Transtechsol, LLC

Trademark Trial and Appeal Board

Nov 13, 2020

88598189 (T.T.A.B. Nov. 13, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 13, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Transtechsol, LLC
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Serial No. 88598189
_____

Andrea H. Evans of The Law Firm of Andrea Hence Evans LLC,
for Transtechsol, LLC.

Marco Wright, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
_____

Before Lykos, Larkin, and English,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
Transtechsol, LLC (“Applicant”) seeks registration on the Principal Register of the
mark shown below

Serial No. 88598189
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for “software design and development” in International Class 42 and “consulting
services in the field of corporate compliance and privacy law and regulations” in
International Class 45.1
The Examining Attorney refused registration of Applicant’s mark in both classes
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that it
so resembles the registered standard character marks TRANSTECH ONE for
“business consulting services” in International Class 35,2 and TRANZTEC for
“computer system and software development services” in International Class 42,3
owned by different entities, as to be likely, when used in connection with the services
identified in the application, to cause confusion, to cause mistake, or to deceive.
When the Examining Attorney made the refusals final, Applicant requested
reconsideration, which was denied, and then appealed. Applicant and the Examining
Attorney have filed briefs.4 We affirm the refusals to register as to both classes.

1 Application Serial No. 88598189 was filed on August 29, 2019 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s claimed first use of the mark and
first use of the mark in commerce in connection with both services at least as early as July
24, 2014. Applicant describes its mark as consisting of “the word ‘TransTechSol’,” “written in
Small Caps, with the letters T, T and S capitalized in a larger font, and the remaining letters
also capitalized, but smaller. The word is combined with a symbol which consists of a small
3D cube overlaying the left edge of a larger 2D square. The symbol sits above the word where
there is room.”
2 Registration No. 4566350 issued on July 15, 2014. It covers additional services in another
class that are not discussed by the Examining Attorney.
3 Registration No. 4667418 issued on January 6, 2015.
4 Citations in this opinion to the briefs refer to TTABVUE, the Board’s online docketing
system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Specifically, the
number preceding TTABVUE corresponds to the docket entry number, and any numbers
following TTABVUE refer to the page number(s) of the docket entry where the cited materials
appear.
Serial No. 88598189
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I. Record on Appeal5
The record on appeal includes Applicant’s specimens of use and the following
materials:
 Pages from the USPTO’s electronic databases regarding the cited
registrations, made of record by the Examining Attorney;6
 Webpages of entities that provide both business consulting services and
either compliance consulting services or consulting in privacy law and
regulations,7 and third-party registrations of marks covering the services
identified in the application and in the cited registrations,8 made of record
by the Examining Attorney; and
 Third-party registrations from the USPTO’s electronic databases of marks
comprised of the words TRANS and TECH/X, made of record by Applicant.9

