Shared, LLCv.SharedSpaceofAtlanta, LLC

Trademark Trial and Appeal Board

Dec 31, 2019

91228478 (T.T.A.B. Dec. 31, 2019)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: December 31, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Shared LLC
v.
SharedSpaceofAtlanta LLC
_____

Opposition No. 91228478
_____

Mahsa Hakimi of Hakimi Law, PC,
for Shared LLC.
J. Tucker Barr and Andrew C. Stevens of Arnall Golden Gregory LLP,
for SharedSpaceofAtlanta LLC.
_____

Before Taylor, Mermelstein, and Coggins,
Administrative Trademark Judges.

Opinion by Coggins, Administrative Trademark Judge:
SharedSpaceofAtlanta LLC (“Applicant”) seeks registration on the Principal
Register of the composite mark (with SHARED SPACE
disclaimed) for “providing co-working facilities equipped with office equipment;
providing facilities for business meetings for others,” in International Class 35.1

1 Application Serial No. 86833795 was filed on November 30, 2015, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide
intention to use the mark in commerce. On February 16, 2016, Applicant filed a Statement
Opposition No. 91228478
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By way of its First Amended Notice of Opposition, Shared LLC (“Opposer”)
opposes the registration of Applicant’s mark under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d).2 Opposer claimed ownership of the registered marks listed below:
1. Registration No. 4867093 for the mark SHARED (in standard characters)
for “incubation services, namely, providing work space containing business
equipment to freelancers, start-ups, existing businesses and non-profits,”
in International Class 35, and “incubation services, namely, rental of office
space to freelancers, start-ups, existing businesses and non-profits; leasing
of office space; rental of office space,” in International Class 36;3 and

2. Registration No. 4880230 for the mark for “incubation
services, namely, providing work space containing business equipment to
freelancers, start-ups, existing businesses and non-profits,” in
International Class 35.4

Applicant, in its Answer, denied the salient allegations of the amended Notice of
Opposition,5 interposed purported affirmative defenses, and counterclaimed to cancel

of Use under Section 1(d) of the Act, alleging first use of the mark in commerce as of February
15, 2016. The application contains the following description: “The mark consists of the
wording ‘SHAREDSPACE’, which appears to the right of a design consisting of two partially
overlapping squares with rounded corners.” Color is not claimed as a feature of the mark.
2 9 TTABVUE 16-21. The original and amended notices of opposition also alleged that
Applicant’s composite mark is merely descriptive under Section 2(e)(1). However, the Board
granted judgment on the pleadings in favor of Applicant as to that ground. 10 TTABVUE 7.
Citations in this opinion are to the TTABVUE docket entry number and, where applicable,
the electronic page number where the document or testimony appears. Because the Board
primarily uses TTABVUE in reviewing evidence, it prefers that citations to non-confidential
parts of the record include the TTABVUE docket entry number and the TTABVUE page
number. See RxD Media, LLC v. IP Application Dev. LLC, 125 USPQ2d 1801, 1804 (TTAB
2018); TBMP §§ 801.01, 801.03 (2019).
3 Registered December 8, 2015, from an application filed May 8, 2015.
4 Registered January 5, 2016, from an application filed April 28, 2015.
5 When the Board granted Opposer’s motion to amend the notice of opposition, 10 TTABVUE
2, it did not allow Applicant time to file an answer to the amended notice. Neither party
objected to this technical oversight. Inasmuch as the amended notice is substantively
identical to the original notice with respect to the Section 2(d) allegations – the only
amendments being two new paragraphs relating to the Section 2(e)(1) ground – we deem the
Opposition No. 91228478
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Opposer’s pleaded registration No. 4867093 on the ground that it is merely
descriptive under Section 2(e)(1) of the Act, 15 U.S.C. § 1052(e)(1), and registration
No. 4880230 on the ground that the word “shared” is merely descriptive and should
be disclaimed.6 Opposer denied the salient allegations in the counterclaim, and
alleged purported affirmative defenses including that its marks have acquired
distinctiveness.7
As explained below, we grant the counterclaims and sustain the opposition.
I. Procedural Issues
Before proceeding to the merits of the refusal, we address some procedural issues.
A. Unnecessary evidence
Each party introduced unnecessary evidence. In view of Trademark Rule 2.122(b),
Opposer’s first opposition notice of reliance (25 TTABVUE 2-64) and Applicant’s first
notice of reliance Exhibit B (29 TTABVUE 64-122), each purporting to introduce the
records of Opposer’s pleaded registrations; and Opposer’s second opposition notice of

answer to the original notice operative upon the amended notice and the allegations in the
two new paragraphs denied.
6 4 TTABVUE 2-7 (answer), 8-14 (counterclaim). Applicant’s reference to “15 U.S.C. § 1058”
in the allegations against Registration No. 4880230 appears to be a typo meant to reference
Trademark Act Section 18, 15 U.S.C. § 1068. See 4 TTABVUE 14. Section 18 states that the
Board has the authority to “restrict or rectify . . . the registration of a registered mark.” Under
Section 18 a plaintiff may seek relief, such as the relief requested here, in the nature of entry
of a disclaimer of an assertedly merely descriptive term forming only a portion of the mark,
provided that the registration is less than five years old. See Kellogg Co. v. Pack’em Enters.,
Inc., 14 USPQ2d 1545, 1549 (TTAB 1990) (counterclaim plaintiff seeking, in the alternative,
that an amendment be entered to disclaim a purportedly descriptive portion of an asserted
mark registered for less than five years stated a claim upon which relief may be granted).
7 6 TTABVUE.
Opposition No. 91228478
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reliance (25 TTABVUE 65-126) and Applicant’s first notice of reliance Exhibit A (29
TTABVUE 5-63), each purporting to introduce the record of the subject application;
were unnecessary.
B. Duplicate and triplicate evidence
Each party introduced duplicative evidence, Opposer making some of it thrice
submitted. The material in Applicant’s first notice of reliance Exhibits C through E
(29 TTABVUE 124-524) are duplicate copies of evidence submitted by Opposer’s third
notice of reliance. Opposer’s first counterclaim notice of reliance contains web pages
from www.shared-sf.com (30 TTABVUE 5-28) which are effectively duplicates of the
web pages submitted under its third opposition notice of reliance (25 TTABVUE 127-
153). Opposer’s second counterclaim notice of reliance (30 TTABVUE 29-330)
contains online and printed publications which are duplicates of the pages submitted
under its fifth opposition notice of reliance (26 TTABVUE 2-364); only the Yelp “Best
coworking space” pages (30 TTABVUE 326-328) are new. The material in Opposer’s
third counterclaim notice of reliance Exhibits C through E (30 TTABVUE 331-371)
contains duplicates of the pages submitted under its sixth notice of reliance as
Exhibits G, I, and J (27 TTABVUE 7-49); only the third-party registrations (30
TTABVUE 372-420) and an updated exhibit to Marilyn Yu’s repeated (i.e., identical)
testimony declaration are new.
Once testimony or any other evidence is introduced, it may be referred to by any
party for any purpose permitted by the Federal Rules of Evidence, and the adverse
party need not take any action in order to rely on it. Trademark Rule 2.122(a), 37
Opposition No. 91228478
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C.F.R. § 2.122(a). See also Nazon v. Ghiorse, 119 USPQ2d 1178, 1181 n.6 (TTAB 2016)
(“Once evidence is properly of record, it may be relied on by any party for any
purpose.”). The parties’ submission of unnecessary and duplicative evidence was a
waste of time and resources, and was a burden on the Board.8 See ITC Entm’t Grp.
Ltd. v. Nintendo of Am. Inc., 45 USPQ2d 2021, 2022-23 (TTAB 1998).
C. Opposer’s motion to strike
Opposer moves to strike Exhibit G to Applicant’s first notice of reliance (29
TTABVUE 558-606) and the entirety of Applicant’s second notice of reliance (31
TTABVUE), each comprised of third-party registrations.9 Opposer argues that
Applicant failed to “verify[] the status of the registrations,” failed to “check . . . for
duplicates,” provided “blatantly irrelevant” examples, and failed to serve disclosures
before filing its second notice of reliance for its reply trial period as counterclaim
plaintiff.10 The objections are not well taken. Third-party registrations are not
required to be certified or contain status and title information in order to be
considered properly of record. See Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98
USPQ2d 1066, 1070 n.11 (TTAB 2011); TBMP § 704.03(b)(1)(B). The Board is capable
of weighing the relevance and strength or weakness of the third-party registrations,
including any inherent limitations, and this precludes the need to strike the evidence.
See Poly-Am., L.P. v. Ill. Tool Works, Inc., 124 USPQ2d 1508, 1510 (TTAB 2017).

