Chicanos Por La Causa, Inc.

Trademark Trial and Appeal Board

Dec 1, 2020

87935794 (T.T.A.B. Dec. 1, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: December 1, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Chicanos Por La Causa, Inc.
_____

Serial No. 87935794
_____

Marcos E. Garciaacosta of Legal Business Global
for Applicant, Chicanos Por La Causa, Inc.

Matthew Tully1, Trademark Examining Attorney, Law Office 105,
Jennifer Williston, Managing Attorney.
_____

Before Mermelstein, Kuczma and Lebow,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Chicanos Por La Causa, Inc. (“Applicant”) seeks registration on the Principal
Register of the mark CPLC (in standard characters) for:
Addiction treatment services; Behavioral health services;
Medical advice for individuals with disabilities; Medical
advisory services; Medical and pharmaceutical
consultation; Medical assistance; Medical assistance
services; Medical care; Medical clinic services; Medical
consultations; Medical counseling; Medical information;

1 On April 9, 2019, Application Serial No. 87935794 was reassigned to Trademark Examining
Attorney Matthew Tully.
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Medical screening; Medical screening information services
featuring reminder alerts regarding medical examinations
that individuals should undergo for preventative care
purposes; Medical services; Mental health therapy
services; Charitable services, namely, providing health
care services in the nature of mental care, addiction
treatment to homeless, veterans, disabled individuals;
Clinical medical practice consultation services; Clinical
mental health counseling services; Conducting medical
physical evaluations; Drug, alcohol and DNA screening for
medical purposes; Information about parenting topics,
namely, drug and alcohol awareness; Providing medical
information; Providing medical information in the field of
AIDS Prevention and detection; Providing mental health
and wellness information; Providing personalized
healthcare and medical information in the nature of AIDS
prevention, detection and treatments; Provision of medical
information; Rehabilitation of alcohol addicted patients;
Rehabilitation of narcotic addicted patients in
International Class 44.2
The Trademark Examining Attorney refused registration of Applicant’s mark
under § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), citing Registration No.
4539547, owned by Hospice and Palliative Credentialing Center, Inc. (“Registrant”),
for the certification mark CPLC (in standard characters) for “perinatal loss care
services” in International Class B,3 as a bar to registration.
Examining Attorney Kristin Williams made the refusal final; Applicant filed three
Requests for Reconsideration of the refusal which were each denied; and Applicant

2 Application Serial No. 87935794 was filed on May 24, 2018, based upon Applicant’s claim of
first use and first use in commerce of the mark for the services on January 31, 2007, under
Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). The wording “CPLC” has no meaning
in a foreign language.
3 Registration No. 4539547 issued May 27, 2014, with the certification statement: The
certification mark, as intended to be used by authorized persons, is intended to certify that
the certificant has met the educational, professional, and testing requirements established
by the certifier for providing perinatal loss care services. Combined Declaration of Use and
Incontestability Under Sections 8 & 15 accepted.
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filed its appeal. After Applicant filed its Appeal Brief, newly appointed Trademark
Examining Attorney Matthew Tully filed a Motion to Remand the application for the
submission of additional evidence which was granted. On July 25, 2019, Examining
Attorney Tully issued another Final Office Action supported by additional evidence
and the Appeal was resumed. Applicant was allowed to file a supplemental brief;4
and the Examining Attorney submitted his brief. An oral hearing was held. For the
reasons set forth below, the refusal to register is affirmed.
Likelihood of Confusion
While the cited registration is for a certification mark,5 this has very little effect
on our determination as to whether or not there is a likelihood of confusion. In re