5 Citations in this opinion to the application record, including the request for reconsideration
and its denial, are to pages in the Trademark Status & Document Retrieval (“TSDR”)
database of the United States Patent and Trademark Office (“USPTO”).
6 December 5, 2019 Office Action at TSDR 2-6.
7 Id. at TSDR 7-14; March 17, 2020 Final Office Action at TSDR 2-12; May 26, 2020 Denial
of Request for Reconsideration at TSDR 2-11. Applicant filed a Request for Reconsideration
of the final refusal to register on May 7, 2020, prior to appealing. The Examining Attorney
denied the Request on May 8, 2020, and then issued a second denial on May 26, 2020 to which
he attached the additional webpages. In the second denial, the Examining Attorney stated
that “[a]t the time applicant filed its notice of appeal on May 15, 2020, there was no pending
request for reconsideration because applicant’s request for reconsideration filed on May 7,
2020 was denied on May 8, 2020,” and that “it does not appear that applicant has filed
another request for reconsideration subsequent to its May 7, 2020 filing,” and he made no
reference to the attached evidence. Although the second denial appears to have been
superfluous, Applicant acknowledged it in Applicant’s brief and did not object to the attached
evidence, 6 TTABVUE 6, so we will deem the evidence to be part of the record.
8 March 17, 2020 Final Office Action at TSDR 13-78.
9 May 7, 2020 Request for Reconsideration at TSDR 8-11.
Serial No. 88598189
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II. Analysis of Refusal
Section 2(d) of the Trademark Act prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). Our determination of the likelihood of confusion under Section 2(d) is based
on an analysis of all probative facts in the record that are relevant to the likelihood
of confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973) (“DuPont”). We consider each DuPont factor for
which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d
1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019).
Two key DuPont factors in every Section 2(d) case are the first two factors
regarding the similarity or dissimilarity of the marks and the goods or services,
because 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.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ
24, 29 (CCPA 1976). Applicant devotes its entire appeal brief to a discussion of the
first DuPont factor, and, without specifically invoking it, the sixth DuPont factor, the
number and nature of similar marks in use on similar goods and services. DuPont,
177 USPQ at 567. 6 TTABVUE 7-13. The Examining Attorney also addresses the first
DuPont factor, 8 TTABVUE 4-8, as well as the second factor, id. at 8-11, and the sixth
factor. Id. at 11-13.
Serial No. 88598189
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In our DuPont analysis, we will address the cited TRANZTEC mark for “computer
system and software development services” in Registration No. 4667418 (the “’418
Registration”) with respect to Applicant’s Class 42 services, and the cited
TRANSTECH ONE mark for “business consulting services” in Registration No.
4566350 (the “’350 Registration”) with respect to Applicant’s Class 45 services.
A. Similarity or Dissimilarity of the Services and Channels of
Trade
The second DuPont factor “considers ‘[t]he similarity or dissimilarity and nature
of the goods or services as described in an application or registration,” In re Detroit
Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir 2018) (quoting DuPont,
177 USPQ at 567), while the third DuPont factor considers “the similarity or
dissimilarity of established, likely-to-continue trade channels.’” Id. at 1052 (quoting
DuPont, 177 USPQ at 567). See also Stone Lion Capital Partners, LP v. Lion Capital
LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-63 (Fed. Cir. 2014). “Apparently
conceding the issue, Applicant did not address these du Pont factors in its brief, so
we offer only a brief explanation of our conclusion” on them. In re Morinaga K.K., 120
USPQ2d 1738, 1740 (TTAB 2016).
“We begin with the identifications of . . . services in the registration[s] and
application under consideration.” In re Country Oven, Inc., 2019 USPQ2d 443903, *5
(TTAB 2019). The services identified in the application are “software design and
development” services in Class 42 and “consulting services in the field of corporate
compliance and privacy law and regulations” in Class 45. The services identified in
Serial No. 88598189
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the ’418 Registration are “computer system and software development services” and
the services identified in the ’350 Registration are “business consulting services.”
Class 42
The “software development services” identified in the ’418 Registration are
encompassed within the “software design and development” services identified in the
application. Because the services are legally identical on the face of the respective
identifications, there is no need for us to consider the Examining Attorney’s evidence
of similarity. See In re FabFitFun, Inc., 127 USPQ2d 1670, 1672 (TTAB 2018). The
second DuPont factor supports a finding of a likelihood of confusion with respect to
the Class 42 services.
Because the “software design and development” services in the application are
legally identical to the “software development services” in the ’418 Registration, and
there are no limitations on the channels of trade or classes of consumers for the
services, “we must presume that the channels of trade and classes of purchasers of
[software development services] are the same as to these” [services].” Id. (citing In re
Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). The third
DuPont factor also supports a finding of a likelihood of confusion with respect to the
Class 42 services.
Class 45
On its face, the broad identification of “business consulting services” in the ’350
Registration appears to encompass the narrower subset of “consulting services in the
field of corporate compliance and privacy law and regulations” in the application
Serial No. 88598189
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because the latter consulting services are provided to corporations, a form of business
organization to which “business consulting services” are rendered. The Examining
Attorney also made of record third-party webpages showing that multiple entities
offer “business consulting services,” and corporate compliance consulting or
consulting in privacy law and regulations, under the same marks.10 Given the
breadth of the “business consulting services” identification, and Applicant’s implicit
concession on the second DuPont factor, the record is sufficient to show that the
services are closely related to the extent that they are not legally identical. See, e.g.,
In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009). The second DuPont
factor supports a finding of a likelihood of confusion with respect to the Class 45
services.
The record also shows that both sets of the services are offered by consulting firms
and others in overlapping trade channels to overlapping consumers. The third
DuPont factor also supports a finding of a likelihood of confusion with respect to the
Class 45 services.
B. The Number and Nature of Similar Marks in Use for Similar
Services
The sixth DuPont factor “considers ‘[t]he number and nature of similar marks in
use on similar goods’” or services. Omaha Steaks Int’l, Inc. v. Greater Omaha Packing
Co., 908 F.3d 1315, 128 USPQ2d 1686, 1693 (Fed. Cir. 2018) (quoting DuPont, 177
USPQ at 567). This factor potentially impacts our analysis of the similarity or

