Pellegrino and Associates, LLC

Trademark Trial and Appeal Board

Dec 12, 2017

No. 86846405 (T.T.A.B. Dec. 12, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: December 12, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Pellegrino and Associates, LLC
_____

Serial No. 86846405
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Amy A. Rollins of Brannon Sowers & Cracraft PC,
for Pellegrino and Associates.
Alexandra Suarez, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
_____

Before Zervas, Bergsman and Gorowitz,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Pellegrino and Associates, LLC (“Applicant”) seeks registration on the Principal
Register of the mark ipAnalytx (in standard characters) for “computer software for
evaluating patents; computer software for evaluating patent portfolios,” in Class 9.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that

1 Application Serial No. 86846405 was filed on December 11, 2015, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1052(a), based upon Applicant’s claim of first use anywhere and
use in commerce since at least as early as October 5, 2010.
Serial No. 86846405
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Applicant’s mark so resembles the registered mark IPANALYTICS (typed drawing)
for the services listed below as to be likely to cause confusion:
Outsourcing services for others in the field of invention
development; business consultation in the fields of
acquiring, developing, identifying, promoting, managing,
evaluating, and leveraging intellectual property assets, in
Class 35; and
Intellectual property consultation, namely, consulting for
others on how to acquire, identify, develop, manage, and
leverage intellectual property assets; product development
services, namely, invention development; intellectual
property consultation, namely, consulting for others on
how to identify, evaluate, and engineer around competitive
intellectual property, in Class 42.2
The Examining Attorney also refused registration under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s mark is merely
descriptive. Specifically, the Examining Attorney contends that Applicant’s mark
ipAnalytx directly describes the purpose and function of software: that is,
Applicant’s software analyzes patents.3
When the refusals were made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusals to register.
I. Whether Applicant’s Mark Is Merely Descriptive?
Section 2(e)(1) of the Trademark Act prohibits registration on the Principal
Register of “a mark which, (1) when used on or in connection with the goods of the

2 Principal Register Registration No. 3012850, registered November 8, 2005; renewed.
3 Examining Attorney’s Brief (9 TTABVUE 4-5).
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applicant is merely descriptive . . . of them.” 15 U.S.C. § 1052(e)(1). A term is “merely
descriptive” within the meaning of Section 2(e)(1) if it “immediately conveys
knowledge of a quality, feature, function, or characteristic of the goods or services
with which it is used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297,
102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer AG, 488 F.3d 960,
82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). “On the other hand, if one must exercise
mature thought or follow a multi-stage reasoning process in order to determine what
product or service characteristics the term indicates, the term is suggestive rather
than merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 498 (TTAB
1978); see also In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983); In re Universal
Water Sys., Inc., 209 USPQ 165, 166 (TTAB 1980).
Whether a mark is merely descriptive is determined in relation to the goods for
which registration is sought, not in the abstract or on the basis of guesswork, and we
must consider “the context in which [the mark] is being used, and the possible
significance that the term would have to the average purchaser of the goods because
of the manner of its use or intended use.” In re Chamber of Commerce of the U.S.,
102 USPQ2d at 1219 (quoting In re Bayer AG, 82 USPQ2d at 1831). In other words,
we evaluate whether someone who knows what the goods are will understand the
mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med.
Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re Tower
Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)).
Serial No. 86846405
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When two or more merely descriptive terms are combined, the determination of
whether the combined mark also has a merely descriptive significance turns on
whether the combination of terms evokes a non-descriptive commercial impression.
If each component retains its merely descriptive significance in relation to the goods,
the combination results in a composite that is itself merely descriptive. In re
Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004)
(quoting Estate of P.D. Beckwith, Inc. v. Commr., 252 U.S. 538, 543 (1920)); see also
In re Tower Tech, Inc., 64 USPQ2d at 1318 (SMARTTOWER merely descriptive of
commercial and industrial cooling towers); In re Sun Microsystems Inc., 59 USPQ2d
1084 (TTAB 2001) (AGENTBEANS merely descriptive of computer programs for use
in developing and deploying application programs); In re Putman Publ’g. Co.,
39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of
news and information services in the food processing industry).
On the other hand, a mark comprising a combination of merely descriptive
components is registrable if the combination of terms creates a unitary mark with a
non-descriptive meaning, or if the composite has an incongruous meaning as applied
to the goods or services. See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382
(CCPA 1968) (SUGAR & SPICE for “bakery products”); In re Shutts, 217 USPQ 363
(SNO-RAKE for “a snow removal hand tool having a handle with a snow-removing
head at one end, the head being of solid uninterrupted construction without prongs”).
In this regard, “incongruity is one of the accepted guideposts in the evolved set of
legal principles for discriminating the suggestive from the descriptive mark.” In re
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Shutts, 217 USPQ at 365. See also In re Tennis in the Round, Inc., 199 USPQ at 498
(the association of applicant’s mark TENNIS IN THE ROUND with the phrase
“theater-in-the-round” creates an incongruity because applicant’s services do not
involve a tennis court in the middle of an auditorium). Thus, we must consider the
issue of descriptiveness by looking at the mark in its entirety. In this appeal, the
mark at issue is the combination of the terms “IP” and “Analytx.”
The letters “IP” in Applicant’s mark ipAnalytx used in connection with software
for evaluating patents and patent portfolios are an abbreviation for the term
“intellectual property.”4 “Intellectual Property” is defined as “a work or invention that
is the result of creativity, such as a manuscript or a design, to which one has rights
and for which one may apply for a patent, copyright, trademark, etc.”5
The term “Analytx” is an intentional misspelling and phonetic equivalent of the
word “Analytics.” The word “analytics” is defined as “information resulting from the
systematic analysis of data or statistics.”6 A novel or intentional misspelling that is
the phonetic equivalent of a merely descriptive word is also merely descriptive if
purchasers would perceive the different spelling as the equivalent of the descriptive
word. See In re Quik-Print Copy Shop, Inc., 616 F.2d 523, 205 USPQ 505, 507 n.9