8 The parties instead should have pointed to the TTABVUE cite where the evidence was
initially submitted.
9 Brief, pp. 22-24; 32 TTABVUE 28-30.
10 Brief, pp. 23, 24; 32 TTABVUE 29, 30,
Opposition No. 91228478
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Although this evidence will be considered, it will be accorded only the probative value
to which it may be entitled. While Applicant should have served pretrial disclosures
stating that it did not plan to take testimony from any witnesses during its rebuttal
period, it was not required to disclose the notice of reliance it intended to file during
the rebuttal period. See Trademark Rule 2.121(e); TBMP § 702.01.
II. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Applicant’s application file and the registration files of Opposer’s
pleaded registrations which are subject to Applicant’s counterclaim. The record also
includes:
A. Opposer’s testimony and evidence.
1. Notice of reliance on the following items:
a. Web pages from www.shared-sf.com;11
b. Web pages from www.sharedspaceofatl.com;12
c. Print and online publications;13
d. Internet materials,14 dictionary definitions,15 Internet search
engine results16;

11 25 TTABVUE 127-153; 30 TTABVUE 5-28.
12 25 TTABVUE 154-184.
13 26 TTABVUE 7-364.
14 27 TTABVUE 7-20.
15 27 TTABVUE 21-34.
16 27 TTABVUE 35-49.
Opposition No. 91228478
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e. Applicant’s responses to Opposer’s interrogatories;17
f. Applicant’s responses to Opposer’s requests for admission;18 and
g. Third-party registrations.19
2. First20 and second21 testimony declarations of Marilyn Yu,
founder and owner of Opposer.
B. Applicant’s testimony and evidence.
1. Notice of reliance on the following items:
a. Opposer’s responses to Applicant’s interrogatories;22 and

b. Third-party registrations.23

III. Standing
A threshold issue in every inter partes case is the plaintiff’s standing to challenge
registration. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com Inc., 94
USPQ2d 1942, 1945 (TTAB 2010). A plaintiff must show in that it possesses a real
interest in the proceeding beyond that of a mere intermeddler, and that it has a
reasonable basis for its belief of damage resulting from the registration, or continued
registration, of the involved mark. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d

17 28 TTABVUE 6-24, 43-44, 51, 59
18 28 TTABVUE 25-35, 43, 50-51, 58-59,
19 30 TTABVUE 372-420.
20 28 TTABVUE 65-72.
21 30 TTABVUE 423-430.
22 29 TTABVUE 540-557.
23 29 TTABVUE 558-606; 31 TTABVUE 2-300.
Opposition No. 91228478
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1023, 1025-26 (Fed. Cir. 1999). An opposer may establish its standing by properly
making of record its pleaded registration, if it is the basis for a likelihood of confusion
claim that is not wholly without merit. Double Coin Holdings Ltd. v. Tru Dev., 2019
USPQ2d 377409, *4 (TTAB 2019) (citing Lipton Indus., Inc. v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982)).
Opposer’s pleaded Registration Nos. 4867093 for the mark SHARED and 4880230
for the mark are of record by operation of Trademark Rule 2.122(b).
As noted above, Opposer also submitted these registrations with its first notice of
reliance in support of the opposition pursuant to Trademark Rule 2.122(d)(2).24 This
is sufficient to establish Opposer’s standing for its likelihood of confusion claim. See,
e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000). In addition, Opposer testified that it has used both SHARED marks for
coworking services continuously since 2012.25 Further, Applicant does not challenge
Opposer’s standing.
Applicant has standing to assert its counterclaim by virtue of being the defendant
in the opposition proceeding. See Anthony’s Pizza & Pasta Intl. Inc. v. Anthony’s Pizza
Holding Co., 95 USPQ2d 1271, 1274 (TTAB 2009) (“Defendant has standing to cancel
plaintiff’s pleaded registration by virtue of being the defendant in the consolidated
proceeding, and the fact that plaintiff has asserted its registration against
defendant.”), aff’d, 415 Fed. Appx. 222 (Fed. Cir. 2010).

24 25 TTABVUE 22-24, 61-64.
25 Yu Decl’n, para 7; 28 TTABVUE 66.
Opposition No. 91228478
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IV. Counterclaims
We begin with Applicant’s counterclaims because resolution of Applicant’s
challenges to Opposer’s registrations bears on our resolution of Opposer’s likelihood
of confusion claim. Schieffelin & Co. v. Molson Cos., 9 USPQ2d 2069, 2071 (TTAB
1989) (“Because the validity of opposer’s pleaded registrations has been made an
issue as a result of applicant's counterclaims, we . . . consider the evidence and
arguments relating to those counterclaims before turning to the issue of likelihood of
confusion in the opposition proceeding.”).
A. Applicable law on mere descriptiveness
Section 2(e) 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 applicant
is merely descriptive . . . of them,” unless the mark has been shown to have acquired
distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f). “A mark
is merely descriptive if it ‘consists merely of words descriptive of the qualities,
ingredients or characteristics of the goods or services related to the mark.”’ DuoProSS
Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1252, 103 USPQ2d 1753, 1755
(Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d
1370, 1371 (Fed. Cir. 2004) (internal quotation marks omitted)). “A mark need not
immediately convey an idea of each and every specific feature of the goods [or
services] in order to be considered merely descriptive; it is enough if it describes one
significant attribute, function or property of the goods [or services].” In re Fat Boys
Opposition No. 91228478
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Water Sports LLC, 118 USPQ2d 1511, 1513 (TTAB 2016) (citing In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987)).
Whether a mark is merely descriptive is “evaluated ‘in relation to the particular
goods [or services] for which registration is sought, the context in which it is being
used, and the possible significance that the term would have to the average purchaser
of the goods [or services] because of the manner of its use or intended use,”’ 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)),
and “not in the abstract or on the basis of guesswork.” Fat Boys, 118 USPQ2d at 1513
(citing In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978)). We
ask “whether someone who knows what the goods and services are will understand
the mark to convey information about them.’ Real Foods Pty Ltd. v. Frito-Lay N. Am.,
Inc., 906 F.3d 965, 128 USPQ2d 1370, 1374 (Fed. Cir. 2018) (quoting DuoProSS, 103
USPQ2d at 1757 (internal quotation marks omitted)).
Registration No. 4867093 is for the word mark SHARED, and Registration No.
4880230 is for the composite word-and-design mark . We “‘must
consider the commercial impression of a mark as a whole,’ ‘viewed through the eyes
of a consumer,’” id. (quoting DuoProSS, 103 USPQ2d at 1757 (citation omitted)),
including any design elements. DuoProSS, 103 USPQ2d at 1756.
“Evidence of the public’s understanding of [a] term . . . may be obtained from any
competent source, such as purchaser testimony, consumer surveys, listing in
dictionaries, trade journals, newspapers[,] and other publications.” Real Foods, 128
Opposition No. 91228478
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USPQ2d at 1374 (quoting Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127
USPQ2d 1041, 1046 (Fed. Cir. 2018)). “These sources may include [w]ebsites,
publications and use ‘in labels, packages, or in advertising material directed to the
goods [or services].”’ In re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1710 (Fed.
Cir. 2017) (quoting Abcor Dev., 200 USPQ at 218).
A “mark need not be merely descriptive of all recited goods or services in an
application. A descriptiveness refusal is proper ‘if the mark is descriptive of any of
the [services] for which registration is sought.”’ Chamber of Commerce of the U.S.,
102 USPQ2d at 1219 (quoting In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087,
1088 (Fed. Cir. 2005)).
Finally, pursuant to Trademark Act Section 18, a registration less than five years
old may be cancelled on the ground that an undisclaimed portion of the mark is
merely descriptive of the identified services, and that the mark should not be
registered without a disclaimer of that portion.26 Montecash LLC v. Anzar Enters.
Inc., 95 USPQ2d 1060, 1064 (TTAB 2010); Kellogg Co. v. Pack’em Enters., 14 USPQ2d
at 1549.
Opposer’s Principal Register registrations of SHARED and at
issue in the counterclaim are prima facie evidence of the validity of those marks, 15
U.S.C. § 1057(b), and “that includes the presumption that the mark[s] subject thereof
[are] not merely descriptive of . . . the [services].” Editorial Am., S.A. v. Gruner + Jahr

26 In lieu of cancellation, a registrant in such a position may submit a disclaimer of the
descriptive part of the mark if the mark is otherwise registrable.
Opposition No. 91228478
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AG & Co., 213 USPQ 498, 504 (TTAB 1982). See also Tea Bd. of India v. Republic of
Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006). As the counterclaimant, Applicant
bears the burden of proving that the term SHARED in each mark is merely
descriptive by a preponderance of the evidence.
B. The parties’ arguments and evidence
Opposer’s services in Registration No. 4867093 are “incubation services, namely,
providing work space containing business equipment to freelancers, start-ups,
existing businesses and non-profits,” and “incubation services, namely, rental of office
space to freelancers, start-ups, existing businesses and non-profits; leasing of office
space; rental of office space”; and the services in Registration No. 4880230 are
“incubation services, namely, providing work space containing business equipment to
freelancers, start-ups, existing businesses and non-profits.” Opposer describes these
services broadly as “relating to co-working services” and describes itself as “a
reputable co-working service provider” and “the top co-working and incubator
provider” within the industry.27 Opposer explains that it offers “a unique co-working
space that provides services and amenities not only to its entrepreneurs and start up
members, but also to artists and creative talent.”28
It is Applicant’s position that the term SHARED is merely descriptive of Opposer’s
incubation services in the nature of provision, rental, and leasing of office space, and
the average purchaser of Opposer’s incubation services would immediately

