Micro Mobio Corporationv.General Motors LLC

Trademark Trial and Appeal Board

Nov 30, 2020

92068218 (T.T.A.B. Nov. 30, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 30, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Micro Mobio Corporation
v.
General Motors LLC
_____

Cancellation No. 92068218

_____

Christopher J. Horgan of Roark IP
for Micro Mobio Corporation
Mary A. Hyde, Anessa Owen Kramer, and Ka’Nea K. Brooks of Honigman Miller
Schwartz and Cohn LLP for General Motors LLC
_____

Before Wolfson, Heasley and English, Administrative Trademark Judges.

Opinion by English, Administrative Trademark Judge:
Respondent, General Motors LLC, owns Registration No. 5387518 for the
standard character mark SUPER CRUISE registered on the Principal Register for
“Computer software, cameras, ultrasonic sensors, global positioning system and
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radar object detectors for the semi-autonomous driving of motor vehicles” in
International Class 9.1
Petitioner, Micro Mobio Corporation, petitions to cancel Respondent’s
Registration No. 5387518, claiming priority and likelihood of confusion under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on prior use and registration of
the mark SUPERCRUISE for “Semiconductor devices, computer hardware, and
computer software for use in design, simulation and control of electronic circuits and
antenna, receiving and transmitting signals, and modulation, demodulation and
media access control in voice and data communications” in International Class 9.2
In its answer, Respondent denies the salient allegations in the petition for
cancellation.3
For the reasons explained below, we deny the petition for cancellation.

1 Issued January 23, 2018 from an application filed June 20, 2016 under Section 1(b) of the
Trademark Act, later amended to Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a),
based on an allegation of first use and first use in commerce on September 25, 2017.
2 Registration No. 3972396 issued June 7, 2011 under Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a), based on a claim of first use and first use in commerce on July 1, 2010;
renewed.
3 In its answer, Respondent also pleaded that Petitioner failed to state a claim upon which
relief can be granted and affirmative defenses of waiver, laches, estoppel, acquiescence and
unclean hands. 6 TTABVUE 4-5. We deem these defenses waived or forfeited because
Respondent did not argue failure to state a claim by motion or at trial, nor did Respondent
argue any affirmative defenses in its trial brief. Alcatraz Media, Inc. v. Chesapeake Marine
Tours, Inc., 107 USPQ2d 1750, 1753 (TTAB 2013) (affirmative defense not argued in brief
deemed waived), aff’d mem., 565 F. App’x 900 (Fed. Cir. 2014); Swiss Watch Int’l Inc. v.
Federation of the Swiss Watch Indus., 101 USPQ2d 1731, 1734 n.4 (TTAB 2012) (same).
Respondent also alleged “affirmative defenses” of no likelihood of confusion between the
parties’ marks and that Petitioner’s mark is weak. We treat these allegations as
amplifications of Respondent’s denials.
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I. The Record and Evidentiary Issues
The record includes Respondent’s involved Registration No. 5387518, by operation
of Trademark Rule 2.122(b)(1), 37 CFR § 2.122(b)(1), and the pleadings. The parties
also introduced evidence:
A. Petitioner’s Evidence
1. Petitioner’s first and second notices of reliance on third-party
registrations and printouts from third-party websites;4
2. Petitioner’s third notice of reliance on a dictionary definition for the
word “semi-autonomous,” prosecution histories for applications owned by
Respondent but not involved in this proceeding, and registrations listed as
owned by non-party OnStar LLC;5
3. Petitioner’s fourth notice of reliance on Respondent’s responses to
requests for admission, interrogatories and document requests, as well as
documents Respondent produced in response to certain interrogatories;6
4. Petitioner’s fifth notice of reliance on Respondent’s motion for a
protective order and Petitioner’s response thereto;7
5. Petitioner’s sixth notice of reliance on online newspaper and magazine
articles and printouts from third-party websites;8
6. Petitioner’s seventh notice of reliance on online newspaper articles and
Petitioner’s pleaded registration;9

4 32 and 33 TTABVUE.
5 34 TTABVUE (The definition is in British English so it has little probative value).
6 35 TTABVUE (confidential); 44 TTABVUE (public version).
7 36 TTABVUE.
8 37 TTABVUE.
9 38 TTABVUE.
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7. Petitioner’s eighth notice of reliance on the August 7, 2019 discovery
deposition of Mario Maiorana;10
8. Declarations of expert witnesses Christopher Wilson and Don V.
Nguyen, and accompanying exhibits;11
9. Declaration, with accompanying exhibits, of Zlatko Aurelio Filipovic, a
Sales and Marketing Lead for Petitioner;12
10. Petitioner’s rebuttal notice of reliance on third-party registrations
issued after the close of Petitioner’s main testimony period.13
B. Respondent’s Evidence
1. Respondent’s first notice of reliance on Petitioner’s responses to requests
for admission, interrogatories and document requests, and the discovery
depositions and accompanying exhibits of Don V. Nguyen, Christopher K.
Wilson, and Zlatko Aurelio Filipovic;14