10 December 5, 2019 Office Action at TSDR 7-14; March 17, 2020 Final Office Action at TSDR
2-5.
Serial No. 88598189
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dissimilarity of the marks under the first DuPont factor because the “purpose of
introducing evidence of third-party use is ‘to show that customers have become so
conditioned by a plethora of such similar marks that customers have been educated
to distinguish between different [such] marks on the bases of minute distinctions.’”
Id. (quoting Palm Bay Imps. v. Veuve Cliquot Ponsardin Maison Fondee en 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1694 (internal quotation and quotation marks omitted)).
Applicant argues that “[t]here are four (4) coexisting marks that use similar
formative terms for business and computer programming services” and “contends
these citations show the diluted nature of this term and relative weakness of ‘tech’
derivatives that also use the ‘trans’ prefix.” 6 TTABVUE 7. According to Applicant,
“the Examining Attorney did not acknowledge the diluted nature of the component
terms in its mark,” id., because “the derivative term ‘tech’ is extremely common, and
used in a variety of marks and in the instant case, the two (2) cited marks, along with
and TRANSTEX use a variant of the word.” Id. Applicant argues
that the “shared use of this component is of little significance, with TRANZTEC,
TRANSTECH ONE, and . all being registered in
connection with temporary employment agencies, and TRANSTEX covering
computer programming services for commercial analysis and reporting and computer
software project management services.” Id.
Applicant further argues that in “connection with the computer software and
business marks covered by the two (2) cited registrations and the two (2) other ‘trans’
Serial No. 88598189
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and ‘tec/k/x’ marks identified by the Applicant, consumers will understand that the
shared words in these marks exist in a crowded field,” id. at 8, and the “combination
of ‘trans’ and ‘tech’ remains diluted, which makes the arbitrary addition of ‘sol’ and a
design element in Applicant’s mark significant.” Id. Applicant concludes that “marks
using these terms should receive the narrowest of protection,” id. at 9, and that
“[s]ince there are several coexisting registrations using these component terms
together, the Trademark Attorney should consider the extent to which dilution may
indicate that there is no likelihood of confusion.” Id.
The Examining Attorney responds that “evidence comprising only a small number
of third-party registrations for similar marks with similar services, as in the present
case, is generally entitled to little weight in determining the strength of a mark,” 8
TTABVUE 12, and that “evidence comprising third-party registrations for similar
marks with different or unrelated services, as in the present case, has ‘no bearing on
the strength of the term in the context relevant to this case.’” Id. (quoting Tao
Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1058 (TTAB 2017)). He
argues that
Out of the two third-party registrations, only Registration
No. 5831327 for the mark “TRANSTEX” contains services
related to Applicant’s services and these services are only
related to Applicant’s International Class 42 services. The
services in the other submitted registration for the mark
“TRANSTECHS” are employment/staffing and
recruitment services and these services are neither related
to Applicant’s services, the services in the cited
registrations, nor the services in “TRANSTEX”
registration.
Serial No. 88598189
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Id. He concludes that “these third-party registrations submitted by Applicant are
insufficient to establish that the wording ‘Trans Tech’ or its phonetic equivalent is
weak or diluted.” Id. at 13. We agree.
“The Federal Circuit has held that evidence of the extensive registration and use
of a term by others can be powerful evidence of the term’s weakness.” Tao Licensing,
125 USPQ2d at 1057 (citing Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. v.
Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015)
and Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674
(Fed. Cir. 2015)). “In this case, there is no evidence of third-party usage, there is only
evidence of . . . third-party registrations,” In re Inn at St. John’s, LLC, 126 USPQ2d
1742, 1746 (TTAB 2018), aff’d mem., 777 F. App’x 516 (Fed. Cir. 2019), and the
registrations are “not evidence of what happens in the market place or that customers
are familiar with them.” Id. (quoting AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d
1403, 177 USPQ 268, 269 (CCPA 1973)). “Nevertheless, in determining the degree of
weakness, if any, in the shared terms, we must ‘adequately account for the apparent
force of [third-party use and registration] evidence,’ regardless of whether ‘specifics’
pertaining to the extent and impact of such use have been proven.” Id. (citing Juice
Generation, 115 USPQ2d at 1674-75). Third-party registrations alone may be
relevant, in the manner of dictionary definitions, “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, 115 USPQ2d at 1675 (internal quotation marks omitted). See also Jack
Serial No. 88598189
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Wolfskin, 116 USPQ2d at 1136. They “may bear on conceptual weakness if a term is
commonly registered for similar goods or services.” Tao Licensing, 125 USPQ2d at
1057.
The registrations discussed by Applicant include the two cited registrations, a
registration of for “Employment counseling in the field(s) of
maintenance and repair of vehicles for others; Employment staffing in the field of
maintenance and repair of vehicles; Recruitment and placement of personnel in the
field of maintenance and repair of vehicles; Temporary employment services,”11 and
a registration of TRANSTEX in standard characters for services that include
“Computer programming system, namely, computing programming services for
commercial analysis and reporting” and “Computer project management services.”12
The coexistence of the two cited registrations, which cover “computer system and
software development services” and “business consulting services,”13 has little, if any,
probative value regarding their conceptual weakness because Applicant has not
shown that the cited marks themselves are “registered for similar goods or services.”
Id. But even if we consider the two cited registrations to be third-party registrations
inter se, the resulting total of four third-party registrations is “a far cry from the large
quantum of evidence of third-party use and third-party registrations that was held to

11 May 7, 2020 Request for Reconsideration at TSDR 8-9.
12 Id. at TSDR 10-11. This registration also covers goods in Class 12 that are even farther
removed from the services at issue on appeal.
13 As noted above, the ’350 Registration covers other services as well.
Serial No. 88598189
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be significant in both” Jack Wolfskin and Juice Generation.14 Inn at St. John’s, 126
USPQ2d at 1746 (finding applicant’s evidence of “four third-party registrations of
varying probative value (two for non-identical services and the other two for non-
identical terms)” unpersuasive under the sixth DuPont factor).
Although the small number of registrations would be a sufficient basis to reject
Applicant’s argument that the cited marks are diluted, we will also consider whether
the two third-party registrations of and TRANSTEX show the
conceptual weakness of the cited marks.15

