Ramesh Rao

Trademark Trial and Appeal Board

Aug 26, 2014

No. 85766217 (T.T.A.B. Aug. 26, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 26, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Ramesh Rao
_____

Serial No. 85766217
_____

Matthew H. Swyers of The Trademark Company,
for Ramesh Rao
Cynthia Rinaldi, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
_____

Before Bucher, Ritchie and Greenbaum,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Ramesh Rao (“Applicant”) seeks registration on the Principal Register of the
mark SCIENZMINDS (in standard characters) for
Educational services, namely, conducting classes in the
field of science, technology, engineering, math and
robotics in International Class 41.1

1 Application Serial No. 85766217 was filed on October 29, 2012, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
Serial No. 85766217
- 2 -

The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that Applicant’s mark, when used in connection with Applicant’s services, so
resembles the previously registered standard character mark SCI-MIND for
Educational services, namely, providing online instruction
in the field of science, distributing training materials in
connection therewith; educational services, namely,
providing non-downloadable webinars and video tutorials
in the field of science in International Class 41
as to be likely to cause confusion, mistake, or deception of prospective consumers.2
After the Examining Attorney made the refusal final, Applicant appealed to this
Board. We affirm the refusal to register.
I. Applicable Law
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905 (Fed. Cir. 2012); and In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods or services. See
Federated Foods, Inc. v. Fort Howard 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

2 Registration No. 4411619, issued October 1, 2013.
Serial No. 85766217
- 3 -

marks.”). We consider each of the factors as to which Applicant or the Examining
Attorney presented arguments or evidence. The others, we consider to be neutral.
A. The Services and Channels of Trade
We begin with the du Pont factors of the relatedness of the services and channels
of trade. We base our evaluation on the services as they are identified in the
application and registration. Stone Lion Capital Partners, LP v. Lion Capital LLP,
76 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002).
In this case, the “educational services, namely, conducting classes in the field of
science” described in the application encompass, and therefore must be considered
to be legally identical to, the “online instruction,” “non-downloadable webinars and
video tutorials in the field of science” described in the registration. See In re Jump
Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006), citing In re Elbaum, 211 USPQ
639, 640 (TTAB 1981) (unrestricted and broad identifications are presumed to
encompass all services of the type described). It is settled that likelihood of
confusion must be found if there is likely confusion with respect to any items that
comes within the identification of services in the application. See Tuxedo Monopoly,
Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
Concerning the channels of trade and classes of purchasers, because the services
are legally identical and there are no limitations as to channels of trade or classes of
Serial No. 85766217
- 4 -

purchasers in either the application or cited registration, we must presume that
Applicant’s and Registrant’s educational services in the field of science will be sold
in the same channels of trade, such as educational institutions and foundations, and
will be bought by the same classes of purchasers, including members of the general
public who are interested in science. Viterra, 101 USPQ2d at 1908 (absent
restrictions in an application and/or registration, the identified services are
“presumed to travel in the same channels of trade to the same class of purchasers.”)
quoting Hewlett-Packard, 62 USPQ2d at 1001. See also Stone Lion, 110 USPQ2d at
1161; In re Linkvest, 24 USPQ2d 1716, 1716 (TTAB 1992).
Applicant submitted his affidavit (with attached exhibits) stating that he offers
an enrichment program for children that is geographically limited to the
Washington DC metro area, while Registrant offers online courses for those in
scientific or related professional fields, and that the services are different, move in
different channels of trade, are marketed differently,3 and are targeted to different
purchasers, with Applicant’s target market consisting of “parents of students aged
three to fourteen years, who are seeking enrichment programs for their children in
the fields of science, technology, math, literacy, and robotics education.” Rao Aff.
¶¶ 2-8. We cannot consider these purported limitations on the scope of Applicant’s
or Registrant’s services because no such limitations are reflected in the application
or registration. In considering the scope of the application and registration, we are
bound by the identifications in the application and registration themselves and not

