Appellate Brief
IN THE UNITED STATE COURT OF APPEALS
FOR THE FEDERAL CIRCULT
[Insert Name],	)		No.:	
	Appellant,	)		
	v.	)		Opposition No. [Insert No.]	
	)		Appeal from the United States	
[Insert Name],	)		
	)		
	Appellee.	)		
	)		
	)		
PRINCIPAL BRIEF FOR APPELLANT
TABLE OF CONTENTS
[Insert]
STATEMENT OF RELATED CASES
Appellant is aware of no other appeals that have been filed from the underlying decision of the Trademark Trial and Appeal Board (“Board”) of the U.S. Patent and Trademark Office (“USPTO”) in Opposition No. [Insert].
JURISDICTIONAL STATEMENT
The Board had jurisdiction over the opposition proceeding under 15 U.S.C. § 1067. In Opposition No. [Insert No.], Appellant, [Insert Name] (“Appellant”) claimed it was damaged by registration of the mark [Insert Mark] on the basis of likelihood of confusion with Appellee LLP’s (“Appellee”) [Insert Marks] marks pursuant to Lanham Act Section 2(d), 15 U.S.C. § 1052(d).
This Court has jurisdiction under Lanham Act Section 21(a)(1), 15 U.S.C. § 1071(a)(1), and 28 U.S.C. § 1295(a)(4)(B). The Board’s final decision and order was issued on [Insert Date] sustaining Opposition No. [Insert No.] and thus denying registration to Appellant’s Application Serial No. [Insert No.] for [Insert Mark] in the U.S. Patent and Trademark Office (“USPTO”). Appellant timely filed this appeal on [Insert Date]. This appeal is from a final order disposing of all claims with respect to all parties. 28 U.S.C. § 1295(a)(4)(B).
STATEMENT OF THE ISSUES ON APPEAL
This is an appeal of a decision from the Board in a trademark opposition proceeding. The issues presented on appeal are:
•	Whether, in deciding that there was a likelihood of confusion between the parties’ marks, the Board erred as a matter of law in failing to give proper weight to (i) legal requirements and record evidence establishing purchaser sophistication and the highly regulated conditions of sale, and (ii) Appellee’s concession that there was no likely confusion between the marks at the point of sale.
•	Whether the Board committed legal error by dissecting the [Insert Mark] mark and discounting the contribution made by the adjectival term [Insert Word] to the overall commercial impression created by [Insert Mark].
•	Whether the Board erred as a matter of law by failing to identify and consider the differences in relevant purchasers for the parties’ services within purchasing institutions, and in concluding that the parties’ purchasers are the same without the support of substantial evidence.
STATEMENT OF THE CASE
This case arises from a trademark opposition proceeding before the Board.
On [Insert Date], Appellant sought to register with U.S. Patent and Trademark Office (“USPTO”) the mark [Insert Mark] for use in connection with [Insert Goods]. [Cite]
On [Insert Date], Appellee opposed the registration for [Insert Mark] on the ground of likelihood of confusion with its marks [Insert Marks] under the Lanham Act. See 15 U.S.C. § 1052(d). [Cite]
On [Insert Date], the Board ruled that there is a likelihood of confusion between the marks.
Appellant timely appealed the Board’s decision to this Court.
STATEMENT OF THE FACTS
A. Factual Background.
1. The Parties.
Appellant is an [Describe who they are] company that [Describe its business and operations]. [Cite] Appellant launched its first product using the [Insert Mark] mark on [Insert Date]. [Cite] [Insert Name] serves as [Describe their Position]. [Cite]
Appellee is a [Describe who they are] company that [Describe its business and operations]. [Cite] Appellee’s activities in the United States have been limited to [Describe]. [Cite]
2. The Business Framework and Environment.
Both Appellant and Appellee are engaged in [Describe industry in which both parties operate]. This industry is heavily regulated and those purchasing products or services in the industry are extremely sophisticated and it is “virtually inconceivable” that potential purchases of such goods or services are likely to be confused by the marks at the point of sale. [Cite] The testimony of Appellee’s witnesses supports this concession that there is no likelihood of point-of-sale confusion based on the diligence process and purchaser sophistication. [Cite]
The processes undertaken by both Appellant and Appellee to identify, qualify and engage customers are rigorous and individualized. [Cite]
The record before the Board regarding this commercial and regulatory environment in which the parties operate is extensive, and describes the regulated conditions under which the parties’ services are encountered and engaged by the intended consumers. These undisputed facts are so significant to this case that Appellee readily conceded that likelihood of confusion by customers at the point of sale is “virtually inconceivable.” [Cite]