14 In Juice Generation, there were approximately 26 third-party uses and registrations of
marks containing the words “Peace” and “Love” for restaurant services and food products
that showed the weakness of the opposer's “Peace & Love” marks for restaurant services, 115
USPQ2d at 1673 & n.1, while in Jack Wolfskin, there were at least 14 third-party uses and
registrations of paw print marks for clothing that showed the weakness of the opposer's paw
print marks for the same goods. 116 USPQ2d at 1136 & n.2. Applicant cites a non-
precedential case, In re Agdata, Inc., 2001 WL 1598160 (TTAB Dec. 14, 2001), in which a
divided panel of the Board “only considered two (2) coexisting third-party registrations, both
of which were somewhat different from the identical marks in that case,” 6 TTABVUE 9, in
finding that the cited mark was weak and in reversing the refusal to register. We are not
bound by non-precedential decisions, see, e.g., Stawski v. Lawson, 129 USPQ2d 1036, 1048
(TTAB 2018), but Agdata does not aid Applicant in any event. The panel majority in that case
found that the “respective services [were] on their face specifically different,” Agdata, 2001
WL 1598160 at *11, and that it was “manifest” that the cited mark was “highly suggestive of
any kind of service” and thus “a weak mark which is entitled to only a narrow scope of
protection.” Id. at *12. Here, the services are identical and closely related, and there is no
evidence that the cited marks are “highly suggestive of any kind of service.” Id.
15 We agree with Applicant that what it calls the “derivative term ‘tech’ is extremely common
and used in a variety of marks . . . .” 6 TTABVUE 7. The issue, however, is the conceptual
weakness of the cited marks TRANZTECH and TRANSTECH ONE, which Applicant
accurately describes as “‘tech’ derivatives that also use the ‘trans’ prefix.” Id. Applicant must
show that the combination of the elements in the cited marks are “part of a crowded field of
marks using ‘trans’ and ‘tech’ (or their phonetic equivalents together) . . . .” Id. at 8.
Serial No. 88598189
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Class 42
As discussed above in connection with the second DuPont factor, Applicant’s Class
42 “software design and development” services are identical to the “software
development services” identified in the ’418 Registration. In Omaha Steaks, the
Federal Circuit held that where, as here, the involved goods or services are identical,
third-party use on other goods or services “outside that market is meaningless.”
Omaha Steaks, 128 USPQ2d at 1694 (citing Nat’l Cable Television Ass’n v. Am.
Cinema Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991)). The
court found that because the involved goods were both meats products, third-party
uses “on unrelated goods are properly understood as having no real probative value
for the analysis at hand . . . .” Id. at 1695.
Neither of the third-party registrations here covers “software development
services,” and Applicant has not shown how the “computer programming and project
management services” in the TRANSTEX registration, which we find to be far more
pertinent than the employment, recruitment, and placement services in the
registration, are similar to “software development services.” See id.
at 1694 (noting absence of evidence to support applicant’s claim that meats, and
various foods and beverages on which third-party marks were used, were related for
purposes of the sixth DuPont factor). We find that neither of the third-party
registrations has any real probative value regarding the claimed conceptual
weakness of the TRANZTEC mark in the ’418 Registration.
Serial No. 88598189
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Class 45
We have noted above that Applicant’s Class 45 “consulting services in the field of
corporate compliance and privacy law and regulations” appear to be encompassed
within the “business consulting services” in the ’350 Registration and could be
considered legally identical to those services, and we have found that the Examining
Attorney has also shown through evidence that the services are related. Even if we
do not apply the stricter standard for similarity of the services covered by the third-
party marks to Applicant’s Class 45 services that we apply above in connection with
the identical Class 42 services, in the absence of proof of relatedness, we find that the
“computer programming and project management services” in the TRANSTEX
registration and the employment, recruitment, and placement services in the
registration are simply too far afield from the “business consulting
services” in the ’350 Registration to have any real probative value regarding the
conceptual weakness of that mark.
Even when combined with the cited registrations themselves, the third-party
registrations are insufficient in both quantity and quality to show that the cited
marks are conceptually weak. We find that the sixth DuPont factor is neutral in our
analysis of the likelihood of confusion in each class in the application.
C. Similarity or Dissimilarity of the Marks
Under the first DuPont factor, we consider “the similarity or dissimilarity of the
marks in their entireties as to appearance, sound, connotation and commercial
impression.” Palm Bay Imps., 73 USPQ2d at 1691. “Similarity in any one of these
Serial No. 88598189
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elements may be sufficient to find the marks confusingly similar.” Inn at St. John’s,
126 USPQ2d at 1746 (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)).
Accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 156 USPQ 523, 526
(CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone
is likely to cause confusion.”) (citation omitted).
The proper test regarding similarity “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.” Cai v. Diamond Hong, Inc., 901 F.3d
1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs. Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (internal
quotation marks and citation omitted)). “The proper perspective on which the
analysis must focus is on the recollection of the average customer, who retains a
general rather than specific impression of marks.” In re i.am.symbolic, llc, 127
USPQ2d 1627, 1630 (TTAB 2018) (citations omitted).
Because the Class 42 “software design and development” services in the
application are identical to the “software development services” in the ’418
Registration, the degree of similarity between the respective marks that is necessary
for confusion to be likely with respect to the Class 42 services is reduced. See, e.g.,
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 identical goods or
Serial No. 88598189
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services, the degree of similarity necessary to support a conclusion of likely confusion
declines.”).
