Like.fm, Inc.v.Michael Navarini

Trademark Trial and Appeal Board

Aug 27, 2021

92070628 (T.T.A.B. Aug. 27, 2021)

Mailed: August 27, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board
————
Like.fm, Inc.
v.
Michael Navarini
_____
Cancellation No. 92070628
_____

Vivek Vaidya of Bend Law Group PC,
for Like.fm, Inc.

Michael Navarini, pro se.
————
Before Taylor, Bergsman, and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
Michael Navarini (“Respondent”) is the owner of a registration issued on the
Principal Register for the mark INSTAPAINT and design, as displayed below, for
“custom paintings” in International Class 16.1

1 Registration No. 4954389, issued on May 10, 2016. The registration includes the following
description of the mark: “The mark consists of the wording ‘INSTAPAINT’ with two stylized
paint splashes on the right side of the mark. ‘INSTA’ and the bottom paint splash are in
purple, and ‘PAINT’ and the top paint splash are in light blue.” The colors blue and purple
are claimed as a feature of the mark.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Cancellation No. 92070628
2

Like.fm, Inc. (“Petitioner”) filed a petition to cancel Respondent’s registration on
the ground of likelihood of confusion under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), based on Petitioner’s alleged prior common law use of the mark
INSTAPAINTING used in connection with the service of providing custom art
drawings, sketches, paintings, and portraits for others.2 In further support of its
likelihood of confusion claim, Petitioner pleaded ownership of pending application
Serial No. 88287098 for the standard character mark INSTAPAINTING for “Custom
art drawing for others; Custom art sketching for others; Custom painting of artwork
in the nature of portraits, landscapes, abstract designs, stylized art on canvas, paper,
wood boards, clothing, fabric, and computers for others; Custom painting of artwork
on canvas, paper, wood boards, clothing, fabric, and computers for others; Custom
painting of artwork for others; Portrait painting services” in International Class 41.3
Respondent filed an answer to the petition to cancel in which he denied the salient
allegations asserted therein. In his answer, Respondent did “acknowledge,” however,

2 Petition to Cancel, ¶¶ 1 and 3, 1 TTABVUE 4.
Citations in this opinion to the briefs and other docket entries refer to TTABVUE, the
Board's online docketing system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB
2014). Specifically, the number preceding TTABVUE corresponds to the docket entry
number, and any numbers following TTABVUE refer to the page(s) of the docket entry where
the cited materials appear.
3 Id. at ¶ 2, 1 TTABVUE 4.
Cancellation No. 92070628
3
that Petitioner filed its pleaded pending application for the mark INSTPAINTING on
February 3, 2019.4
I. Record
The record includes the pleadings and, pursuant to Trademark Rule 2.122(b), 37
C.F.R. § 2.122(b), Respondent’s involved registration file. The record also includes the
evidence summarized below.
A. Petitioner’s Evidence
1. Testimony Declaration of Chris Chen, Petitioner’s founder and
president (Chen Decl.);5
2. Notice of Reliance on various screenshots purportedly of Petitioner’s
website, www.instapainting.com;6
3. Notice of Reliance on printouts from various online forums and
internet publications purportedly discussing Petitioner’s services
under its INSTAPAINTING mark;7
4. Notice of reliance on internet website printouts purportedly of
Petitioner’s INSTAPAINTING website as shown on the Internet
Archive Wayback Machine;8 and
5. Notice of reliance on internet website printouts purportedly of
Respondent’s INSTAPAINT website as shown on the Internet
Archive Wayback Machine.9

