PsyBar, LLCv.David Mahony, Ph.D., ABPP

Trademark Trial and Appeal Board

Aug 28, 2013

No. 91198483 (T.T.A.B. Aug. 28, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
August 28, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

PsyBar, LLC

v.

David Mahony, Ph.D., ABPP
___

Opposition No. 91198483
to Application Serial No. 85095429
___

Robert A. Gust of Bernick Lifson, P.A.

David Mahony, Ph.D., ABPP, pro se
______

Before Holtzman, Lykos and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:

Applicant David Mahony, Ph.D., ABPP (“applicant”) seeks registration of the
mark PSYBARI, in standard characters, for “Personality testing for psychological
purposes; Providing psychological profiles and psychological record analysis and
assessments via a website that are designed to provide custom tailored outputs
about recommended resources and treatments associated with a defined set of
Opposition No. 91198483

2

symptoms and concerns; Psychological assessment services; Psychological testing;
Psychological testing services; Psychological tests” in International Class 44.1 In its
amended notice of opposition, PsyBar, LLC (“opposer”) alleges prior use of the mark
PSYBAR for “providing personality and other psychological testing for psychological
purposes, providing psychological profiles and psychological record analysis and
assessments; providing custom tailored reports about recommended resources and
treatments associated with a defined set of symptoms and concerns; psychological
assessment services; psychological testing; and psychological testing services.”
Amended Notice of Opposition ¶ 3. Opposer also pleads ownership of Registration
No. 1998368 for the stylized mark shown below

for “providing scientific consultation to the legal community, namely providing
expert witness testimony, voir dire and scientific jury selection advice, and
litigation strategy services” in International Class 42 (the “Registration”),2 and
alleges that its “scientific consulting services rely upon and include psychological
and psychiatric evaluations, and administering and evaluating psychological and
psychiatric tests.” Id. ¶ 2. As grounds for opposition, opposer alleges that use of
applicant’s mark is likely to cause confusion with opposer’s previously-used and

1 Application Serial No. 85095429, filed July 28, 2010, alleging first use and first use
in commerce on March 1, 2008.
2 Issued September 3, 1996 from an application filed October 10, 1995; renewed.
Opposition No. 91198483

3

registered mark PSYBAR under Section 2(d) and falsely suggest a connection with
opposer under Section 2(a). In his answer, applicant denies the salient allegations
in the amended notice of opposition and asserts several “defenses,” which the Board
construed as amplifications of applicant’s denials3 and which in any event were not
pursued at trial or proven. Similarly, opposer’s Trial Brief addresses only the
likelihood of confusion claim, and therefore the false suggestion of a connection
claim has been waived and will be given no further consideration. Viacom
International Inc. v. Komm, 46 USPQ2d 1233, 1235 n.3 (TTAB 1998); Krause v.
Krause Publications, Inc., 76 USPQ2d 1904, 1906 n.2 (TTAB 2005).
The Record
The record consists of the pleadings, the file of the involved application,
opposer’s notice of reliance on its pleaded Registration (TTABVue Docket No. 42)
and the testimonial deposition of David Fisher (TTABVue Docket No. 44) (“Fisher
Tr.”),4 who has “been either [opposer’s] president or chairman of the board” for “the
past 17 years or so.” Fisher Tr. at 3.
Applicant did not introduce any testimony or other evidence. Only opposer
filed a main brief.

3 Order of April 22, 2011.
4 Although opposer introduced the results of a Google search as an exhibit to the
deposition (Fisher Tr. at 31), the exhibit itself was not filed with the Board. If the exhibit
had been filed, it would not have changed our analysis, conclusions or ultimate decision. In
general, search engine results have limited evidentiary value due to their truncated nature
insofar as the search summary does not show the context in which the term or phrase is
used on the listed web pages and may not include sufficient surrounding text to provide the
necessary context for the use. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d
1828, 1833 (Fed. Cir. 2007); In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1715 (TTAB
2011); In re Thomas, 79 USPQ2d 1021, 1026 (TTAB 2006).
Opposition No. 91198483

