL or GOOD WILL-formative marks in
connection with the services at issue. Further, there is no evidence of any third-party
registration for a similar mark in connection with the services recited in the
registration. Cf. Juice Generation, Inc. v. GS Enterprises LLC, 794 F.3d 1334, 115
USPQ2d 1671, 1674-75 (Fed. Cir. 2015); Jack Wolfskin Ausrustung Fur Draussen
GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d
1129, 1135-36 (Fed. Cir. 2015).
Considering the record as a whole, we find that the registered mark is by its
nature suggestive and there is no evidence of third-party use or registration of
confusingly similar marks for similar or related goods. We therefore find that the
registered mark is not weak and entitled only to a narrow scope of protection, but
rather we accord the GOODWILL mark the normal scope of protection to which
suggestive marks are entitled. See Joseph Phelps Vineyards, LLC v. Fairmont
Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (stating that
likelihood of confusion fame varies along a spectrum from very strong to very weak).
C. Similarity of the Marks
We next address the du Pont likelihood of confusion factor focusing on “the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression.” Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014); 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
Serial No. 87164803
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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) (quotation omitted). See also Mini Melts, Inc. v. Reckitt Benckiser
LLC, 118 USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084,
1089 (TTAB 2016). Consumers may not necessarily encounter the marks in close
proximity and must rely upon their recollections thereof over time. In re Mucky Duck
Mustard, 6 USPQ2d 1467, 1468 (TTAB 1988).
Applicant’s mark LEGION OF GOOD WILL in standard characters consists of the
entirety of the registered mark and merely adds the wording “LEGION OF” to modify
“GOOD WILL” therein. 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 the entire cited mark is incorporated in Applicant’s mark
increases the similarity between the two. See, e.g., In re Mighty Leaf Tea, 601 F.3d
1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (applicant’s mark ML is similar to
registrant’s mark ML MARK LEES); 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). The presence or absence of a space between virtually the
same words, GOODWILL and GOOD WILL does not distinguish the marks. Stockpot,
Inc. v. Stock Pot Restaurant, Inc., 220 USPQ 52, 54 (TTAB 1983), aff’d, 737 F.2d 1576,
222 USPQ 665 (Fed. Cir. 1984) (“There is no question that the marks of the parties
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[STOCKPOT and STOCK POT] are confusingly similar. The word marks are
phonetically identical and visually almost identical.”); In re Best Western Family
Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be little doubt that
the marks [BEEFMASTER and BEEF MASTER] are practically identical . . . .”).
Thus, the marks are similar in appearance and sound to the extent that Applicant’s
LEGION OF GOOD WILL mark fully encompasses the registered GOODWILL mark.
In addition, there is no evidence to suggest that the term GOODWILL or GOOD
WILL has a different meaning or connotation as applied to the respective services at
issue. The registered mark connotes kindness and benevolence and the applied-for
mark very similarly connotes a great number or multitude of persons engaged in
kindness and benevolence. As a result, LEGION OF GOOD WILL and GOODWILL
are far more similar than dissimilar in connotation or meaning. Consumers also are
often known to use shortened forms of names, and it is possible that Applicant and
its services are referred to as “Good Will.” Cf. In re Abcor Dev. Corp., 588 F.2d 811,
200 USPQ 215, 219 (CCPA 1978) (Rich, J., concurring: “the users of language have a
universal habit of shortening full names – from haste or laziness or just economy of
words”). Finally, it is not necessary for Registrant’s mark to include the term “legion”
or legion imagery to support a finding that the marks are similar. See Coach Servs.
Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721.
We acknowledge that the presence of “LEGION OF” as the leading term in
Applicant’s mark distinguishes it somewhat visually and aurally from the registered
mark. This point of distinction, however, does not significantly diminish the strong
Serial No. 87164803
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similarities in connotation and overall commercial impression engendered by these
two marks. We find that the first DuPont factor weighs in favor of a finding that
confusion is likely.
D. Similarity of the Services, Channels of Trade and Classes of Consumers
With regard to the services, channels of trade and classes of consumers, we must
make our determinations based on the services as they are identified in the
application and cited registration. See In re Dixie Rests. Inc., 105 F.3d 1405, 41
USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion, 110 USPQ2d at 1161;
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004-05
(Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). A proper comparison of the services considers
whether “the consuming public may perceive [the respective goods or services of the
parties] as related enough to cause confusion about the source or origin of the goods
and services.” Hewlett Packard, 62 USPQ2d at 1004. Therefore, to support a finding
of likelihood of confusion, it is not necessary that the services be identical or even
competitive. It is sufficient that the services are related in some manner, or that the
circumstances surrounding their marketing are such that they would be encountered
by the same persons in situations that would give rise, because 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 services. In re Thor Tech Inc., 90
USPQ2d 1634, 1635 (TTAB 2009).
Serial No. 87164803
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Applicant’s Class 35 services are “Charitable services, namely, organizing and
developing projects that aim to improve the lives of underprivileged and impoverished
people.” These services are broadly-worded inasmuch as the projects Applicant
organizes and develops to aid the underprivileged and impoverished may include the
more narrowly identified services in the cited registration, such as charitable services
in the nature of accepting donations of goods for resale for the purposes of education,
training, and providing services to people with disabilities and disadvantaging
conditions. Accepting donations of goods for resale to benefit the disabled and
disadvantaged, or educational training programs are types of projects that Applicant
may organize and develop. In other words, Registrant’s charitable activities are
encompassed by Applicant’s projects intended to benefit the underprivileged and
impoverished. Similarly, the cited registration recites charitable services in the
nature of organizing and conducting volunteer programs. Volunteer programs also
are a type of project that may improve the lives of the underprivileged and
impoverished. As a result, Applicant’s Class 35 services, as identified, appear to
encompass some of the Class 35 services identified in the cited registration and thus
are legally identical thereto in part.
Applicant’s Class 41 services are “Education services in the nature of early
childhood instruction.” In support of the refusal of registration, the Examining
Attorney introduced with her June 16, 2017 Final Office Action13 printouts from the
following third-party internet websites offering, under the same mark, early