27 Brief, p. 1; 32 TTABVUE 7.
28 Id., p. 5; 32 TTABVUE 11.
Opposition No. 91228478
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understand SHARED to convey a characteristic or feature of the services, namely,
that Opposer provides, rents, and leases shared office space.29 In support of its
position, Applicant points to dictionary definitions, third-party registrations, and
Opposer’s own use of the term “shared.”
Opposer counters that the term “shared” is suggestive of its services and does not
by itself immediately inform consumers about the services. Instead, Opposer argues,
additional wording or explanation is needed for a consumer to make a connection with
and understand what might be “shared.” Opposer also argues that third-party
registrations are not evidence of use of the registered marks, and further argues that
Applicant failed to meet its burden of proof to overcome the presumption that
Opposer’s marks are inherently distinctive.30
Dictionary definitions of the term “shared” in evidence include:
• “owned or used by more than one person: . . . shared services/resources;”31

• “used, done, belonging to, or experienced by two or more individuals • a
dormitory with shared living area;”32 and

• “use, occupy, or enjoy (something) with another or others. ‘they once shared
a house in the Hamptons.’”33

There is no dictionary definition of “coworking” or “incubation” in the record, but
editorial definitions of “coworking” included in internet material submitted by

29 Brief, pp. 17, 19; 33 TTABVUE 25, 27.
30 Rebuttal Brief, pp. 10-16; 34 TTABVUE 18-24.
31 CAMBRIDGE DICTIONARY, 27 TTABVUE 30.
32 MERRIAM-WEBSTER, 27 TTABVUE 33.
33 Google Dictionary, 27 TTABVUE 36.
Opposition No. 91228478
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Opposer explain that “[c]oworking, put simply, is a shared work environment”34 and
is “a style of work that involves a shared working environment, often an office,
workbar or hot desk . . . .”35 “Coworking spaces . . . allow freelancers, small business
owners and independent workers to rent a working area that is shared with others.”36
Workspace sharing is not a new concept. In truth, there are
multiple shared coworking spaces popping up in nearly
every major city in the world. This mindset allows
coworking community providers to lease commercial real
estate and rent out hot desks, conference rooms, private
offices, and event space to bootstrappers, entrepreneurs,
and individuals simply seeking a commitment-free
workplace away from home to keep themselves on task. In
fact, some of the well-known “Airbnbs” of coworking or
shared workspace that have a global presence are
Sharedesk, Regus, Davinci Meeting Rooms, and
Desktime.37
The idea that coworking involves shared space is corroborated by Applicant’s
website which indicates that coworking involves “shared office spaces” and “shared
workspace,”38 and the First Yu Declaration in which Opposer’s founder and owner
Marilyn Yu, explains that she created “a co-working space for creative artist and
entrepreneurs who could also collaborate and create as a community.”39

34 “The Top 100 Coworking Spaces in the U.S.” (symmetry50.com), 26 TTABVUE 93.
35 “San Francisco to Taipei: the Best Coworking Workspace” (ichitect.com), 26 TTABVUE 10
(internal quotations omitted).
36 “Working Remotely Around The World: Workspaces To Explore” (smashingmagazine.com),
26 TTABVUE 116.
37 “San Francisco to Taipei: the Best Coworking Workspace” (ichitect.com), 26 TTABVUE 11.
38 25 TTABVUE 158, 160.
39 1st Yu Decl’n, para. 3; 28 TTABVUE 65.
Opposition No. 91228478
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Similarly, editorial references to “incubate”-formatives included in internet
material submitted by Opposer explain that “[t]he advantages of renting co-working
space are numerous indeed: we all know that launching a business can be risky and
costly but thanks to the evolution of coworking, incubating startups can significantly
reduce business overhead.”40 “Coworking spaces offer more than a reprieve from the
sky-high rent prices of the Bay Area. They also operate as incubators, think tanks
and social spaces where freelancers and startups can meet and share ideas.”41 We
take judicial notice that “incubator” means, inter alia, “an organization or place that
aids the development of new business ventures especially by providing low-cost
commercial space, management assistance, or shared services.”42 Opposer’s
incubation services in the nature of provision, rental, and leasing of office space
encompass providing, renting, and leasing of coworking space – that is, shared space.
Opposer’s web site explains that Opposer offers clients a list of amenities
including “5500 sq ft of shared work space,” “1700 sq ft of private work space,” and
“shared tools” (such as hand tools, drills, saws, and sewing machines).43 Opposer
describes itself as follows:

40 “San Francisco to Taipei: the Best Coworking Workspace” (ichitect.com), 26 TTABVUE 10.
41 “The 19 best coworking spaces in the Bay Area” (99designs.com), 26 TTABVUE 300.
42 MERRIAM-WEBSTER, merriam-webster.com/dictionary/incubator. The Board may take
judicial notice of dictionary definitions, including online dictionaries that exist in printed
format or have regular fixed editions. See In re Cordua Rests. LP, 110 USPQ2d 1227, 1229
n.4 (TTAB 2014) aff’d 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); In re Red Bull GmbH,
78 USPQ2d 1375, 1378 (TTAB 2006) (Board may take judicial notice of a widely-known
reference readily available in specifically denoted editions via the Internet although not
available in print).
43 25 TTABVUE 132-33.
Opposition No. 91228478
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[T]he most unique coworking space in San Francisco,
located in the heart of SoMa. SHARED has all the office
amenities of a traditional coworking space added to a
maker space. It has office space, fabrication space, a [sic]
shared tools and equipment, meeting rooms, kitchen, and
classes, and events.
SHARED is a space for creative people to work and
collaborate together. . . .
SHARED takes the idea of co-working and applies it to the
different types of space that creative people need. SHARED
provides creative “play” space — space to think, space to
experiment, and space to collaborate. There are several
types of space at SHARED:
• Quieter, smaller spaces for work that requires a lot
of thought and/or concentration
• Larger spaces that allow people to make a mess
• Opportunities to collaborate with other creative
people
• Casual hang-out space44
Opposer advertises multiple membership options to access its services including
a “Weekday Days Access” membership providing “access to all shared spaces and
tools M-F 6AM-6PM.” This “[m]embership includes: shared work space, shared
kitchen and lounge, creative community.”45 An “Evening and Weekend Access”
membership provides “access to all shared spaces and tools M-F 6PM-2AM and SA-
SU 6AM-2AM,” and similarly “includes: shared work space, shared kitchen and

44 25 TTABVUE 148.
45 25 TTABVUE 136.
Opposition No. 91228478
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lounge, creative community.”46 Under the FAQs section of its website, Opposer
answers questions such as:
• Q: What is your guest policy?
A: We welcome collaboration and guests, be they colleagues, partners,
clients, visitors, or friends. For meetings of thirty minutes or less, feel free
to use the shared space. For meetings of more than thirty minutes, please
book a meeting room;
and
• Q: Can I rent SHARED for an event?
A: Yes, the first floor and second floor shared work-spaces are available for
event rental.47
In addition to Opposer’s own use of the term “shared” to describe the work and
office space it provides, rents, and leases, the record contains many examples of third
parties using the term to describe Opposer’s services. For example (all emphasis
added):
• “SHARED has all of the amenities of a traditional coworking space, with
additional maker spaces, featuring fabrication space, a shared workshop
with a range of tools and equipment, as well as classes and events.”48

46 25 TTABVUE 137.
47 25 TTABVUE 145.
48 “Working Remotely Around The World: Workspaces To Explore” (smashingmagazine.com),
26 TTABVUE 135.
Opposition No. 91228478
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• “SHARED has painting space, fabrication space, sewing equipment,
shared tools, meeting rooms, kitchen, classes, and events. . . . It is based
in the belief that together we can create greater things than we could
individually or in isolation.”49
• “The environment consists of a toolshed, private lockers, a lounge and
shared meeting rooms spread across two floors as well as shared
workspaces with areas specifically designated for sewing, painting and
woodworking.”50
• “SHARED is exactly how it sounds; a shared, communal workplace with
a[n] emphasis on community.”51
• “SHARED is a, well, shared, creative work-space that also features
workshops and events, such as ukulele and sewing classes, screenwriting
workshops, and a monthly collage party.”52
The record is replete with examples of the term “shared” describing third parties’
similar work and office space. For example:

49 “Top 40 Coworking Spaces in the San Francisco Bay Area” (blog.getkisi.com), 26 TTABVUE
262.
50 “The 19 best coworking spaces in the Bay Area” (99designs.com), 26 TTABVUE 304.
51 Yelp review, October 10, 2014; 26 TTABVUE 346.
52 “Short Cuts,” THE POTRERO VIEW, June 2014; 26 TTABVUE 23.
Opposition No. 91228478
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• “A coworking office exclusively for women in Austin. Their mission is to
create a community of cohesion, collaboration and success by offering
business support services, and shared office spaces.”53
• “The work space is designed to encourage both collaboration and focus. The
space is broken into shared workspace and partitioned desks.”54
• “Thrive offers shared office space including office suites, day spaces,
meeting rooms and all of the features of a full service professional office
space.”55
• “With a 24/7 dedicated plan you get your own desk in a lovely light-filled
office that is shared with a few others.”56
• “Shared work spaces start at $249 per month.”57
• “More than a shared work space, it’s an opportunity to harness the
collective strengths of individuals who are experts in their field.”58
• “At Shift, they’re creating a new working community, offering private
offices, desks, shared work space, and meeting spaces, along with