10 39 TTABVUE (confidential); 43 TTABVUE (public version).
11 40 TTABVUE.
12 41 TTABVUE (confidential) and 42 TTABVUE (public version).
During the suspension of proceedings for expert testimony, Petitioner filed trial evidence,
including the declarations of Filipovic, Wilson and Nguyen. The Board struck the
declarations and Petitioner’s other evidence as untimely. 31 TTABVUE. During its reset trial
period, which closed on November 8, 2019, Petitioner refiled the previously executed
declarations (Nguyen Declaration, executed December 3, 2018 (40 TTABVUE 171); Wilson
Declaration, executed December 3, 2018 (40 TTABVUE 28); Wilson Supplemental
Declaration, executed April 4, 2019 (40 TTABVUE 164), and Filipovic Declaration, executed
May 28, 2019 (42 TTABVUE 13)).
Under Trademark Rule 2.123(a)(1), 37 C.F.R. § 2.123(a)(1), “a testimony affidavit or
declaration must be taken—that is, executed—during the assigned testimony period as
required by [Trademark] Rule 2.121(a).” Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d
149089 (TTAB 2019). The declarations Petitioner filed during trial were not executed during
Petitioner’s assigned trial period. Respondent, however, did not raise this issue so it has
waived any objection that the declarations are untimely. See Of Counsel Inc. v. Strictly of
Counsel Chartered, 21 USPQ2d 1555, 1556 n.2 (TTAB 1991) (“[A]pplicant waived its objection
to the premature taking of the trial deposition, which could have been corrected upon
seasonable objection.”).
13 57 TTABVUE.
14 49 TTABVUE (public) and 50 (confidential).
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2. Respondent’s second, third, and fourth notices of reliance on printouts
from the websites of Respondent, Petitioner and third-parties, online
articles, and a 2020 brochure for the CT6 Cadillac;15
3. Declaration of Timothy Gorbatoff, Respondent’s Lead Counsel for
Trademarks and Design Patents;16
4. Declaration of Mario Maiorana, Respondent’s Chief Engineer for Super
Cruise and Active Safety;17
5. Declaration of Aldo Burrascano, Manager, Product Planning and
Strategy for Cadillac.18
C. Respondent’s Objections to Petitioner’s Expert Witnesses
Respondent objects to the expert testimony declarations of Christopher Wilson
and Don Nguyen, arguing that the declarations should be excluded in their entireties.
With respect to the Wilson declaration, Respondent argues that Mr. Wilson “is not
qualified by knowledge, skill, experience, training or education to provide opinions on
the relatedness of goods from a trademark perspective.”19 Respondent further asserts
that Mr. Wilson’s “opinions and testimony regarding the ‘relatedness’ of the parties’
respective goods are based on faulty methodology and do not even address the correct
issue” because he has focused “exclusively on the technical meanings of the words
contained in the parties’ registrations and how those goods and their individual
components work from a technological and functional perspective” and he “did not
survey consumers as part of his research and failed even to consider the point of view

15 51, 52, and 53 TTABVUE.
16 54 TTABVUE.
17 55 TTABVUE.
18 56 TTABVUE.
19 Respondent’s Brief, Appendix 1, 60 TTABVUE 47.
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of the consumer.”20 Respondent raises similar objections to the Nguyen declaration,
asserting that Mr. Nguyen is not qualified to give an expert opinion as to whether the
parties’ marks are likely to be confused, that Mr. Nguyen’s opinions are unreliable
and not based on any consumer survey, and that Mr. Nguyen’s testimony is
irrelevant.21
Respondent’s objections to the expert testimony of Wilson and Nguyen are
overruled. Petitioner has not offered Mr. Wilson and Mr. Nguyen as expert witnesses
in trademark law. Rather, Mr. Wilson, a vehicle data and technology consultant in
the field of connected and automated vehicles, has been offered and is qualified as an
expert in vehicle telematics. His testimony is relevant to the relatedness of the goods.
Similarly, Mr. Nguyen, a supervisor at an independent auto body shop with
responsibilities including “Manager, Automotive Technician, Auto Parts Purchaser,
and Service Writer,”22 is qualified as an expert in automotive repair, and his
testimony is relevant to the relatedness of the parties’ trade channels and classes of
consumers.
We give the Wilson and Nguyen declarations appropriate weight. It is important
to note, however, that “[w]e will not substitute the opinion of a witness, even an expert
witness, for our evaluation of the facts.” Edwards Lifesciences Corp. v. VigiLanz
Corp., 94 USPQ2d 1399, 1402 (TTAB 2010). Moreover, likelihood of confusion is the

20 Id. at 51.
21 Id. at Appendix 2, pp. 56-59.
22 40 TTABVUE 168, Nguyen Declaration, Part II, ¶ 1.
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ultimate question of law to be decided by the Board, not by a witness. Alcatraz Media
Inc., 107 USPQ2d at 1755 (opinion of expert witness cannot “serve as a substitute for
the Board’s judgment on the legal claims before us”).
D. The Parties’ Confidentiality Designations
Both parties improperly over-designated evidence as confidential. Petitioner
designated all of Respondent’s discovery responses and the entirety of the Maiorana
discovery deposition as confidential while Respondent submitted the entire discovery
deposition of Zlatko Aurelio Filipovic under seal. Although portions of this evidence
are confidential, much of these materials consist of non-confidential and, in some
instances, public information. Examples of non-confidential information include
Respondent’s discovery responses regarding public use of its involved mark and
articles published on the Internet; Mr. Maiorana’s deposition testimony and
accompanying exhibits concerning Respondent’s user manual and Internet
advertising; and Mr. Filipovic’s averments regarding his role in marketing, technical
support and sales for Petitioner.23
Board proceedings are designed to be public, and the improper designation of
materials as confidential thwarts this objective. Edwards Lifesciences Corp., 94
USPQ2d at 1402. Unless there is a legitimate need for confidentiality, the Board must
be able to discuss the evidence of record as needed to explain the basis for its decision.
Id. Accordingly, in this opinion, we treat as confidential only evidence that is clearly

23 We emphasize that these are only a few examples of material improperly designated as
confidential. We further note that other documents designated “confidential” and
“confidential attorney’s eyes only” were not filed under seal. 42 TTABVUE 162-167, 228-257.
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confidential or commercially sensitive. Trademark Rule 2.116(g), 37 C.F.R. § 2.116(g)
(“The Board may treat as not confidential that material which cannot reasonably be
considered confidential, notwithstanding a designation as such by a party.”) ; see also
Noble House Home Furnishings, LLC v. Floorco Enters., LLC, 118 USPQ2d 1413,
1416 n.21 (TTAB 2016) (“[W]e will treat only testimony and evidence that is truly
confidential or commercially sensitive as such.”); Edwards Lifesciences Corp., 94
USPQ2d at 1402-03 (“Because of the over designation of testimony and evidence by
the parties, it is not clear to us what is intended to be truly ‘Confidential’ and
‘Confidential Attorney's Eyes Only.’ Therefore, in rendering our decision, we will not
be bound by the parties’ designation.”).
II. Entitlement to Bring a Statutory Cause of Action24
Entitlement to bring a statutory cause of action is a threshold issue in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1061-62 (Fed. Cir. 2014); Lipton Indus., Inc. v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185, 187-89 (CCPA 1982); Bell’s Brewery, Inc. v. Innovation
Brewing, 125 USPQ2d 1340, 1344 (TTAB 2017). To establish entitlement to bring a
statutory cause of action under Section 14 of the Trademark Act, Petitioner must

