Coach/Braunsdorf Affinity, Inc.v.12 Interactive, LLC

Trademark Trial and Appeal Board

Mar 24, 2014

No. 92051006 (T.T.A.B. Mar. 24, 2014)

THIS OPINION IS A
PRECEDENT OF THE TTAB

Mailed:
March 24, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Coach/Braunsdorf Affinity, Inc.
v.
12 Interactive, LLC
_____

Cancellation No. 92051006
_____

Joshua S. Frick of Brinks Hofer Gilson & Lione for Coach/Braunsdorf Affinity, Inc.

Michael G. Kelber of Neal, Gerber & Eisenberg LLP for 12 Interactive, LLC.
_____

Before Zervas, Bergsman and Masiello, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Coach/Braunsdorf Affinity, Inc. (“petitioner”) has petitioned to cancel
Registration No. 3355480 for the mark PERKSPOT, in standard character form, for
“administration of a program for enabling participants to obtain discounts from
retailers and service providers,” in Class 35.1 The ground for cancellation is

1 Issued December 18, 2007. A combined declaration of use and incontestability under
Sections 8 and 15 of the Trademark Act was filed on September 10, 2013; and the Section 8
has been accepted.
Cancellation No. 92051006

2

likelihood of confusion. Petitioner has pleaded ownership of the three registrations
set forth below.
1. Registration No. 1786961 for the mark PERKS, in typed drawing
format, for “providing volume discount buying services to others,” in Class 35;2
2. Registration No. 3210654 for the mark Perks, in standard character
form, for “buying services, namely, providing volume discounts for consumer
products and services via a magnetically encoded card,” in Class 35;3 and
3. Registration No. 2580914 for the mark PERKSCARD, in typed
drawing form, for “buying services, namely, providing volume discounts for
consumer products and services,” in Class 35.4

2 Issued August 10, 1993; renewed. Effective November 2, 2003, Trademark Rule 2.52, 37
C.F.R. §2.52, was amended to replace the term “typed” drawing with “standard character”
drawing. A mark depicted as a typed drawing is the legal equivalent of a standard
character mark.
3 Issued February 20, 2007. This registration was cancelled on September 27, 2013 for
failure to file a declaration of use under Section 8 of the Trademark Act. However, because
respondent filed a counterclaim to cancel this registration under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. § 1052(e)(1) on the ground the mark is merely descriptive and
the parties litigated and briefed the issue of whether the mark Perks is merely descriptive,
we will decide the issue.
4 Issued June 18, 2002; renewed. Petitioner also pleaded ownership of Registration No.
3156685 for the mark PerksCard, in standard character form, for “buying services,
namely, providing volume discounts for consumer products and services,” in Class 35.
However, this registration has been cancelled under Section 8 of the Trademark Act, 15
U.S.C. § 1058, for failure to file a declaration of continued use. When a Federal registration
owned by a party has been made of record, and the status of the registration changes
between the time it was made of record and the time the case is decided, the Board will
take judicial notice of the current status of the registration, as shown by the records of the
Office. Nike Inc. v. WNBA Enterprises LLC, 85 USPQ2d 1187, 1192 n. 6 (TTAB 2007). See
also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) §
704.03(b)(1) (3d ed. 2012). Because this registration has been cancelled, we give it no
further consideration.
Cancellation No. 92051006

3

12 Interactive, LLC (“respondent”), in its answer, denied the salient
allegations in the petition for cancellation and filed a counterclaim to cancel
petitioner’s pleaded registrations on the ground that the marks PERKS, Perks and
PERKSCARD are generic. Respondent alternatively counterclaimed to cancel
Registration No. 3210654 for the mark Perks on the ground that it is merely
descriptive.
Petitioner, in its answer, denied the salient allegations in respondent’s
counterclaims for cancellation.
I. Preliminary Issue
During the trial, petitioner improperly designated testimony and exhibits as
“Confidential.” For example, the entire testimony depositions of respondent’s
President Christopher Hill and respondent’s former Vice President of Business
Development and Marketing Branden Smythe were designated as confidential.5
One example of such improper designation is Exhibit No. 58 to the Hill deposition, a
two-page document describing respondent’s services that is distributed to
prospective customers.6 It is inconceivable that marketing materials distributed to
respondent’s purchasers and potential purchasers could be confidential documents.
To that end, we note that the marketing materials do not contain a warning or
legend advising the purchasers or potential purchasers that the marketing
materials contain trade secrets and should be kept confidential.