4 We note that Applicant’s Appeal Brief and its Supplemental Appeal Brief are not double-
spaced in contravention of Trademark Rules 2.126(a)(1) and 2.142(b)(2), 37 C.F.R. 2.126(a)(1)
and 2.142(b)(2). Trademark Rule 2.126(b)(1) states that “Text in an electronic submission
must be filed in at least 11-point type and double spaced.” Additionally, Trademark Rule
2.142(b)(2) states that “a brief shall not exceed twenty-five pages in length in its entirety,
including the table of contents, index of cases, description of the record, statement of the
issues, recitation of the facts, argument, and summary.” Despite the foregoing, we exercise
our discretion to consider Applicant’s briefs. We caution Applicant that in the future, such
filings may not be accepted.
5 The term “certification mark” is defined by statute as:
any word, name, symbol, or device, or any combination thereof—
(1) used by a person other than its owner, or
(2) which its owner has a bona fide intention to permit a person
other than the owner to use in commerce and files an
application to register on the principal register established
by this chapter,
to certify regional or other origin, material, mode of manufacture,
quality, accuracy or other characteristics of such person’s goods or
services or that the work or labor on the goods or services was
performed by members of a union or other organization. 15 U.S.C. §
1127.
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Accelerate s.a.l., 101 USPQ2d 2047, 2049 (TTAB 2012). The test for determining
likelihood of confusion with respect to certification marks is the same as that applied
to trademarks, i.e., the analysis set forth in In re E.I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); In re Accelerate, 101 USPQ2d at 2049
(quoting Motion Picture Ass’n of Am., Inc. v. Respect Sportswear, Inc., 83 USPQ2d
1555, 1559-60 (TTAB 2007)).6
Our determination under § 2(d) is based on an analysis of all probative facts in
evidence that are relevant to the factors bearing on the issue of likelihood of confusion
enunciated in DuPont, 177 USPQ at 567, cited in B&B Hardware, Inc. v. Hargis
Indus., Inc., 575 U.S. 138, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the similarities between the goods and services. See In re
i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting
Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed.
Cir. 2002)); Federated Foods, Inc. v. Ft. Howard Paper Co., 544 F.2d 1098, 192 USPQ

6 Trademark Act Section 4; 15 U.S.C. § 1054:
Subject to the provisions relating to the registration of
trademarks, so far as they are applicable, collective and
certification marks, including indications of regional origin,
shall be registrable under this chapter, in the same manner and
with the same effect as are trademarks, by persons, and nations,
States, municipalities, and the like, exercising legitimate control
over the use of the marks sought to be registered, even though
not possessing an industrial or commercial establishment, and
when registered they shall be entitled to the protection provided
in this chapter in the case of trademarks, . . . .
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24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential characteristics of the goods and
differences in the marks.”). Additionally, we consider the similarity of the trade
channels and customers; the conditions under which and buyers to whom sales are
made i.e., impulse versus careful sophisticated purchasing; the length of time during
and the conditions under which there has been concurrent use without evidence of
actual confusion; the nature and extent of any actual confusion and its potential
impact; and the market interface between Applicant and Registrant as the owner of
a prior mark.
We have considered all of the evidence as it pertains to the relevant DuPont
factors, as well as Applicant’s arguments (including any evidence and arguments not
specifically discussed in this opinion). DuPont, 177 USPQ at 567-68; see also Cai v.
Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (not all
of the DuPont factors are relevant to every case, only factors of significance to the
particular mark need be considered).
Similarity of the Marks
Applicant’s mark CPLC is identical to the cited mark. “When word marks are
identical but neither suggestive nor descriptive of the goods associated with them,
the first DuPont factor weighs heavily against the applicant.” In re Majestic
Distilling, 65 USPQ2d at 1204; see also In re i.am.symbolic, 123 USPQ2d at 1748; In
re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290
(Fed.Cir.1984). Even when goods or services are not competitive or intrinsically
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related, the use of identical marks can lead to the assumption that there is a common
source. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993).
There is no evidence demonstrating how consumers view the marks or that
consumers are aware of the purported acronym meanings that Applicant ascribes to
Applicant’s and Registrant’s marks. Thus, Applicant’s argument that the marks are
intended to be perceived as acronyms with different meanings is not persuasive.7
“[A]n applicant’s or registrant’s intended interpretation of the mark is not necessarily
the same as the consumer’s perception of it.” In re Yale Sportswear Corp., 88 USPQ2d
1121, 1125 (TTAB 2008); see also Interpayment Servs. Ltd. v. Docters & Thiede, 66
USPQ2d 1463, 1465 (TTAB 2003) (“In short, it does not matter what applicant’s
intentions were in creating its mark or what its characterization of its mark is.”).
Because Applicant’s mark is identical to the cited mark, this strongly supports a
likelihood of confusion.
Similarity of the Services, Channels of Trade and Classes of
Customers
We turn to the next DuPont factors involving the similarity or dissimilarity and
nature of the services, the channels of trade and the classes of customers. Where
identical marks are involved, as is the case here, the degree of similarity between the
services that is required to support a finding of likelihood of confusion declines. In re