4

Background
Opposer provides “forensic consulting which involves [psychological]
assessment,” and has used PSYBAR in connection with these services since 1995.
Fisher Tr. at 3-4, 18-19. Specifically, since its inception, opposer has provided
“psychological and psychiatric evaluations,” for primarily “lay clients” including
employee assistance programs, attorneys, insurers and employers. Id. at 4-5. For
example, opposer helps health insurers determine whether certain treatments are
appropriate, helps workers’ compensation insurers determine whether an employee
is disabled and helps employers determine whether an employee is fit for duty. Id.
at 5-7, 20. Mr. Fisher is a clinical and forensic psychologist, and co-owns opposer
with another individual. Id. at 3, 7. In 2003, applicant signed a contract to become
one of the psychologists in opposer’s network, but opposer “didn’t have anything in
his geographic area so we didn’t use him.” Id. at 22-23.
Standing and Priority
Opposer’s pleaded Registration, which is of record, establishes opposer’s
standing.5 Cunningham v. Laser Golf Corp., 222 F.3d 943, 945, 55 USPQ2d 1842,
1844 (Fed. Cir. 2000). Because the registration is of record, and applicant has not
counterclaimed for cancellation of the Registration, priority is not at issue in this
proceeding, at least with respect to the services identified in the Registration. King
Candy Company v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110

5 Opposer properly introduced its pleaded Registration into evidence by attaching a
printout obtained from the Office’s TARR database showing the Registration’s status and
title to its amended notice of opposition under Trademark Rule 2.122(d)(1).
Opposit

(CCPA
psychia
and clai
that opp
Booktap
has stan
Compan
decision
evidenc
be accor
Jidosha
establis
by a pr
SPORT
applicat
O
analysis
forth in
1973).
(Fed. Ci
the sim
ion No. 91
1974). I
tric assess
med date
oser has
e Corp., 8
ding to ch
y Inc., 81
as to pr
e. The com
ded to the
Kabushik
h priority
eponderan
for clothin
ion”).
ur determ
of all of t
In re E. I.
See also In
r. 2003). I
ilarities be
198483
n any eve
ment serv
of first use
priority of
36 F.2d 5
allenge re
1 F.2d 1
iority is
mon law
first bona
i Kaisha,
based on c
ce of the e
g prior to
ination of
he probati
du Pont d
re Majest
n any like
tween the
nt, oppos
ices since
in comm
use. Fish
19, 5 USP
gistration
470, 1 US
made in
and the La
fide user
77 USPQ
ommon la
vidence p
June 1, 19
Likelihoo
the issu
ve facts in
e Nemours
ic Distillin
lihood of c
marks an
5
er’s use o
1995, whi
erce, estab
er Tr. at
Q2d 1301,
); Hydro-D
PQ2d 177
accordance
nham Act
.”); see also
2d 1917,
w rights, o
roprietary
98, the fili
d of Conf
e of likeli
evidence
& Co., 47
g Co., Inc
onfusion a
d the sim
f PSYBAR
ch predate
lishes both
3-4, 18-19
1302 (Fed
ynamics I
2, 1773
with th
require th
Standard
1929 (TT
pposer’s b
rights in
ng date of
usion
hood of co
that are r
6 F.2d 135
., 315 F.3d
nalysis, tw
ilarities b
for psy
s applican
opposer’s
; Books on
. Cir. 198
nc. v. Geo
(Fed. Cir.
e prepond
at tradem
Knitting
AB 2006)
urden is t
TUNDRA
applicant
nfusion is
elevant to
7, 177 US
1311, 65
o key con
etween th
chological
t’s filing d
standing
Tape, In
7) (compe
rge Putna
1987) (“…
erance of
ark owner
Ltd. v. To
(“In orde
o demonst
and TUND
’s intent-to
based on
the factor
PQ 563 (C
USPQ2d
siderations
e goods an
and
ate,
and
c. v.
titor
m &
the
the
ship
yota
r to
rate
RA
-use
an
s set
CPA
1201
are
d/or
Opposition No. 91198483

6

services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). Opposer bears the burden of establishing that there is a
likelihood of confusion by a preponderance of the evidence. Cunningham, 222 F.3d
at 943, 55 USPQ2d at 1848.
We first consider the similarities and dissimilarities of the parties’ marks in
appearance, sound, meaning, and commercial impression. Palm Bay Imports, Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). The test is not whether the marks can be distinguished
when subjected to a side-by-side comparison, but rather whether the marks are
sufficiently similar in their entireties that confusion as to the source of the services
offered under the respective marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains a general rather than a
specific impression of trademarks. Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106, 108 (TTAB 1975).
Here, the marks are essentially identical but for the single letter “i” at the
end of applicant’s mark. As a result, the marks look and sound quite similar, if not
identical. In fact, the first six letters of applicant’s seven-letter mark are identical
to opposer’s entire mark, and here consumers are likely to focus on the first part of
applicant’s mark. See Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d
1895, 1897 (TTAB 1988) (“[I]t is often the first part of a mark which is most likely to
be impressed upon the mind of a purchaser and remembered”); see also Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73
Opposition No. 91198483