24 Our 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.” Mindful of the Supreme
Court’s direction in Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 125-
26 (2014), we now refer to this inquiry as entitlement to bring a statutory cause of action.
Despite the change in nomenclature, our prior decisions and those of the Federal Circuit
interpreting Sections 13 and 14 remain equally applicable. See Corcamore, LLC v. SFM, LLC,
978 F.3d 1298, 2020 USPQ2d 11277, 4 (Fed. Cir. 2020) (“we discern no meaningful,
substantive difference between the analytical frameworks expressed in Lexmark and
Empresa Cubana….”).
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demonstrate a real interest in the proceeding and a reasonable belief of damage.
Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020
USPQ2d 10837 at *3 (Fed. Cir. 2020); see also Empresa Cubana, 111 USPQ2d at
1162; Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713,
1727 (Fed. Cir. 2012); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed.
Cir. 1999). A “real interest” is a “direct and personal stake” in the outcome of the
proceeding. Ritchie v. Simpson, 50 USPQ2d at 1026.
Petitioner submitted a Trademark Electronic Search System (TESS) printout
showing that its pleaded registration is subsisting and owned by Petitioner.25
Accordingly, Petitioner has established its entitlement to bring a statutory cause of
action under Section 14 of the Trademark Act. Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); L.C. Licensing Inc. v. Berman, 86
USPQ2d 1883, 1887 (TTAB 2008); Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d
1283, 1285 (TTAB 2007).
III. Priority and Likelihood of Confusion
To prevail on its Section 2(d) claim, Petitioner must prove priority and likelihood
of confusion by a preponderance of the evidence. Cunningham v. Laser Golf, 55
USPQ2d at 1844; Hydro-Dynamics Inc. v. George Putnam & Co., 811 F.2d 147, 1
USPQ2d 1772, 1773 (Fed. Cir. 1987).

25 Petitioner’s Seventh Notice of Reliance, 38 TTABVUE 34-35.
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A. Priority
The filing date of the application that matured into Petitioner’s pleaded
registration precedes the June 20, 2016 filing date of the application that matured
into Respondent’s involved registration, and Respondent has admitted that it did not
make any use of its mark before Petitioner filed its underlying application.26
Accordingly, Petitioner has priority in its pleaded SUPERCRUISE mark for the goods
identified in the pleaded registration. See, e.g., Calypso Tech. Inc. v. Calypso Capital
Mgmt. LP, 100 USPQ2d 1213, 1219-20 (TTAB 2011) (petitioner’s priority established
based on filing date of the underlying application which matured into its pleaded
registration).
B. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. DuPont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”); see
also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). We consider each DuPont factor for which there is evidence and argument. See,
e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir.
2019); 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,

26 Petitioner’s Fourth Notice of Reliance, 35 TTABVUE 15-16 (improperly filed as
confidential), Respondent’s responses to Requests for Admissions 2 and 3.
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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.”).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods. See In re Chatam Int’l
Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (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 characteristics of the goods and differences in the marks.”). We
discuss these and the other relevant DuPont factors below.
1. Similarity or Dissimilarity of the Marks
We compare 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); DuPont, 177 USPQ at 567. The parties’ marks are identical except for the space
in Respondent’s mark between the words SUPER and CRUISE, which is
inconsequential. Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 2464, 1470
(TTAB 2016) (MINI MELTS essentially identical to MINIMELTS); Seaguard Corp.
v. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (SEAGUARD and SEA GUARD
“are, in contemplation of law, identical”). Accordingly, the similarity between the
parties’ marks weighs heavily in favor of finding a likelihood of confusion. Respondent
does not argue otherwise.
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2. Strength of Petitioner’s Mark
We next assess both the conceptual strength of Petitioner’s mark, based on the
nature of the mark itself, and the commercial strength of the mark based on consumer
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).”).
In determining the conceptual strength of Petitioner’s mark, “we evaluate its
intrinsic nature, that is, where it lies along the generic-descriptive-suggestive-
arbitrary (or fanciful) continuum of words.” In re Davia, 110 USPQ2d 1810, 1815
(TTAB 2014). Petitioner argues that its “mark SUPERCRUISE is arbitrary and bears
no relation to Petitioner’s identified goods…. [T]he mark was chosen because
Petitioner’s [sic] ‘liked the sound of the mark and the mark did not have any meaning
in relation to the electronic, control and communication product field.’”27
Because Petitioner’s mark is registered on the Principal Register without a
showing of acquired distinctiveness under Section 2(f) of the Trademark Act, 15
U.S.C. § 1052(f), we must presume that Petitioner’s mark is inherently distinctive.
New Era Cap Co. v. Pro Era LLC, 2020 USPQ2d 10596, *10 (TTAB 2020) (“Opposer’s
mark is inherently distinctive as evidenced by its registration on the Principal
Register without a claim of acquired distinctiveness under Section 2(f) of the
Trademark Act.”); Tea Board of India v. Republic of Tea, Inc., 80 USPQ2d 1881, 1889
(TTAB 2006) (same). We do not agree, however, that the mark is arbitrary for

27 Petitioner’s Brief, 59 TTABVUE 34 (quoting Filipovic Declaration, 42 TTABVUE 7, ¶ 11).
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Petitioner’s goods. The word “cruise” means “to move or proceed speedily, smoothly
or effortlessly.”28 The word “super” is superlative meaning “of high grade or quality”;
“very large or powerful”; “exhibiting the characteristics of its type to an extreme or
excessive degree.”29 Petitioner’s mark SUPERCRUISE is therefore highly suggestive
of Petitioner’s goods, suggesting that they facilitate the extremely quick and smooth
receipt and transfer of signals, control of electronic circuits, and the modulation,
demodulation and media access control in voice and data communications.
Accordingly, Petitioner’s mark is not as inherently strong as an arbitrary or fanciful
mark.
Commercial strength or fame is the extent to which the relevant public recognizes
a mark as denoting a single source. See also Tea Bd. of India, 80 USPQ2d at 1889.
Fame, if it exists, plays a dominant role in the likelihood of confusion analysis because
famous marks enjoy a broad scope of protection or exclusivity of use. A famous mark
has extensive public recognition and renown. Bose Corp. v. QSC Audio Prods. Inc.,
293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 54