4 AcronymFinder.com attached to the March 29, 2016 Office Action (TSDR 9). See also
Dictionary.com based on the Random House Dictionary (2017) attached to Applicant’s
March 21, 2017 Request for Reconsideration (5 TTABVUE 10) (“IP” is defined, inter alia, as
“intellectual property.”).
Citations to the TSDR database are to the .pdf format.
5 Oxford Dictionaries (en.oxforddictionaries.com) attached to the March 29, 2016 Office
Action (TSDR 11).
6 Id. at TSDR 12.
Serial No. 86846405
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(CCPA 1980) (QUIK-PRINT is merely descriptive of printing and photocopying
services); In re Hercules Fasteners, Inc., 203 F.2d 753, 97 USPQ 355 (CCPA 1953)
(FASTIE is merely descriptive of tube sealing machines); Andrew J. McPartland, Inc.
v. Montgomery Ward & Co., 164 F.2d 603, 76 USPQ 97 (CCPA 1947) (KWIXTART is
merely descriptive of electric storage batteries); In re Carlson, 91 USPQ2d 1198, 1203
(TTAB 2009) (URBANHOUZING is merely descriptive of real estate services); In re
State Chem. Mfg., Co., 225 USPQ 687, 689-90 (TTAB 1985) (FOM is merely
descriptive of a foam rug shampoo).
The term ipAnalytx used in connection with evaluating patents and patent
portfolios directly conveys to the software users and potential software users the
purpose and function of the software (i.e., the systematic analysis of intellectual
property data). There is no need for conjecture or multiple step reasoning. The fact
that Applicant’s mark is the combination of two descriptive terms “IP” and “Analytx”
does not change the descriptive nature of the combined term; in other words, the
combination of the terms “IP” and “Analytx” does not create a term with a
nondescriptive meaning. See In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d
1859, 1860 (Fed. Cir. 1987) (FIRSTIER is merely descriptive of banking services); In
re Greenliant Sys. Ltd., 97 USPQ2d 1078, 1083 (TTAB 2010) (NANDRIVE is generic
for electronic integrated circuits, including flash memory drives).
The evidence submitted by the Examining Attorney corroborates our finding that
the mark ipAnalytx is merely descriptive when used in connection with evaluating
patents and patent portfolios. The following examples are illustrative:
Serial No. 86846405
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• Thomson Reuters website (thompsonreuters.com)
IP Analytics Services
Expert in-depth reports on technical, competitive and
industry intelligence
Spot opportunities and foresee trends
Make faster, more confident business decisions with expert
IP analytics
Ease your time and resource challenges with custom-
tailored intelligence from IP experts. Get clear, customized
reports on technical, competitive and industry intelligence
blending reliable data and expert analysis. … Tap into our
deep IP expertise and identify the white space, monitor
competitors and perform robust portfolio assessments.7
• IP.com website
IP Analytics
Analyze. Optimize. Monetize
IP.com offers the intellectual property industry’s most
significant and comprehensive online patent analytics
tools, which enable you to determine patent valuation,
make legal assessments, and leverage IP business
intelligence to support critical portfolio management
decisions. Our IP analytics put a tangible value on the
intangible.8
• Innography website (innography.com)
Patent and IP Analytics Solutions
Innography delivers comprehensive, online Intellectual
Property Business Intelligence (IPBI) applications and
patent tools that enable companies of all types and sizes to
achieve the best possible return on IP investments.