4 Respondent’s Answer, ¶ 2, 4 TTABVUE 2.
5 20 TTABVUE.
6 16 TTABVUE.
7 17 TTABVUE.
8 18 TTABVUE.
9 19 TTABVUE.
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B. Respondent’s Evidence
Respondent did not submit any testimony or any other type of evidence during his
assigned trial period.
Only Petitioner filed a brief.
As noted, Petitioner, by way of its notices of reliance, submitted printouts from
various websites downloaded from the Internet. Although admissible for what they
show on their face, see Trademark Rule 2.122(e)(2), 37 C.F.R. § 2.122(e)(2), this
evidence also contains hearsay that may not be relied upon for the truth of the
matters asserted unless supported by testimony or other evidence. Fed. R. Evid.
801(c); WeaponX Performance Prods. Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d
1034, 1038 (TTAB 2018); Safer, Inc. v. OMS Invs., Inc., 94 USPQ2d 1031, 1039-40
(TTAB 2010); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
(“TBMP”) § 704.08(b) (2021) (“The probative value of Internet documents is limited.
They can be used to demonstrate what the documents show on their face. However,
documents obtained through the Internet may not be used to demonstrate the truth
of what has been printed.”). Thus, the various websites downloaded from the Internet
have limited probative value, except to the extent noted below.
Finally, in its trial brief, Petitioner contends that its pleaded pending application
for the mark INSTAPAINTING forms part of the record under Trademark Rule
2.122(b), 37 C.F.R. § 2.122(b).10 Petitioner is mistaken. Trademark Rule 2.122(b)
provides, in relevant part, that “each registration against which a petition or

10 See Petitioner’s Brief, p. 2, 21 TTABVUE 3.
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counterclaim for cancellation is filed forms part of the record of the proceeding
without any action by the parties … ,” not a plaintiff’s pleaded pending application.
In order for Petitioner’s pleaded pending application to be received in evidence and
made part of the record, Petitioner had to file a copy of its pleaded pending application
showing the current status and title under its notice of reliance during its assigned
testimony period. See e.g., WeaponX Performance Prods., 126 USPQ2d at 1040
(holding that Trademark Rule 2.122 only makes a defendant’s application or
registration automatically of record, not a plaintiff’s pleaded application); Giersch v.
Scripps Networks, 90 USPQ2d 1020, 1022 (TTAB 2009) (pending application must be
properly introduced, and the fact that it was refused pending outcome of proceeding
must be documented, before Board will rely upon application in determining
plaintiff’s standing).
Alternatively, Petitioner could have introduced into evidence witness testimony,
in deposition or declaration form, regarding its pending application and the status
thereof. Petitioner did neither. Moreover, while Respondent acknowledged, in his
answer, that Petitioner filed its pleaded pending application for the mark
INSTPAINTING on February 3, 2019, such acknowledgment does not establish the
current status and title of Petitioner’s pleaded application. Thus, contrary to
Petitioner’s contention, Petitioner’s pleaded pending application is not of record.
II. Entitlement to a Statutory Cause of Action
Entitlement to a statutory cause of action is a threshold issue in every inter partes
case. See Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370,
2020 USPQ2d 10837, *3 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v. Static Control
Cancellation No. 92070628
6
Components, Inc., 572 U.S. 118, 109 USPQ2d 2061, 2067 n.4 (2014)).11 A party in the
position of plaintiff may seek to cancel the registration of another’s mark where such
cancellation is within the zone of interests protected by the statute, 15 U.S.C. § 1063,
and the plaintiff’s reasonable belief in damage is proximately caused by registration
of the defendant’s mark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d
11277, *6-7 (Fed. Cir. 2020).
Petitioner’s founder and president, Mr. Chen, testified as follows:12
I am the Founder and President of Like.fm, Inc. and main engineer at
INSTAPAINTING, which can be found at www.instapainting.com.

The inception of my business and the decision to launch
INSTAPAINTING as the trademark associated with our services are as
follows: I had colleagues who sold art and I decided to setup a website
that took photographs and used it as the basis of a derivative painting
in as little as two weeks from a real artist. The first instance of my
website being live is shown on the Internet Archive Wayback Machine
on August 24, 2013, although my first sale was January 14, 2014. Within
weeks of launching my services, I had thousands of dollars in sales.