13 At .pdf 8-56.
Serial No. 87164803
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childhood education services identified in the subject application and child care
services of a type identified in the cited registration.
Kinder Care Learning Center offers early childhood education provided
as part of a childcare program (at www.kindercare.com);

Family Wise offers childcare for infants, toddlers, and preschoolers in a
learning environment, advertising superior quality education and child
care (at http://familywiseservices.org);

Learning Experience offers innovative childcare and early education
programs throughout the country (at https://the
learningexperience.com);

Bright Horizons Family Solutions offers early education programs as
part of their child care programs (at www.brighthorizons.com);

People Serving People offers a child care program that focuses on
preparing children to enter kindergarten (at
www.peopleservingpeople.org);

Catholic Charities USA offers education, training and care for
vulnerable populations of all ages, including children (at
https://catholiccharitiesusa.org); and

The Salvation Army offers youth camps and after school programs
including various educational programs for children (at
www.salvationarmyusa.org).

This evidence demonstrates that at least seven third parties offer services of a type
identified in the involved application and cited registration under the same mark.
The Examining Attorney also introduced into the record with her December 20,
2016 First Office Action14 copies of ten use-based, third-party registrations for marks
identifying, inter alia, services identified in the involved application and cited
registration. The following examples are illustrative:

14 At .pdf 36-64.
Serial No. 87164803
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Registration No. 4341055 for the mark BRIGHTSIDE ACADEMY EARLY
EDUCATION AND CHILD CARE (in standard characters, “ACADEMY
EARLY EDUCATION AND CHILD CARE” disclaimed) identifying “education
services in the nature of early childhood instruction,” and “child care services;”

Registration No. 5086490 for the mark ENCOURAGING THE WHY? IN
CHILDREN (in standard characters) identifying “education services in the
nature of early childhood instruction,” and “preschooler and infant care at
daycare centers;”

Registration No. 4856578 for the mark INNOVATORS IN EDUCATIONAL
CHILD CARE (in standard characters, “EDUCATIONAL CHILD CARE”
disclaimed), identifying “educational services in the nature of early childhood
instruction,” and “child care centers.”