7 September 22, 2016 Office Action (TSDR 12).
8 Id. at TSDR 14.
Serial No. 86846405
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Through powerful business analytics platform, Innography
streamlines manual IP-related tasks by giving instant
access to reliable and vital data. Our IP analytics tools
enable organizations to get products to market faster,
uncover new and more lucrative revenue sources, keep
better track of competitors, pre-empt litigation claims and
stay on top of numerous IP-associated functions.9
Applicant contends that the definition of “IP” is not limited to “Intellectual
Property,” that “IP” could mean “Internet Protocol,” and that “a substantial portion
of the consuming public would have other associations with ‘IP Analytics’ other than
intellectual property.”10 As noted above, we do not analyze whether Applicant’s mark
is descriptive in a vacuum, but in connection with the goods on which the mark is
used. In that light, Applicant’s argument flies in the face of the evidence submitted
by the Examining Attorney and discussed above.
We find that Applicant’s mark ipAnalytx is merely descriptive of software for
evaluating patents and patent portfolios.
II. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973) (“du Pont”) (cited in B&B Hardware, Inc. v. Hargis
Indus., Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015)); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have

9 Id. at 23.
10 Applicant’s Brief, p. 8 (7 TTABVUE 9).
Serial No. 86846405
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considered each du Pont factor that is relevant and for which there is evidence of
record. 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.”). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the similarities between the goods or services. See In re Chatam Int’l
Inc., 380 F.2d 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.”); see also
In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The
likelihood of confusion analysis considers all DuPont factors for which there is record
evidence but ‘may focus … on dispositive factors, such as similarity of the marks and
relatedness of the goods’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 303 F.3d
1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
A. The similarity or dissimilarity of the marks.
We turn first to 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. In re E. I. du Pont De Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). “Similarity in any one of these elements
may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d
Serial No. 86846405
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1810, 1812 (TTAB 2014). “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) (quoting Leading
Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1905 (TTAB 2007); see
also San Fernando Elec. Mfg. Co. v. JFD Elec. Components Corp., 565 F.2d 683, 196
USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992). The proper focus is on the
recollection of the average customer, who retains a general rather than specific
impression of the marks. Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d
1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438
(TTAB 2012); Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344
(TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Because the goods at issue are software for evaluating patents and patent portfolios
and services in connection with acquiring, developing, identifying, promoting,
managing, evaluating, and leveraging intellectual property assets, the average
customer is going to be a company, attorney, law firm, or individual inventor.11