Petitioner also submitted, under one of its notices of reliance, a screenshot from
its www.instapainting.com website as it purportedly appeared on August 24, 2013
and as captured by the Internet Archive Wayback Machine and referenced in Mr.
Chen’s testimony declaration.13 The screenshot is reproduced below:

11 Board decisions have previously analyzed the requirements of Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Despite the change in
nomenclature, our prior decisions and those of the Federal Circuit interpreting Section 13
and 14 remain applicable. See Spanishtown Enters., Inc. v. Transcend Resources, Inc., 2020
USPQ2d 11388, *2 (TTAB 2020).
12 Chen Decl., ¶¶ 1-2, 20 TTABVUE 2.
13 Petitioner’s Notice of Reliance, Exhibit A, 18 TTABVUE 6.
Cancellation No. 92070628
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In Spiritline Cruises LLC v. Tour Management Servs. Inc., 2020 USPQ2d 48324
(TTAB 2020), which involved a claim that the applied-for mark was primarily
Cancellation No. 92070628
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geographically descriptive under Section 2(e)(2) of the Trademark Act, we reiterated
that “we consider Internet printouts and other materials properly introduced under
a notice of reliance without supporting testimony only for what they show on their
face rather than for the truth of the matters asserted therein.” Spiritline Cruises,
2020 USPQ2d 48324, at * 2. With respect to certain archived Internet evidence from
the Wayback Machine, we held that “Wayback Machine printouts, like other Internet
webpages that display a URL and date, generally can be admissible under a notice of
reliance as self-authenticating Internet evidence,” but that if such evidence was
“supported solely with a notice of reliance, such Internet evidence would be
admissible only for what it shows on its face.” Id. at *3 (citing WeaponX, 126 USPQ2d
at 1040).
As noted above, Petitioner’s president avers in his declaration that “the first
instance my website being live is shown on the Internet Archive Wayback Machine
on August 24, 2013….” Although Mr. Chen did not attach the screenshot of the
August 24, 2013 Wayback Machine printout to his declaration, as noted, the
screenshot nonetheless was submitted under one of Petitioner’s notices of reliance.
We find Mr. Chen’s testimony is sufficient to establish the reliability of this particular
Wayback Machine printout.
In view of the foregoing, we find that Petitioner has established its entitlement to
a statutory cause of action through the combination of the uncontradicted declaration
testimony of Petitioner’s founder and president, Mr. Chris Chen, and the Internet
Wayback Machine screenshot of its website dated August 23, 2014. In other words,
Cancellation No. 92070628
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Petitioner has established that it has been using the mark INSTAPAINTING, as
displayed in the above-referenced Wayback Machine printout, in connection with the
service of providing custom paintings for others derived from photographs provided
by Petitioner’s customers since at least as early as January 14, 2014. We further note
that Respondent does not dispute Petitioner’s entitlement to a statutory cause of
action.
III. Section 2(d) Claim
Section 2(d) of the Trademark Act prohibits the registration of a mark that
“[c]onsists of or comprises a mark which so resembles a mark registered in the Patent
and Trademark Office, or a mark or trade name previously used in the United States
by another and not abandoned, as to be likely, when used on or in connection with
the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.”
15 U.S.C. § 1052(d). To prevail on its Section 2(d) claim, Petitioner must prove, by a
preponderance of the evidence, that it has priority in the use of its pleaded mark and
that use of Respondent’s mark is likely to cause confusion, mistake, or deception as
to the source or sponsorship of Respondent’s goods, Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000), even in the absence of contrary
evidence or argument. Threshold TV, Inc. v. Metronome Enters., Inc., 96 USPQ2d
1031, 1040 (TTAB 2010).
A. Priority
“A party claiming prior use of a registered mark may petition to cancel the
registration on the basis of such prior use pursuant to section 14 of the Lanham Act.
15 U.S.C. Section 1064.” W. Fla. Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122, 31
Cancellation No. 92070628
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USPQ2d 1660, 1662 (Fed. Cir. 1994). However, “a presumption of validity attaches
to” Respondent’s registration. Id.; Cerveceria Centroamericana S.A. v. Cerveceria
India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989); See also
Trademark Act Section 7(c), 15 U.S.C. § 1057(c). As the alleged prior user, Petitioner
bears the burden of proving its claim of acquisition of prior proprietary rights in its
pleaded mark by a preponderance of the evidence. Hydro-Dynamics, Inc. v. George
Putnam & Co., Inc., 811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987); cf.
Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1834 (TTAB 2013).
(“[O]pposer must prove by a preponderance of the evidence that its common law rights
were acquired before any date upon which applicant may rely.”).