3 The record reflects that both Applicant and Registrant use social media and promote their
services through their respective websites.
Serial No. 85766217
- 5 -

to extrinsic evidence about Applicant’s or Registrant's services. See Hewlett-
Packard, 62 USPQ2d at 1004; Octocom, 16 USPQ2d at 1787; In re La Peregrina
Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008).4 In addition, Applicant’s argument as to
any geographic difference between the services is not pertinent as Applicant seeks a
nationwide registration and the cited registration is not geographically limited.
These du Pont factors of the similarity of the marks and channels of trade weigh
strongly in favor of finding a likelihood of confusion.
B. The Marks and the Number and Nature of Similar Marks in Use in
Connection With Similar Services
We next turn to the first du Pont factor focusing on the similarity between the
marks. We must compare the marks in their entireties as to appearance, sound,
connotation and commercial impression to determine the similarity or dissimilarity
between them. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005), quoting du Pont,
177 USPQ at 567. “The proper test is not a side-by-side comparison of the marks,
but instead ‘whether the marks are sufficiently similar in terms of their commercial
impression’ such that persons who encounter the marks would be likely to assume a
connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). The focus is
on the recollection of the average purchaser, who normally retains a general rather
than a specific impression of trademarks. See Winnebago Industries, Inc. v. Oliver &

4 Moreover, we note that the two target markets, as set forth in Applicant’s affidavit, are
not mutually exclusive, as parents of students aged three to fourteen who seek enrichment
programs for their children in the above noted fields could also be science professionals.
Serial No. 85766217
- 6 -

Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106, 108 (TTAB 1975).
In comparing the marks, we are mindful that where, as here, the services are
legally identical, the degree of similarity between the marks necessary to find
likelihood of confusion need not be as great as where there is a recognizable
disparity between the services. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises
Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare
Prods. Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
Applicant’s mark SCIENZMINDS and Registrant’s mark SCI-MIND are similar
in appearance and sound in that both consist of two terms and share the identical
first three letters and the same last word, albeit one in singular and one in plural
form. There is no material difference between singular and plural forms of the same
term. See, e.g., In re Belgrade Shoe, 411 F.2d 1352, 162 USPQ 227 (CCPA 1969);
Weider Publ'ns, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB
2014); In re Strategic Partners Inc., 102 USPQ2d 1397, 1399 (TTAB 2012) (“the
difference between the singular form ANYWEAR depicted in the applied-for mark
and the plural form ANYWEARS in applicant's existing registration is not
meaningful.”). Likewise, the presence or absence of a hyphen or a space does not
distinguish Applicant's marks from Registrant’s mark in any meaningful way. See,
e.g., Nahshin v. Prod. Source Int'l LLC, 107 USPQ2d 1257, 1258 n.2 (TTAB 2013)
(“the presence or absence of a hyphen is insignificant to our ultimate decision.”);
Serial No. 85766217
- 7 -

Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1712 (TTAB 2010)
(hyphen did not distinguish MAGNUM from MAG-NUM).
The primary difference in the marks is the inclusion of ENZ in Applicant’s mark.
However, we find that this element is insufficient to distinguish the marks because
as used in Applicant’s mark, it results in a term, SCIENZ, that is the phonetic
equivalent of, and has the same meaning as, the word “science.” Similarly, the SCI
portion of Registrant’s mark is a common abbreviation for the word “science.”5 For
example, the popular term “sci-fi” refers to “science fiction.”6 Thus, while the terms
SCIENZ and SCI, as they appear in Applicant’s and Registrant’s mark, are not
identical, they share the common meaning of the word “science.” As a result, the
marks SCIENZMINDS and SCI-MIND, when applied to the science classes
identified in the application and registration, have the same meanings and create
the same commercial impressions.
Applicant argues that there are several similar marks registered for similar
services that serve to dilute Registrant’s mark SCI-MINDS. Applicant has only
submitted seven third-party registrations. In addition to being limited in number,
the registrations are of limited probative value because they do not establish that
the registered marks identified therein are in actual use in the marketplace or that

5 The Examining Attorney attached to the December 30, 2013 Office Action a printout from
acronmyfinder.com listing “Science” as the first result to the query “What does SCI stand
for?”
6 Random House Dictionary (2014) posted at Dictionary.com Unabridged defines “sci-fi” as
“science fiction.” The Board may take judicial notice of dictionary definitions. In re Red Bull
GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). See also University of Notre Dame du Lac v.
J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
Serial No. 85766217
- 8 -

consumers are accustomed to seeing them. See AMF Inc. v. Am. Leisure Prods., Inc.,
474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973); In re Max Capital Group Ltd., 93
USPQ2d 1243, 1248 (TTAB 2010). Moreover, none of these registrations is as close
in sound, appearance, meaning and commercial impression to the cited registered
mark SCI-MIND as is Applicant’s mark SCIENZMINDS, and several are for goods
or services that are different from the services identified in the application and cited
registration. For example, EMPOWERING MINDS THROUGH SCIENCE is a

totally different mark and is registered for classes, lectures,
seminars and workshops in the field of health; Spiritual
Engineering’s design mark at left is registered for lectures,
seminars and workshops in the field of spirituality; World
Scientific’s mark at
right is registered
for publications in various fields, including science, but not for educational services;
the Scientific Minds
mark at left7 includes a
significant design element, and the services are noticeably different from the
services identified in the cited registered mark.8

