upSTART, Inc.

Trademark Trial and Appeal Board

Mar 20, 2013

No. 85277668 (T.T.A.B. Mar. 20, 2013)

Mailed: 3/20/2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re upSTART, Inc.
________

Serial No. 85277668
_______

Barbara A. Barakat of Wilmer Cutler Pickering Hale and Dore for
upSTART, Inc.

Evelyn Bradley, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Quinn, Greenbaum and Masiello,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

upSTART, Inc. filed, on March 25, 2011, an intent-to-use
application to register the mark THE POSSIBLE PROJECT (in
standard characters) (“PROJECT” disclaimed) for “educational
services, namely, providing entrepreneurship programs to high
school students in a multiple year program” (in International
Class 41).
The trademark examining attorney refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
ground that applicant’s mark, if used in connection with
THIS OPINION IS NOT
A PRECEDENT OF THE
TTAB
Ser. No. 85277668

2

applicant’s services, would so resemble the previously
registered mark THE POSSIBLIITY PROJECT (in standard characters)
(“PROJECT” disclaimed) for “charitable services, namely,
providing training in the field of diversity training,
leadership, community services, youth development, education and
performing arts” (in International Class 41)1 as to be likely to
cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant states that “while both programs [of applicant
and registrant] do serve youth, the focus, the mission and the
services provided to the youth are distinct.” (Brief, p. 4).
Applicant is silent with respect to the similarity between the
marks, and essentially claims that there is no likelihood of
confusion based on the differences in the nature of the
services, in trade channels and in the ultimate clients for the
respective services, as well as the care involved in selecting
applicant’s program. Applicant introduced pages from
registrant’s website in an attempt to limit the scope of
registrant’s services.
The examining attorney maintains that the marks are similar
and the services are related. In support of the refusal the
examining attorney submitted third-party registrations and

1 Registration No. 3951722, issued April 26, 2011.
Ser. No. 85277668

3

excerpts of third-party websites in an effort to show that the
services are related.
Our determination of the issue of likelihood of confusion
is based on an analysis of all of the probative facts in
evidence that are relevant to the factors set forth in In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). In any likelihood of confusion analysis, however,
two key considerations are the similarities between the marks
and the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24 (CCPA 1976).
We first turn to compare the marks. We must compare the
marks in their entireties as to appearance, sound, connotation
and commercial impression to determine the similarity or
dissimilarity between them. Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1690 (Fed. Cir. 2005), quoting In re E. I. du Pont
de Nemours & Co., 177 USPQ at 567. The test, under the first du
Pont factor, is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether the
marks are sufficiently similar in terms of their overall
commercial impression that confusion as to the source of the
goods and/or services offered under the respective marks is
likely to result. The focus is on the recollection of the
Ser. No. 85277668

4

average purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
At no point during the prosecution and appeal did applicant
claim that the marks are not similar. Indeed, we find that
applicant’s mark THE POSSIBLE PROJECT and registrant’s mark THE
POSSIBILITY PROJECT, when considered in their entireties, are
similar in appearance, sound, meaning and overall commercial
impression. The similarity between the marks weighs in favor of
a finding of likelihood of confusion.
We next turn to consider the second du Pont factor
regarding the similarity/dissimilarity between the services,
which is the crux of this appeal. It is well settled that the
services of applicant and registrant need not be identical or
competitive, or even offered through the same channels of trade,
to support a holding of likelihood of confusion. It is
sufficient that the respective services of applicant and
registrant are related in some manner, and/or that the
conditions and activities surrounding the marketing of the
services are such that they would or could be encountered by the
same persons under circumstances that could, because of the
similarity of the marks, give rise to the mistaken belief that
they originate from the same source. See Hilson Research, Inc.
v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB
Ser. No. 85277668

5

1993); and In re International Telephone & Telegraph Corp., 197
USPQ 910, 911 (TTAB 1978). The issue, of course, is not whether
purchasers would confuse the services, but rather whether there
is a likelihood of confusion as to the source of the services.
In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
We make our determination regarding the similarities
between the services, channels of trade and classes of
purchasers based on the services as they are identified in the
application and registration, respectively. Octocom Systems
Inc. v. Houston Computers Services, Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). Where the services in a
cited registration are broadly identified as to their nature and
type, such that there is an absence of any restrictions as to
the channels of trade and no limitation as to the classes of
purchasers, it is presumed that in scope the recitation of
services encompasses all the services of the nature and type
described therein, that the identified services are offered in
all channels of trade which would be normal therefor, and that
they would be purchased by all potential buyers thereof. Paula
Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76 (CCPA 1973); Kalart Co. v. Camera-Mart, Inc., 258 F.2d
956, 119 USPQ 139 (CCPA 1958); and In re Elbaum, 211 USPQ 639
(TTAB 1981).
Ser. No. 85277668

6

Accordingly, we must compare applicant’s “educational
services, namely, providing entrepreneurship programs to high
school students in a multiple year program” to registrant’s
“charitable services, namely, providing training in the field of
diversity training, leadership, community services, youth
development, education and performing arts.”
Applicant, in attempting to distinguish the services,
proffers detailed differences between them, including the
following:
The registrant is using performing arts and
community activism to create engaged
community leaders. The applicant is
creating entrepreneurs and successful
business men and women. Because the focus
is so different, the services of the
registrant will attract a different type of
student than the services of the applicant.