3. The Marks at Issue.
Appellant selected [Insert Mark] as a mark for its products and related services because its business operates within sight of [Discuss the basis for the selection of the Mark]. [Cite] The [Insert Mark] mark was chosen for the following reason: [Insert Reason]. [Cite]
In [Insert Date], Appellee obtained United States trademark registrations for [Insert Mark] for a wide range of products and related services. [Cite] The record establishes that these marks were not well-known in the applicable industry at the time. [Cite]
There is extensive evidence of third party use of similar marks in the industry, including, inter alia, [List Third Party Marks] [Cite] There is also extensive third party usage of similar marks on the Internet, including [List Third Party Marks on Internet]. [Cite]
In addition, during prosecution of the [Insert Mark] application, Appellee described [Identify] registered to a third party for [Insert services] as significantly different from the mark [Insert Mark]. [Cite]
The composite mark [Insert Mark] conjures up similar feelings [Describe]. [Cite]
B. Procedural History.
On [Insert Date], at about the time it launched its business, Appellant filed a U.S. trademark application for [Insert Mark] [Cite] The application covers [Insert Goods]. [Cite]
Appellee opposed the registration on the ground of likelihood of confusion with its marks [Identify Marks] under the Lanham Act. See 15 U.S.C. § 1052(d). Specifically, Appellee contended that the relevant consumers would likely be confused by [Insert Mark] (N.B. all rights to the term [Insert Term] were disclaimed) based on the marks [Insert Marks] registered in [Insert Date] for [Insert Goods].
The Board examined the case on a full record relating to the likelihood of confusion factors, enumerated in In re E.I. duPont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). The parties agreed that the relevant duPont factors in this case are: (1) the distinctions between the marks in the context of the services; (2) the differences between the services as identified in the application and registrations involved; (3) the trade channels limited to direct person-to-person contact with customers and potential customers already having a substantial pre-existing relationship; (4) the highly sophisticated customers and the directly personal and time consuming conditions of sale; (5) the weakness of Appellee’s marks; (6) third party use of similar marks, including [Identify], and Appellee’s admissions during prosecution of its registrations as to the commercial impression made by its marks and other similar marks in the industry.
On the merits, the Board found that four duPont factors (i.e., similarity of the marks, similarity of the services, established and likely to continue trade channels, and purchaser sophistication and conditions of sale) weighed in favor of likelihood of confusion, but that the remaining factors (i.e., weakness of Appellee’s marks, third party use of similar marks, and Appellee’s admissions during prosecution of its marks) were neutral to the analysis.
The Board dismissed the evidence of the highly regulated nature of the industry and the extreme sophistication of the qualified purchasers based on the unrestricted description of services in the application and registrations involved. [Cite] Moreover, the Board dissected the terms forming the Mark and dismissed the importance of the word “[Insert]” as a mere “adjective” to the word “[Insert]”. [Cite] Although the Board recognized that the term “[Insert]” should be afforded little consideration because both parties disclaimed exclusive rights in the term, it nonetheless accorded it weight by claiming that the [Insert Mark] mark “incorporates the entirety of the mark [Insert].” [Cite] The Board also found that Appellee failed to establish that its marks are well-known and entitled to broad protection. And despite Appellee’s concession that customer confusion is “virtually inconceivable,” [Cite], the Board concluded that confusion between the subject marks was likely.
Appellant timely appealed the Board’s decision to this Court.
SUMMARY OF THE ARGUMENT
There is no likelihood of confusion between the subject marks when the relevant duPont factors are properly weighed and considered in light of the law and record evidence. The Board’s opinion rested critically on legal errors that infected its entire duPont analysis and require a de novo rebalancing of the relevant factors based on established precedent and all record evidence.
First and foremost, the Board ignored that both as a matter of legal requirements and undisputed record evidence, the relevant clientele and marketplace realities render customer confusion virtually impossible. Indeed, for the different types of goods and services at issue in this case, governmental regulations expressly confine customer interactions to one-on-one interactions based on personal relationships rather than public advertising, and mandate that the companies’ ensure their customers are individually qualified to purchase. The record evidence confirms that the companies’ respective customers are highly sophisticated, customers who undertake lengthy review processes before making one-on-one purchasing decisions and thus are at no risk of confusion. Indeed, Appellee itself admitted that confusion is “virtually inconceivable” when the parties’ goods are purchased or services are engaged. [Cite] It was straightforward legal error for the Board to ignore Appellee’s critical concession given the record evidence and the requirements of federal law that, by virtually eliminating all prospect of confusion, required resolution of the likelihood-of-confusion inquiry in Appellant’s favor.
Second, the Board committed additional legal errors in analyzing the similarity of the marks. The Board started from the wrong point by deeming the incorporation of the terms of Appellee’s marks as ipso facto indicating confusion. Rather, it is the marks as a whole that are relevant, and that is precisely what makes the two marks distinct.
Likewise, the Board’s dissection of the [Insert Mark] mark and then backhanded dismissal of the word “[Insert Word]” as simply adding an adjective misses the legal relevance of that adjective, which connotes entirely different sound, meaning, connotation, and imagery for the customer. Indeed, the Board’s decision is at war with Appellee’s prior USPTO admission that the adjective “[Insert]” in front of “[Insert]” amply distinguished Appellant’s mark from Appellee’s mark. That is especially true because the Board found that the Appellee marks are not strong or well-known in the relevant industry which means that even minor differences between the marks become more significant in avoiding the likelihood of confusion.