“As a general matter, priority in a Trademark Act § 2(d) case goes to the party
which made first use of its mark on the relevant goods [or services].” Cent. Garden &
Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1139 (TTAB 2013). Insofar as
Respondent did not submit any testimony or evidence during his assigned testimony
period, Respondent has not demonstrated actual use of his mark for
the goods identified in his subject registration prior to the filing date of the underlying
use-based application of said registration. Accordingly, the earliest date that
Respondent may only rely on for priority purposes is his application filing date, i.e.,
June 18, 2015, his constructive use date. See, e.g., Media Online Inc. v. El Clasificado
Inc., 88 USPQ2d 1285, 1288 (TTAB 2008) (respondent may rely on filing date of
registration at issue as constructive date of first use); Levi Strauss & Co. v. R. Josephs
Cancellation No. 92070628
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Sportswear, Inc., 30 USPQ2d 1328, 1332 (TTAB 1994) (an application filing date for
a use-based application can establish first use of a mark); Trademark Act § 7(c).
As noted above, Petitioner submitted the unrebutted testimony declaration of its
president who attested that Petitioner began using its pleaded INSTAPAINTING
mark, as displayed in the above-referenced Wayback Machine printout, in connection
with its services since at least as early as January 14, 2014. Since Petitioner’s first
use in commerce predates Respondent’s constructive use date, Petitioner has
established its priority of use of its pleaded mark for its services. See, e.g., DeVivo v.
Ortiz, 2020 USPQ2d 10153, *3 (TTAB 2020); Exec. Coach Builders, Inc. v. SPV Coach
Co., Inc., 123 USPQ2d 1175, 1184 (TTAB 2017); Kohler Co. v. Baldwin Hardware
Corp., 82 USPQ2d 1100, 1108 (TTAB 2007) (testimony of a single witness, if
“sufficiently probative,” may be sufficient to prove priority).
B. Similarity of the Marks
We next consider the first DuPont likelihood of confusion factor, which involves
an analysis of the similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression. See Palm Bay Imports
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, 668 F.3d 1356, 101 USPQ2d 1713, 1721
(Fed. Cir. 2012) (internal citation omitted). The focus is on the recollection of the
Cancellation No. 92070628
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average purchaser, who normally retains a general rather than a specific impression
of trademarks. In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009); Sealed Air Corp.
v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Inasmuch as Respondent’s goods
are “custom paintings” and Petitioner’s services include the provision of custom
paintings derived from a consumer’s own photographs, the average purchasers
include ordinary people seeking to convert their photographs into a painting.
Our analysis cannot be predicated on dissection of the involved marks. See Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161 (Fed. Cir. 2014). Rather, we are obliged to consider the marks in their entireties.
Id.; see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233,
234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered
piecemeal; rather, it must be considered as a whole in determining likelihood of
confusion.”). Nonetheless, 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 a consideration of the marks in their entireties. Stone
Lion, 110 USPQ2d at 1161.
Petitioner’s mark is . Respondent’s mark is .
The marks are similar in sound and appearance since the entirety of the literal
portion of Respondent’s mark is incorporated in Petitioner’s mark. Perhaps more
importantly, the meanings and overall commercial impressions of the literal portion
of the parties’ respective marks are virtually identical. Specifically, the prefix “insta”
Cancellation No. 92070628
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found in both marks is defined as “indicating instant or quickly-produced.”14 Indeed,
the presence of the prefix “INSTA” in each of the parties’ respective mark conveys the
same suggestive connotation of creating a painting instantly or quickly. See, e.g.,
Goodyear Tire & Rubber Co. v. Dayco Corp., 201 USPQ 485, 491 (TTAB 1978) (there
can be no doubt that the mark “INSTAFIND” is highly suggestive as applied to
opposer’s V-belt measuring gauges, in that it clearly conveys the idea of being able to
find belts quickly). Thus, both marks, when viewed in connection with their
respective goods and services, convey the virtually identical meaning of a quickly-
produced painting. Moreover, while Petitioner’s mark includes an “ing” suffix, we find
this to be subordinate matter that does very little to distinguish the marks. In re
Rexel Inc., 223 USPQ 830, 831 (TTAB 1984).
Furthermore, although both Petitioner’s and Respondent’s marks include a design
element, “the verbal portion of the mark is the one most likely to indicate the origin
of the goods to which it is affixed.” 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) (citing CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed.
Cir. 1983)). Greater weight is often given to the wording rather than a design element
because it is the wording that purchasers would use to refer to or request the goods