The [applicant] provides its services one-
on-one, for an individual-focused program
that uses entrepreneurship to help students
develop business skills and to explore their
career possibilities to set them on a path
to post-secondary education and eventual
economic self-sufficiency. The registrant
works with the youths as a group.
Accordingly, the [applicant’s] services are
not likely to be confused with that of the
registrant, because the student, and his or
her parents, will work intensely with
[applicant] both before he or she signs on
and after becoming part of the [applicant’s]
program to a commitment of 3 years. These
factors show the care that the student, and
his or her parent, would take in selecting a
program such as the [applicant’s]
services....

Ser. No. 85277668

7

Finally, the [applicant’s] program is a
multi-year program that will then follow its
alumni for years afterwards in order to
measure success in completion of their-
secondary education and career/economic
success, while the registrant works with its
students for one year and the culmination of
that year is a performance. It is clear
that the programs are different in length,
objective, content and methods.

(Brief, pp. 4-5).
The problem with applicant’s distinctions is that, by and
large, they are not reflected in registrant’s fairly broad
recitation of services. Registrant’s services, as described in
the cited registration, are broad enough to encompass the topic
of entrepreneurship as subject matter for its youth development
and education programs. Thus, applicant’s reliance on
registrant’s website, in an attempt to limit registrant’s
services, is irrelevant in the context of this proceeding. To
reiterate, our decision is based on a comparison of the services
as they are identified in the application and cited
registration. An applicant may not restrict the scope of the
goods and/or services covered in the cited registration by
extrinsic argument or evidence. See In re Peregrina Ltd., 86
USPQ2d 1645, 1647 (TTAB 2008); and In re Bercut-Vandervoort &
Co., 229 USPQ 763, 764-65 (TTAB 1986).
The examining attorney submitted, in an attempt to show
that the services are related, several use-based third-party
Ser. No. 85277668

8

registrations showing that the same entity has registered the
same mark for the types of services involved in this appeal,
namely entrepreneurship training services and training in the
fields of education, leadership and youth development. “Third-
party registrations which cover a number of differing goods
and/or services, and which are based on use in commerce,
although not evidence that the marks shown therein are in use on
a commercial scale or that the public is familiar with them, may
nevertheless have some probative value to the extent that they
may serve to suggest that such goods or services are of a type
which may emanate from a single source.” In re Mucky Duck
Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d, 864
F.2d 149 (Fed. Cir. 1988). See also In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
The internet evidence submitted by the examining attorney
buttresses the registration evidence, showing that some entities
offer both entrepreneurship training to youth, as well as
personal development and leadership training to youth. Thus, it
would appear that both types of services are rendered in similar
trade channels to the same or similar classes of purchasers.
The similarities between the services, trade channels and
classes of purchasers are factors that weigh in favor of a
finding of likelihood of confusion.
Ser. No. 85277668

9

Applicant suggests that the selection of its services would
require care. First, this allegation is not supported by any
evidence. Second, and in any event, even assuming that a
careful selection is involved, it is settled that even
sophisticated purchasers are not immune from source confusion,
especially in cases such as the instant one involving very
similar marks and closely related services. See In re Research
Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986),
citing Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd.,
434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories
even of discriminating purchasers...are not infallible.”). See
also In re Decombe, 9 USPQ2d 1812 (TTAB 1988). We find that the
similarities between the marks and the services sold thereunder
outweigh any presumed sophisticated purchasing decision. See
HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819
(TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL Associates,
Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990)
(similarities of goods and marks outweigh sophisticated
purchasers, careful purchasing decision, and expensive goods).
Thus, this factor is neutral.
We conclude that consumers familiar with registrant’s
“charitable services, namely, providing training in the field of
diversity training, leadership, community services, youth
development, education and performing arts” offered under the
Ser. No. 85277668

10

mark THE POSSIBILITY PROJECT would be likely to believe, upon
encountering applicant’s mark THE POSSIBLE PROJECT for
“educational services, namely, providing entrepreneurship
programs to high school students in a multiple year program,”
that the services originated with or are somehow associated with
or sponsored by the same entity.
Lastly, to the extent that any of the points argued by
applicant raises a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6
USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.