5 Petitioner took the depositions of these individuals during its testimony period.
6 Hill Dep., p. 44.
Cancellation No. 92051006

4

Other examples of improperly designated testimony are Exhibits 2 and 3 of
the testimony deposition of Robert Dow, petitioner’s President. Exhibit 2 is a
“presentation that we use when talking to prospective clients describing the entire
Perks program.” The document is “directed towards typically employer groups,
associations, hospitals, schools that are interested in the Perks program.”7 Exhibit
3 is for a similar presentation:
This is a presentation that we use when educating
employees or clients on the different things that they’re
able to do. It also gives them some highlights of our
program. There’s actual descriptions of how people saved
money. So these are real life situations. It shows them
the different ways to save, so the in-store discounts, the
on-line and printable coupons.8
Because of the improper designation of testimony and evidence as
confidential by petitioner, it is not clear to us what evidence is intended to be
treated as truly “Confidential” or “Confidential Attorney's Eyes Only.” Board
proceedings are designed to be transparent to the public and the contents of
proceeding files publicly available. The improper designation of materials as
confidential thwarts that intention. Moreover, it is more difficult to make findings
of fact, apply the facts to the law, and write decisions that make sense when the
facts may not be discussed. The Board needs to be able to discuss the evidence of
record, unless there is an overriding need for confidentiality, so that the parties and
a reviewing court will know the basis of the Board’s decision. Therefore, in
rendering our decision, we will not be bound by petitioner’s designations and in this

7 Dow Dep., pp. 15-16.
8 Dow Dep. p. 26.
Cancellation No. 92051006

5

opinion, we will treat only testimony and evidence that is clearly of a private nature
or commercially sensitive as confidential.

II. The Record
The record includes the pleadings and, by operation of Trademark Rule
2.122(b), 37 C.F.R. § 2.122(b), files of the registrations at issue. In addition, the
parties introduced the following testimony and evidence:
A. Petitioner’s testimony and evidence.
1. The testimony deposition of Robert Dow, petitioner’s president, with
attached exhibits;
2. The testimony deposition of Christopher Hill, respondent’s Chief
Executive Officer and co-founder, with attached exhibits;
3. The testimony deposition of Branden Smythe, respondent’s former Vice
President of Business Development and Sales and co-founder, with attached
exhibits;
4. Notice of reliance on the following items from the Internet pursuant to
Safer Inc. v. OMS Investments Inc. 94 USPQ2d 1031, 1039 (TTAB 2010): 9
a. Printout from petitioner’s website; and
b. News articles and press releases appearing on the Internet;

9 Documents obtained from internet may be admitted into evidence in inter partes
proceeding before Trademark Trial and Appeal Board pursuant to notice of reliance in same
manner as printed publication in general circulation, in accordance with 37 C.F.R.
§2.122(e), provided document identifies date of publication or date accessed and printed, as
well as its source. Safer Inc. v. OMS Investments Inc., 94 USPQ2d at 1039.
Cancellation No. 92051006

6

5. Notice of reliance on the following items:
a. Copies of petitioner’s pleaded registrations prepared by the U.S.
Patent and Trademark Office showing the current status of and
title to the registrations; and
b. Copies of notices of opposition and Board orders in other
proceedings purportedly to show petitioner’s enforcement efforts;
6. Notice of reliance on respondent’s responses to petitioner’s first set of
Interrogatories Nos. 1, 2, 3, 11, 12, and 13; and
7. Notice of reliance on consent judgment between petitioner’s
predecessor-in-interest and a third party purportedly to show
petitioner’s enforcement efforts.
B. Respondent’s evidence.
1. Notice of reliance on the following items:
a. Documents from the Internet pursuant to Safer Inc. v. OMS
Investments Inc., 94 USPQ2d at 1039;10
b. Copies of third-party registrations containing the word “Perks”;

10 The evidence includes a list of the Internet search results from the Yahoo! search engine
for the word “Perks.” An Internet search engine “hit list” generally has little probative
value, because such a list does not show sufficient context in which the term is used on the
listed web pages. See In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007)
(deeming Google® search results that provided very little context of the use of ASPIRINA to
be “of little value in assessing the consumer public perception of the ASPIRINA mark”); In
re Tea and Sympathy, Inc., 88 USPQ2d 1062, 1064 n.3 (TTAB 2008) (finding truncated
Google® search results entitled to little probative weight without additional evidence of
how the searched term is used); In re Thomas, 79 USPQ2d 1021, 1026 (TTAB 2006)
(rejecting an applicant’s attempt to show weakness of a term in a mark through citation to
a large number of Google® “hits” because the “hits” lacked sufficient context). The better
practice is to attach copies of a reasonable number of representative website pages that
show how the term is actually used. Nevertheless, we have considered the hit list to the
extent that we can glean from it any evidence of value.
Cancellation No. 92051006

7

and
c. Dictionary definitions of the word “Perks.”