7 Applicant’s Supplemental Brief p. 9 (14 TTABVUE 10). References to the briefs refer to the
Board’s TTABVUE docket system.
Page references to the application record refer to the downloadable .pdf version of the United
States Patent and Trademark Office (USPTO) Trademark Status & Document Retrieval
(TSDR) system.
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i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil, 26
USPQ2d at 1689), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).
The test for determining likelihood of confusion with respect to certification marks
is the same as that applied to trademarks, i.e., the DuPont analysis. However,
because Registrant does not itself use the certification mark, the similarity of the
services analysis is based on a comparison of the mark as applied to the services of
the Registrant’s authorized users which in this case consist of “perinatal loss care
services.” See § 4 of the Trademark Act, 15 U.S.C. § 1054; see also Motion Picture
Ass’n v. Respect Sportswear, 83 USPQ2d at 1559, 1562; E. I. DuPont de Nemours &
Co. v. Yoshida, 393 F. Supp. 502, 185 USPQ 597, 608 (E.D.N.Y. 1975) (“proximity [of
products] may be measured against that of the certification mark user”). Thus, for
purposes of our likelihood of confusion analysis, we must determine whether
Applicant’s services are related to the “perinatal loss care services” provided by
authorized users of Registrant’s certification mark. Other issues relating to the goods
and services, including the channels of trade and customers, are determined from the
standpoint of the users as well. See Motion Picture Ass’n v. Respect Sportswear, 83
USPQ2d at 1559-60.
In attempting to distinguish Registrant’s services, Applicant erroneously contends
that Registrant provides a certification process for a highly sophisticated audience
consisting of nurses, doctors, or other health related professionals themselves, and
does not offer or intend to offer any health care service,8 while Applicant’s services

8 Applicant’s Supplemental Appeal Brief pp. 15, 17 (14 TTABVUE 16, 18).
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are general addiction and substance abuse health care services offered to the general
public in a “regular walk in clinic where people with mental or behavioral problems
can enter and request service.”9
To the contrary, Registrant’s services are “perinatal loss care services,” which
include all services covered by that broad recitation including perinatal loss care
services provided directly to patients. Notwithstanding Applicant’s argument
regarding how Registrant actually uses its mark, we are bound by the identification
of goods as written. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047,
1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, 123 USPQ2d at 1749); In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); In re Hughes
Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015); In re Thor Tech Inc., 90
USPQ2d 1634, 1638 (TTAB 2009) (“We have no authority to read any restrictions or
limitations into the registrant’s description of goods.”).
Applicant’s medical and mental health care services encompass or are related to
Registrant’s perinatal loss care services. At least some of the services identified in
Applicant’s application including medical care and medical clinic services, medical
consultations, medical counseling, addiction treatment services, behavioral health
services, and providing mental health and wellness info,10 are related to Registrant’s