53 “The Top 75 Coworking Spaces in the U.S.” (symmetry50.com) describing Posh Coworking,
26 TTABVUE 25.
54 Id., describing Indiegrove, 26 TTABVUE 29.
55 Id., describing Thrive Workplace Solutions, 26 TTABVUE 30.
56 Id., describing Get Smart Workspaces, 26 TTABVUE 35.
57 Id., describing Venture X, 26 TTABVUE 37.
58 Id., describing Designspaces, 26 TTABVUE 39.
Opposition No. 91228478
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amenities designed around you and the way you work. . . . Choose how you
want to work (private, semi-private or shared).”59
• “Chicago’s largest and best shared office environment for freelances,
entrepreneurs and small businesses.”60
• “Impact Hub Oakland is equal parts inspiring shared working space,
entrepreneurial incubator and a membership-based community of socially
engaged people, co-working and colearning.”61
• “A dynamic coworking space dedicated to helping a diverse and innovative
group of entrepreneurs succeed through the power of community. . . . [It]
provides a variety of secured shared & personal working areas, huddle &
conference rooms, whiteboard walls, WiFi, printing/faxing/scanning
stations, personal storage, and a fully stocked kitchen for $350 per month
per person.”62
• “Oficio is a boutique shared office and coworking space . . . that offers
members a business mailing address, a variety of seating options, private
offices, high speed wifi, meeting rooms, phone booths and complimentary
gourmet coffee, cappuccinos, and lattes.”63

59 Id., describing Shift Workspaces, 26 TTABVUE 40.
60 Id., describing Office Port, 26 TTABVUE 41.
61 Id., describing Impact Hub, 26 TTABVUE 48.
62 Id., describing CIC, 26 TTABVUE 49.
63 Id., describing Oficio, 26 TTABVUE 51.
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• “Sandbox Suites is a shared workspace created specifically for freelancers,
small business owners, telecommuters and other independent
professionals.”64
• “Co+Hoots is the only shared downtown Phoenix office location that
promotes collaboration and provides the professional and inspirational self-
sustaining space to grow and nurture entrepreneurialism.”65
• “Empowering creatives, entrepreneurs, and start-ups by offering them
shared work spaces, private offices, meeting and conference rooms . . . .”66
• “The Writers Junction is an affordable shared workspace for writers. It’s
where you’ll find the quiet of a library, the society of a coffee shop, the focus
of a daily office, and the camaraderie of a private club.”67
• “Not only do members have access to furnished, shared workspaces, as well
as infrastructure to support their general business needs, the location has
industry-specific resources to help their creative business grow.”68
• “Enerspace Palo Alto is a modern shared office space with coworking,
private offices, dedicated desks, meeting space, event space and a great
community.”69

64 Id., describing Sandbox Suites, 26 TTABVUE 52-53.
65 Id., describing Co+Hoots, 26 TTABVUE 54.
66 Id., describing The Urban Hive, 26 TTABVUE 55.
67 “The Top 100 Coworking Spaces in the U.S.” (symmetry50.com) describing The Writers
Junction, 26 TTABVUE 79.
68 Id., describing Creative Colony, 26 TTABVUE 84.
69 Id., describing Enerspace, 26 TTABVUE 86.
Opposition No. 91228478
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• “The Satellite Centers are comfortable, connected, professional shared
office space and flexible workspace centers in your community.”70
• “TOP is more than a shared office space, they foster a culturally diverse
community of professional leaders, entrepreneurs and business owners.”71
• “Work:) Shared Workspace.”72
• The campus offers artists individual or shared studio spaces, resources
(such as a wood shop and print shop) and the ability to work alongside
recognized Bay Area artists for costs much lower than market rate.73
• “The multi-story building has several spacious private studios plus shared
spaces.”74
The website pages which use “shared” to describe coworking office space show that
the public has an immediate understanding of the meaning of the term in association
with the provision, rental, or leasing of office space. The term “shared” immediately
describes a feature and characteristic of Opposer’s services, namely, work and office
space that is used and occupied by more than one person. Shared space is a desirable
feature and defining characteristic of coworking space. Consumers of incubation

70 Id., describing The Satellite, 26 TTABVUE 101.
71 Id., describing The Office Pile, 26 TTABVUE 105.
72 “Top 40 Coworking Spaces in the San Francisco Bay Area” (blog.getkisi.com) describing
Work Happy, 26 TTABVUE 263.
73 “The 19 best coworking spaces in the Bay Area” (99designs.com) describing Minnesota
Street Projects, 26 TTABVUE 304.
74 Id., describing ActivSpace, 26 TTABVUE 314.
Opposition No. 91228478
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services desire a shared office environment to cultivate community, to save costs, and
for convenience.
Applicant submitted nearly two hundred third-party registrations in an attempt
to show that “shared” and “share” are weak and descriptive.75 “Third party
registrations are relevant to prove that some segment of the [marks] has a normally
understood and well recognized descriptive or suggestive meaning, leading to the
conclusion that that segment is relatively weak.” Juice Generation, Inc. v. GS Enters.
LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015) (internal quotation
marks omitted). See also Jack Wolfskin Ausrustung Fur Draussen GmbH v. New
Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015).
The “real evidentiary value of third party registrations per se is to show the sense in
which . . . a mark is used in ordinary parlance,” Juice Generation, 115 USPQ2d at
1675 (quoting 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:90 (4th
ed. 2015)). “Even if ‘there is no evidence of actual use’ of ‘third-party registrations,’
such registrations ‘may be given some weight to show the meaning of a mark in the
same way that dictionaries are used.’” Id. (quoting Tektronix, Inc. v. Daktronics, Inc.,
534 F.2d 915, 917 (CCPA 1976)). Most of the registrations submitted by Applicant
identify goods or services not relevant to our inquiry, but four are probative of the
descriptiveness of SHARED for the provision, rental, or leasing of office space. They
are:

75 29 TTABVUE 558-606, and 31 TTABVUE 2-300.
Opposition No. 91228478
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Registration No. Mark Relevant Services
161414876

(OFFICE CENTERS and
OFFICE AND SHARED
SERVICES disclaimed)
Leasing of shared
office space
398463677

(MIAMISHARED and .COM
disclaimed)
Rental of office space
featuring computer
workstations and
private office space
room rentals with fee-
based memberships
468038078 Leasing of real estate;
rental of meeting
rooms
522384779
(SHARE disclaimed)
Providing co-working
facilities equipped
with office equipment

These third-party registrations show the sense in which the term “shared” is used
in ordinary parlance and show that “shared” has descriptive significance as applied
to Opposer’s services. See, e.g., Institut National Des Appellations D’Origine v.
Vintners Int’l Co., 958 F.2d 1574 , 22 USPQ2d 1190, 1196 (Fed. Cir. 1992). These
third-party registrations, although not great in number, lend support to finding that
“shared” and “share” are merely descriptive for the provision, rental, or leasing of
office space.

76 31 TTABVUE 8.
77 31 TTABVUE 28.
78 31 TTABVUE 172.
79 31 TTABVUE 257.
Opposition No. 91228478
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Opposer itself introduced evidence of use of “shared” as a component of a mark by
a third-party. Opposer attached as an exhibit to Ms. Yu’s declaration a screen shot of
a web page showing a coworking space offered under the name SHARED Brooklyn,
in New York. While Opposer states that it negotiated a disclaimer “(among other
restrictions) through a settlement agreement” with this third-party,80 the screen shot
reveals use of the term “shared” by the third-party. The disclaimer on the web page
states that “SHARED Brooklyn is owned and operated by SHARED Brooklyn, LLC,
a neighborhood coworking space within Red Hook and is not in any way associated,
connected to or sponsored by SHARED, LLC.”
Opposer’s marks must be considered in relation to the particular services involved,
in the context in which the marks are being used, and in the perception of the average
purchaser of the services. On the basis of the record as a whole (including the
dictionary definitions of “shared,” internet evidence explaining the nature of
coworking spaces and incubators, Opposer’s own website repeatedly describing its
shared space and tools, internet evidence showing third-party use of “shared” to
describe both Opposer’s services and third-parties’ provision of office and work space,
and the four third-party registrations), we find that a consumer who knows that the
services provided under the SHARED and marks are various
incubation services involving the provision, rental, or leasing of office and work space,
would understand the marks to immediately convey information about those services,