As a general proposition, although use-based, third-party registrations alone are not
evidence that the marks shown therein are in use or that the public is familiar with
them, they nonetheless may have some probative value to the extent they may serve
to suggest that the services are of a kind that emanate from a single source. See In re
Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); Mucky Duck Mustard Co., 6
USPQ2d at 1470 n.6. In this case, the totality of the website and third-party
registration evidence demonstrates that consumers would readily expect that these
services likely emanate from the same sources.
With regard to trade channels, inasmuch as there are no restrictions recited in
the Class 35 services identified in either the involved application or cited registration,
the in-part legally identical services are “presumed to travel in the same channels of
trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press,
Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)); see also, e.g., Sw.
Serial No. 87164803
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Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D.,
Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).
Evidence of record discussed above demonstrates that both Applicant’s Class 41
services and Registrant’s Class 43 services may be encountered in at least one
common trade channel, i.e., the websites of charitable organizations that offer both
child care services and early childhood education under the same marks, by the same
classes of consumers. This evidence supports a finding that these goods are offered in
the same channels of trade. In addition, the identification of services in the cited
registration and involved application do not recite any limitations as to the channels
of trade in which the services are offered. In the absence of trade channel limitations
on the services under the registered and applied-for mark, we must presume that
these services are offered in all customary trade channels. See Citigroup Inc. v.
Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011);
In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211
USPQ 639, 640 (TTAB 1981).
We find that the du Pont factors of the relatedness of the services, channels of
trade and consumers weigh in favor of likelihood of confusion.
E. Actual Confusion
The final du Pont factor discussed by Applicant and the Examining Attorney is
that of the lack of instances of actual confusion. Applicant asserts that the absence of
actual confusion despite concurrent use of the marks since 1985 suggests no
likelihood of confusion. However, it is not necessary to show actual confusion in order
Serial No. 87164803
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to establish likelihood of confusion. See Weiss Associates Inc. v. HRL Associates Inc.,
902 F.2d 1546, 223 USPQ 1025 (Fed. Cir. 1990). Particularly in an ex parte
proceeding, Applicant’s assertion of the absence of actual confusion is of little
probative value in our determination on the issue of likelihood of confusion because
the Board cannot readily determine whether there has been a significant opportunity
for actual confusion to have occurred, such that the absence of confusion is
meaningful. See In re Opus One Inc., 60 USPQ2d 1812, 1817-1818 (TTAB 2001); In
re Kangaroos U.S.A., 223 USPQ 1025 (TTAB 1984); In re Jeep Corp., 222 USPQ 333,
337 (TTAB 1984). In those situations where the Board has recognized the absence of
actual confusion as probative in an ex parte setting, there existed a “confluence of
facts” which together strongly suggested that the absence of confusion was
meaningful and should be given probative weight. See In re Opus One Inc., 60
USPQ2d at 1817; In re Jeep Corp., 222 USPQ at 337. Such a “confluence of facts” is
not present in this record.
Moreover, the test under Section 2(d) is not actual confusion but likelihood of
confusion. In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003) (“uncorroborated statements of no known instances of actual confusion are of
little evidentiary value”); see also In re Kangaroos U.S.A., 223 USPQ 1025 (TTAB
1984); In re General Motors Corp., 23 USPQ2d 1465 (TTAB 1992).
This du Pont factor is neutral.
F. Summary on Likelihood of Confusion
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We have carefully considered all of the evidence of record, including any evidence
not specifically discussed herein. The marks are more similar than dissimilar,
particularly with regard to meaning or connotation. Applicant’s Class 35 services are
legally identical in part to certain of the Class 35 services recited in the cited
registration, and are presumed to be offered in the same channels of trade to the same
classes of consumers. Evidence of record establishes that Applicant’s Class 41
services are related to the Class 43 services in the cited registration, and may be
marketed and sold by third parties under the same marks in at least one common
channel of trade. Applicant’s arguments regarding the asserted weakness of the mark
in the cited registration and distinctions between the marks are insufficient to
overcome these similarities.
III. Substitute Specimen and Verification
In her December 20, 2016 First Office Action, the Examining Attorney rejected
Applicant’s specimen of use as to both classes of services and required Applicant to
either: (1) file a substitute specimen verified by a supporting affidavit or declaration
pursuant to Trademark Rule 2.20, 37 C.F.R. § 2.20; or (2) amend the filing basis of
the involved application to Trademark Act Section 1(b), 15 U.S.C. § 1051(b).15
Applicant submitted a substitute specimen with its June 13, 2017 response to the
first Office Action.16 In her June 16, 2017 Final Office Action, the Examining Attorney

15 At .pdf 5. The original specimen was a photocopy of the drawing of the mark. The substitute
specimen consists of photographs of, inter alia, brochures displaying the applied-for mark
and discussing Applicant’s activities that include the recited services in both classes.
16 At .pdf 6-28.
Serial No. 87164803
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noted that Applicant “provided substitute specimens that appear to show use of the
applied-for mark in commerce but is not verified.”17 The Examining Attorney
repeated and made final the requirement for verification of Applicant’s substitute
specimen and explained several alternative methods of satisfying it.18 Applicant did
not request reconsideration of either of the final refusals of registration or otherwise
submit the required verification, and did not address the verification requirement in
its brief on appeal.
We agree with the Examining Attorney that the substitute specimen submitted
by Applicant with its June 13, 2017 communication appears to be acceptable
inasmuch as it displays the applied-for mark in commerce in connection with both
classes of recited services. However, we also agree with the Examining Attorney that
Applicant failed to submit the required verification in support of its substitute
specimen as required by Trademark Rule 2.20, 37 C.F.R. § 2.20.
Substitute specimens must be properly verified, and because “applicant never
submitted the required verification…none of the additional materials which
applicant submitted [with its June 13, 2017 communication] may be considered as
substitute specimens.” In re Adair, 45 USPQ2d 1211, 1212 n.2 (TTAB 1997); see also
Trademark Rule 2.59(a); 37 C.F.R. § 2.59(a). In consequence thereof, Applicant has
failed to submit sufficient evidence of actual use of the applied-for mark in commerce
as required under Sections 1 and 45 of the Trademark. 15 U.S.C. §§ 1051, 1127;

17 At .pdf 6.
18 Id.
Serial No. 87164803
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Trademark Rules 2.34(a)(1)(iv), 2.56(a); 37 C.F.R. §§ 2.34(a)(1)(iv), 2.56(a); see also,
e.g., In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017).
IV. Conclusion
Decision: The refusal to register Applicant’s mark under Trademark Act Section
2(d) is affirmed.
The refusal to register Applicant’s mark under Trademark Act Sections 1 and 45
is affirmed.