Vox Media, Inc.

Trademark Trial and Appeal Board

Jul 18, 2018

No. 87099703 (T.T.A.B. Jul. 18, 2018)

Mailed: July 18, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Vox Media, Inc.
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Serial No. 87099703
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Jason J. Mazur and Danielle W. Bulger of Arent Fox LLP
for Vox Media, Inc.
In Pyo Lee, Trademark Examining Attorney, Law Office 114,
Laurie Kaufman, Acting Managing Attorney.
_____

Before Cataldo, Wolfson and Lykos,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Vox Media, Inc. (“Applicant”) seeks registration on the Principal Register of the
mark CODE (in standard characters) for:
Educational services, namely, arranging, organizing, and
conducting educational events, conferences, seminars, and
symposia in the fields of media, technology, business,
commerce, consumer products, entrepreneurship, startup
businesses, enterprise technology, digital technology, and
mobile platforms
This Opinion is Not a
Precedent of the TTAB
Serial No. 87099703

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in International Class 41.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a likelihood of
confusion with Registration No. 4828407 for the mark CODE2040 for, inter alia:
Educational services, namely, providing internships and
apprenticeships in the fields of engineering and technology;
educational services, namely, providing workshops,
classes, and retreats in the fields of leadership, business,
entrepreneurship, technology, engineering, design, job
searching, job interviewing skills, and professional
networking
in International Class 41.2
The Examining Attorney also refused registration under Trademark Act Section
2(e)(1), 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s mark, when used on or
in connection with Applicant’s educational services, merely describes a characteristic,
purpose, or subject matter of Applicant’s services.3

1 Application Serial No. 87099703 was filed on July 11, 2016, under Section 1(a) of the
Trademark Act, based upon Applicant’s allegation of first use and first use in commerce of
January 31, 2014. Applicant claims ownership of Registration No. 4837400.
2 Registered on the Principal Register on October 6, 2015. The registration includes services
in International Classes 35 and 36 that have not been cited as a basis for refusal.
3 In its Reply Brief, Applicant requests leave “to divide the application to amend to the
Supplemental Register.” 7 TTABVUE 11. To the extent Applicant seeks a remand, its request
should have been filed as a separate document, not buried in its reply brief. In re
HerbalScience Group LLC, 96 USPQ2d 1321, 1323 (TTAB 2010) (“The Board does not read
appeal briefs prior to final decision, and therefore a request that is included within a brief
will normally not be noted.”). In any event, we do not find “good cause” for remand, and the
request is denied. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d); TRADEMARK TRIAL AND
APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 1209.04 (June 2018) (request for remand
must include a showing of good cause).
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After the Examining Attorney made the refusal final, Applicant filed a Request
for Reconsideration that was denied. Applicant then appealed to this Board. The case
is fully briefed.
I. Likelihood of Confusion
We turn first to the Section 2(d) refusal, which prohibits registration of a mark
“which so resembles a mark registered in the Patent and Trademark Office, …, as to
be likely, when used on or in connection with the goods of the applicant, to cause
confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1052(d). Unlike the
prohibition against the registration of merely descriptive marks under Trademark
Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1), which may be overcome under Section 2(f)
if an applicant can show that the proposed mark has acquired distinctiveness, the
Section 2(d) prohibition stands as an absolute bar to registration. We therefore begin
our analysis with a consideration of likelihood of confusion under Section 2(d). If we
affirm the refusal under Section 2(d), there will be no need to consider the
descriptiveness refusal.
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973); see
also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). In any likelihood of confusion analysis, two key, though not exclusive,
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
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F.2d 1098, 192 USPQ 24 (CCPA 1976); In re Dixie Restaurants Inc., 105 F.3d 1405,
41 USPQ2d 1531 (Fed. Cir. 1997).
A. Similarities Between The Services; Trade Channels
We first compare the similarities between Applicant’s and Registrant’s services,
including their respective channels of trade and classes of purchasers. Our
determination regarding the similarity of the services, channels of trade and classes
of purchasers is based on the services as they are identified in the application and
registration, respectively. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys. Inc. v. Houston
Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 17893, 1787 (Fed. Cir. 1990); see
also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002).
In this case, the educational services in Applicant’s application and the cited
registration, as recited, are legally identical in part: each provides education in
various formats in the fields of technology, business and entrepreneurship. We
acknowledge that the “workshops, classes, and retreats” identified in the cited
registration represent different formats from Applicant’s “educational events,
conferences, seminars, and symposia.” Nonetheless, both identify educational
services in overlapping fields.
Applicant argues that Registrant provides “internships/apprenticeships and
workshops primarily relating to job placement and careers” while Applicant provides
“conferences relating to media and technology” and that such services are not in the
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same markets.4 However, the question of likelihood of confusion must be determined
by an analysis of the marks as applied to the services identified in the application vis-
a-vis the services recited in the registration. An applicant may not restrict the scope
of the services covered in the cited registration by argument or extrinsic evidence. In
re I-Coat Co., LLC, 126 USPQ2d 1730 (TTAB 2018); In re Midwest Gaming & Ent.
LLC, 106 USPQ2d 1163, 1165 (TTAB 2013); In re La Peregrina Ltd., 86 USPQ2d
1645, 1647 (TTAB 2008) (“[I]t is well established, as noted above, that it is the
identification of goods that controls, not what extrinsic evidence may show about the
specific nature of the goods.”). Thus, any specific differences between the actual
nature of the services beyond the scope of their identifications are irrelevant in our
analysis.
Applicant further argues that “where the goods and services are broadly
encompassed in the same field or class, the Board and courts routinely find no
likelihood of confusion,” relying on Elec. Data Sys. Corp. v. EDSA Micro Corp., 23
USPQ2d 1460 (TTAB 1992); Elec. Design & Sales Inc. v. Elec. Data Sys. Corp., 21
USPQ2d 1388 (Fed. Cir. 1992); and In re Massey-Ferguson Inc., 222 USPQ 367 (TTAB
1983). Unlike in the present case, however, none of the cited cases involved identical
or legally identical goods or services.5