80 1st Yu Decl’n, para. 12; 28 TTABVUE 67 (declaration), 72 (exhibit).
Opposition No. 91228478
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namely, that they feature shared work and office space. No thought or imagination is
required to reach that conclusion about the nature of the services.
Accordingly, we find that Applicant proved, by a preponderance of the evidence,
that Opposer’s standard character mark SHARED is merely descriptive and that
Opposer’s composite mark should not have registered without a
disclaimer of the merely descriptive word “shared.”81 Having so found, we turn to
Opposer’s claim that the marks have acquired distinctiveness.
C. Acquired distinctiveness
Opposer defends the counterclaims on the ground that if the term SHARED is
found to be merely descriptive, Opposer is entitled to maintain the marks’
registration because the term SHARED has acquired distinctiveness. “Under Section
2(f) of the Trademark Act, matter that is merely descriptive under Section 2(e)(1) may
nonetheless be registered on the Principal Register if it ‘has become distinctive of the
applicant’s goods . . . in commerce.”’ In re Virtual Indep. Paralegals, LLC, 2019
USPQ2d 111512, *9-10 (TTAB 2019) (quoting 15 U.S.C. § 1052(f)). A party “seeking
registration of a mark under Section 2(f) bears the ultimate burden of establishing
acquired distinctiveness.” Id. (citing In re La. Fish Fry Prods., Ltd., 797 F.3d 1332,
116 USPQ2d 1262, 1264 (Fed. Cir. 2015)). To show that a mark has acquired
distinctiveness, a party “must demonstrate that the relevant public understands the

81 Applicant did not claim, the parties did not litigate, and we have not determined whether
Opposer’s composite mark is comprised of non-distinctive design elements. See In re Serial
Podcast, LLC, 126 USPQ2d 1061 (TTAB 2018) (citing In re Cordua Rests. Inc., 118 USPQ2d
at 1639).
Opposition No. 91228478
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primary significance of the mark as identifying the source of a product or service
rather than the product or service itself.” Id. at *11 (quoting In re Steelbuilding.com,
415 F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)).
1. Degree of descriptiveness
Opposer’s burden of proving acquired distinctiveness is commensurate with the
degree of descriptiveness of the term “shared.” The Federal Circuit has “long held
that ‘the applicant’s burden of showing acquired distinctiveness increases with the
level of descriptiveness; a more descriptive term requires more evidence of secondary
meaning.”’ Royal Crown, 127 USPQ2d at 1047 (quoting In re Steelbuilding.com, 75
USPQ2d at 1424). We must assign to the term “shared” a degree of descriptiveness
“on the scale ranging from generic to merely descriptive.” Id. at 1048.
Opposer ignores the degree of descriptiveness, and Applicant only conclusively
states that “Opposer’s mark is highly descriptive.”82 The most probative evidence on
the degree of descriptiveness of the term “shared” is the internet evidence explaining
the nature of coworking spaces and incubators which feature shared office space,
Opposer’s own website which repeatedly touts its shared space and tools, and the
internet evidence showing third-party use of the term “shared” to describe both
Opposer’s own services and numerous third-parties’ provision of similar coworking
and incubation space. An article from THE POTRERO VIEW newspaper uses an
interjection (“well”) to draw attention to the use of the term “shared” both as

82 Rebuttal Brief, p. 4; 35 TTABVUE 8.
Opposition No. 91228478
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Opposer’s name and the nature of Opposer’s incubation services: “SHARED is a, well,
shared, creative work-space . . . .”83
We find that the evidence of record cumulatively demonstrates that the term
“shared” is highly descriptive “on the scale ranging from generic to merely
descriptive,” Royal Crown, 127 USPQ2d at 1048, and literally describes a defining
characteristic and feature of incubation services and coworking spaces generally and
Opposer’s services specifically, namely, the provision, rental, and leasing of shared
office and work space. Consumers seeking incubation services in the nature of work
and office space desire and expect shared space.
2. Opposer’s evidence of acquired distinctiveness
To maintain its standard character registration, and avoid having to disclaim
SHARED from its composite registration, Opposer must show, by a preponderance of
the evidence, that SHARED has acquired distinctiveness. Real Foods, 128 USPQ2d
at 1374. Our analysis and determination in this case is based on all of the evidence
considered as a whole:
[T]he considerations to be assessed in determining whether
a mark has acquired secondary meaning can be described
by the following six factors: (1) association of the [mark]
with a particular source by actual purchasers (typically
measured by customer surveys); (2) length, degree, and
exclusivity of use; (3) amount and manner of advertising;
(4) amount of sales and number of customers; (5)
intentional copying; and (6) unsolicited media coverage of
the product embodying the mark.

83 “Short Cuts,” THE POTRERO VIEW, June 2014; 26 TTABVUE 23.
Opposition No. 91228478
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In re SnoWizard, Inc., 129 USPQ2d 1001, 1105 (TTAB 2018) (quoting Converse, Inc.
v. Int’l Trade Comm’n, 907 F.3d 1361, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018)); see
also Steelbuilding.com, 75 USPQ2d at 1424. On this list, no single factor is
determinative. In re Tires, Tires, Tires Inc., 94 USPQ2d 1153, 1157 (TTAB 2009).
Opposer may show acquired distinctiveness using direct or circumstantial evidence.
Direct evidence includes actual testimony, declarations, or surveys of consumers as
to their state of mind, while circumstantial evidence is evidence from which consumer
association might be inferred, such as years of use, extensive sales and advertising,
and any similar evidence showing wide exposure of the mark to consumers.
Milwaukee Elec. Tool Corp. v. Freud Am., Inc., 2019 USPQ2d 460354 (TTAB 2019).
As to association of the mark with a particular source by actual purchasers (i.e.,
factor one), Opposer did not present any direct consumer evidence, such as, for
example, a survey. Instead, Opposer seeks to rebut Applicant’s showing with
circumstantial evidence establishing continuous use of the mark SHARED since July
2012, recognition as “a top co-working space both nationally and locally several years
in a row,” both print and electronic advertising and outreach, and unsolicited media
attention.84
Ms. Yu, Opposer’s founder and owner, testified that “[t]he business was first
launched and introduced to the public in July of 2012” and the SHARED marks “have
been used in representation of the co-working services offered to our members and

84 Rebuttal Brief, p. 16-17; 34 TTABVUE 24-25.
Opposition No. 91228478
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public continuously since the inception of the business in 2012.”85 As of the date of
her declaration, Ms. Yu testified that Opposer had 68 active members, with average
membership between 60-80 per month and a total of 478 (presumably unique)
members since 2013.86 In addition, approximately 100 non-members participate per
week in classes, events, and workshops.87 Ms. Yu also testified that Opposer has
received unsolicited media attention and recognition within the industry by multiple
national and international publications since as early as November 2013, has been
recognized two years in a row as one of the top 100 coworking spaces in the United
States, and has created partnerships and collaboration with other similar service
providers in other states.88 Opposer also claims to have “continuously and
successfully monitored the co-working industry . . . to enforce its federal trademark
rights and ensure there is no likelihood of confusion among consumers [as] to the
source of its marks.”89
As to the length, degree, and exclusivity of use (i.e., factor two), Opposer does not
claim that its seven-year use of the marks has been exclusive or even substantially
exclusive. Opposer’s evidence showing use of the term “shared” in a mark by third-
party “SHARED Brooklyn” is probative to establish that Opposer’s use of the term

85 1st Yu Decl’n, paras. 4, 7; 28 TTABVUE 65, 66.
86 Id., para. 8; 28 TTABVUE 66.
87 Id.
88 Id. paras. 9-11; 28 TTABVUE 66.
89 Id. para. 12; 28 TTABVUE 67.
Opposition No. 91228478
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“shared” has not been exclusive since at least after the time of registration.90 See
Miller v. Miller, 105 USPQ2d 1615, 1625 (TTAB 2013) (in connection with claim of
acquired distinctiveness, applicant’s consent and agreement to third party use of the
surname Miller for legal services militated against finding substantially exclusive
use). But, of course, absolute exclusivity is not required. See L.D. Kitchler Co. v.
Davoli, Inc., 192 F.3d 1349, 52 USPQ2d 1307 (Fed. Cir. 1999).
Even if we were to assume that Opposer has enjoyed substantially exclusive use,
because the term “shared” is highly descriptive, seven years of continuous use is not
sufficient standing alone to prove that the term “shared” has acquired distinctiveness.
See Real Foods, 128 USPQ2d at 1378 (“while evidence of substantially exclusive and
continuous use may be sufficient to prove a prima facie case of acquired
distinctiveness, this is not always the case. ... ‘Particularly for a mark that is ... highly
descriptive like [Real Foods’ proposed marks], the [TTAB] was within its discretion
not to accept [Real Foods’] alleged five years of substantially exclusive and continuous
use as prima facie evidence of acquired distinctiveness.”’) (internal citations omitted).
See also SnoWizard, 129 USPQ2d at 1006 (length of use of mark for over nine years
insufficient by itself to bestow acquired distinctiveness); Target Brands, Inc. v.
Hughes, 85 USPQ2d 1676, 1681 (TTAB 2007) (“Applicant’s continuous use since 1992
is a fairly lengthy period, but not necessarily conclusive or persuasive on the Section
2(f) showing.”); In re Kalmbach Publ’g Co., 14 USPQ2d 1490, 1494 (TTAB 1989) (for
highly descriptive term, applicant’s statement of long use of a purported mark was