Finally, the Board’s conclusion that the parties’ purchasers are the same is legally flawed and is not supported by substantial evidence. Although the parties conduct business in the same general fields, the mere fact that the parties may deal with the same types of potential customers does not establish overlap of purchasers. The Board ignored substantial evidence that purchasing companies typically have different staff or consultants dealing with different components, and that the parties’ services cover different classes. The Board’s likelihood of confusion finding is also legally flawed because it is based on likely confusion by the companies rather than in a particular customer as required by this Court’s precedent.
Had the Court applied the duPont factors properly and consistent with precedent to the undisputed—even conceded and legally required—factual evidence, Appellant’s mark would have qualified for registration and the opposition would have been dismissed.
ARGUMENT
I. STANDARD OF REVIEW.
A trademark opposition under Lanham Act Section 2(d) is determined on the likelihood of confusion factors set forth in In re E.I. duPont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). Likelihood of confusion is a question of law with underlying factual inquiries based on the duPont factors. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382 (Fed. Cir. 2006). The Court reviews the legal question of likelihood of confusion de novo, owing no deference to the Board’s determination. On-Line Careline, Inc. v. America Online, Inc., 229 F.3d 1080, 1084 (Fed. Cir. 2000).
The Court reviews the Board’s factual findings for “substantial evidence.” In re Pacer Tech., 338 F.3d 1348, 1349 (Fed. Cir. 2003). Substantial evidence must be “‘more than a mere scintilla’ and [is] ‘such relevant evidence as a reasonable mind would accept as adequate’ to support a conclusion” (quoting Consol. Edison Co. of New York v. N.L.R.B., 305 U.S. 197, 229 (1938)). The Court may disturb the Board’s factual findings if they are not supported by substantial evidence in the record. See Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1337 (Fed. Cir. 2001).
II. THERE IS NO LIKELIHOOD OF CONFUSION BETWEEN THE MARKS.
A. Legal Standard.
The well-established test for determining a likelihood of confusion involves the consideration and balancing of the thirteen, non-exclusive factors set forth in In re E.I. duPont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973).
The duPont factors must be considered and weighed within the particular factual context of the case, not a vacuum. In re duPont, 476 F.2d at 1361 (each case determining likelihood of confusion must be decided on its own facts). In any given case, different factors may play a dominant role and some factors may not be relevant to the analysis. See Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 1370 (Fed. Cir. 2012). The weight given to each factor likewise depends on the circumstances of each case. See In re Dixie Restaurants, Inc., 105 F.3d 1405, 1406-1407 (Fed. Cir. 1997). Indeed, a single duPont factor may be dispositive of the likelihood of confusion analysis. Kellogg Co. v. Pack’em Enters., Inc., 951 F.2d 330, 333 (Fed. Cir. 1991).
The duPont factors are: (1) the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression; (2) the similarity or dissimilarity and nature of the goods described in an application or registration or in connection with which a prior mark is in use; (3) the similarity or dissimilarity of established, likely-to-continue trade channels; (4) the conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing; (5) the fame of the prior mark; (6) the number and nature of similar marks in use on similar goods; (7) the nature and extent of any actual confusion; (8) the length of time during and the conditions under which there has been concurrent use without evidence of actual confusion; (9) the variety of goods on which a mark is or is not used; (10) the market interface between the applicant and the owner of a prior mark; (11) the extent to which applicant has a right to exclude others from use of its mark on its goods; (12) the extent of potential confusion; and (13) any other established fact probative of the effect of use.
This Court has ruled that likelihood of confusion analysis must be grounded in commercial reality, not speculation or theoretical supposition:
We are not concerned with mere theoretical possibilities of confusion, deception, or mistake or with de minimis situations but with the practicalities of the commercial world, with which the trademark laws deal. Electronic Design & Sales, Inc. v. Electronic Data Sys. Corp., 954 F.2d 713, 717 (Fed. Cir. 1992) (citation omitted); see also Edwards Lifesciences Corp. v. Vigi Lanz Corp., 94 U.S.P.Q.2d 1399, 1414 (TTAB 2010) (“We find that there is not a practical likelihood of confusion; rather the extent of any possible confusion is de minimis”); Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas, Inc., 77 U.S.P.Q.2d 1492, 1513-1514 (TTAB 2005). That is because the statutory standard of Section 2(d) is likelihood of confusion, not the mere possibility of confusion. Bongrain Int’l (Am.) Corp. v. Delice de France, Inc., 811 F.2d 1479, 1482 (Fed. Cir. 1987).