28 We take judicial notice of the dictionary definition of “cruise.” Merriam-Webster online
dictionary, last visited November 23, 2020 at https://www.merriam-webster.com/dictionary/
cruise. The Board may take judicial notice of dictionary definitions, University of Notre Dame
du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or
regular fixed editions. In Venice New York, Inc., 259 F.3d 1346, 59 USPQ2d 1778 (Fed. Cir.
2001).
29 We take judicial notice of the dictionary definition of “super.” Merriam-Webster online
dictionary, last visited November 23, 2020 at https://www.merriam-
webster.com/dictionary/super.
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USPQ2d at 1897; Kenner Parker Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 22
USPQ2d 1453, 1456 (Fed. Cir. 1992).
Commercial strength may be measured indirectly by the volume of sales and
advertising expenditures of the goods, the length of time the mark has been in use,
widespread critical assessments and notice by independent sources of the goods
identified by the mark as well as the general reputation of the goods. Bose Corp. v.
QSC Audio Prods., 63 USPQ2d at 1305 (recognizing that strength of a mark may be
measured by sales and advertising figures); Tao Licensing, LLC v. Bender Consulting
Ltd., 125 USPQ2d 1043, 1056 (TTAB 2017). To support the assertion that its mark is
commercially strong, Petitioner introduced (under seal) sales and marketing
expenses for its SUPERCRUISE products from 2010-2018.30 In addition, Petitioner
points to the continuous use of its mark since 2010 and “promotional efforts”
consisting of “employees regularly attend[ing] trade shows seeking new business and
contact[ing] potential customers with products containing the SUPERCRUISE
mark.”31 Petitioner’s sales and advertising figures, standing alone, are not
particularly impressive and Petitioner has not introduced any market share evidence
that would provide context regarding its sales revenue and advertising expenditures.
Moreover, the promotional efforts Petitioner has described are modest.
For these reasons, we find that the strength of Petitioner’s mark is neutral in the
likelihood of confusion analysis.

30 Filipovic Declaration, 41 TTABVUE 7-8, ¶ 12.
31 Petitioner’s Brief, 59 TTABVUE 34-35.
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3. Similarity or Dissimilarity of the Goods
Goods need not be identical or even competitive to find a likelihood of confusion.
See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475
(Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed.
Cir. 2000). But the evidence must establish that the goods are related in some
manner, or the conditions surrounding their marketing are such, that they could be
encountered by the same purchasers under circumstances that could give rise to the
mistaken belief that the goods come from a common source. Coach Servs., 101
USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB
2007)).
We must base our comparison of the goods on the identifications in the parties’
registrations. See Stone Lion, 110 USPQ2d at 1162; Octocom Sys., Inc. v. Houston
Comput. Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The
parties disagree about how to interpret Petitioner’s identification of goods , namely:
Semiconductor devices, computer hardware, and computer software for
use in design, simulation and control of electronic circuits and antenna,
receiving and transmitting signals, and modulation, demodulation and
media access control in voice and data communications.

Petitioner asserts that the commas after “semiconductor devices” and “computer
hardware” should be treated as semi-colons, so that the qualifying language “in voice
and data communications” at the end of the identification applies only to the
computer software description as follows:
 Semiconductor devices;
 Computer hardware; and
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 Computer software for use in design, simulation and control of electronic
circuits and antenna, receiving and transmitting signals, and modulation,
demodulation and media access control in voice and data communications.
Respondent argues that because the identification uses commas instead of
semicolons, the qualifying language “in voice and data communications” applies
equally to “semiconductor devices,” “computer hardware,” and “computer software”
so that the identification reads:
 Semiconductor devices for use in voice and data communications;
 Computer hardware for use in voice and data communications; and
 Computer software for use in design, simulation and control of electronic
circuits and antenna, receiving and transmitting signals, and modulation,
demodulation and media access control in voice and data communications.
The punctuation in Petitioner’s identification of goods creates ambiguity as to the
scope of the identification. If Petitioner intended that “in voice and data
communications” apply only to “computer software,” the better practice would have
been to use semicolons in the identification. See In re C.H. Hanson Co., 116 USPQ2d
1351, 1355 (TTAB 2015) (citing In re Midwest Gaming & Entm’t LLC, 106 USPQ2d
1163, 1166 & n.4 (TTAB 2013) (finding that semicolon separated services into discrete
categories)); TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1402.01(a)
(Oct. 2018) (advising that “commas should be used in the identification to separate
items in a particular category of goods or services” and semicolons “should generally
be used to separate distinct categories of goods or services within a single class”). But
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the use of semicolons is not mandatory,32 and commas are used in the English
language to separate items in a list. So it is reasonable to construe the commas after
“semiconductor devices” and “computer hardware” as separating these goods from
“computer software for use in … voice and data communications.” This interpretation
is supported by the fact that “semiconductor devices” and “computer hardware” are
acceptable identifications of goods standing alone, whereas “computer software” is an
indefinite identification that generally must specify the function or purpose of the
software and field of use. U.S. PATENT AND TRADEMARK OFFICE ACCEPTABLE
IDENTIFICATION OF GOODS AND SERVICES MANUAL; TMEP § 1402.03(d). For these
reasons, and because we must construe Petitioner’s identification of goods in
Petitioner’s favor, we adopt Petitioner’s reading of the identification of goods. Tuxedo
Monopoly, Inc. v. General Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981) (“[T]he description [of goods] must be construed most favorably to the opposing
prior user.”); see also In re C.H. Hanson, 116 USPQ2d at 1355 (“To the extent that
Registrant’s use of a comma rather than a semicolon creates ambiguity as to the scope
of the identification of goods … we must resolve any doubt in favor of the registrant,
given the presumptions afforded the registration under Section 7(b), 15 U.S.C.
§ 1057.”).

