Vault Bioventures, Inc.

Trademark Trial and Appeal Board

Jul 12, 2013

No. 85362228 (T.T.A.B. Jul. 12, 2013)

Mailed: 7/12/2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Vault Bioventures, Inc.
________

Serial Nos. 85362134 and 85362228
_______

Kathleen A. Pasulka of Procopio, Cory, Hargreaves & Savitch for
Vault Bioventures, Inc.

Daniel F. Capshaw, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
_______
Before Quinn, Bucher and Ritchie,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
Vault Bioventures, Inc. filed, on July 1, 2011, intent-to-
use applications under Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b), to register the marks VAULT BIOVENTURES (in
standard characters) (“BIOVENTURES” disclaimed) and

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. Nos. 85362134 and 85362228

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(“BIOVENTURES” disclaimed), both for the following services:
Assistance, advisory services and
consultancy with regard to business
analysis, business development, business
operations, marketing, product
commercialization, market research,
branding, business project management and
portfolio management for biopharmaceutical
and biotechnology companies (in
International Class 35);

Assistance, advisory services and
consultancy with regard to communications in
the medical field for biopharmaceutical and
biotechnology companies (in International
Class 38); and

Assistance, advisory services and
consultancy services with regard to clinical
research and product development for
biopharmaceutical and biotechnology
companies (in International Class 42).1

The trademark examining attorney refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), in Class
35 in each application on the ground that applicant’s mark, when
used in connection with applicant’s services, so resembles the
following previously registered marks as to be likely to cause
confusion: VAULT COMMUNICATIONS, INC. (in standard characters)
(“COMMUNICATIONS, INC.” disclaimed) and

1 Application Serial Nos. 85362134 and 85362228, respectively. The
later application includes the following description of the mark:
“The mark consists of the stylized word VAULT with cascading circles
projecting from the right top side of the ‘V,’ with [the] word
BIOVENTURES in upper case and centered on the second line and the
words ‘Reaching new heights together’ centered underneath on the third
row.”
Ser. Nos. 85362134 and 85362228

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(“COMMUNICATIONS, INC.” disclaimed), both for “public relations,
marketing and advertising services, namely, promoting and
marketing the goods and services of others through public
communication means” (in International Class 35).2 The
registrations are owned by the same entity, namely Vault
Communications, Inc.
The examining attorney also refused registration under
Section 2(d) in Class 35 in each application on the basis of a
third previously-registered mark, namely THE VAULT (in standard
characters) for “advertising, marketing and promotion services”
(in International Class 35).3 The registration is owned by The
Vault NYC, LLC.
When the refusals were made final, applicant appealed.
Applicant and the examining attorney filed briefs. So as to be
clear, and as reiterated by the examining attorney in his final
refusal and brief, only registrations of applicant’s marks in
connection with services in Class 35 have been refused.

2 Registration Nos. 4030759 and 4030758, respectively, both issued
September 27, 2011.
3 Registration No. 3864144, issued October 19, 2010. This registration
was cited as a Section 2(d) bar to the registrations sought by Vault
Communications, Inc. In response to the refusal, the registrants
entered into a consent agreement.
Ser. Nos. 85362134 and 85362228

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The two appeals involve common issues of law and fact, and
the evidentiary records and arguments are essentially identical.
The Board, on March 28, 2013, granted the examining attorney’s
request to consolidate the appeals. Accordingly, we will decide
the appeals in this single opinion.
Applicant argues that the marks are different, with the
presence of the word “BIOVENTURES” in its marks telling
prospective purchasers that its services relate to
biotechnology. Applicant also contends that the services are
different, with its services specifically directed to the
biotechnology and pharmaceutical fields, whereas registrants’
services are general marketing and advertising. Purchasers of
the services are sophisticated, applicant urges, thereby
diminishing the likelihood of confusion.
The examining attorney maintains that applicant’s marks are
similar to each of the registered marks, and that the services
are highly related. With respect to the latter contention, the
examining attorney points out registrants’ services are not
limited, and thus their unrestricted marketing and advertising
services include the specific industries to which applicant’s
services are directed. In support of the refusal, the examining
attorney introduced excerpts of the websites of third parties,
as well as of one of the registrant’s website; and several
third-party registrations covering both marketing/advertising
Ser. Nos. 85362134 and 85362228