B. The Board Committed Legal Error in Dismissing Purchaser Sophistication and Conditions of Sale.
This Court has emphasized that, when the disputed marks involve products or services offered in the same markets, purchaser sophistication is important and often dispositive because “[s]ophisticated consumers may be expected to exercise greater care.” Electronic Design & Sales, 954 F.2d at 718. “There is always less likelihood of confusion where goods are expensive and purchased after careful consideration,” rather than on impulse. [Cite] (quoting Astra Pharm. Prods., Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1206 (1st Cir. 1983)).
In this case, the extensive evidence of the regulatory environment, customer sophistication, and the circumstances surrounding purchasing decisions should have weighed heavily, if not foreclosed, any finding of likely confusion. Furthermore, just as in Electronic Design & Sales, the Board’s failure to give proper weight to this vital part of the balance caused the Board to overvalue the marks in favor of Appellee. 954 F.2d at 718 n.2 (“The near identity of the marks here is apparent and is not seriously disputed. But it too was given excessive weight by the Board in light of the sophistication of purchasers here.”).
Because of the extraordinarily high levels of purchaser sophistication and intimate and deliberative conditions of sale in this case, had the Board properly factored them into the duPont balance, they would have dispositively foreclosed the likelihood of confusion finding or, at the very least, have tilted the balance heavily in favor of Appellant. Indeed, the evidence is so conclusive that Appellee readily conceded that likelihood of confusion by customers at the point of sale is “virtually inconceivable.” [Cite]
1. The Board Gave No Legal Effect to the Extensive Evidence of Sophistication.
The Board made numerous factual findings establishing the unique sophistication of customers for the parties’ purchasing considerations and the conditions of sale. Specifically, the Board found that the “the parties’ target customers are sophisticated, and the minimum required purchases are large.”
The Board further found that both parties must have substantive, pre-existing relationships with the potential customers and confirm that they are qualified to make such purchases. [Cite] Both parties market their products and services on a one-on-one basis, and “the evidence shows that identifying and procuring customers is a protracted and personal enterprise.” [Cite] In that vein, the Board specifically found that “even ordinary consumers will exercise care when making purchasing decisions.” [Cite] This finding comports with Appellee’s concession that likelihood of confusion by customers at the point of sale is “virtually inconceivable.” [Cite]
The Board, however, failed to give the weight the law requires to the sophistication of customers who would encounter the marks and completely ignored the conditions of sale. See, e.g., Electronic Sales & Design, 954 F.2d at 718 (“Where the purchasers are the same, their sophistication is important and often dispositive because ‘[s]ophisticated consumers may be expected to exercise greater care.’ ”) (quoting Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 489 (1st Cir. 1981)); Dynamics Research Corp. v. Langenau Mfg. Co., 704 F.2d 1575, 1576 (Fed. Cir. 1983) (finding no likelihood of confusion between the identical mark DRC because the goods were “sold to different, discriminating customers”); Astra, 718 F.2d at 1206 (“[T]here is always less likelihood of confusion where goods are expensive and purchased after careful consideration”).
The Board reasoned that it must ignore that critical evidence because of the unrestricted description of services in the purchasing process. [Cite] (“The goods and services offered by the parties, as identified in their respective application and registrations, are not restricted to sophisticated consumers.”). On that basis, the Board then cast aside Appellee’s concession that no confusion would result at the point of sale and turned its back on the exceptionally sophisticated customers and meticulous decision-making processes employed by customers. In fact, the Board turned the record on its head by counterfactually finding that the buyer’s sophistication and the conditions under which sales are made (i.e., “impulse” versus careful, sophisticated purchasing) somehow favored Appellee, even though the purchasing decisions made on this record are the antithesis of impulsive or unsophisticated.
That was straightforward legal error in four respects. First, nothing in the law requires the Board to blink away such extensive evidence of purchaser sophistication and the extensively deliberated conditions of purchase just because the listed services contain no limitation as to trade channels or certain types of purchaser. Indeed, this Court has found that purchaser sophistication and care can readily be inferred simply from an identification of goods or services that is not restricted as to trade channels or purchasers or value of products.
Just from the record description of goods and services here one would expect that nearly all of opposer’s and applicant’s purchasers would be highly sophisticated. Nothing in the record is to the contrary. Indeed, the record confirms that opposer’s services are expensive and purchased only by experienced corporate officials after significant study and contractual negotiation. See, e.g., Electronic Design & Sales, 954 F.2d at 718; see also In re Digirad Corp., 45 U.S.P.Q.2d 1841, 1843-44 (TTAB 1998).
In this case, the goods and services identified in the application and registrations are the very type of services that would only be engaged by a knowledgeable and careful customers. Better still, because advertising is prohibited and customers must as a matter of federal law be confirmed by the companies to be qualified, the law itself answers this duPont inquiry by requiring that customers have a substantive, pre-existing relationship with the goods and services provider and be individually informed. 17 C.F.R. § 230.502(c). This case is thus even stronger than Electronic Designs because federal law itself imposes the obligation of one-on-one, targeted customer relations for the parties’ offerings. The Board cannot ignore what federal law compels. See, e.g., Highfields Capital Mgmt., L.P. v. Doe, 385 F. Supp. 2d 969, 978 (N.D. Cal. 2005) (finding no likelihood of confusion because “plaintiff considers itself to be a very sophisticated institution with responsibility (federally regulated) for very large purchasings on behalf of resource-rich, sophisticated customers”).