Applicant argues that “the marks at issue are not closely similar,” 6 TTABVUE
10, and that its mark “differs from the cited registrations by adding the last three
letters ‘sol’ and a prominent design of a cube crossing through a square.” Id. Applicant
claims that its “design changes the visual appearance of the marks, and creates a
distinct commercial impression apart from the cited registrations, particularly
because the shared word elements are used in several registrations,” id., and that
“the design of Applicant’s mark which is placed above a smaller rendition of the words
in its mark, force a visual distinction of both marks. Likelihood of confusion is
minimized where a design is used as part of a mark.” Id. at 10-11.
Applicant argues that the design is the more prominent portion of its mark
because “[w]ith common wording such as the word ‘tech,’ and four (4) marks that
combine this word with ‘trans/z’, design elements will be more dominant than the
accompanying words.” Id. at 11. Applicant claims that the “Examining Attorney has
discounted the significance of Applicant’s design elements as consisting of common
and basic geometric shapes.” Id. Citing In re Electrolyte Labs., Inc., 913 F.2d 930, 16
USPQ2d 1239 (Fed. Cir. 1990), Applicant argues that the “Federal Circuit has stated
that there is no general rule as to whether letters or designs will dominate in
composite marks, and that no element of a mark is to be ignored simply because it is
less dominant or would not have trademark significance if used alone.” 6 TTABVUE
11. Citing In re Covalinski, 113 USPQ2d 1166 (TTAB 2014), Applicant argues that
Serial No. 88598189
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“the design in the instant application draws attention away from the word elements
in the marks, and actually makes them difficult to notice” because “Applicant’s design
is much larger than the written words, which are set below the images in the mark.”
6 TTABVUE 12. Applicant also cites Ferro Corp. v. Ronco Labs., Inc., 356 F.2d 122,
148 USPQ 497 (CCPA 1966) and Parfums Coeur Ltd. v. Lazarus, 83 USPQ2d 1012
(TTAB 2007), as examples of cases in which the design elements of composite word-
and-design marks were found to dominate. 6 TTABVUE 12.
Finally, Applicant argues that the design element “also changes the overall
appearance of the underlying marks, while the addition of the letters ‘SOL’ changes
the sound of TRANSTECHSOL, TRANZTEC, and TRASNTECH ONE,” and “the
meaning of the marks also differ [sic] as the suffix wording ‘sol’ translates to ‘sun’ in
Spanish,” and TRANZTEC has no other connotation and the addition of ‘one’ to
TRANSTECH ONE is sufficiently dissimilar in meaning from ‘sol.’” Id. at 13.
The Examining Attorney responds that “the marks are confusingly similar in
appearance, sound, and commercial impression because they begin with the same
dominant wording or its phonetic equivalent, i.e., ‘TRANSTECH’ and ‘TRANZTEC.’”
8 TTABVUE 5. He argues that
the marks begin with the same wording or phonetically
equivalent wording. Because the marks begin with similar
looking and/or similar sounding words, the marks are
considered significantly similar in appearance and sound
for purposes of likelihood of confusion. In addition, when
comparing the marks in their entireties, the marks do not
convey significantly different commercial impressions.
Specifically, the common wording in the marks is the
dominant wording in each mark because it is either the
only wording in the mark or the marks begin with this
Serial No. 88598189
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common wording. The fact that the marks begin with
identical or phonetically identical wording is significant
because consumers are generally more inclined to focus on
the first words, prefixes, or syllables in any trademark or
service mark.
Id. at 6-7.
With respect to Applicant’s argument that the word SOL in its mark is a Spanish
word, the Examining Attorney argues that “[b]ecause there is no other Spanish
wording in the applied-for mark and the wording in the rest of the mark consists of
forms of English wording, it is highly unlikely that the suffix ‘SOL’ would be
translated into Spanish,” id. at 7, claiming that “it is more likely that the applied-for
mark containing the suffix ‘SOL’, would be viewed as a variation of the registered
marks, suggesting an extension of Registrants’ brands.” Id. The Examining Attorney
concludes that “[i]n light of the closely related services, [he] submits that the
similarities between the marks outweigh the differences.” Id. at 8.
The involved marks must be considered in their entireties, but “in articulating
reasons for reaching a conclusion on the issue of confusion, there is nothing improper
in stating that, for rational reasons, more or less weight has been given to a particular
feature of a mark, provided the ultimate conclusion rests on consideration of the
marks in their entireties.” Detroit Athletic Co., 128 USPQ2d at 1050 (quoting In re
Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)). As discussed
above, Applicant and the Examining Attorney disagree about the relative weight to
be given to the literal portion and the design elements in Applicant’s mark, so we will
begin by determining the dominant portion of the mark, which we reproduce again
below for ease of reference in following our analysis:
Serial No. 88598189
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“In the case of marks, such as Applicant’s, consisting of words and a design, the
words are normally accorded greater weight because they are likely to make a greater
impression upon purchasers, to be remembered by them, and to be used by them to
request the goods.” In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB
2018) (citing Viterra, 101 USPQ2d at 1908). “The verbal portion of a word and design
mark ‘likely will appear alone when used in text and will be spoken when requested
by consumers.’” Id. (quoting Viterra, 101 USPQ2d at 1911). In Viterra, the Federal
Circuit cited the Electrolyte Labs. case cited by Applicant in “caution[ing] that there
is no general rule that the letter portion of the mark will form the dominant portion
of the mark,” id. (citing Electrolyte Labs., 16 USPQ2d at 1240), and in holding that
composite marks “must be considered on a case-by-case basis.” Id.
The record here supports a finding that the words TransTechSol are the dominant
portion of Applicant’s mark. The words are displayed prominently and distinctly from
the design elements, which consist of two common geometric shapes in the form of a
nondescript square and a nondescript cube. The nature and positioning of the
elements of Applicant’s mark distinguish this case from the Covalnski, Ferro, and
Parfums Coeur cases cited by Applicant.
Serial No. 88598189
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We depict below the applicant’s mark in Covalinski:

In that case, the Board acknowledged that in Viterra, “the Federal Circuit
acknowledged t[he] general rule” that “it is often true that the words in a composite
word and design mark are considered to be dominant,” Covalinski, 113 USPQ2d at
1168, but found that the “overall commercial impression of Applicant’s mark is
dominated by its design features, particularly the large double-letter RR
configuration,” id. at 1169, because the “graphic devices serve not only to draw
attention to the RR letters apart from the wording, but also make the letters that
form the ‘a-c-e’ of the word ‘RACEGIRL’ difficult to notice.” Id. at 1168.
Here, by contrast, the modest “graphic devices” in the mark are entirely distinct
from the words “TransTechSol” and do not make them “difficult to notice.” Id.
Applicant acknowledges as much in describing its mark, when it states that the words
are “combined with a symbol which consists of a small 3D cube overlaying the left
edge of a larger 2D square. The symbol sits above the word where there is
room.”16

16 August 29, 2019 Application at TSDR 1 (emphasis added).
Serial No. 88598189
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The marks in Ferro and Parfums Coeur, which we depict below, are closer in
nature to Applicant’s mark because they involve composite marks in which the words
and the designs are separated from one another:

We find, however, that Applicant’s mark differs from these marks because the design
elements in Applicant’s mark are much less unusual and eye-catching than the
design elements in Ferro and Parfums Coeur. As Applicant notes in its description of
its mark, the design elements are “a small 3D cube overlaying the left edge of a larger
2D square.” These common geometric shapes have less source-identifying significance
with respect to the services offered in connection with Applicant’s composite mark.
Cf. In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997)
(affirming Board’s finding that the word DELTA was the dominant portion of a
composite mark consisting of the words THE DELTA CAFE within a diamond design
because “the design is an ordinary geometric shape that serves as a background for
Serial No. 88598189
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the word mark.”); In re Serial Podcast, LLC, 126 USPQ2d 1061, 1074 (TTAB 2018)
(“Most 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.”).
Indeed, consistent with the Federal Circuit’s observations that “a design is viewed,
not spoken,” Electrolyte Labs., 16 USPQ2d at 1240, and that the “literal component
of brand names likely will appear alone when used in text and will be spoken when
requested by consumers,” Viterra, 101 USPQ2d at 1911, Applicant uses only the
words TransTechSol in its mark in the text on its website:
17