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services and business consulting services. Examples of this
evidence are highlighted in the examining attorney’s brief at
pages 9-12.
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).
Registration Nos. 4030758 and 4030759
We first direct our attention to the du Pont factor of the
similarity/dissimilarity between the marks. We must compare the
marks in their entireties as to appearance, sound, connotation
and commercial impression to determine the similarity or
dissimilarity between them. Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 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
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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 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).
It is well settled that one feature of a mark may be more
significant than another, and it is not improper to give more
weight to this dominant feature in determining the commercial
impression created by the mark. In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“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. Indeed, this type of analysis
appears to be unavoidable.”).
In registrant’s standard character mark VAULT
COMMUNICATIONS, INC., with the wording COMMUNICATIONS, INC.
disclaimed, the word VAULT is dominant. The wording
COMMUNICATIONS, INC. is highly descriptive/generic, and has
little to no role in the source-identifying function of
registrant’s mark. See, e.g., In re Dixie Restaurants, Inc.,
105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)
(affirming Board’s finding that “DELTA,” not the disclaimed
Ser. Nos. 85362134 and 85362228

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generic term “CAFÉ,” is the dominant portion of the mark THE
DELTA CAFÉ); and In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009)
(finding that “BINION’S,” not the disclaimed descriptive wording
“ROADHOUSE,” is the dominant portion of the mark BINION’S
ROADHOUSE). Further, purchasers in general are inclined to
focus on the first word or portion in a trademark, especially
where the first word is followed by non-source-indicating
terminology (as is the case with COMMUNICATIONS, INC.). Presto
Products, Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897
(TTAB 1988) (“it is often the first part of a mark which is
likely to be impressed upon the mind of a purchaser and
remembered”). See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692.
In registrant’s logo mark, likewise the word VAULT is
clearly dominant over the disclaimed and highly
descriptive/generic wording COMMUNICATIONS, INC. as discussed
above. Moreover, the word VAULT is in significantly larger
letters, appearing above the remaining subordinate portion.
In view of the above, both of registrant’s marks are
dominated by the word VAULT.
With respect to applicant’s standard character mark, VAULT
BIOVENTURES is dominated by the word VAULT inasmuch as the
remaining word BIOVENTURES is properly disclaimed in view of its
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highly descriptive/generic nature.4 And, as noted above
regarding registrant’s standard character mark, the first word
of a mark, in this case VAULT, is the portion of the mark most
likely to be remembered by purchasers and used in calling for
the services.
With respect to applicant’s logo mark, where both words and
a design comprise the mark, the words are normally accorded
greater weight because the words are likely to make an
impression upon purchasers, would be remembered by them, and
would be used by them to request the goods and/or services.
CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir.
1983) (“in a composite mark comprising a design and words, the
verbal portion of the mark is the one most likely to indicate
the origin of the goods to which it is affixed”); In re Appetito
Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); and Kabushiki
Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB
1985). See also Giant Food, Inc. v. Nation’s Food Service,
Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). In
applicant’s logo mark, the literal portion of the mark, namely
the words VAULT BIOVENTURES REACHING NEW HEIGHTS TOGETHER, is
the dominant portion; and, in turn, due to the large font size

4 Applicant states that “[o]n a scale from one to ten, with one being
the most descriptive, BIOVENTURES would definitely be much closer to a
one or two.” (Brief, p. 6). Indeed, as shown by the examining
attorney’s evidence, the wording is commonly used for firms that work
in the biotechnology venture capital field.
Ser. Nos. 85362134 and 85362228

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of the word VAULT relative to the remaining words, as well as to
the highly descriptive/generic nature of the word BIOVENTURES,
the literal portion is dominated by the word VAULT. Thus, the
word VAULT in applicant’s logo mark is the dominant feature.
See, e.g., In re Dixie Restaurants, Inc., 41 USPQ2d at 1533-34;
and In re Binion, 93 USPQ2d at 1534.
As is evident from the above discussion, each of
applicant’s marks and each of registrant’s marks are dominated
by the identical word VAULT. When the logo marks are compared,
the flowing letter “V” design further contributes to the marks’
similarities. In comparing each of the marks, we are aware, of
course, that the marks must be compared in their entireties,
including any disclaimed portions. To be sure, we have
considered the marks in their entireties, and find that the
similarities between them in terms of sound, appearance and
meaning outweigh the differences. Thus, the marks engender
similar overall commercial impressions.
The similarity between each of the marks is a factor that
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. 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
Ser. Nos. 85362134 and 85362228

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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
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
applications and cited registrations, respectively. See Octocom
Systems Inc. v. Houston Computers Services, Inc., 918 F.2d 937,
16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Applicant’s services in
Class 35 are identified as follows: “Assistance, advisory
services and consultancy with regard to business analysis,
business development, business operations, marketing, product
commercialization, market research, branding, business project
management and portfolio management for biopharmaceutical and
Ser. Nos. 85362134 and 85362228