Second, the Board overlooked the duPont that makes the sophistication and circumstances of purchase an independent factor separate from the services, trade channels and purchasing classes. By collapsing those two factors into a single consideration, the Board’s decision impermissibly rewrites duPont.
Third, the Board’s error is compounded by the robust factual record confirming a high level of expertise and deliberation within a decisional context that is virtually immune from the possibility of confusion: The law obligated the Board to give due weight to that evidence. See duPont, 476 F.2d at 1362 (the Board is duty-bound to consider all the evidence); Electronic Design & Sales, 954 F.2d at 718 (“In every case turning on likelihood of confusion, it is the duty of the examiner, the board and this court to find, upon consideration of all the evidence, whether or not confusion appears likely”).
Fourth, the testimonial admissions of Appellee’s top executives that customer confusion would not result because of the unique nature of these business transactions should have been afforded great deference by the Board, not ignored. After all, “[i]t is at least difficult to maintain a subjective view that confusion will occur when those directly concerned say it won’t.” duPont, 476 F.2d at 1363; see also Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270, 1275 (Fed. Cir. 1988) (“Decisions of [people] who stand to lose if wrong are normally more reliable than those of examiners or judges”); Bongrain Int’l (Am.) Corp., 811 F.2d at 1482 (“Our review of this case, particularly considering the views of the parties on what actually happens and is likely to happen in the marketplace as it affects their respective businesses, constrains us to disagree with the board”).
Unsurprisingly, given the concession, Appellee attempted to rest its entire case on a theory of “initial interest” confusion, [Cite], but the Board did not even entertain that theory. And for good reason—this Court had refused to embrace it. See Weiss Assocs., Inc. v. HRL Assocs., Inc., 902 F.2d 1546, 1549 (Fed. Cir. 1990) (declining to “reach or embrace” the concept of initial interest confusion as a ground of affirming the Board’s finding of likelihood of confusion). [Cite]
Accordingly, because Appellee’s point-of-sale concessions go directly to the central issue in the case, the Board committed reversible error in ignoring such vital evidence confirming not only the unlikelihood, but the virtual impossibility, of confusion in the actual conditions in which the parties operate. That concession is firmly reinforced by the distinctive legal framework and extensive record of sophisticated consumers making individualized and highly informed judgments within the context of close, one-on-one relationships. Moreover, in this case, customer sophistication and the circumstances of sale so overwhelm the context in which the marks are used that, certainly when combined with the concessions, they should be dispositive in favor of Appellant. [Cite] (“Where the purchasers are the same, their sophistication is important and often dispositive”). At a minimum, it was plain legal error to ignore them.
2. The Board Hypothesized a Second Class of Unsophisticated “Ordinary” Investors Without Substantial Evidence.
The Board rested its decision, in part, on the invocation of a hypothetical scenario where Appellant’s “services and [Appellee’s] consultation services could be offered to, and consumed by anyone, including ordinary consumers seeking such services.” [Cite]
But that is not how the law works. Trademark oppositions are to be decided on the record before the Board, not made-up speculation about a non-existent class of unsophisticated consumers comprising “anyone with money to invest.” [Cite] Indeed, the Board’s purported customer base is so entirely bereft of evidentiary support that no reasonable person would find that the evidentiary record supports the Board’s conclusion. See On-Line Careline, 229 F.3d at 1085.
Still worse, the Board’s imagined class of “ordinary,” unsophisticated customers took no account of the record facts that, even if such multi-millionaire but ignorant customers existed, their purchasing decisions would have to be made within a highly regulated, information-rich, one-on-one environment that by itself would make confusion about source of the services provided all but impossible. Both parties market their services one-on-one to individuals with whom they have a documented substantial and pre-existing relationship and whom they have independently determination are qualified under the regulations through a protracted and personal process. [Cite] That presumably is why the Board itself admitted that “even ordinary consumers will exercise care when making purchasing decisions.” [Cite] It thus was legal error for the Board to drop that entire half of the duPont factor from its hypothesized analysis.
To be sure, the Board again professed that it was prevented from factoring that reality into its decision because the listed services were not limited to “high dollar purchases or sophisticated consumers.” [Cite] But the law does not support that distinction and, in any event, the regulations governing the parties’ purchasing decisions apply equally to all customers.