90 See Exhibit N to Yu Decl’n, 28 TTABVUE 72.
Opposition No. 91228478
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insufficient to establish distinctiveness, absent specific evidence of the extent of the
mark’s exposure to the purchasing public and of the purchasers’ perception of the
asserted mark).
As to the amount and manner of advertising (i.e., factor three), Opposer ignores
the amount and mentions the manner only in passing, stating that it “uses both print
and electronic advertising and outreach.”91 In response to Applicant’s Interrogatory
No. 10, which asked Opposer to “[i]dentify all advertising, marketing, brand
consulting, or promotional companies or agencies with whom Opposer has worked
regarding the development or creating of marketing pieces, websites, [etc.],” Opposer
replied “[n]one.”92 Instead, Opposer revealed that it has “utilized various social media
and online advertising and promotional outlets, including but not limited to, Yelp,
Google, FaceBook, Craiglist [sic], wiki.Coworking, Alcubic, Desks Near Me, Share
Your Office, Pick Space, Deskwanted, Desktime, Instant, Concourse, PickSpace,
LiquidSpace, OfficeBook, PivotDesk, Spacefy, and SFMADE.”93 Opposer provided no
context for this alleged advertising (e.g., number or frequency of ads, number of hits
or impressions, etc.). When asked to “[s]tate the amount of money, on a year-by-year
basis, expended on sales and advertising relating to Opposer’s” marks, Opposer failed
to provide any figures and instead stated that it “has no set dollar amount because
almost all marketing is through client referrals, online through listing websites and

91 Rebuttal Brief, p. 18; 34 TTABVUE 26.
92 29 TTABVUE 544.
93 Response to Interrogatory No. 34; 29 TTABVUE 553.
Opposition No. 91228478
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online presence.”94 Without further information as to the nature, kind, and extent of
its advertising expenditures or context, Opposer’s statements are of little probative
value. Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1480 (TTAB
2016) (probative value of sales revenue figures quantified as doses sold is diminished
by the fact that the amount is just a raw number without context as to applicant’s
market share or whether this amount is significant in the industry). While “no set
dollar amount” has been provided, we note that in other cases annual advertising
expenditures of $100,000 or less have been considered relatively modest for a highly
descriptive designation. See, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion
Techs., Inc., 123 USPQ2d 1844, 1856 (TTAB 2017) (finding $75,000 for one year of
advertising and promotion expenditures “hardly impressive, falling far below levels
deemed persuasive in other cases involving the acquired distinctiveness of marks that
may be highly descriptive”); Burke-Parsons-Bowlby Corp. v. Appalachian Log Homes,
Inc., 871 F.2d 590, 10 USPQ2d 1443, 1447 (6th Cir. 1989) (finding $100,000 for one
year’s advertising expenditures did not evidence secondary meaning in “Appalachian
Log Structures” for log houses without additional evidence “to establish the amount
as extensive or to distinguish it as beyond that necessary to survive in the market”).
As to the amount of sales and number of customers (i.e., factor four), Opposer did
not present any evidence of sales but did testify as to the size of its membership base.
When asked to state its “yearly dollar volume of sales of goods and services sold

94 Response to Interrogatory No. 36; 29 TTABVUE 553.
Opposition No. 91228478
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under” the marks, Opposer objected and provided no substantive response.95
However, Ms. Yu testified that since 2013 Opposer has had a total of 478 members,
averaging between 60 and 80 active memberships per month.96 Opposer did not
provide any context for these membership numbers, and there is no evidence about
the size of the incubation or coworking market. We cannot say that 478 members over
the course of seven years is significant, because the record indicates that there is “a
plethora of coworking possibilities . . . in most major cities.”97 In an article allegedly
from 201498 discussing coworking space in several major domestic and foreign cities
(including Atlanta, Chicago, Los Angeles, New York, and San Francisco), the authors
indicate that they have “literally just skimmed the tip of the iceberg in this article,
touching upon a small selection of locations and contrasting a minute percentage of
actual coworking rental rates.” Other articles from 2016 indicate that “[t]he last few
years have seen a renaissance in maker spaces, with the independent shops, startups
and community organizations opening shared workshops in every state,”99
“[c]oworking spaces are popping up in cities all around the world,”100 and “more and
more coworking spaces [are] opening every day throughout the San Francisco Bay

95 Response to Interrogatory No. 37; 29 TTABVUE 554.
96 Yu Decl’n, para. 8; 28 TTABVUE 66.
97 “San Francisco to Taipei: the Best Coworking Workspace” (ichitect.com), 26 TTABVUE 18.
98 Opposer indicates that the article was “published in June of 2014,” but the article has the
date “3/15/2015” on each page. 26 TTABVUE 2, 9-23.
99 “The Field Guide to Maker Spaces in All 50 States” (blog.westelm.com), 26 TTABVUE 238.
100 “Working Remotely Around The World: Workspaces To Explore”
(smashingmagazine.com), 26 TTABVUE 116.
Opposition No. 91228478
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Area.”101 From this, we infer that there is great interest in incubation and coworking
space, the national market for such space is large, and Opposer occupies but a small
fraction of the shared space market.
Opposer does not discuss intentional copying (i.e., factor five), but focuses on
unsolicited media coverage (i.e., factor six) of its incubation and coworking space.
Specifically, Opposer argues that it “offers a unique service within the industry by
providing more than just [a] traditional co-working office facility. Opposer offers
amenities, equipment, tools, workshops and other creative and collaborative services
to entrepreneurs, artist and creative audience alike” and that “[c]onsumers recognize
the uniqueness of the space.”102 We note that the services recited in the composite
mark registration are “incubation services, namely, providing work space containing
business equipment to freelancers, start-ups, existing businesses and non-profits.”
Such services do not appear to be unique within the industry, and there is no mention
in the registration of workshops or other creative and collaborative services.
Nonetheless, we consider Opposer’s evidence in support of this factor which includes
several articles, Yelp pages, and a Google Business Review relating to Opposer’s
business.103 Although Opposer appears in a few “best” and “top” coworking space
listings, Opposer did not provide circulation figures for any of the publications or
numbers of impressions or unique hits for the web sites in which the unsolicited

101 “Top 40 Coworking Spaces in the San Francisco Bay Area” (blog.getkisi.com), 26
TTABVUE 249.
102 Rebuttal Brief, p. 18; 34 TTABVUE 26.
103 30 TTABVUE 29-330
Opposition No. 91228478
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media appeared. “Thus, we are at a disadvantage to accurately gauge the degree of
exposure and the achievement of distinctiveness among the relevant classes of
purchasers.” Apollo Med. Extrusion Techs., 123 USPQ2d at 1855-56. In sum, the
record falls far short of establishing that Opposer’s promotional efforts have borne
fruit with respect to acquired distinctiveness. Id. at 1856; see also Mini Melts, 118
USPQ2d at 1480 (“The ultimate test in determining whether a designation has
acquired distinctiveness is [the party’s] success, rather than its efforts, in educating
the public to associate the proposed mark with a single source.”).
Considering Opposer’s evidence as a whole, we find that Opposer has failed to
establish that the term “shared” has acquired distinctiveness as a source-indicator
for Opposer’s services. That is, Opposer has not established that, “in the minds of the
public, the primary significance of [‘shared’] is to identify the source of the [services]
rather than the [service] itself.” Coach Servs., Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1729 (Fed. Cir. 2012). The record evidence establishes
that the word “shared” is, at a minimum, a highly descriptive designation that
identifies a significant and defining characteristic and important feature of
incubation services and coworking, namely, shared office and work space. Given that
the designation is highly descriptive, much more persuasive evidence than Opposer
has submitted would be necessary to show that the term “shared” has become
distinctive as a source indicator for Opposer’s incubation services in the nature of
provision, rental, and leasing of shared office and work space. Cf. In re Bos. Beer Co.
L.P., 198 F.3d 1370, 53 USPQ2d 1056, 1057-58 (Fed. Cir. 1999) (even where there
Opposition No. 91228478
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was evidence of “annual advertising expenditures in excess of ten million dollars and
annual sales under the mark of approximately eighty-five million dollars,” the Court
held that, “considering the highly descriptive nature of the proposed mark, [the
applicant] has not met its burden to show that the proposed mark has acquired
secondary meaning”).
D. Decision on the counterclaims
We grant Applicant’s counterclaim for cancellation of Registration No. 4867093 on
the ground that it is merely descriptive under Section 2(e)(1) of the Act, and
Registration No. 4880230 on the ground that the word “shared” is merely descriptive
and should be disclaimed. Opposer may, within thirty days from the mailing date of
this decision, file a disclaimer of SHARED for Registration No. 4880230, in which
event judgment will be set aside as to Registration No. 4880230 only.104
V. Priority and Likelihood of Confusion
Although we grant Applicant’s counterclaims against Opposer’s registrations and
Opposer has not shown that the term “shared” has acquired distinctiveness, we
observe that Applicant concedes priority and “does not dispute Opposer’s claim of
priority . . . .”105 Applicant did not claim, the parties did not litigate, and we have not