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biotechnology companies.” Registrant’s recitation of services
in Class 35 reads as follows: “public relations, marketing and
advertising services, namely, promoting and marketing the goods
and services of others through public communication means.”
Both applicant’s and registrant’s services include business
services involving marketing. Because registrant’s recitation
includes no restrictions as to trade channels or classes of
purchasers, the recited services must be presumed to travel
through all normal trade channels and be marketed to all
possible classes of relevant purchasers. See Interstate Brand
Corp. v. McKee Foods Corp., 53 USPQ2d 1910, 1913 (TTAB 2000).
Accordingly, registrant’s services are deemed to include
marketing and advertising services for biopharmaceutical and
biotechnology companies.5
The examining attorney introduced several use-based, third-
party registrations showing the same entity often offers both
business consulting and marketing services under the same mark.
“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

5 In this connection we note that, as shown by registrant’s website,
registrant’s customers actually include pharmaceutical companies.
Ser. Nos. 85362134 and 85362228

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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 examining attorney also submitted excerpts of third-
party websites showing that marketing and advertising entities
often provide their services to multiple industries; the
examples include firms that serve the pharmaceutical and
healthcare industries, as well as diverse industries like
travel, real estate and automotive, as well as the government.
Other websites show that it is common for the same entity to
offer both business consulting services, in addition to
marketing and advertising services, often under the same mark.
The similarity between the services, and the overlap in
trade channels and classes of purchasers, are factors that weigh
in favor of a finding of likelihood of confusion.
Applicant argues, without any supporting evidence, that
purchasers of the involved services are sophisticated. 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
similar marks and related services. See In re Research Trading
Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), citing
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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
similarity between the marks and the relatedness of the services
offered 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 decisions,
and expensive goods).
We conclude that the pertinent du Pont factors bearing on
likelihood of confusion weigh in favor of an affirmance of the
refusal to register.
To the extent that any of the points raised by applicant
raise 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).
The refusal to register in Class 35 is affirmed.

Ser. Nos. 85362134 and 85362228

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Registration No. 3864144
To state the obvious, the above-noted legal principles that
govern our likelihood of confusion analysis apply equally with
respect to this refusal, and we will not unnecessarily repeat
them here.
We first turn to the similarity between the marks, and
compare applicant’s marks to registrant’s standard character
mark THE VAULT. As discussed above, the dominant portion of
each of applicant’s marks is the word VAULT, which is virtually
identical to registrant’s mark. The definite article “THE” at
the beginning of registrant’s mark does not affect or otherwise
diminish the overall similarity between the marks. See In re
Thor Tech, 90 USPQ2d 1634, 1635 (TTAB 2009) (the addition of the
word THE at the beginning of the registered mark does not have
any trademark significance); and In re The Place Inc., 76 USPQ2d
1467, 1468 (TTAB 2005) (definite article THE is a non-
distinctive term that adds no source-indicating significance to
the mark as a whole).
The marks are similar in sound, appearance and meaning, and
engender similar overall commercial impressions.
With respect to the services, we reiterate that the
comparison is controlled by the recitations in the respective
applications and cited registration. Applicant’s services in
Class 35 are identified as follows: “Assistance, advisory
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services and consultancy with regard to business analysis,
business development, business operations, marketing, product
commercialization, market research, branding, business project
management and portfolio management for biopharmaceutical and
biotechnology companies.” Registrant’s recitation of services
in Class 35 reads as follows: “advertising, marketing and
promotion services.”
For the same reasons as discussed above, applicant’s and
registrant’s services overlap; both involve marketing. As shown
by the examining attorney’s third-party registrations and
websites evidence, it is common for both business consulting
services and marketing services to be rendered by the same
entity under the same mark.
The similarities between the services, and the overlap in
trade channels and purchasers are factors that weigh in favor of
a finding of likelihood of confusion.
Even assuming that purchasers may be careful in making
their buying decisions, this factor is outweighed by the
similarities between the marks and services rendered thereunder.
We find that the pertinent du Pont factors weigh in favor
of a finding of a likelihood of confusion.
As was noted earlier, to the extent that any of the points
raised by applicant raise a doubt about likelihood of confusion,
Ser. Nos. 85362134 and 85362228

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that doubt is required to be resolved in favor of the prior
registrant.

Decision: The refusal to register in Class 35 in each
application is affirmed. The applications will proceed forward
in Classes 38 and 42.