4 4 TTABVUE 11.
5 In Elec. Data Sys., the Board found no likelihood of confusion between EDS for computer
data processing programming/information management services and EDSA for computer
programs for electrical distribution system analysis and design. In Elec. Design & Sales, the
Court found that applicant’s trademark EDS for battery chargers and power supplies was
not likely to be confused with opposer’s service mark EDS for computer programming
services. And in Massey-Ferguson, the Board found no likelihood of confusion between the
mark E-COM for “parts order services in the field of farm and industrial machinery and
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Because of the overlap in services, we need not consider whether the other recited
services are related. Likelihood of confusion must be found with respect to a class of
goods or services in an application if there is likely to be confusion with respect to any
item that comes within the identification of the goods or services in that class. In re
Wacker Neuson SE, 97 USPQ2d 1408, 1409 (TTAB 2010) (citing Tuxedo Monopoly,
Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)).
Turning to the respective trade channels, since the services in the application and
the cited registrations are legally identical in part, we must presume that the
channels of trade and classes of purchasers are the same. See Citigroup Inc. v. Capital
City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re
Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there
are legally identical [services], the channels of trade and classes of purchasers are
considered to be the same); see also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1908 (Fed. Cir. 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).
Accordingly, the second and third du Pont factors regarding the services, and the
trade channels and classes of purchasers to whom the services are offered, favor a
finding of likelihood of confusion.

providing parts availability, location and routing information by means of a computer” and
the mark ECOM for “magnetic core memory systems for electrical computers and data
processing systems.”
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B. The Marks
We next consider the first du Pont factor, that is, whether Applicant’s mark CODE
and Registrant’s mark CODE2040 are similar or dissimilar when viewed in their
entireties in terms of appearance, sound, connotation and overall commercial
impression. See Stone Lion, 110 USPQ2d at 1160 (quoting Palm Bay Imps., Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 73 USPQ2d 1689,
1691 (Fed. Cir. 2005)). In comparing the marks, we are mindful that where, as here,
the services are in-part identical, the degree of similarity between the marks
necessary to find likelihood of confusion need not be as great as where there is a
recognizable disparity between the services. Coach Servs., Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007);
Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325
(TTAB 2007).
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 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 Mini Melts,
Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe,
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LLC, 118 USPQ2d 1084, 1089 (TTAB 2016); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
Applicant’s mark is CODE. The cited mark is CODE2040. Because the marks
share the term “code,” they are similar in appearance and somewhat similar in
pronunciation. While “it is well-established that it is improper to dissect a mark, and
that marks must be viewed in their entireties,” Coach Services, 101 USPQ2d at 1721,
“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.” Id. (citing Leading Jewelers Guild Inc. v. LJOW
Holdings LLC, 82 USPQ2d 1901, 1905 (TTAB 2007); see also In re Nat’l Data Corp.,
753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“[T]here 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.”).
Because the cited mark is composed of a set of letters followed by a set of numbers,
and because the letters spell the word “code” and the numbers the date “2040,” there
is a natural break in the mark between the two.6 In determining whether either term
is more significant than the other, we are mindful of the fact that “it is often the first
part of a mark which is most likely to be impressed upon the mind of a purchaser and
remembered.” Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897