9 Applicant’s Supplemental Appeal Brief pp. 14, 17 (14 TTABVUE 15, 18).
10 Registrant’s services include the certification statement that: “The certification mark, as
intended to be used by authorized persons, is intended to certify that the certificant has met
the educational, professional, and testing requirements established by the certifier for
providing perinatal loss care services.” We take judicial notice of the definition of “perinatal”
which is: occurring in, concerned with, or being in the period around the time of birth.
Merriam-webster.com/dictionary/perinatal, Merriam-Webster Dictionary (2020). The Board
may sua sponte take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v.
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perinatal loss care services which could encompass medical and mental health issues
relating to perinatal loss.
The services need only be related in a manner such that they could, because of the
similarity of the marks, give rise to the mistaken belief that they originate from the
same source. OnLine Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d
1471, 1475 (Fed. Cir. 2000); Motion Picture Ass’n v. Respect Sportswear, 83 USPQ2d
at 1561-62; In re Int’l Tel. & Tel. Corp., 197 USPQ 910, 911 (TTAB 1978). The
confusion which the Trademark Act is concerned with is not only that a customer
would mistakenly choose Applicant’s or Registrant’s services but also whether such
a customer, familiar with Registrant’s services would believe that Applicant’s

J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983), including definitions in online dictionaries that exist in printed format
or have regular fixed editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB
2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016). See also TBMP § 1208.04
(2020).
In its Supplemental Appeal Brief, Applicant states that it is “willing to remove” several
services from the identification of services and also to add the following exclusionary
language: “All the foregoing except perinatal loss care services or related certifications.”
December 22, 2019, Applicant’s Supplemental Brief, 14 TTABVUE 8-9. The content of
appellate briefs should not include a proposed amendment. Requests to amend the
identification of goods or services should be filed by separately captioned papers or the Board
might not consider them. See Trademark Trial and Appeal Board Manual of Procedure
(TBMP) §§ 1205.01 and 1207.02 (2020). The Examining Attorney requests that the Board
disregard Applicant’s purported attempt to amend the identification of services at this late
stage. Inasmuch as Applicant has not supported its proposed amendment by a showing of
good cause and has provided no reason why such amendment was not made during the
prosecution of its application, Applicant’s “willing[ness] to remove” several services from its
identification of services has not been considered. See In re HerbalScience Grp., LLC, 96
USPQ2d 1321, 1323 (TTAB 2010).
However, even if Applicant’s proposed amendment was accepted, the proposed amended
services would not obviate a likelihood of confusion between Applicant’s remaining services
and Registrant’s services because their marks are identical and the relevant services are
sufficiently related.
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services were services emanating from Registrant (or vice versa), or that the services
provided by each were somehow associated with the same source. In re Uncle Sam
Chem. Co., 229 USPQ 233, 235 (TTAB 1986). Thus, the issue is not whether
purchasers would confuse the services, but rather whether there is a likelihood of
confusion as to the source thereof. In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984).
With respect to the channels of trade and classes of customers, our determinations
under these factors are also based on the services identified in the cited Registration
and the services identified in Applicant’s application. See Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir.
2014) (“It was proper, however, for the Board to focus on the application and
registrations rather than on real world conditions, because ‘the question of
registrability of an applicant’s mark must be decided on the basis of the identification
of goods set forth in the application . . . .’” (quoting Octocom Sys., Inc. v. Hous. Comptr.
Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990))); Coach Servs., Inc.
v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722-23 (Fed. Cir.
2012); In re Dixie Rests., 41 USPQ2d at 1534.
Applicant contends that its services and Registrant’s services are offered through
different trade channels but offers no evidence in support of its contention. The
evidence of record submitted by the Examining Attorney establishes that it is
common for the same source to provide Applicant’s services under the same mark as
Registrant’s services, and that the respective services are provided in the same trade
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channels, used by the same classes of customers in the same fields of use, and are
similar or complementary in function11:
• University of Maryland St. Joseph Medical Center
September 17, 2018 Office Action, TSDR 8-17 (showing
UNIVERSITY OF MARYLAND ST. JOSEPH MEDICAL
CENTER mark used in connection with a variety of
healthcare services, including primary care, psychiatric
care and perinatal loss care https://www.umms.org/sjmc
/health-services-women-children/perinatal-loss
09/17/2018)
• Westchester Medical Center Good Samaritan Hospital
September 17, 2018 Office Action, TSDR 18-23 (showing
WESTCHESTER MEDICAL CENTER GOOD
SAMARITAN HOSPITAL mark used in connection with
several healthcare services, including perinatal loss care
https://www.goodsamhosp.org/perinatal-bereavement-
program 09/17/2018)
• Atlantic Health System September 17, 2018 Office Action,
TSDR 24-29 (showing ATLANTIC HEALTH SYSTEM
mark used in connection with several healthcare services,
including services in the fields of HIV and AIDS,
developmental disabilities, and perinatal loss care https://
www.atlantichealth.org/conditions-treatments/maternity/
child-bereavement-program.html 09/17/2018)
• University Hospitals MacDonald Women’s Hospital
October 9, 2018, Final Office Action, TSDR 6- 2-7 (showing
UNIVERSITY HOSPITALS MACDONALD WOMEN’S
HOSPITAL mark used in connection with several
healthcare services, including perinatal loss care
http://www.uhhospitals.org/macdonald/services/barbara-
peterson-ruhlman-women-and-newborn-center/services-
we-offer-perinatal-loss 10/09/2018)
• Mount Sinai October 9, 2018, Final Office Action, TSDR 12-
23 (showing MOUNT SINAI mark used in connection with
several healthcare services, including perinatal loss care