3. The Board’s Comparison of the Marks Was Predicated on Legal Error.
The Board’s last rationale for discarding the extensive evidence of sophistication and circumstances of sale was to state that sophisticated purchasers are not immune from confusion where “similar marks” are used in connection with related services. [Cite] (citing In re Research and Trading Corp., 793 F.2d 1276, 1279 (Fed. Cir. 1986)). But that misreads this Court’s precedent. The purported similarity of marks does not jettison evidence of sophisticated customers engaged in individualized one-on-one transactions. Rather, the Board was obligated to consider both the extent of similarity and dissimilarity along with the sophisticated transactional environment. That is because confusion necessarily turns on degrees of sophistication combined with degrees of similarity. The more sophisticated the consumer and individually in-depth the point-of-sale decision, the more substantial the similarity must be before confusion will result.
In Research & Trading, the marks were almost identical (ROPELOCK and ROPELOK) and the commercial circumstances were materially less sophisticated. 793 F.2d at 1279 (“Sophistication of buyers and purchaser care are relevant considerations, but are not controlling on this factual record.”) (emphasis added). Here, by contrast, the marks are far less similar and the transactional circumstances involve the highest level of sophistication and personalized, fact-to-fact deliberative judgments.
In short, at every turn, the Board committed legal error in casting aside the overwhelming evidence of extraordinary sophistication and the business circumstance of one-on-one long-term relationships that are both factually and legally designed to be impervious to confusion. The ripple effect of that error resulted in the Board miscalculating the duPont balance that should have weighed heavily, if not dispositively, in favor of Appellant.
B. The Board Conducted An Erroneous Comparison of the Marks.
1. Incorporation of a Portion of Another’s Mark Does Not Ipso Facto Constitute Confusing Similarity.
To determine whether the parties’ marks are similar for purposes of assessing the likelihood of confusion (the first duPont factor), the Board must consider the appearance, sound, connotation and commercial impression of each mark. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1371 (Fed. Cir. 2005). In addition, this Court has long prohibited an analysis that dissects the marks rather than considers them as a whole. See, e.g., China Healthways Inst., Inc. v. Xiaoming Wang, 491 F.3d 1337, 1340 (Fed. Cir. 2007) (“The marks must be compared in their entirety, at least when the overall commercial impression is reasonably based on the entirety of the marks”); In re Nat’l Data Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985) (“[L]ikelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark.”); Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 1007 (C.C.P.A. 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”).
While noting this Court’s rules [Cite], the Board’s analysis undertook the very dissection of the mark that this Court forbids, failing to assess the commercial impression made by [Insert Mark] as a whole and as applied to these services. In re Nat’l Data Corp., 753 F.2d at 1058 (“[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.”).
The Board began its analysis of the marks by noting that both parties have disclaimed the exclusive right to the term [Insert Word]. That was appropriate because the word is a generic term as applied to such services. [Cite] As a result, disclaimed matter may properly be given only scant weight in the likelihood of confusion analysis. Nat’l Data, 753 F.2d at 1058.
The problem is that the Board then turned around and gave the word meaningful weight in its analysis by reasoning that the [Insert Mark] mark “incorporates the entirety of Appellant’s marks.” [Cite] The whole point of a disclaimer is to acknowledge that the term is non-distinctive and that others have a right to use the term apart from the disclaiming party’s mark as a whole. Trademark Manual of Examining Procedure, § 1213 (April 2013) (“A disclaimer is a statement that the applicant or registrant does not claim the exclusive right to use a specified element or elements of the mark in a trademark application or registration.”). Consistent with its disclaimer of exclusive rights in such word, Appellee made no claim in this case that the word is anything other than a non-distinctive term describing its services. [Cite] Thus Appellant’s use of the word [Insert Word] should have contributed very little to the likelihood of confusion analysis.
Furthermore, the Board’s analysis rests on the faulty assumption that incorporating an opposer’s mark necessarily results in a likelihood of confusion. But that is not the law, particularly where here the relevant transactional context admits of differentiation. The cases that deny registration to a mark that incorporates the entire trademark of another “involve trademarks which when considered in their entireties would likely cause confusion.” Murray Corp. v. Red Spot Paint & Varnish Co., Inc., 280 F.2d 158, 161 n.4 (C.C.P.A. 1960) (no likelihood of confusion found between marks EASY for touch-up enamel and EASYTINT for tintable base paints); see also Colgate-Palmolive Co. v. Carter-Wallace, Inc., 432 F.2d 1400, 1402 (C.C.P.A. 1970) (no likelihood of confusion found between marks PEAK for dentifrice and PEAK PERIOD for personal deodorant).
Thus, contrary to the Board’s analysis, mere inclusion of the terms [Insert Terms] in Appellant’s mark simply begins, but does not itself answer, the confusion inquiry. Nor does it enhance the negligible contribution of the generic term [Insert] or diminish the distinguishing impression of the initial term [Insert Term] as part of the Mark [Insert Mark]. It is that multi-faceted inquiry that the Board should have undertaken, and its failure to do so is reversible error.