32 The TMEP sets forth guidelines and procedures followed by examining attorneys; it “does
not have the force and effect of law[.]” West Florida Seafood Inc. v. Jet Rests. Inc., 31 USPQ2d
1660, 1664 n.8 (Fed. Cir. 1994).
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Petitioner argues that the parties’ goods “are identical, identical in part and/or
encompassing.”33 More specifically, Petitioner asserts that “each of the electronic
devices” in Respondent’s identification, namely, cameras, ultrasonic sensors, global
positioning system, and radar object detectors “may be either considered”
semiconductor devices or computer hardware or “they encompass” semiconductor
devices or computer hardware.34 In support of this position, Petitioner cites to the
testimony of its expert Christopher Wilson:
A semiconductor device is any device made from semiconductors and
utilizing their ability to perform as both conductors and insulators…. To
the best of my knowledge, any computer hardware, or any electronic
device that can operate ‘computer software’, and that is used in
production automobiles today (including semiautonomous vehicles), are
the same as, or at least encompass, semiconductor devices including
cameras, ultrasonic sensors, global positioning systems and radar object
detectors as identified in the GM SUPER CRUISE mark. In addition,
many of the electronic devices used for internal communications in a
vehicle will also use semiconductor devices.

The GM Super Cruise system as identified in the GM SUPER CRUISE
mark makes use of many different system parts comprising computer
hardware including a camera (e.g., Camera Image Processing Module),
a global positioning system (e.g., satellites, GPS receiver), [and] radar
object detector (e.g., Forward Range Radar, Short Range Radars). In my
opinion, all of these devices are the same as or overlap with the term
“computer hardware”.35

Petitioner also points to Respondent’s admissions, in response to requests for
admission, that Respondent’s cameras, ultrasonic sensors, global positioning system,

33 Petitioner’s Brief, 59 TTABVUE 16.
34 Id. at 16-17.
35 Wilson Declaration, 40 TTABVUE 12-13, ¶¶ 26, 27, 29 (internal footnote omitted).
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and radar object detectors “use semiconductor devices” and Respondents’ cameras
and global positioning systems “use computer hardware.”36
Petitioner further relies on Mr. Wilson’s testimony to assert that the parties’
software products are related:
[I]t is my expectation that the computer software for the driving of semi-
autonomous vehicles would include the control of transmissions of
signals between electronic control units and the cameras, ultrasonic
sensors, global positioning systems and radar object detectors as
identified in the GM SUPER CRUISE mark, and would be the same as
or overlap with ‘computer software for use in control of electronic circuits
in data communications’ as in the identification of goods in the MM
SUPERCRUISE mark.

[I]t is my expectation that the computer software for the driving of semi-
autonomous vehicles would include computer software for use in
receiving and transmitting signals in data communications between
electronic control units and the cameras, ultrasonic sensors, global
positioning systems and radar object detectors as identified in the GM
SUPER CRUISE mark.

[I]n the various data communications devices used in conjunction with
the GM Super Cruise system (OnStar 4G cellular communications, GPS
reception), there is software control of the communications devices,
including modulation, demodulation and media access control. To the
best of my knowledge, all communications devices with this level of
sophistication utilize computer hardware and computer software.
Specifically, they use software to control the modulation and
demodulation of signals, and for media access control. These devices all
provide data communications.37

Mr. Wilson’s assertion that “[a] semiconductor device is any device made from
semiconductors and utilizing their ability to perform as both conductors and

36 Petitioner’s Fourth Notice of Reliance, 35 TTABVUE 24-29 (improperly filed as
confidential), Respondent’s responses to Requests for Admission Nos. 52, 53, 54, 55, 57, and
59.
37 Wilson Declaration, 40 TTABVUE 15, ¶¶ 32-33.
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insulators”38 is an egregious overgeneralization that does not comport with the plain
meaning of the word “semiconductor” defined as:39
“a substance, as germanium or silicon, whose conductivity is poor at low
temperatures but is improved by minute additions of certain substances or by
the application of heat, light, or voltage: used in transistors, rectifiers.”

“a substance that can act as an electrical conductor or insulator depending on
chemical alterations or external conditions.”

None of Respondent’s goods fall within these definitions. See Electronic Data Sys.
Corp. v. EDSA Micro Corp., 23 USPQ2d 1460, 1463 (TTAB 1992) (“[T]he issue of
whether or not two products are related does not revolve around the question of
whether a term can be used that describes them both, or whether both can be
classified under the same general category.”).
Similarly unconvincing is Mr. Wilson’s assertion that Respondent’s cameras,
ultrasonic sensors, global positioning system, and radar object detectors for the semi-
autonomous driving of motor vehicles “are the same as or overlap with the term
‘computer hardware’” because the goods are comprised of computer hardware. These
goods do not fit within the plain meaning of “computer hardware,” namely, the
“physical elements of a computer … generally divided into the central processing unit
(CPU), main memory (or random-access memory, RAM), and peripherals,” which

38 Id. at 12, ¶ 26.
39 We take judicial notice of the definitions of “semiconductor.” Collins Dictionary, last visited
November 17, 2020, www.collinsdictionary.com/dictionary/english/semiconductor.
Cancellation No. 92068218
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encompasses keyboards, display monitors, printers, disk drives, network connections
and scanners.40
Moreover, the mere fact that Respondent’s goods for the semi-autonomous driving
of motor vehicles may incorporate or use semiconductors, computer hardware, and/or
computer software for use in design, simulation and control of electronic circuits,
receiving and transmitting signals, and modulation, demodulation and media access
control in voice and data communications does not mean that Respondent’s goods are
“the same as” Petitioner’s goods or that the parties’ products are related for likelihood
of confusion purposes. See Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1169 (TTAB
2001) (“It would be untenable to find that the parties’ goods are related merely
because applicant sells parts for computer hard drives that would be sold to hard
drive manufacturers to be used in hard drives that would in turn be sold to computer
manufacturers to be incorporated into computers that would eventually be sold by
opposer as part of its computerized irrigation systems.”); Falk Corp. v. Toro Mfg.
Corp., 493 F.2d 1372, 181 USPQ 462, 467 (CCPA 1974) (“Toro cannot prevail merely
on the ground that ‘rubber element shaft couplings’ may be contained in some of its
machines.”). As Mr. Filipovic, a Sales and Marketing Lead for Petitioner testified,
Petitioner’s “connectivity modules …could be in hundreds, thousands of products,

40 Encyclopedia Britannica.com, last visited November 17, 2020, www.britannica.com/
technology/computer/Supercomputer#ref829455. The Board may take judicial notice of
encyclopedias and other standard reference works. See, e.g., In re Mr. Recipe, LLC, 118
USPQ2d 1084, 1087 n.3 (TTAB 2016); In re White Jasmine LLC, 106 USPQ2d 1385, 1392
n.24 (TTAB 2013).