11 Examining Attorney’s Brief at 16 TTABVUE 8.
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https://www.mountsinai.org/care/obgyn/services/support-
programs/perinatal-bereavement 10/09/2018)
• South Shore Health October 9, 2018, Final Office Action,
TSDR 24-30 (showing SOUTH SHORE HEALTH mark
used in connection with several healthcare services,
including primary care, specialty care and clinical services,
and perinatal loss care https://www.southshorehealth.org/
services-care/pregnancy-childbirth/miscarriage-pregnancy
-loss 10/09/2018)
• Deaconess July 25, 2019, Subsequent Final Office Action,
TSDR 6-42 (showing DEACONESS mark used in
connection with several healthcare services, including
behavioral health services, laboratory, screening, and
related informational services, mental health services,
drug and alcohol addiction services, parenting services,
HIV and AIDS services, charitable healthcare services, and
perinatal loss care https://deaconess.com/Locations/The-
Womens-Hospital/Events-and-Education/Baby-Blog/
October-2017/Pregnancy-and-Infant-Loss 5/16/2019)
• UNC Medical Center and UNC July 25, 2019, Subsequent
Final Office Action, TSDR 43-4-33 (showing UNC
MEDICAL CENTER and UNC marks used in connection
with a variety of healthcare services, including those in the
fields of alcohol and substance abuse, mental health, HIV
and AIDS, laboratory, screening, and related informational
services, internal medicine and primary care, and
perinatal loss care https://www.uncmedicalcenter.org/unc
mc/patients-visitors/pastoral-care/chaplain-staff/
5/16/2019)
• University of Iowa Stead Family Children’s Hospital July
25, 2019, Subsequent Final Office Action, TSDR 70-78
(showing UNIVERSITY OF IOWA STEAD FAMILY
CHILDREN’S HOSPITAL mark used in connection with
several healthcare services, including services in the fields
of behavioral health, substance use disorders, and
perinatal loss care https:/uichildrens.org/medical-services
/grief-services 5/16/2019)
• HSHS St. Vincent Hospital July 25, 2019, Subsequent
Final Office Action, TSDR 79-86 (showing HSHS ST.
VINCENT HOSPITAL and HSHS marks used in
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connection with numerous healthcare services, including
perinatal loss care https:/www.stvincenthospital.org/Medi
cal-Services/Women-and-Infants-Center/Share-Pregnancy
-and-Infant-Loss-Support/ 5/16/2019)
• Mary Washington Healthcare July 25, 2019, Subsequent
Final Office Action, TSDR 87-106 (showing MARY
WASHINGTON HEALTHCARE mark used in connection
with several healthcare services, including behavioral
health services, family and internal medicine services, HIV
and AIDS services, and perinatal loss care https:/www.
marywashingtonhealthcare.com/Our-Services/Brain-Healt
h/Behavioral-Health.aspx 5/13/2019)
• NCH Northwest Community Healthcare July 25, 2019,
Subsequent Final Office Action, TSDR 107-119 (showing
NCH NORTHWEST COMMUNITY HEALTHCARE mark
used in connection with several healthcare services,
including behavioral health services, substance abuse and
addiction services, health clinic, screening, and related
informational services, charitable mental health care
services, and perinatal loss care https://www.nch.org/
treatment-care/behavioral-health-services 5/13/2019)
• NorthShore University Health System July 25, 2019,
Subsequent Final Office Action, TSDR 120-138 (showing
NORTHSHORE UNIVERSITY HEALTH SYSTEM mark
used in connection with clinical mental health services,
internal medicine, alcohol abuse and addiction recovery
services, charitable healthcare services including mental
health and addiction recovery services for the medically
underserved, and perinatal loss care https://www.north
shore.org/psychiatry-behavioral-sciences/ 05/13/2019)
• UnityPoint Health July 25, 2019, Subsequent Final Office
Action, TSDR 139-172 (showing UNITYPOINT HEALTH
mark used in connection with clinical mental health
assessment and screening, primary care, addiction
services, charitable healthcare services, including those
directed towards the homeless, and perinatal loss care
https://www.unitypoint.org/madison/adult-psychiatry
.aspx 5/13/2019)
• Upstate University Hospital July 25, 2019, Subsequent
Final Office Action, TSDR 173-182 (showing UPSTATE
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UNIVERSITY HOSPITAL mark used in connection with
mental health services, internal medicine, substance abuse
and addiction services, HIV and AIDS services, clinical
services, and perinatal loss care www.upstate.edu/psych
/healthcare/index.php 5/13/2019).
Applicant also argues that its services differ from Registrant’s services because
they are classified in different International Classes.12 The fact that the USPTO
classifies services in different classes does not establish that the relevant services in
a likelihood of confusion analysis are unrelated under § 2(d). See TMEP
§ 1207.01(d)(v). Rather, the classification of Applicant’s and Registrant’s services is
an administrative determination unrelated to the issue of likelihood of confusion and,
thus, does not overcome a likelihood of confusion between the marks in this case. See
In re Detroit Athletic, 128 USPQ2d at 1051; Jean Patou Inc. v. Theon Inc., 9 F.3d 971,
29 USPQ2d 1771, 1774 (Fed. Cir. 1993) (“[C]lassification is wholly irrelevant to the
issue of registrability under section 1052(d), which makes no reference to
classification.”).
Customers familiar with Registrant’s certification mark CPLC, upon
encountering Applicant’s services offered under the same mark, are likely to believe
that Applicant’s services are in some way associated with Registrant or its
certificants. In view of the related nature of Applicant’s and Registrant’s services,
which travel in the same trade channels to similar customers, these DuPont factors
weigh in favor of finding a likelihood of confusion.