17 August 29, 2019 Specimen of Use at TSDR 1 (transtechsol.com). The other two pages of the
specimen similarly display the entire composite mark in the masthead, but use only the
words TransTechSol in the text.
Serial No. 88598189
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We infer from Applicant’s uses of the words TransTechSol that consumers of
Applicant’s services are much more likely to use the words than the cube and square
designs to identify Applicant and to request its services. See CBS, Inc. v. Morrow, 708
F.2d 1579, 218 USPQ 198, 200 & n.5 (Fed. Cir. 1983) (holding that the principle that
“in a composite mark comprising a design and words, the verbal portion of the marks
is the one more likely to indicate the origin of the goods to which it is affixed” was
“particularly true when a mark appears in textual material, such as catalog
descriptions, in which it is often impossible or impractical to include the design
features of the mark.”).
The nondescript nature of the designs in Applicant’s mark, the distinctive display
of the words TransTechSol, and Applicant’s own use of the words to identify itself and
its services in consumer-facing materials, collectively provide rational reasons to find
that the words, not the designs, are the dominant portion of Applicant’s mark. See
Aquitaine Wine, 126 USPQ2d at 1185. We turn now to the required comparisons of
Applicant’s mark in its entirety to the two cited marks in their entireties, giving more
weight in those comparisons to the words in Applicant’s mark than to the designs.
At the outset of those comparisons, we address two matters common to our
analysis of the similarity or dissimilarity of the marks in both classes in the
application. First, we note that the cited marks are both standard character marks
that “may be presented in any font style, size or color, including the same font, size
and color as the literal portions of Applicant’s mark,” Aquitaine Wine, 126 USPQ2d
at 1186, because “the rights associated with a standard character mark reside in the
Serial No. 88598189
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wording per se and not in any particular font style, size, or color.” Id.18 We thus must
assume that the cited marks could be displayed as TRANZTEC and TRANSTECHONE,
in the same combination of uppercase and lowercase letters and in the same font as
the words TRANSTECHSOL in Applicant’s mark.
Second, we reject Applicant’s argument that the suffix -SOL in the words
TRANSTECHSOL in its mark will be understood by consumers of Applicant’s services
as the Spanish word for “sun.” 6 TTABVUE 13.19 Although “Spanish is a modern
language that is widely spoken in the United States,” In re Highlights for Children,
Inc., 118 USPQ2d 1268, 1271 (TTAB 2016), the record does not support Applicant’s
claim. Applicant offers no explanation why consumers would view SOL as a Spanish
word when it is used at the end of a telescoped phrase that begins with two English
terms, TRANS and TECH, and when the mark, as a whole, is used in connection with
“software design and development” services and “consulting services in the field of
corporate compliance and privacy law and regulations,” and there is no translation
statement in the application,20 no sun imagery in the mark or on Applicant’s website,

18 At the same time, the Board held that “when we are comparing a standard character mark
to a word + design mark for Section 2(d) purposes, we will consider variations of the
depictions of the standard character mark only with regard to ‘font style, size, or color’ of the
‘words, letters, numbers, or any combination thereof.’” Aquitaine Wine, 126 USPQ2d at 1187
(emphasis in original) (citing Citigroup Inc. v. Capital City Bank Grp., 637 F.3d 1344, 98
USPQ2d 1253, 1259 (Fed. Cir. 2011) and Viterra, 101 USPQ2d at 1909). As a result, we
cannot assume use of the design elements in Applicant’s mark in the display of the cited
marks.
19 Applicant does not provide dictionary evidence of the meaning of the word “sol,” but for
purposes of our analysis we will accept Applicant’s statement that the Spanish word “sol”
means “sun” in English.
20 Applicant argued during prosecution that “the suffix wording ‘sol’ translates into ‘sun’ in
Spanish,” May 7, 2020 Request for Reconsideration at TSDR 7, but did not enter a translation
statement as required by Trademark Rule 2.32(a)(9), 37 C.F.R. § 2.32(a)(9) (an application
Serial No. 88598189
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and no references to, or uses of, Spanish words elsewhere in the mark or in the record.
Cf. In re Hub Distrib., Inc., 218 USPQ 284, 285 (TTAB 1983) (finding that the mark
EL SOL, which includes the Spanish masculine definite article, was confusingly
similar to the mark SUN and design under the doctrine of foreign equivalents).
On this record, it is not clear exactly what SOL means in the context of the mark,
but the letters “S-O-L” are, among other things, a recognized abbreviation of the word
“solution,”21 and a page in Applicant’s website specimen states that Applicant’s
services provide “[e]xtremely large scale virtualization and high memory solutions
using graph technologies for analytic insight.”22 We find that in the context of the
identified services, consumers are very unlikely to interpret the suffix –SOL in the
phrase in Applicant’s mark as the Spanish word “sun,” and are more likely to
understand it to abbreviate “solution” or to have some other meaning.
Class 42
As discussed above, the TRANZTEC mark in the ’418 Registration must be
assumed to be displayed as TRANZTEC for purposes of its comparison to Applicant’s
mark in appearance. The marks “must be considered . . . in light of the fallibility of
human memory’ and ‘not on the basis of side-by-side comparison.’” In re St. Helena

“must include the following: . . . (9) If the mark includes non-English wording, an English
translation of that wording . . . .”). See generally TRADEMARK MANUAL OF EXAMINING
PROCEDURE (“TMEP”) Section 809 (Oct. 2018).
21 acronymfinder.com (last accessed on November 12, 2020). The Board “may take judicial
notice of information from dictionaries, encyclopedias, and other standard referenced works.”
In re Information Builders Inc., 2020 USPQ2d 10444, *3 n.6 (TTAB 2020). The Bluebook®,
which creates a uniform system of legal citation used by the bench and the bar, similarly
abbreviates “Solution” as “Sol.” Bluebook Section T6.
22 August 29, 2019 Specimen of Use at TSDR 3 (emphasis added).
Serial No. 88598189
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Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting San Fernando
Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA
1977)). Accordingly, we must compare the appearance of the marks from the
standpoint of a consumer with a “general rather than specific impression” of the
TRANZTEC mark, i.am.symbolic, 127 USPQ2d at 1630, who separately encounters
Applicant’s composite mark. Such a consumer will surely notice the common
geometric shapes in Applicant’s mark, but the dominant telescoped source-
identifying words TRANZTEC and TRANSTECHSOL will appear similar. As in Aquitaine
Wine, in which the Board found that the cited standard character mark CHATEAU
LAROQUE and the composite mark shown below