2. The Board Erred in Dismissing “[Insert Term]” as Merely an Adjective and Finding the Word “[Insert]” to be the Dominant Portion of its Mark
The Board committed two more critical errors in its analysis. First, it determined that the term [Insert], although “common,” is arbitrary when used in association with Appellee’s services. [Cite] In so doing, the Board failed to follow the law’s requirement that laudatory and suggestive terms are inherently weaker as marks than purely arbitrary or coined terms, and thus should be afforded less scope in a likelihood of confusion analysis. Nautilus Grp., Inc. v. ICON Health and Fitness, Inc., 372 F.3d 1330, 1340 (Fed. Cir. 2013) (“Unlike arbitrary or fanciful marks which are typically strong, suggestive marks are presumptively weak”); Triumph Hosiery Mills, Inc. v. Triumph Int’l Corp., 135 U.S.P.Q. 45, 48 n.2 (2d Cir. 1962) (“The mark ‘Triumph’ is a so called weak mark, i.e. it has been used many times to identify many types of products and services.”); Union Carbide Corp. v. Ever Ready Inc., 188 U.S.P.Q. 623, 637 (7th Cir. 1976) (“A distinctive mark or name will be more broadly protected than words such as ‘ever ready’ which has been registered and applied to a variety of goods”), cert. denied, 429 U.S. 830 (1976); American Steel Foundries v. Robertson, 269 U.S. 372, 383-384 (1926).
When a mark is weak, even slight differences between marks become more significant. See, e.g., Kenner Parker Toys Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 352-353 (Fed. Cir. 1992); Sure-Fit Prods. Co. v. Saltzson Drapery Co., 254 F.2d 158, 159 (C.C.P.A. 1958) (“Where a party uses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark without violating his rights.”).
Second, at the conclusion of its marks analysis, the Board acknowledged that the word [Insert] appears first in the [Insert Mark] mark and “contributes to its commercial impression.” [Cite] The Board nonetheless concluded that [Insert Word] is the dominant element for no other reason than that [Insert Term] is an “adjective modifying the noun ‘[Insert Word’.” [Cite] That makes no sense. Whether a word is adjectival or not says nothing about either the distinctive contribution it makes to a mark as a whole or the unique import or imagery generated by the combined words. “Black” is just an adjective too, but when put in front of “hole,” the combined effect of “black hole” is dramatically distinct from “hole” by itself. So too here. In failing to assess the full impression created by [Insert Term] and the “[Insert Words]” in [Insert Mark] in the manner required by this Court’s precedent, the Board committed legal error. See Nat’l Data Corp., 753 F.2d at 1058 (“[T]he ultimate conclusion rests on consideration of the marks in their entireties”); China Healthways Inst., 491 F.3d at 1340 (Marks analysis improper when “eliminating portions thereof and then simply comparing the residue.”).
3. Properly Analyzed, The Marks Are Readily Distinguishable and Non-Confusing in Context.
The record contains substantial evidence that the marks are sufficiently distinguishable when used for the highly sophisticated services at issue in this case. “[I]t is often the first part of a mark which is likely to be impressed upon the mind of a purchaser and remembered,” Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 U.S.P.Q.2d 1895, 1897 (TTAB 1988), and the record documents that is true here as well. The words [Insert Words], as the initial and dominant portion of the [Insert Mark] mark, is the most communicative and evocative aspect of the mark and that is what is likely to be remembered by customers. The [Insert Mark] mark contains an initial sibilant sound not found in either of Appellee’s marks.
The meanings are also quite different. Appellant selected [Insert Mark] as befitting a business that conveys a specific, dynamic impression. [Cite] Even without the correlation between the trademark and such impression, the meaning of the words [Insert Words] conveys such an impression. [Cite]
4. The Board Afforded Excessive Weight to the Similarity of the Marks.
Lastly, the Board committed legal error by according excessive weight to the perceived similarities between the marks. In the first instance, having concluded that the Appellee marks are not strong or well-known in the industry, [Cite] the Board overlooked that the level of renown of an opposer’s mark is supposed to play a “dominant role in the process of balancing the duPont factors.” Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1327 (Fed. Cir. 2000). Under this Court’s precedent, if a mark is not well-known, it is more difficult for a trademark owner to show likelihood of confusion. See Kenner, 963 F.2d at 352-53 (stating that famous marks enjoy more protection).
Here, the Board assessed the strength of Appellee’s marks “through, for example, evidence of sales, advertising and length of use,” [Cite] and its findings support its conclusion that Appellee marks are not well-known. The Board acknowledges that Appellee cannot advertise its services, [Cite], and Appellee offered no direct evidence of customer recognition of its marks. Because Appellee’s sales are large item sales, [Cite] simple arithmetic shows that this handful of customers each made significant investments in the goods and services for which they participated in a face-to-face purchasing process over a significant period of time. Under those circumstances, the scope afforded by the Board to Appellee’s largely unrecognized and certainly unrenowned marks was erroneous. See, e.g., Kenner, 963 F.2d at 352-353 (“Where a party uses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark without violating his rights”) (quoting Sure-Fit Prods., 254 F.2d at 160).