III. Whether Petitioner’s Marks PERKS and PERKSCARD Are Generic?
We first address respondent’s counterclaim to cancel petitioner’s pleaded
registrations.
A. Standing.
Respondent has standing based on petitioner’s assertion of its registrations
against respondent in its petition to cancel respondent’s registration. See Ohio
State University v. Ohio University, 51 USPQ2d 1289, 1293 (TTAB 1999)
(“[A]pplicant's standing to assert the counterclaim arises from applicant's position
as a defendant in the opposition and cancellation initiated by opposer”).
B. Genericness.
It is respondent’s burden to establish that PERKS, Perks and PERKSCARD
are generic by a preponderance of the evidence. Magic Wand Inc. v. RDB Inc., 940
F.2d 638, 19 USPQ2d 1551, 1554 (Fed. Cir. 1991) (“Magic Wand had the burden to
show by a preponderance of the evidence that the primary significance of the
TOUCHLESS mark to the relevant public is the automobile washing service itself,
rather than a washing service provided by a particular entity.”).11

11 We also note that one seeking to cancel a registration must rebut the presumption that
the registration is valid by a preponderance of the evidence. Dan Robbins & Associates, Inc.
v. Questor Corporation, 599 F.2d 1009, 202 USPQ 100, 105 (CCPA 1979).
Cancellation No. 92051006

8

There is a two-part test used to determine whether a designation is generic:
(1) what is the genus of goods or services at issue? and (2) does the relevant public
understand the designation primarily to refer to that genus of goods or services. H.
Marvin Ginn Corp. v. Int’l Assn. of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528,
530 (Fed. Cir. 1986). The public’s perception is the primary consideration in
determining whether a term is generic. Loglan Inst. Inc. v. Logical Language
Group Inc., 902 F.2d 1038, 22 USPQ2d 1531, 1533 (Fed. Cir. 1992). Evidence of the
public’s understanding of a term may be obtained from any competent source,
including testimony, surveys, dictionaries, trade journals, newspapers and other
publications. Loglan Inst. 22 USPQ2d at 1533; Dan Robbins & Associates, Inc. v.
Questor Corp., 599 F.2d 1009, 202 USPQ 100, 105 (CCPA 1979).
1. The genus of the services at issue.
The specific category of services is volume discount buying services. Magic
Wand Inc. v. RDB Inc., 19 USPQ2d at 1552 (“[A] proper genericness inquiry focuses
on the description of services set forth in the certificate of registration.”). See also
In re Trek 2000 Int'l Ltd., 97 USPQ2d 1106, 1112 (TTAB 2010) (“the genus of goods
at issue in this case is adequately defined by applicant's identification of goods…”).
Opposer described its volume discount buying services as follows:
We design programs for employees or members to help
them save money on things they use every day. …
We negotiate discounts on their behalf at small to
medium sized businesses. So if they are looking to get
their oil changed or go out to dinner, rent a video, buy a
car, they can go in as a Perks member and get a discount.
We also have nationally recognized brands as well that
they can take advantage of discounts. So whether they’re
Cancellation No. 92051006

9

going to the movies or they’re shopping at Home Depot,
they can get additional discounts as well. …
The PerksCard is used to identify them at the local
businesses when they shop so that the business owner
knows that they are a PerksCard member and they can
get a discount.12
See also Dow Deposition Exhibit 2, providing the following description of the
services in a presentation used to describe the PERKS program:
Discount networks providing lifestyle savings for
employees, members and other consumer groups, savings
from local merchants, featured partners and online mall
[sic].
2. The relevant public.
The second part of the genericness test is whether the relevant public
understands the designation primarily to refer to that class of goods. The relevant
public for a genericness determination is the purchasing or consuming public for the
identified services. Magic Wand Inc. v. RDB Inc., 19 USPQ2d at 1553, citing In re
Montrachet S.A., 878 F.2d 375, 11 USPQ2d 1393, 1394 (Fed. Cir. 1989); In re
Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143
(Fed. Cir. 1987); H. Marvin Ginn Corp. v. International Ass'n of Fire Chiefs, Inc.,
228 USPQ at 530; Dan Robbins & Assocs., Inc. v. Questor Corp., 202 USPQ at 105
(CCPA 1979). The relevant public comprises companies that purchase a volume
discount buying service for customers and employees as well as individuals who join
organizations offering volume discount buying services. See Dow Deposition, p. 12
(“We design programs for employees or members to help them save money on things