7

USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent part of the
mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the
first word to appear on the label); Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering
the marks, consumers will first notice the identical lead word). As for connotation,
both parties’ marks begin with PSY and therefore convey services related to
psychology or psychiatry. Finally, it is not significant that opposer’s pleaded
registration is for a stylized form of PSYBAR, because applicant seeks registration
of his mark in standard characters, meaning that it could be displayed in the same
stylized format as the mark in opposer’s pleaded registration. See, e.g., In re Viterra
Inc., 671 F.3d 1358, 101, USPQ2d 1905, 1909 (Fed. Cir. 2012) (citations omitted).
In short, considering the parties’ marks in their entireties, we find that the
similarities in sound, appearance, and meaning greatly outweigh the minor
dissimilarities. This factor therefore weighs heavily in favor of a finding of
likelihood of confusion.
Turning to the parties’ services and channels of trade, we note initially that
given the high degree of similarity between the marks, the degree of similarity
between the services that is required to support a finding of likelihood of confusion
declines. In re Shell Oil Co., 26 USPQ2d 1687, 1689 (Fed. Cir. 1993) (“even when
the goods or services are not competitive or intrinsically related, the use of identical
marks can lead to the assumption that there is a common source”); Time Warner
Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002); and In re Opus
Opposition No. 91198483

8

One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001). The issue here, of course, is not
whether purchasers would confuse the services, but rather whether there is a
likelihood of confusion as to the source of the services. In re Rexel Inc., 223 USPQ
830, 831 (TTAB 1984).
In any event, we must consider the services as identified in applicant’s
involved application and opposer’s Registration. See Hewlett-Packard Co. v.
Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002);
Octocom Systems, Inc. v. Houston Computers Services, Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Elbaum, 211 USPQ 639, 640 (TTAB
1981). Here, applicant’s broadly-defined “psychological assessment services” could
include providing “voir dire and scientific jury selection advice” to the legal
community, in that applicant could provide psychological assessments of potential
jurors, and therefore we find that the services identified in the involved application
and opposer’s pleaded Registration are at the very least related.
Furthermore, opposer has established that its use of PSYBAR is not limited
to those services identified in its pleaded Registration. Rather, opposer provides
psychological assessments and evaluations for third parties such as insurers,
employers and others beyond the legal community, Fisher Tr. at 3-7, 18-20, and
these services are similar, if not identical, to at least applicant’s “psychological
assessment services,” “psychological testing,” and “psychological testing services.”
Accordingly, we find that the parties’ services are in part similar or at least related,
Opposition No. 91198483

9

which also weighs in favor of a finding of likelihood of confusion, especially given
the significant similarities between the parties’ marks.
As for channels of trade, the services identified in opposer’s pleaded
registration are limited to the “legal community.” However, the point is that the
recitation of services in the involved application is not limited with respect to
channels of trade. Therefore applicant’s services as identified in the application
could be provided to members of the legal community, sold in the same channels of
trade as opposer’s services and bought by the same classes of purchasers. In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). See also
Hewlett-Packard Co. v. Packard Press Inc., 62 USPQ2d 1001; Canadian Imperial
Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987);
Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003). Furthermore, Mr.
Fisher’s testimony makes clear that opposer in fact provides its psychological and
psychiatric evaluations under the mark PSYBAR to not just the legal community,
but also to employee assistance programs, insurers and employers. Fisher Tr. at 5-
7, 20. In short, because the services identified in the involved application are not
limited with respect to channels of trade, the parties’ channels of trade may overlap.
This factor also weighs in favor of finding a likelihood of confusion.
Opposer argues that its mark is famous within the parties’ industry based on
its longstanding use and national advertising. Opposer’s Trial Brief at 8-10. It is
settled that “fame of a mark may be measured … by the volume of sales of and
advertising expenditures for the goods traveling under the mark, and by the length
Opposition No. 91198483