Cancellation No. 92068218
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lamps, seats, cushions, glasses with headphones, something built with the speakers
in for the wireless connectivity, Bluetooth, GPS, the radar, anything.”41 Accordingly,
the mere fact that Petitioner’s goods may be incorporated into Respondent’s goods or
have an application in motor vehicle connectivity is not, in itself, a sufficient basis for
finding the parties’ goods related.42
Petitioner argues in the alternative that its “computer software for use … in
receiving and transmitting signals … in voice and data communications” is
complementary to Respondent’s SUPER CRUISE goods because such goods require
a connectivity platform to operate.43 Respondent’s “connected platform,” OnStar, is
integral to the operation of Respondent’s goods as explained on Respondent’s website
at Cadillac.com:44
New owners of 2018 and 2019 models receive the Super Cruise package,
which includes 3 years of OnStar to support functionality. To continue
Super Cruise functionality after the 3-year Super Cruise package ends,
an OnStar plan must be purchased.

OnStar uses fourth generation long-term evolution cellular technology (4G LTE) “for
multiple things, GPS correction, map updates, as well as data uploads as well as data
uploads back to [Respondent’s] office server.”45 For example, “[m]ap updates are

41 Filipovic Discovery Deposition, 50 TTABVUE 32, 113:3-115:3; Id. at 26, 93:1-17.
42 Mr. Filipovic testified that Petitioner has sought patent protection for and “spent a
significant amount of money, time and effort working on vehicle connectivity technology.”
Filipovic Declaration, 42 TTABVUE 12, ¶ 19.
43 Maiorana Discovery Deposition, 39 TTABVUE 15, 11:6-7 (“Super Cruise requires the
OnStar package to function.”) see also id. at 79, Ex. 4 consisting of printouts from the
Cadillac.com website.
44 Id. at 15, 11:6-12.
45 Id. at 14, 10:8-10, 11:13-15.
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received over-the-air with the 4G LTE, and then … [t]he module that receives the
maps will communicate to the module that needs the map via the Wi-Fi.”46
Petitioner attempts to equate its computer software for use in receiving and
transmitting signals in voice and data communications to Respondent’s OnStar
system.47 OnStar, however, is a telecommunications system comprising many parts.48
Petitioner acknowledges that its computer software for use in receiving and
transmitting signals in voice and data communications is “for use in connectivity
products.”49 Goods are not complementary because one product is incorporated as a
part in another product. Rather, complementary goods are those that are likely to be
purchased and used together by the same purchasers. In re Sela Prods., LLC, 107
USPQ2d 1580, 1587 (TTAB 2013) (surge protectors, wall mounts and brackets
complementary goods because purchasers are likely to encounter both during course
of purchasing a television, audio or home theater system); In re Toshiba Med. Sys.
Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (“When we consider that applicant’s and
registrant’s goods are medical diagnostic equipment that can originate from the same
source (applicant itself is a source of both types of equipment), that can be purchased

46 Id. at 24, 20:12-18; see also id. at 112, Exhibit 6.
47 Petitioner’s Brief, 59 TTABVUE 25 (“Both of OnStar’s 4G LTE and WiFi connectivity
systems are encompassed within Petitioner’s identification of goods.”).
48 We take judicial notice that “[e]ach telecommunication system consists of three basic
elements: a transmitter that takes information and converts it to a signal[;] a transmission
medium over which the signal is transmitted[; and] a receiver that receives the signal and
converts it back into usable information.” New World Encyclopedia at
www.newworldencyclopedia.org/entry/Telecommunication (last visited November 19, 2020).
49 Petitioner’s Brief, 59 TTABVUE 10 (emphasis added); See also id. at 7-8 (“Petitioner’s
SUPERCRUISE branded electronic, control and communication products improve
‘connectivity’ in various types of products including vehicle applications.”).
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by the same facilities, and that are used on the same patients to treat the same
disease by the same physician, we conclude that these goods are related.”). The record
reflects no such relationship here.
In sum, Petitioner’s arguments focus on the “technological relationship” between
the parties’ goods based on the internal architecture of Respondent’s SUPER CRUISE
goods and the OnStar system.50 In analyzing likelihood of confusion, however, we
must consider whether the conditions surrounding the marketing of the parties’ goods
are such that they could be encountered by the same purchasers under circumstances
that could give rise to the mistaken belief that the goods come from a common source.
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1003-04
(Fed. Cir. 2002); see also In re Rexel, Inc., 223 USPQ 830, 831 (TTAB 1984). The
evidence here simply does not demonstrate that the same consumers would purchase
the parties’ goods or otherwise encounter the goods in such a way that we can find
them related for purposes of a likelihood of confusion analysis.51 For these reasons,
we find that the second DuPont factor weighs strongly against a finding of likely
confusion.

50 “Without a communication signal, the semi-autonomous system would not operate properly
and anymore of a technological relationship could not be imagined.” Petitioner’s Rebuttal
Brief, 62 TTABVUE 10.
51 We acknowledge the third-party registrations, websites and articles showing that
autonomous and semi-autonomous driving systems require a level of connectivity to function.
This evidence, however, does not support the argument that it is common for third-parties to
offer both semi-autonomous driving systems and Petitioner’s specific products under the
same mark.
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4. Similarity or Dissimilarity of the Trade Channels and Classes of
Consumers
Petitioner sells its products primarily to original equipment manufacturers,
original design manufacturers and replacement market suppliers in the “wireless
communication connectivity space.”52 “Computer hardware” also may flow to end
users of computers.
Respondent’s products flow to consumers of automobiles. Auto manufacturers like
Respondent typically manufacture parts for use in their own cars, which are sold
through their own dealerships to car buyers. Respondent’s automotive parts may also
travel to car buyers as components of cars purchased through used-car dealerships.
Another market for Respondent’s parts would be independent auto repair businesses.
Petitioner takes the position that confusion between the parties’ goods is likely to
occur among persons who repair automobiles. In support of this position, Petitioner
submitted the declaration of Mr. Nguyen, the supervisor of an auto body shop, who
testified that:
1. Businesses involved in car repair “will encounter on a daily basis both vehicle
systems (e.g. semi-autonomous driving systems) and discrete system parts
while performing maintenance and/or repair on vehicles.”53