12 See Applicant’s Supplemental Brief p. 10 (14 TTABVUE 11).
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Conditions Under Which and Buyers to Whom Sales are Made, i.e.,
“Impulse” vs. Careful, Sophisticated Purchasing
Next we consider the conditions under which the goods and services are likely to
be purchased, e.g., whether on impulse or after careful consideration, as well as the
degree, if any, of sophistication of the customers. Purchaser sophistication or degree
of care may tend to minimize likelihood of confusion. Conversely, impulse purchases
of inexpensive items may tend to have the opposite effect. Palm Bay Imps. Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689,
1695 (Fed. Cir. 2005)).
Applicant argues that Registrant’s customers are extremely sophisticated and
knowledgeable health care professionals with licenses to practice; have peculiar
interest in their particular field of perinatal loss counseling; and will only look for the
brand CPLC within the context of registering for an exam for a specific certification.13
Additionally, Applicant asserts that the cited mark is not directed to mental health
care nor general health care but rather to providing a certification test limited to
professional, highly sophisticated clients engaged in rendering specific services,
namely care in neonatal units at hospitals.14
There is no evidence to suggest any special degree of sophistication among
customers of the parties’ services. Despite the fact that some of Applicant’s and
Registrant’s customers may be “sophisticated,” many undoubtedly are not. Our
decision must be based on the least sophisticated customers in that relevant group.