6 Corroborating the division between the two terms is Registrant’s use of its mark on its
website as “Code2040,” emphasizing the two parts of the mark.
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(TTAB 1988); see also Palm Bay Imports 73 USPQ2d at 1692 (“Veuve” is the most
prominent part of the mark VEUVE CLICQUOT because it is the first word in the
mark and the first word to appear on the label); Russell Chemical Co. v. Wyandotte
Chemicals Corp., 337 F.2d 660, 143 USPQ 252 (CCPA 1964) (SENTOL and
SENTROL confusingly similar); Brown Shoe Co. v. Robbins, 90 USPQ2d 1752, 1755
(TTAB 2009) (PALOMA and PALOMITA); Hercules Inc. v. National Starch and
Chemical Corp., 223 USPQ 1244, 1246 (TTAB 1984) (NATROL and NATROSOL; “the
clearly dominant aspect of both marks is that the first four letters and the final two
are the same”). Because “CODE” is the first term in Registrant’s mark, it is more
likely to be impressed upon the mind of a purchaser and remembered, particularly
where “2040” serves the informational purpose of identifying a date referred to by
Registrant on its website as “the start of the decade when the US will be majority
people of color.”7
The term “CODE” also comprises Applicant’s entire mark. Likelihood of confusion
has frequently been found where one mark incorporates the entirety of another mark.
See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir.
2010) (applicant’s mark ML is similar to registrant’s mark ML MARK LEES); In re
U.S. Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (applicant’s CAREER IMAGE
marks are similar to registered mark CREST CAREER IMAGES); In re South Bend
Toy Manufacturing Company, Inc., 218 USPQ 479, 480 (TTAB 1983) (LIL’ LADY
BUG for toy doll carriages and LITTLE LADY for doll clothing).

7 Applicant’s April 27, 2017 Response to Office Action at TSDR 9.
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With respect to their connotations and overall commercial impressions, Applicant
argues that the two words in the cited mark create a “symbolic expression of the
distant future (the year 2040),” and that “[t]he 2040 portion of the Cited Mark may
indeed reference the cited registrant’s desire to achieve a certain goal at some point
in the future … .”8 However, Applicant’s specimen of use, a page from Applicant’s
website filed at the time of application, also incorporates dates in association with its
mark CODE. The specimen advertises several dated events sponsored by Applicant,
such as the CODE COMMERCE SERIES: OCT 2016; the CODE MEDIA 2017; and
the CODE CONFERENCE 2017. We may look to how Applicant uses its mark to
determine the commercial impression sought to be created. Specialty Brands, Inc. v.
Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1284 (Fed. Cir. 1984);
American Rice, Inc. v. H.I.T. Corp., 231 USPQ 793, 796 (TTAB 1986) (“[W]e may take
into account whether the trade dress of packages or labels in the application file as
specimens, or otherwise in evidence, may demonstrate that the trademark projects a
confusingly similar commercial impression.”); Northwestern Golf Co. v. Acushnet Co.,
226 USPQ 240, 244 (TTAB 1985) (“Evidence of the context in which a particular mark
is used on labels, packaging, etc., or in advertising is probative of the significance
which the mark is likely to project to purchasers.”).
The specimen is reprinted below:

8 Reply Brief, 7 TTABVUE 5.
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Based on the above, we find that relevant consumers, upon encountering
Applicant’s mark CODE, are likely to recollect Registrant’s CODE2040 mark and
mistakenly believe Applicant’s and Registrant’s educational services emanate from a
single source. The first du Pont factor favors a finding of likelihood of confusion.
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C. Third-party Registrations
Applicant argues that the cited mark is entitled to a narrow scope of protection
because of the existence of nine third-party registrations for marks comprising the
term CODE for educational services. We disagree. The “existence of [third party]
registrations is not evidence of what happens in the market place or that customers
are familiar with them,” AMF Inc. v. American Leisure Prods., Inc., 474 F.2d 1403,
177 USPQ 268, 269 (CCPA 1973). Nonetheless, in determining the degree of
weakness, if any, in the shared term CODE, “extensive evidence of third-party use
and registrations is ‘powerful on its face,’ even where the specific extent and impact
of the usage has not been established.” Jack Wolfskin Ausrustung Fur Draussen
GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d
1129, 1136 (Fed. Cir. 2015) (citing Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d
1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015)).
Here, Applicant has not presented evidence of use in connection with the third-
party registrations and its evidence of nine third-party registrations falls far short of
the “voluminous” and “extensive” evidence” presented in Jack Wolfskin, 116 USPQ2d
at 1136; or of that in Juice Generation, 115 USPQ2d at 1673 n.1 (at least twenty-six
relevant third-party uses or registrations of record). Consequently, we accord this
evidence minimal weight. In addition, the marks in the registrations submitted by
Applicant contain additional words or design elements that distinguish them from
the cited mark, undercutting their probative value. For example, Reg. No. 5285215
for the unitary mark contains a unique design feature and the
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additional word “verse”; Reg. No. 5216639 for the mark is depicted as a
unitary mark with the “cubed” symbol; and Reg. No. 5240264 for the mark
contains an arbitrary term that distinguishes the overall
commercial impression of the mark from the cited mark and would also be considered
unitary. This evidence does not demonstrate that the mark CODE2040 is weak.
Nor does the fact that Applicant claims ownership of a prior registration for the
mark RECODE9 demonstrate that the mark CODE2040 is weak. To the extent the
word “recode” means “to code again,”10 any limited degree of similarity in the
connotations of the two terms is outweighed by their dissimilarities in appearance,
pronunciation and overall commercial impressions. Accordingly, the existence of
Applicant’s registration and the third-party registrations does not demonstrate that
the cited mark is weak or entitled to a narrow scope of protection.
D. Sophistication of Purchasers
Applicant argues that confusion is unlikely because the relevant consumers are
“sophisticated and knowledgeable,”11 but there is no evidence supporting this

9 Reg. No. 4837400, issued October 20, 2015 for inter alia, “educational services, namely,
developing, arranging, organizing and conducting classes, seminars, conferences, workshops
in the fields of media, technology, entertainment, mobile platforms, social affairs, culture,
gaming, enterprise, commerce, healthcare, science, green technology, new and emerging
technologies, products and services, privacy, government regulation and policy, startup
businesses and companies, venture capitalists, venture investment and funding, and
technology and information security, and distribution of course and educational materials in
connection therewith.”
10 See Merriam-Webster definition provided at https://www.merriam-webster.com, attached
to Final Office Action at TSDR 13.
11 Appeal Brief, 4 TTABVUE 10-11.
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argument, and it is therefore not well-taken. Moreover, the consumers for educational
services may include sophisticated IT specialists as well as unsophisticated and even
first-time students who have no special knowledge and would not necessarily exercise
heightened care. We must base our decision “on the least sophisticated potential
purchasers” at issue. Stone Lion 110 USPQ2d at 1163 . This factor is neutral.
E. Actual confusion
Applicant argues that confusion is unlikely because the marks have been in
simultaneous use for over four years without actual confusion.12 However, the lack of
evidence of actual confusion carries little weight in an ex parte context. See In re
Majestic Distilling Co., Inc., 65 USPQ2d at 1205 (“uncorroborated statements of no
known instances of actual confusion are of little evidentiary value”); see also In re
Bisset-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (stating that
self-serving testimony of applicant’s corporate president’s unawareness of instances
of actual confusion was not conclusive that actual confusion did not exist or that there
was no likelihood of confusion). In this ex parte context, we also have no opportunity
to hear from Registrant about its levels of sales and promotion, or of any incidents of
actual confusion brought to Registrant’s attention. In any event, we are mindful of
the fact that the test under Section 2(d) of the Act is likelihood of confusion, not actual
confusion.
This du Pont factor is neutral.

12 Id. at 11.
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II. Summary on Likelihood of Confusion
Applicant’s mark and Registrant’s mark are similar in appearance,
pronunciation, connotation and overall commercial impression. The services are in-
part legally identical. Prospective consumers familiar with Registrant’s CODE2040
educational services would be likely, when confronted with Applicant’s CODE
educational services, to believe that the services emanate from the same source.
Decision:
The refusal to register Applicant’s mark under Trademark Act Section 2(d) is
affirmed. In view thereof, it is unnecessary for us to reach the refusal to register
Applicant’s mark under Trademark Act Section 2(e)(1).