104 A properly worded disclaimer will read as: No claim is made to the exclusive right to use
“shared” apart from the mark as shown. TMEP § 1213.08(a)(i) (Oct. 2018).
105 Brief, p. 2, n.1; 33 TTABVUE 10. Nonetheless, we note that the filing date of the
application underlying Opposer’s Registration No. 4880230 is earlier than the filing date of
Applicant’s application; and Opposer testified that its composite mark has “been used . . .
continuously since the inception of the business in 2012.” 1st Yu Decl’n, para. 7; 28 TTABVUE
66.
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determined above whether Opposer’s composite mark is comprised of non-distinctive
design elements. See In re Serial Podcast, LLC, 126 USPQ2d 1061 (TTAB 2018)
(citing In re Cordua Rests. Inc., 118 USPQ2d at 1639). Opposer may, as noted above,
file a disclaimer of “shared” in Registration No. 4880230, in which event judgment
will be set aside as to that registration.
Inasmuch as Applicant conceded priority, and Opposer may maintain registration
of the mark with entry of a disclaimer, we will presume, solely for
purposes of determining Opposer’s claim of likelihood of confusion, that Opposer has
filed the required disclaimer and thus maintains proprietary rights in the service
mark as a whole for the incubation services listed in the
registration, such mark is distinctive, whether inherently or otherwise, and that
Opposer maintains its standing to bring the opposition. See Otto Roth & Co. v.
Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981). Because
Opposer has not demonstrated acquired distinctiveness in the standard character
mark SHARED, Opposer has not established, on this record, proprietary rights in
that mark. Accordingly, we focus our likelihood of confusion inquiry on Opposer’s
composite mark .
A. Applicable law on likelihood of confusion
Our determination under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), is
based on an analysis of all probative facts in evidence that are relevant to the factors
bearing on the likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d
Opposition No. 91228478
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1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities between the marks and the
similarities between the goods. See 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 make that determination on a case-by-
case basis, aided by the application of the factors set out in du Pont, On-Line Careline
Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000), and
we must consider each du Pont factor for which there is evidence or argument. See In
re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019). Opposer
bears the burden of proving a likelihood of confusion by a preponderance of the
evidence. Weider Publn’s, LLC v. D & D Beauty Care Co., LLC, 109 USPQ2d 1347,
1353 (TTAB 2014).
1. The services and trade channels

There is no dispute that Applicant’s provision of “co-working facilities equipped
with office equipment” and “facilities for business meetings for others” are
encompassed within Opposer’s “incubation services, namely, providing work space
containing business equipment to freelancers, start-ups, existing businesses and non-
profits.” Because the services are in-part identical and unrestricted as to trade
channels, we must presume that these particular services travel in the same ordinary
trade and distribution channels and will be marketed to the same potential
consumers. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
Opposition No. 91228478
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2012) (even though there was no evidence regarding channels of trade and classes of
consumers, the Board was entitled to rely on this legal presumption in determining
likelihood of confusion); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721,
723 (CCPA 1968) (where there are legally identical goods, the channels of trade and
classes of purchasers are considered to be the same); Am. Lebanese Syrian Associated
Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
Accordingly, the du Pont factors regarding the similarity or dissimilarity of the
services and the similarity or dissimilarity of established, likely to continue trade
channels each favor a finding of likelihood of confusion.
2. Degree of purchasing care, customer sophistication
The fourth du Pont factor is the “conditions under which and buyers to whom sales
are made, i.e. ‘impulse’ v. ‘careful,’ sophisticated purchasing.” du Pont, 177 USPQ at
567. As noted above, the classes of purchasers for each parties’ coworking space are
the same. Precedent requires that we base our decision on the least sophisticated
potential purchasers. See Double Coin Holdings v. Tru Dev., 2019 USPQ2d 377409 at
*7 (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1163 (Fed. Cir. 2014)). Applicant argues that the typical consumer of
the parties’ services “is a professional” who is “likely to be careful . . . given the non-
impulsive nature of the services . . . .”106 Applicant points to an articles describing
coworking consumers in San Francisco as bootstrapping entrepreneurs and use of

106 Brief, p. 14; 33 TTABVUE 22.
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coworking spaces by mobile app developers.107 There is no evidence of record to
indicate that bootstrapping entrepreneurs or mobile app developers are careful
consumers, and the standard of care for our analysis is that of the least sophisticated
purchaser. See Alfacell Corp. v. Anticancer, Inc., 71 USPQ2d 1301, 1306 (TTAB 2004).
Even if the parties’ services are not subject to impulse buying, absent evidence
showing that consumers will exercise a higher than ordinary degree of purchasing
care (and there is none in this record), we find this du Pont factor to be neutral. See
In re Iolo Techs. LLC, 95 USPQ2d 1498, 1501 (TTAB 2010) (“Applicant urges us to
consider consumer sophistication as a factor. However, applicant has submitted no
evidence that either its consumers or those of registrant would be sophisticated.”).
3. Strength of Opposer’s mark
Before turning to the similarity of the marks, we consider the strength of
Opposer’s mark, as that will affect the scope of protection to which it is entitled. In
determining the strength of a mark, we consider both its inherent or conceptual
strength, based on the nature of the mark itself and its commercial strength, based
on the marketplace recognition value of the mark. See Top Tobacco, L.P. v. N. Atl.
Operating Co., 101 USPQ2d 1163, 1171-72 (TTAB 2011) (the strength of a mark is
determined by assessing its inherent strength and its commercial strength); Tea Bd.
of India v. Republic of Tea Inc., 80 USPQ2d at 1899. Market strength is the extent to
which the relevant public recognizes a mark as denoting a single source. Id. For

107 “Everything You Can Borrow, Loan, or Co-op in San Francisco,” (thrillist.com) 26
TTABVUE 71; “Out of the basement: How co-working spaces are changing the game for
mobile devs,” (fiercedeveloper.com) 26 TTABVUE 112-14.
Opposition No. 91228478
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purposes of analysis of likelihood of confusion, a mark’s renown may “var[y] along a
spectrum from very strong to very weak.” Joseph Phelps Vineyards, LLC v. Fairmont
Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (internal
quotation marks omitted). The proper standard is the mark’s “renown within a
specific product market,” id., and “is determined from the viewpoint of consumers of
like products,” id. at 1735, and not from the viewpoint of the general public.
As noted above in our discussion of mere descriptiveness, Applicant submitted
substantial evidence that the term “shared” is merely descriptive of Opposer’s
services. Although we presume for purposes of the likelihood of confusion analysis
that Opposer’s composite mark possesses some degree of distinctiveness, we
nonetheless note that similar “rounded rectangular backdrops for each letter” have
been found “not inherently distinctive.” Serial Podcast, 126 USPQ2d at 1073.
Similarly, it is well settled that “[m]ost common geometric shapes, such as circles,
squares, triangles, ovals, and rectangles, when used as backgrounds for the display
of word marks, are not considered inherently distinctive, and have difficulty
acquiring distinctiveness.” Id. (citing In re Benetton Grp. S.p.A., 48 USPQ2d 1214,
1215-16 (TTAB 1998) and In re Anton/Bauer Inc., 7 USPQ2d 1380, 1381 (TTAB
1988)). We accordingly find that the overwhelming evidence discussed above
(including the dictionary definitions of “shared,” internet evidence explaining the
nature of coworking spaces and incubators, Opposer’s own website repeatedly
describing its shared space and tools, internet evidence showing third-party use of
“shared” to describe both Opposer’s services and third-parties’ provision of office and
Opposition No. 91228478
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work space, and the four third-party registrations), show that the “shared” word
portion of the composite mark is highly descriptive, and when combined with the
simple rounded square backdrop for each letter the overall mark as a whole is
conceptually weak.
As noted above in our discussion of acquired distinctiveness, Opposer submitted
evidence of the commercial strength of the SHARED mark. See Weider Publ’ns, LLC
v. D & D Beauty Care Co., 109 USPQ2d at 1354; see also Bose Corp. v. QSC Audio
Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1308 (Fed. Cir. 2002) (recognizing
indirect evidence as appropriate proof of strength). Opposer’s testimony and evidence
shows that Opposer is commercially successful as indicated by the fact that it has
been rendering its services since at least 2012, and has received minor local attention
in the mainstream media as well as some national and regional attention in niche
publications relating to coworking space. However, the record does not necessarily
show that Opposer’s composite mark is commercially strong. For example, Opposer
did not introduce any evidence placing Opposer’s success in context with other
providers of incubation or coworking space. Similarly, we have no context for the
media attention Opposer has received; we lack industry information to put this
information in context. Even more compelling, however, is the fact that the design
mark appears only once in all of the unsolicited media evidence submitted by
Opposer;108 all of the other mentions of “shared” as Opposer’s name are simply