13 Applicant’s Supplemental Appeal Brief p. 10 (14 TTABVUE 11).
14 Applicant’s Supplemental Appeal Brief p. 11 (14 TTABVUE 12).
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Stone Lion v. Lion Capital, 110 USPQ2d at 1163 (“Although the services recited in
the application also encompass sophisticated investors, Board precedent requires the
decision to be based ‘on the least sophisticated potential purchasers.’”).
Even sophisticated customers are not immune from source confusion especially in
cases such as this case involving identical marks and related services. Being
knowledgeable or sophisticated in a particular field does not necessarily endow one
with knowledge and sophistication in connection with the use of trademarks. See In
re Shell Oil, 26 USPQ2d at 1690 (indicating that “even sophisticated purchasers can
be confused by very similar marks”); In re Cynosure Inc., 90 USPQ2d 1644, 1647
(TTAB 2009) (citing Wm. K. Stamets Co. v. Metal Prods. Co., 176 USPQ 92, 93 (TTAB
1972)); see also In re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50
(Fed. Cir. 1986) (“That the relevant class of buyers may exercise care does not
necessarily impose on that class the responsibility of distinguishing between similar
trademarks for similar goods.”). The identity of the marks and the relatedness of the
services “outweigh any presumed sophisticated purchasing decision.” In re
i.am.symbolic, 116 USPQ2d at 1413 (citing HRL Assocs., Inc. v. Weiss Assocs., Inc.,
12 USPQ2d 1819, 1823 (TTAB 1989), aff’d, 902 F.2d 1546, 14 USPQ2d 1840 (Fed.
Cir. 1990)); see also Stone Lion Capital Partners, 110 USPQ2d at 1163-64.
Inasmuch as Applicant’s argument that its and Registrant’s customers are
sophisticated and exercise a higher degree of purchaser care is without any
evidentiary support, it does not factor into our decision.
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The Length of Time During and the Conditions Under which there
has been Concurrent Use Without Evidence of Actual Confusion
and Recognition of Marks
Applicant contends that “Registrant’s mark has been in use since Aug 2013, per
information provided to USPTO in [its] application filed March 6, 2013,” while use of
Applicant’s mark for health care services goes back to 2007. Additionally, it argues
that it “has over one thousand employees across four states and serves over 300,000
clients in a range of services including the services in class 044 for mental health care
and addiction.”15 Applicant’s conclusion that there “has never been any indication of
confusion by anybody that has come into contact with the marks during the time
where both have coexisted in the market place” is unsupported by any evidence.
“Uncorroborated statements of no known instances of actual confusion . . . are of little
evidentiary value,” especially in ex parte examination. In re Majestic Distilling, 65
USPQ2d at 1205. More importantly, “a showing of actual confusion is not necessary
to establish a likelihood of confusion.” In re i.am.symbolic, 123 USPQ2d at 1747
(quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 64 USPQ2d at 1380). Rather, “the
relevant test is likelihood of confusion, not actual confusion.” In re Detroit Athletic,
128 USPQ2d at 1053 (emphasis in original). Thus, Applicant’s assertions regarding
actual confusion are not persuasive.