2. “As with many … car repair and purchasing individuals … I frequently use the
ALLDATA Repair and ProDemand software databases in the performance of
my duties and find them to be very reliable. These databases have an extensive
symptom and diagnostic task database that helps me to quickly order parts;
repair software that helps me to prepare time estimates for each repair job;
and gives me access to repair manuals, repair procedures, diagnostic help,
provide specifications for parts, electrical components, modules, control units,

53 Nguyen Declaration, 40 TTABVUE 169, Part IV, ¶ 3.
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electrical diagrams, and/or technical service bulletins for common repair
issues.”54

3. In the process of repairing a car “I frequently come across the names of many
vehicular systems and system parts while diagnosing the problem and
ordering up repair parts. In a typical data sheet from ALLDATA or ProDemand
databases, there will be the vehicle name, the name of the vehicle system being
worked on and the system part.”55

4. “If I was working on a semi-autonomous driving system like the GM Super
Cruise system and I saw a system part with the same name as the semi-
autonomous driving system, I would likely be confused as to the source of the
system part.”56

Petitioner’s SUPERCRUISE products, however, are not automotive parts , nor
does Petitioner directly “make any systems for cars that are branded SuperCruise.”57
Moreover, Mr. Nguyen testified that the names of non-car manufacturers would not
appear in the ALLDATA or ProDemand databases.58 To the extent Petitioner’s
products may be incorporated into automotive parts, Mr. Filipovic, a Sales and
Marketing Lead for Petitioner, testified that he didn’t “think” Petitioner’s mark
would appear in an owner’s manual for a car.59 He also testified that he was not aware
of any instances where Petitioner’s mark appears in data sheets related to fixing
cars.60 This is not surprising, given that Petitioner’s goods are not auto parts.

54 Id. at 169, 170, IV ¶ 5.
55 Id. at 170, ¶ 6.
56 Id. at ¶ 8.
57 Filipovic Discovery Deposition, 50 TTABVUE 30, 106:18-22, 107:2-7.
58 Nguyen Discovery Deposition, 49 TTABVUE 286, 79:11-13.
59 Id. at 30, 107:23-25.
60 Id., 107:6-25, 108:3-25, 109:1-10
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Mr. Nguyen’s testimony that “If I was working on a semi-autonomous driving
system like the GM Super Cruise system and I saw a system part with the same name
as the semi-autonomous driving system, I would likely be confused as to the source
of the system part”61 has little, if any, probative value. The testimony is purely
speculative because it is unlikely that those in the auto repair industry would
encounter Petitioner’s SUPERCRUISE mark in the course of repairing a car.
Petitioner further asserts that the parties’ trade channels are related because both
parties are involved in the “connectivity ecosystem”:
Technical standard bodies set the rules and specifications for the entire
connectivity ecosystem made up of carriers, suppliers, purchasing
agents, consumers, wholesalers, wireless operators, and stores. GM’s
participation in technical standard bodies, road shows, symposiums,
trade shows, and the like devalues and confuses our SUPERCRUISE
brand in the market since we both are involved with and [are] marketing
to the same ecosystem which will create confusion among our peers and
customers.62

It is, however, “error to deny registration simply because” the parties may sell their
goods within the same field or “ecosystem.” See Electronic Design & Sales, Inc. v.
Electronic Data Sys. Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992).
“This is especially true where, as here … [the parties’] goods are specifically different
and noncompetitive.” Id. Purchaser confusion is the “primary focus” in a likelihood of
confusion analysis and “the enquiry generally will turn on whether actual or potential
‘purchasers’ are confused.” Id. at 1390.

61 Nguyen Declaration, 40 TTABVUE 170, ¶ 8.
62 Filipovic Declaration, 42 TTABVUE 9, ¶ 14.
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While both parties may interface with wireless carriers, neither party targets its
products to wireless carriers.63 As for trade shows and conferences, Petitioner
markets its products at the Consumer Electronics Show (CES) and conferences of the
International Wireless Industry Consortium (IWIC) as well as to attendees of the
conferences of the standard body of engineers, “who decide on the standards, technical
standards of any product.”64 The record shows that Respondent has had a booth at
the CES, made a presentation about the SUPER CRUISE system to the IWIC, and
discussed the SUPER CRUISE system at a meeting of the standard body of
engineers.65 The evidence, however, does not support that Respondent is a regular
attendee or presenter at such conferences or that Respondent routinely markets its
semi-autonomous driving systems through such trade channels.
In sum, there is no meaningful overlap between the parties’ trade channels or
consumers. Accordingly, the third DuPont factor supports a finding that confusion is
unlikely.
5. Conditions of Sale and Sophistication of the Purchasers
We now consider the conditions under which the goods are likely to be purchased,
e.g. whether on impulse or after careful consideration, as well as the degree of any
consumer sophistication. Automobiles are expensive, and the record reflects that

63 Filipovic Discovery Deposition, 50 TTABVUE 26, 91:8-12 (testifying that Petitioner does
not “sell directly” to wireless carriers).
64 Id. at 21, 71:6-8, 72:6-17; Filipovic Declaration, 42 TTABVUE 11, ¶ 18.
65 Filipovic Discovery Deposition, 50 TTABVUE 21, 71:15-19. Mr. Filipovic testified that “one
of the GM guys” was at a meeting of the standard body of engineers “talking about, say,
SuperCruise and things like that. So a lot of companies come there from all industries to
present their case.” Id. (emphasis added); Filipovic Declaration, 42 TTABVUE11, ¶ 18.
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Respondent’s SUPER CRUISE semi-autonomous driving system is an expensive add-
on feature costing approximately $5,000.66 The purchasing process also can be
lengthy,67 and semi-autonomous driving systems raise safety concerns. Accordingly,
we find that consumers are likely to purchase Respondent’s goods only after careful
thought and consideration.
Petitioner’s products are comparatively inexpensive, but Petitioner sells its
products through “very high-level marketing”68 primarily to sophisticated consumers
“who have some technological background [and] understand technology.”69
Petitioner’s products are subject to a lengthy sales negotiation process, involving
several steps and back and forth with the consumer regarding product
specifications.70 Sometimes Petitioner requires prospective consumers to sign a
nondisclosure agreement.71 We acknowledge, however, that “computer hardware” is
broad enough to encompass goods sold to ordinary consumers with little
sophistication.
Accordingly, we find that the fourth DuPont factor is neutral or weighs only
slightly in Respondent’s favor.