11 Michael Pellegrino, Applicant’s owner, operator, and primary sales representative, testified
that Applicant’s customers are “attorneys, in-house corporate counsel, and other legal and
patent portfolio management professionals, who assist their clients or companies with patent
strategies in their competitive businesses.” Pellegrino Decl. ¶7 (4 TTABVUE 26).
Serial No. 86846405
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Applicant’s mark is ipAnalytx (standard characters) and the registered mark is
IPANALYTICS (typed drawing). Prior to November 2, 2003, “standard character”
drawings were known as “typed” drawings. Effective November 2, 2003, Trademark
Rule 2.52, 37 C.F.R § 2.52, was amended to replace the term “typed” drawing with
“standard character” drawing. A typed mark is the legal equivalent of a standard
character mark. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2
(Fed. Cir. 2012) (“until 2003, ‘standard character’ marks formerly were known as
‘typed’ marks.”); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir.
1983) (rejecting argument that for purposes of determining whether two marks are
similar, a mark in a typed drawing (equivalent to modern standard character format)
is distinct from such mark in a logo format; “[b]y presenting its mark in a typed
drawing, a difference cannot legally be asserted by that party” (emphasis in original)).
Marks presented in standard or typed characters are not limited to any particular
depiction. The rights associated with a mark in standard or typed characters reside
in the wording, and not in any particular display. Thus, Applicant seeks registration
of a mark that might be depicted in any manner, regardless of the font style, size, or
color, and might at any time in the future be displayed in a manner similar to
Registrant’s mark. In re Viterra Inc., 101 USPQ2d at 1909-11; Citigroup Inc. v.
Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir.
2011); Squirtco v. Tomy Corp., 216 USPQ at 939. Thus, the marks are similar in
appearance.

Serial No. 86846405
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While there is not necessarily one, correct pronunciation, we find that, although
the “Analytics” suffix of Applicant’s mark is spelled with a “TX” rather than “TICS,”
consumers are likely to view and verbalize both marks as IP ANALYTICS, based on
normal English pronunciation. See, e.g., Giersch v. Scripps Networks Inc., 90 USPQ2d
1020, 1025 (TTAB 2009) (finding that DESIGNED TO SELL does not create a distinct
commercial impression from DESIGNED2SELL).
Both marks mean and engender the commercial impression of analyzing
intellectual property.
In view of the foregoing, we find that the marks ipAnalytx (standard characters)
and IPANALYTICS (typed drawing) are similar in appearance, sound, connotation
and commercial impression.
B. The similarity or dissimilarity and nature of the goods and services.
Applicant is seeking to register its mark for software for evaluating patents and
patent portfolios. The cited mark is registered for, inter alia, “business consultation
in the fields of … evaluating … intellectual property assets” and “intellectual property
consultation, namely, consulting for others on how to … evaluate … intellectual
property.”12 It does not take a great leap of imagination or logic to find that software

12 Under this du Pont factor, the Trademark Examining Attorney need not prove, and we
need not find, similarity as to each and every product or activity listed in the descriptions of
goods and services. It is sufficient for a refusal based on likelihood of confusion that
relatedness is established for any item encompassed by the identification of goods in a
particular class in the application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409
(TTAB 2015); In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (“[I]t is sufficient
for finding a likelihood of confusion if relatedness is established for any item encompassed by
the identification of goods within a particular class in the application.”).
Serial No. 86846405
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for evaluating patents is related to services of evaluating intellectual property, of
which patents are a part, because both are dealing with products and activities aimed
at the same purpose (i.e., evaluating patents). It is sufficient for establishing that
goods and services are related that we find that they would or could be encountered
by same persons under circumstances that could, because of similarities of marks
used with them, give rise to the mistaken belief that they originate from or are in
some way associated with the same producer. Coach Servs., Inc. v. Triumph Learning
LLC, 101 USPQ2d at 1722; Edwards Lifesciences Corp. v. VigiLanz Corp., 94
USPQ2d 1399, 1410 (TTAB 2010).
Further, the Examining Attorney submitted evidence of third parties that
advertise that they license proprietary software for intellectual property analysis and
also render intellectual property analysis using proprietary software. The third
parties are listed below:
• IP|Checkups (ipcheckups.com) advertises intellectual property strategic and
custom consulting services and its PatentCam patent search and management
system that provides customized analytics, CleanTech Patent Edge, a database of
clean technology market categories, Advanced Battery & Capacitor PatentEdge, a
patent database of battery technology, LED PatentEdge, a database of technology in
the field of LED bulbs and fixtures, components, drivers, optics, epitaxy, phosphors
and substrates, as well as the development of customs databases;13