were “similar in sight and sound, since they share the term LAROQUE,” Aquitaine
Wine, 126 USPQ2d at 1184, we find that the TRANZTEC mark and Applicant’s mark
are more similar than dissimilar in appearance when they are considered in their
entireties.
As for sound, Applicant’s mark is very similar to the cited TRANZTEC mark when
the respective marks are verbalized. The marks contain the phonetically identical
and telescoped first two syllables TRANS/TRANZ and TECH/TEC. Applicant’s mark
includes the third syllable SOL, which would be verbalized as part of the telescoped
Serial No. 88598189
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phrase TRANSTECHSOL, but given that both marks would effectively be verbalized
as a single word, the dissimilarities resulting from its presence at the end of the words
in Applicant’s mark are far outweighed by the aural identity of the first two syllables.
We find that the marks are quite similar in sound.
Finally, with respect to connotation and commercial impression, the marks are
quite similar in meaning because they begin with the syllables TRANS/TRANZ and
TECH/TEC. Applicant does not dispute that TECH and its phonetic equivalent TEC
both refer to technology, and irrespective of the specific meaning of the first words
TRANS and TRANZ in the marks, there is nothing in the record to suggest that
TRANS would have one meaning in Applicant’s mark and that its phonetic equivalent
TRANZ would have a materially different meaning in the cited mark. Applicant’s
mark contains the –SOL suffix that is absent from the TRANZTEC mark, but as
discussed above, the suffix may connote solutions, and we agree with the Examining
Attorney that “it is more likely that the applied-for mark containing the suffix ‘SOL’,
would be viewed as a variation of the registered” TRANZTEC mark, “suggesting an
extension of” the registrant’s offering of services that are identical to those identified
in the application. 8 TTABVUE 7.
The marks are more similar than dissimilar in appearance, and quite similar in
sound and connotation and commercial impression. Taking into account the reduced
degree of similarity between the marks required for confusion to be likely due to their
use on identical services, we find that the first DuPont factor supports a finding of a
likelihood of confusion with respect to Applicant’s Class 42 services.
Serial No. 88598189
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Class 45
Like the cited TRANZTEC mark, the cited TRANSTECH ONE mark must be
assumed to be displayed as TRANSTECHONE in the manner of the words
TRANSTECHSOL in Applicant’s mark. From the perspective of a consumer with a
general rather than a specific recollection of the cited mark who separately
encounters Applicant’s composite mark, Applicant’s mark will appear very similar to
the cited mark because the words in Applicant’s mark begin with the identical phrase
TRANSTECH and, like the cited mark, are followed by a three-letter word. Although
there are differences in appearance resulting from the presence of design elements in
Applicant’s mark and the different suffix elements in the marks, we find that the
marks are much more similar than dissimilar in appearance due to the common
presence of TRANSTECH followed by a three-letter word.
The marks are also quite similar in sound when the words TRANSTECHSOL in
Applicant’s mark and the cited mark TRANSTECHONE are verbalized given the
identical first elements TRANSTECH. Because both marks would effectively be
verbalized as a single word, the dissimilarities resulting from the different suffixes
are far outweighed by the aural identity of the first two syllables.
There are modest dissimilarities in meaning between the marks given the
different –SOL and –ONE suffixes, but they are outweighed by the similarities
resulting from the identity of the prefix portions TRANSTECH. From the perspective
of a consumer with a general rather than a specific recollection of the cited mark who
Serial No. 88598189
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separately encounters Applicant’s composite mark, the different suffix element in
Applicant’s mark is likely to be viewed as a variant of the cited mark.
The marks are quite similar in appearance and sound, and more similar than
dissimilar in connotation and commercial impression. The first DuPont factor
supports a finding of a likelihood of confusion with respect to Applicant’s Class 45
services.
D. Conclusion
The first, second, and third DuPont factors support a finding of a likelihood of
confusion in both classes in the application, and the sixth DuPont factor is neutral.
Applicant’s Class 42 services, channels of trade, and classes of consumers are
identical to their counterparts in the cited ’418 Registration, and Applicant’s mark,
which is dominated by the words TRANSTECHSOL, and the cited TRANZTEC mark
are more than sufficiently similar for confusion to be likely. Applicant’s Class 45
services, channels of trade, and classes of customers appear to be legally identical,
and are otherwise closely related to their counterparts in the ’350 Registration, and
Applicant’s mark is more than sufficiently similar to the cited TRANSTECH ONE
mark for confusion to be likely.
Decision: The refusals to register are affirmed in both classes.