66 Gorbatoff Declaration, 54 TTABVUE 4, ¶ 10; Maiorana Declaration, 55 TTABVUE 3, ¶ 10.
67 Maiorana Declaration, 55 TTABVUE 4, ¶ 14 (purchasing process for Respondent’s SUPER
CRUISE system can “be quite time-consuming … particularly … if the purchaser opts for
financing, which is common with all vehicles.”); see also Burrascano Declaration, 56
TTABVUE 4, ¶ 16.
68 Filipovic Discovery Deposition, 50 TTABVUE 18, 61:8-9.
69 Id. at 22, 76:18-21.
70 Id. at 24, 82:1-25, 82:1-25, 83:1-19.
71 Id. at 18, 61:13-14; id. at 20 67:25; 68:1-3, id. at 23 81:7-19.
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6. Actual Confusion
The seventh and eighth DuPont factors are “[t]he nature and extent of any actual
confusion” and “[t]he length of time during and the conditions under which there has
been concurrent use without evidence of actual confusion.” DuPont, 177 USPQ at 567.
Respondent asserts that there has been no actual confusion and that this weighs
against a finding of likelihood of confusion. It is not necessary, however, to
demonstrate actual confusion to establish a likelihood of confusion. Weiss Assoc. v.
HRL Assoc., 902 F.2d 1546, 14 USPQ2d 1840, 1842-43 (TTAB 1990). Moreover, the
absence of actual confusion here is not surprising given the differences between the
parties’ goods, consumers and trade channels, and the conditions under which the
parties’ goods are purchased, as well as the relatively short period of
contemporaneous use of the parties’ marks. See Barbara’s Bakery, 82 USPQ2d at
1287 (the probative value of the absence of actual confusion depends upon there being
a significant opportunity for actual confusion to have occurred). Accordingly, the
seventh and eighth DuPont factors are neutral.
7. Market Interface between the Parties
Respondent argues that the tenth DuPont factor weighs in its favor because there
is a lack of “market interface between the parties and their respective products.”72
“DuPont lists several possible market interfaces, such as: (1) consent to register or
use; (2) contractual provisions designed to preclude confusion; (3) assignment; and (4)
laches and estoppel attributable to the challenger that would indicate lack of

72 Respondent’s Brief, 60 TTABVUE 41 (emphasis omitted).
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confusion.” Cunningham v. Laser Golf, 55 USPQ2d at 1847 (citing DuPont, 117 USPQ
at 567). There is no evidence in the record regarding any market interface between
the parties. Accordingly, we find this DuPont factor neutral.
8. The Extent of Potential Confusion
Respondent argues that the potential for confusion is de minimis, given that the
parties “operate in completely different commercial spaces and sell their products
through completely different channels of trade, each to discriminating customers that
typically must go through a lengthy process in order to purchase their respective
products.”73 Essentially, Respondent is rearguing the third and fourth DuPont
factors. For the reasons discussed above, we agree that the potential for confusion is
de minimis. Accordingly, the twelfth DuPont factor favors Respondent.
9. Any Other Established Fact Probative of the Effect of Use
Petitioner asserts that another factor probative of the effect of use is that
Respondent was aware of Petitioner’s mark when Respondent filed its application.
Petitioner argues: “It is axiomatic that the junior use should avoid the senior user’s
mark and Registrant had an opportunity to do so, but deliberately chose not to.” 74

73 Id.
74 Petitioner’s Brief, 59 TTABVUE 36-37. Indeed, Petitioner argues the opposite asserting
that Respondent’s mark is likely to cause reverse confusion. In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993) (explaining reverse confusion: “The junior user
does not seek to benefit from the goodwill of the senior user; however, the senior user may
experience diminution or even loss of its mark’s identity and goodwill due to extensive use of
a confusingly similar mark by the junior user.”).
Where, as here, goods are not competitive and are marketed to different types of consumers,
reverse confusion is unlikely. 4 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND
UNFAIR COMPETITION § 23:10 (5th ed. 2020 update) (“When few of the senior user’s customers
will be exposed to or familiar with the junior user’s mark, there will be no ‘overwhelming’ or
‘swamping’ effect on the smaller senior user’s good will and mark.”); see also Checkpoint Sys.
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Petitioner, however, does not argue nor is there any evidence to support an inference
that Respondent adopted the SUPER CRUISE mark in bad faith. See, e.g., Sweats
Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir.
1987) (“an inference of ‘bad faith’ requires something more than mere knowledge of a
prior similar mark.”). Accordingly, the thirteenth DuPont factor is neutral.
IV. Balancing the Factors
Petitioner has proven its entitlement to bring this cancellation action and its
priority, but based on all of the evidence of record, we find that there is no likelihood
of confusion. The parties’ marks are virtually identical, but the goods are different
and are marketed to different consumers. Even if confusion were theoretically
possible, the Trademark Act does not prevent registration of a mark based on the
mere possibility of consumer confusion, but requires that confusion be likely.
Electronic Design & Sales, 21 USPQ2d at 1391 (“We are not concerned with the mere
theoretical possibilities of confusion, deception, or mistake or with de minimis
situations but with practicalities of the commercial world, with which the trademark
law deals.”) (quoting Whitco Chem. Co. v. Whitfield Chem. Co., 418 F.2d 1403, 164
USPQ 43, 44-45 (CCPA 1969), aff’g, 153 USPQ 412 (TTAB 1967)); Bongrain Int’l
(Am.) Corp. v. Delice de France, Inc., 811 F.2d 1479, 1 USPQ2d 1775, 1779 (Fed. Cir.
1987) (“The statute refers to likelihood, not the mere possibility, of confusion.”);
Electronic Data v. EDSA Micro Corp., 23 USPQ2d at 1465 (“Section 2(d) of the

Inc. v. Check Point Software Techs., Inc., 296 F.2d 270, 60 USPQ2d 1609, 1620 (3d Cir. 2001)
(“Because the products serve different functions, and there is only ‘minimal overlap’ in the
product technology, it is unlikely consumers would be confused by the similar marks.”).
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Trademark Act is concerned about the likelihood of confusion, not some theoretical
possibility built on a series of imagined horrors.”).
Decision: The petition to cancel Registration No. 5387518 is denied.