13 March 29, 2016 Office Action (TSDR 17-22).
Serial No. 86846405
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• AcclaimIP (acclaimip.com) advertises AcclaimIP patent search software and
AcclaimIP patent research consulting services;14
• Gridlogics (gridlogics.com) advertises custom intellectual property and patent
management software (Patent iNSIGHT Pro and PATSEER) and consulting services
in connection with intellectual property software development and implementation
including patent data analysis, statistical data analysis, patent application tracking,
intellectual property management, and patent data mining;15
• Dennemeyer (dennemeyer.com) offers IP management software (“Dennemeyer’s
Intellectual Property Asset Management System”) and intellectual property
consulting services;16
• CPA Global (cpaglobal.com) advertises Advanced Analysis, a full lifecycle patent
research and patent analysis software for use in connection with patent licensing,
patent litigation, merger and acquisition due diligence, competitive intelligence, risk
management, and IP strategies and consulting and advisory services in the field of
changing technologies, competitive technology strategy, and identification of
potential partners;17

14 March 29, 2016 Office Action (TSDR 23-25).
15 March 29, 2016 Office Action (TSDR 26-31).
16 March 29, 2016 Office Action (TSDR 27-35).
17 September 22, 2016 Office Action (TSDR 26-31).
Serial No. 86846405
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• PatentSight (patentsight.com) advertises strategic patent analysis consulting
services using its Patent Asset Index, an analytics platform for intellectual property
management;18
• Cardinal Intellectual Property (cardinal-ip.com) advertises its intellectual
property consulting services for evaluating the client’s patents and competitors’
patents, evaluating litigation risks, gaps in competitive data, and recognizing
licensing opportunities, including software development in the field of patents,
trademarks, invention disclosures, and project management. Cardinal Intellectual
Property licenses an invention disclosure management system (IDEAS) that can be
used as an integrated part of a legacy system or as a standalone system;19 and
• Thomson Reuters (thomsonreuters.com) advertises its IP Analytics Services and
the Thomson Data Analyzer, software for analyzing intellectual property data to
analyze trends, profile competitors, analyze patent infringement risks, and identify
strategic development opportunities.20
Applicant’s argument that there is no overlap between its software for evaluating
patents and patent portfolios and Registrant’s “business consultation in the fields of
… evaluating … intellectual property assets” and “consulting for others on how to …
evaluate … intellectual property” stretches credulity. In fact, the third-party evidence

18 September 22, 2016 Office Action (TSDR 32-34).
19 September 22, 2016 Office Action (TSDR 35-46).
20 September 22, 2016 Office Action (TSDR 47-52).
Serial No. 86846405
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demonstrates that software for evaluating patents and patent portfolios is used by
companies rendering intellectual property consulting services.
We find that Applicant’s software for evaluating patents and patent portfolios are
related to Registrant’s services.
C. Established, likely-to-continue channels of trade.
Because Applicant’s software and Registrant’s services are both licensed or offered
to consumers seeking to evaluate intellectual property, including patents and patent
portfolios, Applicant’s software and Registrant’s services are offered in the same
channels of trade to the same consumers.21
D. Degree of Consumer Care.
Applicant contends that its consumers are “sophisticated about their patent
portfolio needs.”22 While neither Applicant nor the Examining Attorney characterize
the degree of care used by Registrant’s clients in selecting an intellectual property
consultant, we have no reason to believe that they would exercise any less care than
Applicant’s licensees. Accordingly, Applicant concludes that “[i]t is unlikely that such
discriminating purchasers will think that a provider of intellectual property
consulting services, such as Registrant, could satisfy the need for software that uses
patent data for enabling customers to conduct their own patent or patent portfolio
evaluation, or vice versa.”23 However, Applicant’s conclusion flies in the face of the