In addition, the Board afforded excessive weight to the marks’ similarity in light of Appellee’s own statements to the USPTO during the prosecution of the [Insert Mark] registration distinguishing the third party mark “[Insert Mark]” registered for, among others, [Insert Goods and Services]. Those statements did far more than add “shade and tone” to the analysis, as the Board noted, [Cite], but in fact evidenced that the scope of Appellee’s marks is limited and that “consumers will look to elements other than [Insert Word] to distinguish the source of the services.” [Cite]
Indeed, “a party’s earlier contrary opinion may be considered relevant and competent.” Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 672-73 (Fed. Cir. 1984) (“A review of the record shows that applicant took a contrary position before the trademark examiner after being advised of the pending registration THE SPICE MARKET. We consider this evidence to be relevant because it illustrates the variety of images that may be attributed to the mark SPICE VALLEY, which applicant seeks to register without restriction as to display, and the overall commercial impression it projects”). Here, in its prior USPTO submission, Appellee considered the mark [Insert Mark]—a mark that, after all, is distinguished by its adjective—to be different from [Insert Mark] in “all aspects of the sight-sound-meaning trilogy.”
The composite mark “ROARING LION” conjures up a specific action and sound and is distinct from LION alone or other LION-formative marks.
C. The Board Erred in Analyzing the Purchasers and Trade Channels.
1. Likelihood of Confusion Must Exist in a Purchaser, Not Generally in an Institution.
In determining likelihood of confusion, the Board found that the third duPont factor—the channels of trade and purchasers—weighed heavily in Appellee’s favor. [Cite] Although the Board was correct that, where there are no restrictions in the application and registrations, the trade channels and classes of purchasers are determined by the description of services, [Cite], the Board’s analysis stopped short. The fact that parties may provide their services to the same institutions does not, by itself, establish similarity of trade channels or overlap of customers. Rather, this Court had repeatedly held that the likelihood of confusion must be shown to exist not in a purchasing institution, but in a customer or purchaser. Electronic Design & Sales, 954 F.2d at 716 (“[A]ny confusion has to exist in the mind of a relevant person”) (quoting Astra, 718 F.2d at 1206); Edwards Lifesciences, 94 U.S.P.Q.2d at 1410 (“[O]pposer ignores the fact that the evidence shows that opposer markets to the staff of critical care units while applicant markets to hospital pharmacies. …the burden was on the opposer to submit evidence to the contrary”); In re Digirad, 45 U.S.P.Q.2d at 1844 (“[T]he differences in the relevant purchasers of the parties’ goods, the sophistication of those purchasers, the care with which the products are purchased, and the expense thereof, mitigate against a finding that the goods of the parties are related, despite the fact that both x-ray imaging and nuclear imaging are medical diagnostic technologies.…”).
The Board’s failure to examine the record to determine which types of persons within these organizations the parties normally dealt with thus left out a critical element of this duPont factor. See Electronic Design & Sales, 954 F.2d at 716-17.
2. The Board’s Conclusion that the Purchasers Are the Same Is Not Supported By Substantial Evidence.
In this case, the evidence shows that the purchasing field is not monolithic, but is composed of separate functions within institutions having different purchasing goals and requirements. [Cite] Tellingly, the testimony of both parties concurred on this point.
The Board’s finding that the services would likely be encountered by the same relevant persons, [Cite] thus was both legal error—for failure to analyze the right individuals who were the purported objects of confusion—and factual error because the testimony of both sides was consistent on the lack of overlap between the relevant personnel. See Astra, 718 F.2d at 1207. Accordingly, the Board’s conclusion that the third duPont factor weighed strongly in favor of Appellee cannot stand.
It is appropriate for the Board to consider evidence that assists in understanding the nature of the recited goods or services. See Edwards Lifesciences, 94 U.S.P.Q.2d at 1410 (“Where, as here, applicant’s description of goods provides basic information, and the goods are of a technical nature, it is entirely appropriate to consider extrinsic evidence to determine the specific meaning of the description of goods”) (citing In re Trackmobile, Inc., 15 U.S.P.Q.2d 1152, 1154 (TTAB 1990)).
CONCLUSION
For the foregoing reasons, Appellant respectfully requests that the Board’s decision be reversed, the opposition dismissed, and a federal trademark registration for [Insert Mark] be issued.
Dated: [Insert Date]
		
	Respectfully submitted,	
	_______________________	
	[Attorney Name]	
	[Firm Name]	
	[Firm Address]	
	[Telephone No.]	
	[E-Mail Address]	
	Attorney for Appellant	
CERTIFICATE OF SERVICE
I certify that a copy of the foregoing pleading was sent via First Class Mail and E-Mail this [Insert Date] to [Insert Name and Address of Opposing Counsel].
		
	___________________________	
	Name:	
	Attorney for [Insert]