10

of time those indicia of commercial awareness have been evident.” Bose Corp. v.
QSC Audio Products, Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002);
see also, Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d
1713, 1720 (Fed. Cir. 2012). Here, however, opposer’s evidence of fame is quite
limited. Opposer’s advertising budget of approximately $250,000 per year, and the
fact that it made “over 30 presentations” in 2011 and provides “seminars for
corporations and for conferences,” some of which are attended by “hundreds of
people,” Fisher Tr. at 10, is not sufficient to establish fame, which must be clearly
proven. Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901,
1904 (TTAB 2007).
We also disagree with opposer’s argument that its mark is conceptually
strong because it is an “invented word.” In fact, opposer’s mark is somewhat
suggestive because it includes PSY and is used in connection with psychological and
psychiatric testing. Nevertheless, we find that opposer’s mark (which is registered
without a claim of acquired distinctiveness), is inherently distinctive, and strong
enough to be entitled to protection against applicant’s very similar mark used for at
least related services.
Opposer concedes that “[t]his dispute does not involve impulse purchases.”
Opposer’s Trial Brief at 10. We agree. Nevertheless, even assuming that the
parties’ customers are sophisticated, it is settled that even sophisticated purchasers
are not immune from source confusion, especially in cases, such as this one,
involving similar marks and related services. See, In re Research and Trading
Opposition No. 91198483

11

Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (citing Carlisle Chemical
Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA
1970)) (“Human memories even of discriminating purchasers … are not infallible.”);
see also, In re Decombe, 9 USPQ2d 1812, 1814-15 (TTAB 1988). We find that the
similarities between the marks and the services sold thereunder outweigh any
sophisticated purchasing decision. See HRL Associates, Inc. v. Weiss Associates,
Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL
Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1842 (Fed. Cir. 1990) (similarities
of goods and marks outweigh sophisticated purchasers, careful purchasing decision,
and expensive goods).
While there is no evidence of actual confusion, it is settled that “[t]he test is
likelihood of confusion not actual confusion…. It is unnecessary to show actual
confusion in establishing likelihood of confusion.” Weiss Associates, 902 F.2d 1546,
14 USPQ2d 1840, 1842-43 (Fed. Cir. 1990); see also, Apple Computer v. TVNET.net,
Inc., 90 USPQ2d 1393, 1397 (TTAB 2007) (“applicant’s arguments regarding the
lack of actual confusion and its good faith adoption of its VTUNES.NET mark do
not raise genuine issues of material fact that preclude entry of summary
judgment”). In fact, this factor is neutral, because there is no evidence regarding
the extent of applicant’s use of his mark. Barbara's Bakery Inc. v. Landesman, 82
USPQ2d 1283, 1287 (TTAB 2007) (the probative value of the absence of actual
confusion depends upon there being a significant opportunity for actual confusion to
have occurred).
Opposition No. 91198483

12

Finally, opposer argues that because applicant once had some type of
relationship with opposer, applicant’s bad intent “can be inferred.” Opposer’s Trial
Brief at 12. We disagree, because establishing bad faith would require a showing
that applicant intentionally sought to trade upon opposer’s goodwill or reputation,
and that showing has not been made. See, Big Blue Products Inc. v. International
Business Machines Corp., 19 USPQ2d 1072, 1075-76 (TTAB 1991). While this
factor therefore does not help opposer, it also does not help applicant, and we find
that it is neutral. J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18
USPQ2d 1889, 1891 (Fed. Cir. 1991) (“Whether there is evidence of intent to trade
on the goodwill of another is a factor to be considered, but the absence of such
evidence does not avoid a ruling of likelihood of confusion.”).
In the absence of any evidence bearing on the remaining du Pont factors, we
find that those factors are all neutral.
Conclusion
Opposer has established its claim of priority and likelihood of confusion by a
preponderance of the evidence, because even assuming that purchasers of the
parties’ services are sophisticated, this du Pont factor is outweighed by the close
similarity of the marks, as well as the similarities between the parties’ services and
channels of trade. Accordingly, after a careful review of all evidence of record, and
based on a preponderance of the evidence, we conclude that there is a likelihood of
confusion between the parties’ marks.
Opposition No. 91198483

13

Decision: The opposition is sustained and registration of applicant’s mark
is refused under Section 2(d) of the Trademark Act.