21 Michael Pellegrino, Applicant’s owner and operator and primary sales representative
testified that Applicant and Registrant “have worked with some of the same companies.”
Pellegrino Decl. ¶14 (7(TTABVUE 27).
22 Applicant’s Brief, p. 14 (7 TTABVUE 15).
23 Applicant’s Brief, p. 15 (7 TTABVUE 16).
Serial No. 86846405
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third-party evidence submitted by the Examining Attorney showing third parties
rendering intellectual property evaluation services using software for evaluating
patents and patent portfolios and offering to license that software to others.
While we find that both Applicant’s licensees and Registrant’s clients will exercise
a high degree of consumer care selecting software for evaluating patents and patent
portfolios or an intellectual property consultant, we are not persuaded that even
consumers exercising a high degree of purchasing care would not be confused when
the marks ipAnalytx and IPANALYTICS are used in connection with related goods
and services. These purchasers are likely to be aware that a single entity can be the
source of both such products and services. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1695 (Fed. Cir. 2005)
(“And even more sophisticated purchasers might be aware that champagne houses
offer both types of products under similar marks, and could easily conclude that
VEUVE ROYALE was Veuve Clicquot’s sparkling wine”). Moreover, purchasers,
familiar with Registrant’s services, are likely to participate in purchasing decisions
involving Applicant’s software, and assume that the services and software are
associated or related in some way.
Nevertheless, in the absence of probative evidence, we find that the degree of
consumer care is a neutral factor.
E. The nature and extent of any actual confusion.
Michael Pellegrino, Applicant’s owner and operator and primary sales
representative testified that he is not aware any reported instances of confusion.
Serial No. 86846405
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I have personally spoken with the owner of the IP Analytics
mark on several occasions and I understand that I have
worked with some of the same companies as the owner of
that mark. To my knowledge, no client has ever confused
the professional consulting services offered by the owner of
the IP Analytics marks with the software program called
ipAnaltyx offered for subscription by [Applicant].24
The Federal Circuit has addressed the question of the weight to be given to an
assertion of no actual confusion by an applicant in an ex parte proceeding:
With regard to the seventh DuPont factor, we agree with
the Board that Majestic’s uncorroborated statements of no
known instances of actual confusion are of little
evidentiary value. See In re Bissett-Berman Corp., 476 F.2d
640, 642, 177 USPQ 528, 529 (CCPA 1973) (stating that
self-serving testimony of appellant”s corporate president’s
unawareness of instances of actual confusion was not
conclusive that actual confusion did not exist or that there
was no likelihood of confusion). A showing of actual
confusion would of course be highly probative, if not
conclusive, of a high likelihood of confusion. The opposite
is not true, however. The lack of evidence of actual
confusion carries little weight, [citation omitted], especially
in an ex parte context.
Majestic Distilling, 65 USPQ2d at 1205.
While examples of actual confusion may point toward a finding of a likelihood of
confusion, an absence of such evidence is not compelling in support of a finding of no
likelihood of confusion. Thus, we cannot conclude from the lack of instances of actual
confusion that confusion is not likely to occur.
In any event, this record is devoid of any probative evidence relating to the extent
of use of Applicant’s and Registrant’s marks and, thus, whether there have been

24 Pellegrino Decl. ¶14 (4 TTABVUE 27).
Serial No. 86846405
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meaningful opportunities for instances of actual confusion to have occurred in the
marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1847 (Fed. Cir. 2000); Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774
(TTAB 1992).
F. Analyzing the factors.
Because the marks are similar, the goods and services are related, and the goods
and services are offered in the same channels of trade to the same consumers, we find
that Applicant’s mark ipAnalytx for “computer software for evaluating patents;
computer software for evaluating patent portfolios” is likely to cause confusion with
the registered mark IPANALYTICS for “business consultation in the fields of …
evaluating … intellectual property assets” and “intellectual property consultation,
namely, consulting for others on how to … evaluate … intellectual property.”
Decision: The refusal to register Applicant’s mark ipAnalytx is affirmed.