14 Dictionary.com, based on the Collins English Dictionary (2012 digital edition) (accessed on
August 26, 2021). The Board may take judicial notice of dictionary definitions, including
online dictionaries that exist in printed format or have regular fixed editions. In re Cordua
Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632
(Fed. Cir. 2016); Threshold TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14
(TTAB 2010).
Cancellation No. 92070628
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or services. See, e.g., In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed.
Cir. 2012).
Quite simply, we find that the marks are quite similar, particularly taking into
account “the recollection of the average customer, who retains a general rather than
specific impression of marks,” i.am.symbolic, llc, 127 USPQ2d 1627, 1630 (TTAB
2018), and the fact that the “marks ‘must be considered . . . in light of the fallibility
of human memory’ and ‘not on the basis of side-by-side comparison.”’ In re St. Helena
Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting San Fernando
Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA
1977)). Although both marks at issue include a design element, a consumer with a
fallible memory and a general impression of Petitioner’s INSTAPAINTING-
dominated mark who encounters Respondent’s INSTAPAINT-dominated mark is
unlikely to distinguish the two marks on the basis of the presence of the design
element in either Petitioner’s or Respondent’s marks. Similarly, we find that the
colors claimed in Respondent’s mark and the non-distinctive script of the literal
portion of Petitioner’s mark are insufficient to distinguish the marks.
While we have not overlooked the design elements in each mark, the colors
claimed in Respondent’s mark or the stylization of the literal portion of Petitioner’s
mark, we nonetheless find that marks are more similar than dissimilar. Thus, the
first DuPont factor favors a finding of likelihood of confusion.
C. Relatedness of the Goods and Services
We next address the second DuPont likelihood of confusion factor focusing on the
comparison of the goods identified in Respondent’s subject registration and the
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service provided by Petitioner pursuant to its common law use of its pleaded
INSTAPAINTING mark.
Respondent’s goods are identified as “custom paintings.” Petitioner’s owner and
president testified that Petitioner offers the service of providing derivative paintings
from photographs for others under its INSTAPAINTING mark.15 Additionally, the
screenshot of Petitioner’s www.instapainting.com website as it appeared on August
14, 2013 (as captured by the Wayback Machine) states that you can “[t]urn any photo
into a hand-painted oil painting on canvas.”
It is settled that it is not necessary that the respective goods and services be
identical or even competitive in order to find that they are related for purposes of our
likelihood of confusion analysis. The respective goods and services need only be
“related in some manner and/or if the circumstances surrounding their marketing
[be] such that they could give rise to the mistaken belief that goods [and services]
emanate from the same source.” Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven
Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); see also In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984); In re
Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
Here, Respondent’s broadly worded “custom paintings” encompasses custom
paintings derived from photographs. See e.g., In re Country Oven, Inc., 2019 USPQ2d
443903, *4 (TTAB 2019) (quoting Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d
1007, 1025 (TTAB 2015) (“[w]here the identification of services is broad, the Board