108 “Top 40 Coworking Spaces in the San Francisco Bay Area” (blog.getkisi.com), 26
TTABVUE 253.
Opposition No. 91228478
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textual. Further, other than submitting its own website, Opposer did not include any
samples of its online advertising allegedly promoted through multiple outlets.
Considering the record as a whole, the extreme conceptual weakness of the term
“shared” for incubation and coworking spaces, and that simple rounded square
backdrop for each letter are on the “less distinctive part of the spectrum,” Serial
Podcast, 126 USPQ2d 1075, we find that Opposer’s composite mark
is appropriately placed at the lower or weaker end of the spectrum of “very strong to
very weak.” Joseph Phelps Vineyards, 122 USPQ2d at 1734 (quoting In re Coors
Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003)).
4. Similarity of the marks
With respect to the marks, we must compare them “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imps., 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). Similarity in any one of
the elements of sound, appearance, meaning, or commercial impression suffices to
support a determination of likelihood of confusion. See In re Davia, 110 USPQ2d 1810,
1812 (TTAB 2014) (“Similarity in any one of these elements may be sufficient to find
the marks confusingly similar.”). It is well-settled that where the services are
identical in part, as is the case here, less similarity between the marks is needed for
us to find a likelihood of confusion. Coach Servs. v. Triumph Learning, 101 USPQ2d
at 1721; Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992) (“When marks would appear on virtually
Opposition No. 91228478
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identical goods or services, the degree of similarity necessary to support a conclusion
of likely confusion declines.”).
The test assesses not whether the marks can be distinguished in a side-by-side
comparison, but rather whether their overall commercial impressions are so similar
that confusion as to the source of the goods offered under the respective marks is
likely to result. Coach Servs. v. Triumph Learning, 101 USPQ2d at 1721 (Fed. Cir.
2012); see also Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012). The
focus is on the recollection of the average purchaser, who normally retains a general
rather than a specific impression of trademarks. See Inter IKEA Sys. B.V. v. Akea,
LLC, 110 USPQ2d 1734, 1740 (TTAB 2014); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106, 108 (TTAB 1975).
Opposer’s composite mark is while Applicant’s composite mark
is . The marks are similar in sound and appearance to the extent
they both contain the word “shared,” and further similar in appearance to the extent
that they each contain rounded square shapes. However, they differ in sound and
appearance to the extent Applicant’s mark contains the additional word “space,” and
further differ in appearance due to the number, shading, and placement of the
rounded square shapes as well as the differing capitalization of the wording.
The overall impression of Applicant’s mark is that of shared space. The special
placement and intersection of the rounded, overlapping squares is evocative of a Venn
diagram or something shared, particularly shared space in view of the accompanying
words which visually run together. Conversely, the individual rounded squares
Opposition No. 91228478
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enclosing each letter of the literal element “shared” of Opposer’s mark evoke a sense
at the same time of both separation and delineation of individual space as well as the
sharing of such space.
In most cases, “when evaluating a composite mark containing both words and
designs, the verbal portion of the mark often is more likely to indicate the origin of
the goods to which it is affixed because it is the portion of the mark that consumers
would use to refer to or request the . . . services.” Bond v. Taylor, 119 USPQ2d 1049,
1055 (TTAB 2016) (citing In re Viterra, 101 USPQ2d at 1908, 1911). In this case,
Opposer’s literal element “shared” is highly descriptive and without acquired
distinctiveness, and Applicant’s literal element “shared space” is also descriptive and
disclaimed. We are mindful that descriptive and disclaimed terms generally have less
significance in likelihood of confusion determinations. See Cunningham v. Laser Golf,
55 USPQ2d at 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has
noted that the ‘descriptive component of a mark may be given little weight in reaching
a conclusion on the likelihood of confusion.”’) (quoting In re Nat’l Data Corp., 753 F.2d
1056, 224 USPQ 749, 752 (Fed. Cir. 1985)); In re Dixie Rests. Inc., 41 USPQ2d at
1533-34; In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001)
(disclaimed matter is often “less significant in creating the mark's commercial
impression”). Nevertheless, “shared” is not only the first element of Applicant’s mark,
it is the entire literal element of Opposer’s mark. The addition of “space” after
“shared” in Applicant’s mark presents the same meaning as “shared” in Opposer’s
mark (i.e., shared space is a desirable feature and defining characteristic of coworking
Opposition No. 91228478
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space). Indeed, the combination of these terms makes the marks resemble each other
very closely in sight, sound, connotation and commercial impression. See Shen Mfg.
v. Ritz Hotel, Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1355 (Fed. Cir. 2004) (“The
disclaimed elements of a mark, however, are relevant to the assessment of similarity.
This is so because confusion is evaluated from the perspective of the purchasing
public, which is not aware that certain words or phrases have been disclaimed.”)
(citations omitted); Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 144 USPQ 433
(CCPA 1965).
Although there are visual difference between the marks, and Opposer’s mark falls
on the lower or weaker end of the spectrum of “very strong to very weak” marks,
Joseph Phelps Vineyards, 122 USPQ2d at 1734, we find that their overall similarities
in sound, meaning, and commercial impression outweigh any visual difference. Even
marks that are deemed “weak” or merely descriptive are still entitled to protection
under Section 2(d) against the registration by a subsequent user of a similar mark
for related services. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
1401, 182 USPQ 108, 109 (CCPA 1974); In re Max Capital Grp. Ltd., 93 USPQ2d
1243, 1246 (TTAB 2010). Accordingly, this du Pont factor supports a finding of
likelihood of confusion.
5. Absence of actual confusion
Lastly, we turn to the seventh du Pont factor (nature and extent of any actual
confusion) and the related eighth du Pont factor (extent of the opportunity for actual
Opposition No. 91228478
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confusion). du Pont, 177 USPQ at 567. Applicant argues that after close to four years
of concurrent use109 Opposer has produced no evidence of any actual confusion.110
The absence of any reported instances of confusion is meaningful only if the record
indicates appreciable and continuous use by Applicant of its mark for a significant
period of time in the same markets as those served by Opposer under its mark.
Citigroup Inc. v. Capital City Bank Grp. Inc., 94 USPQ2d 1645, 1660 (TTAB 2010),
aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Gillette Can. Inc. v. Ranir
Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). In other words, for the absence of actual
confusion to be probative, there must have been a reasonable opportunity for
confusion to have occurred. 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); Red
Carpet Corp. v. Johnstown Am. Enters. Inc., 7 USPQ2d 1404, 1406-07 (TTAB 1988);
Cent. Soya Co., Inc. v. N. Am. Plant Breeders, 212 USPQ 37, 48 (TTAB 1981) (“the
absence of actual confusion over a reasonable period of time might well suggest that
the likelihood of confusion is only a remote possibility with little probability of
occurring”). Because Applicant points to no evidence of record to support actual
confusion, we analyze Applicant’s impact in the market to determine the probative
value of the lack of any reported instances of confusion.

109 Applicant’s response to Opposer’s Interrogatory No. 4 indicates that Applicant “began
using its mark on February 10, 2016.” 28 TTABVUE 7. Opposer does not challenge this date.
110 Brief, p. 15; 33 TTABVUE 23.
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Although we consider the parties’ trade channels identical under the third du Pont
factor, in our analysis of the eighth du Pont factor we look to the evidence of record
and determine whether Applicant has demonstrated that the trade channels are, in
fact, similar. Opposer identified its channels of trade as follows: “Opposer has utilized
various social media and online outlets, including but not limited to, Yelp, Google,
FaceBook, Craiglist [sic], wiki.Coworking, Alcubic, Desks Near Me, Share Your
Office, Pick Space, Deskwanted, Desktime, Instant, Concourse, PickSpace,
LiquidSpace, OfficeBook, PivotDesk, Spacefy, and SFMADE.”111 Applicant identified
its channels of trade as follows: “Applicant markets its services to businesses and
individuals who have a need for office space, services, and amenities.”112 Needless to
say, Applicant’s description does not describe trade channels. Moreover, there is no
evidence regarding the extent of Applicant’s use of its mark.
At best, the time within which confusion could have arisen is not significant, as
Applicant claims to have first used its mark in February, 2016. In any event, the test
under Section 2(d) of the Act is likelihood of confusion, not actual confusion.
Applicant’s evidentiary showing is insufficient to prove that there has been a
reasonable opportunity for confusion to have occurred. Thus, the seventh and eighth
du Pont factors are neutral.

111 Response to Interrogatory No. 34; 29 TTABVUE 553.
112 Response to Interrogatory No. 22; 28 TTABVUE 14
Opposition No. 91228478
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B. Conclusion on likelihood of confusion
Because the services are in-part identical and unrestricted as to trade channels,
the second and third du Pont factors favor finding that confusion is likely. The overall
similarities in sound, connotation, and commercial impression between the marks
outweigh their visual differences. Although Opposer’s composite mark is neither
conceptually nor commercial strong, it is still entitled to protection. The factors
involving the conditions under which and buyers to whom sales are made, nature and
extent of any actual confusion, and extent of the opportunity for actual confusion are
all neutral. On balance, we find that the in-part identity of the services and the
similarity of the marks’ commercial impressions outweigh any weaknesses in
Opposer’s mark, and that confusion is likely between Opposer’s mark
and Applicant’s mark .
VI. Summary of Decision
The counterclaim petition is granted on the ground of mere descriptiveness.
Registration No. 4867093 will be cancelled in due course. Opposer is allowed until
thirty days from the mailing date of this decision in which to file a disclaimer of
SHARED for Registration No. 4880230, in which case judgment will be set aside as
to that registration.
The opposition to registration of the mark of Application
Serial No. 86833795 is sustained, and registration to Applicant is refused.