7 This special form service mark is registered for “providing a web site featuring temporary
use of online non-downloadable software for viewing instructional videos in a K-12
education curriculum which also enables educators and parents to assess, track and report
a student’s progress in the areas of science, math, English, social studies, reading,
agriculture and vocational and technology education; all of the foregoing offered only to
school districts for implementation in schools within their respective districts.”
Serial No. 85

Acco
confusio
C
With
purchas
Rao Aff
applicat
restricte
inexpen
classes
standar
Lion, 1
knowled
sophisti
confusio
identica
1846 (F
1377, 13

8 The o
MANY M
special fo

766217
rdingly, th
n.
. Consu
regard to
ers are so
. ¶ 9. Aga
ion and r
d as to p
sive as we
of consum
d of care f
10 USPQ2
geable in
cated of k
n, especia
l services.
ed. Cir. 20
83 (TTAB

ther three
INDS, SC
rm drawin
is du Pon
mer Sophi
the cond
phisticated
in, becaus
egistratio
rice or ch
ll as more
ers, includ
or our ana
d at 116
a particul
nowledgea
lly in cas
Cunningh
00). See a
2012). Th

registratio
IENTIFIC
g shown at
t factor w
stication
itions of s
and the
e we are
n and be
annels of
expensive
ing scienc
lysis is th
3. Moreov
ar field, th
ble in the
es like th
am v. Lase
lso In re C
is factor th

ns are for
AMERICA
right.
- 9 -
eighs in f
ale, Mr. R
services ar
bound by
cause the
trade, th
science cl
e professi
at of the le
er, even i
at does n
field of tr
is one, inv
r Golf Cor
ook Medic
erefore is

ONE SCI
N MIND, a
avor of a
ao states
e offered
the descr
descriptio
e services
asses and
onals and
ast sophis
f purchas
ot necessa
ademarks
olving sim
p., 222 F.3
al Techno
neutral.

ENCE.
nd the
finding o
in his affi
at differen
iption of s
ns of ser
at issue
all channe
the gener
ticated pu
ers are so
rily mean
or immun
ilar mar
d 943, 55
logies LLC

f likelihoo
davit that
t price po
ervices in
vices are
must inc
ls of trade
al public.
rchaser. S
phisticate
that they
e from so
ks and leg
USPQ2d 1
, 105 USP

d of
the
ints.
the
not
lude
and
The
tone
d or
are
urce
ally
842,
Q2d

Serial No. 85766217
- 10 -

D. Lack of Actual Confusion
In addition to the foregoing factors, Applicant raised the du Pont factor relating
to a lack of actual confusion, noting in his affidavit that he is unaware of any
instances of confusion with the cited mark despite coexistence since September 18,
2012.9 Rao Aff. ¶ 11. This uncorroborated statement of no known instances of actual
confusion is of little evidentiary value. See Majestic Drilling, 65 USPQ2d at 1205
(“uncorroborated statements of no known actual confusion are of little evidentiary
value.”); In re Bissett-Berman Corp., 476 F.2d 640, 642, 177 USPQ 528, 529 (CCPA
1973) (self-serving testimony of applicant's corporate president that he was
unaware of instances of actual confusion was not conclusive that actual confusion
did not exist or that there was no likelihood of confusion). Moreover, the lack of
actual confusion carries little weight, J.C. Hall Co. v. Hallmark Cards, Inc., 340
F.2d 960, 144 USPQ 435, 438 (CCPA 1965), especially in an ex parte context, and
indeed where Applicant has, in fact, noted that the parties are currently targeting
different demographics, which would indicate little opportunity for actual confusion
to occur. See Cunningham, 55 USPQ2d at 1847. Therefore, this factor also is
neutral.
II. Conclusion
Having considered the arguments and evidence of record and all relevant
du Pont factors, we find that Applicant’s mark, used in connection with Applicant’s
services, so closely resembles the cited registered mark, used in connection with

9 As noted infra, the application is filed under Section 1(b), and despite the dates of use
listed in Applicant’s affidavit, there are no dates of use in the record.
Serial No. 85766217
- 11 -

Registrant’s services, as to be likely to cause confusion, mistake or deception as to
the source of Applicant’s services.
Decision: The refusal to register is affirmed.