15 Chen Decl., ¶2, 20 TTABVUE 2.
Cancellation No. 92070628
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‘presume[s] that the services encompass all services of the type identified.’”)). Thus,
we find that Petitioner’s services and Respondent’s goods are inherently related
inasmuch as both provide the identical end product to consumers, i.e., custom
paintings. See In re H.J. Seiler Co., 289 F.2d 674, 129 USPQ 347, 347 (CCPA 1961)
(“[A] customer who attends a banquet which he knows is catered by the appellant
would, when he encounters a food product in the grocery store under an almost
identical mark, naturally assum[e] that it came from the catering firm.”); In re
Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006) (“It is clear that consumers would be
likely to believe that jewelry on the one hand and retail stores selling jewelry on the
other emanate from or are sponsored by the same source if such goods and services
are sold under the same or similar marks.”).
Accordingly, the second DuPont factor also favors a finding of likelihood of
confusion.
D. Similarity of Trade Channels/Classes of Purchasers
Next we consider established, likely-to-continue channels of trade, the third
DuPont factor. We initially note that since there are no restrictions as to trade
channels or classes of purchasers set forth in the identification of goods of
Respondent’s involved registration, we presume Respondent’s goods travel through
all usual channels of trade for such goods, e.g., retail stores and online marketplaces,
and are offered to all normal potential purchasers for such goods, the general public.
Paula Payne Prods. Co. v. Johnson Publ’g Co., 473 F.2d 901, 177 USPQ 76, 77
(CCPA); see also Stone Lion, 110 USPQ2d at 1161. Petitioner’s president has testified
that Petitioner provides its services online via its own website,
Cancellation No. 92070628
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www.instapainting.com. Accordingly, we find that, at a minimum, both Petitioner’s
services and Respondent’s goods travel in overlapping channels of trade and are
offered to the same ordinary consumer who desires to create a customized painting
from one of their photographs.
In view of the foregoing, the third DuPont factor also weighs in favor of finding a
likelihood of confusion.
E. Actual Confusion
The seventh DuPont factor considers “[t]he nature and extent of any actual
confusion.” DuPont, 177 USPQ at 567. Petitioner’s president testified that “[o]ver the
years there have been more instances of customers who mistook [Respondent’s]
website, www.instapaint.com, for [Petitioner’s] website, www.instapainting.com, and
placed orders on Respondent’s website but contacted [Petitioner’s] website to get
support for poor service.”16
Evidence of actual confusion “is too important to be established by means of an
inference, unsupported by corroborating evidence.” Toys “R” Us, Inc. v. Lamps R Us,
219 USPQ 340, 346 (TTAB 1983). In this case, Petitioner’s testimony regarding actual
confusion is lacking in specifics and Petitioner has not provided any documentary
evidence to corroborate its assertion that consumers have experienced actual
confusion as to the source of Petitioner’s services and Respondent’s goods.
Accordingly, Petitioner’s assertions in this regard must be accorded minimal weight.

16 Chen Decl., ¶ 7, 20 TTABVUE 3.
Cancellation No. 92070628
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IV. Conclusion
We have considered all of Petitioner’s arguments and evidence of record, and all
relevant DuPont factors. We find that the marks at issue are similar; that Petitioner’s
services are related to Respondent’s goods; that they would move in overlapping trade
channels; and that they are offered to the same or overlapping classes of purchasers.
We thus find that Petitioner has established by a preponderance of the evidence that
Respondent’s mark for his identified goods so resembles Petitioner’s
mark for its services as to be likely to cause confusion or
mistake, or to deceive under Section 2(d) of the Trademark Act.
Decision: The petition to cancel Respondent’s registration for the mark
under Section 2(d) of the Trademark Act is granted. The registration
will be canceled in due course.