15 While Applicant argues at p. 16 of its Supplemental Brief (14 TTABVUE 17) that
“Registrant” has over one thousand employees across four states and services over 300,000
clients in a range of services including the services in Class 44 for mental health care and
addiction, we consider this argument as relating to Applicant since it is the party offering
mental healthcare services according to its identification of services.
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Nature and Extent of Any Actual Confusion and Its Potential
Impact
Referring to the eighth DuPont factor, which considers “the length of time during
and conditions under which there has been concurrent use without evidence of actual
confusion,” DuPont, 177 USPQ at 567, Applicant asserts that “there is no evidence of
any actual confusion happening among consumers of both marks.”16 The “absence of
any reported instances of actual confusion would be meaningful only if the record
indicated appreciable and continuous use by [Applicant] of its mark for a significant
period of time in the same markets as those served by [Registrant] under its marks.”
Gillette Can. Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). However, the
record is devoid of any evidence of any use by Applicant.
Applicant concludes that “the nature and exten[t] of any actual confusion, if it ever
happens is so low as one is offered online and the other is physical delivery of health
care, and will never lead to the purchase of services from the wrong source even by
mistake.”17 However, Applicant’s attempt to compare its services to the test and
certification requirements of Registrant misses the point. As set forth above, it is
Applicant’s services compared to the perinatal loss care services of Registrant’s
authorized users that must be considered. Neither is limited to provision online.
Thus, this factor is neutral.

16 Applicant’s Supplemental Brief p. 16 (14 TTABVUE 17).
17 Applicant’s Supplemental Brief p. 16 (14 TTABVUE 17).
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The Market Interface Between Applicant and Registrant as the
Owner of a Prior Mark
Under the tenth DuPont factor (“market interface,” DuPont, 177 USPQ at 567),
Applicant asserts that there has never been any interface between Applicant and
Registrant. Because Registrant serves a select and sophisticated audience while
Applicant’s market is the general population in need of affordable low cost mental
health care, Applicant argues their markets are very distinct and the possibility that
even by error a customer may purchase the other’s services is non-existent.18
The record does not reveal any circumstances from which we may infer
Registrant’s approval or disapproval of Applicant’s mark. Registrant’s silence could
indicate a lack of objection, as Applicant asserts, or it could imply a reservation of
rights — rights Registrant does not yet have to assert, since Applicant’s current
application has been refused registration and has not yet been published for
opposition. If in fact Registrant has no objection to the issuance of a federal
registration to Applicant, “there is available to applicant . . . a type of evidence which
under du Pont and subsequent case law, is entitled to great weight in the likelihood
of confusion analysis, i.e., a valid consent agreement between applicant and
registrant.” In re Opus One Inc., 60 USPQ2d 1812, 1822 (TTAB 2001).
However, without evidence of the different markets served by Applicant and
Registrant, we are unable to conclude that Registrant’s inaction with respect to
Applicant’s use of the CPLC mark is attributable to, and evidence of, Registrant’s

18 Applicant’s Supplemental Brief p. 17, see “G. The market interface between the applicant
and the owner of a prior mark.” (14 TTABVUE 18).
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business-driven belief that there is no likelihood of confusion. Absent such evidence,
this DuPont factor is neutral. See DuPont, 177 USPQ at 567; Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000).
Conclusion
Based on the record, we find that Applicant’s mark and Registrant’s certification
mark are identical, and the services set forth in Applicant’s application are related to
the services certified by Registrant which may travel through the same trade
channels and be offered to the same classes of customers. Accordingly, we find a
likelihood of confusion between Applicant’s mark and the Registrant’s mark for the
services set forth in Applicant’s application.
Decision: The refusal to register Applicant’s mark CPLC under § 2(d) of the
Trademark Act is affirmed.