12 Dow Dep., pp. 12-13.
Cancellation No. 92051006

10

they use every day. We also do benefits for any group, typically the size of 500 more
[sic] employees or members.”);13 and respondent’s notice of reliance on Internet
websites (e.g., “Borders Rewards Perks Existing Users” with “Exclusive discounts at
hundreds of retailers for free”; Mommyperks.com provides access to a “wide variety
of friendly businesses that offer you Perks and discounts”; and Denver Post Perks
“designed to offer exclusive values from our advertisers just for you.”).
Contrary to petitioner’s arguments, the relevant public is not limited to
“professionals in corporate human resources, personnel or employee activities
departments”14 because petitioner’s pleaded registrations are not limited to any
particular channels of trade or classes of consumers. The question of registrability
must be determined, in proceedings before the Board, on the basis of the services as
set forth in the registrations, rather than in reference to the precise nature of the
services on or in connection with which the marks are actually used or intended to
be used. See Octocom Systems Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787-88 (Fed. Cir. 1990); In re Allen Electric and Equipment
Co., 458 F.2d 1404, 173 USPQ 689, 690 (CCPA 1972); and In re Vehicle Information
Network Inc., 32 USPQ2d 1542, 1544 (TTAB 1994). As noted above, petitioner’s
services are “providing volume discount buying services to others,” “providing

13 See also Smythe Dep., pp. 17-18 (respondent was formed “to be an outsource solution for
corporations, employers to provide discounts and perks to employees”) and pp. 20-21 (the
business brings “valuable perks and discounts to employees while reducing the burden of
administration for large corporations” and “the employee realizes that it’s a voluntary
benefit.”).
14 Petitioner’s Combined Reply Brief as Plaintiff in the Cancellation and Defendant in the
Counterclaim, p. 5.
Cancellation No. 92051006

11

volume discounts for consumer products and services via a magnetically encoded
card,” and “buying services, namely, providing volume discounts for consumer
products and services.” Thus, the relevant purchasers are companies that purchase
volume discount buying service for customers and employees as well as individuals
who join organizations offering volume discount buying services.
3. Public perception.
To determine how the relevant purchasers understand the meaning of the
terms PERKS, Perks and PERKSCARD in the registrations sought to be canceled,
we have considered dictionary definitions, the petitioner’s use of “Perks” and
“PerksCard,” respondent’s use of the word “Perks,” and third-party use of the word
“Perks,” including third-party registrations.
a. Dictionary definitions.
A “perk” is defined, inter alia, as “perquisite.”15 A “perquisite” is defined as
“an incidental payment, benefit, or privilege over and above regular income or
salary.”16
According to BusinessDictionary.com, “perks” is defined as follows:17

15 Respondent’s notice of reliance on the following dictionary definitions: RANDOM HOUSE
WEBSTER’S COLLEGE DICTIONARY, p. 986 (2001). See also THE AMERICAN HERITAGE
COLLEGE DICTIONARY, p. 1036 (4th ed. 2002), MERRIAM-WEBSTER’S DESK
DICTIONARY, p. 406 (1995), WEBSTER’S NINTH NEW COLLEGIATE DICTIONARY, p. 876
(1987).
16 Respondent’s notice of reliance on the following dictionary definitions: RANDOM HOUSE
WEBSTER’S COLLEGE DICTIONARY, p. 987. See also THE AMERICAN HERITAGE
COLLEGE DICTIONARY, p. 1038, MERRIAM-WEBSTER’S DESK DICTIONARY, p. 407,
WEBSTER’S NINTH NEW COLLEGIATE DICTIONARY, p. 877.
17 Respondent’s notice of reliance on documents from the Internet.
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Cancellation No. 92051006

14

4. Insurance & Benefits …
● Proven platform and model to support employee
morale efforts and to increase the value of association
membership
* * *
● Platform includes certain customization features
“Employees or members simply need to show their PerksCard to receive their
discount.”20
Petitioner sold its volume discount buying services to Burke Healthcare and
co-branded the PERKSCARD.21 Petitioner sent the following letter to the Burke
Healthcare employees:
Dear Employee:
We are excited to announce the Burke Perks Program: As
a Burke PerksCard member the PerksCard is an
exclusive benefit that will help you save both time and
money on many of your everyday purchases.22
Petitioner created “a marketing piece … to educate potential clients and
customers on the PerksCard program. It describes exactly who we are and what we
do.”23 The “marketing piece” displays a photograph of a PerksCard that has the
following text:
PerksCard
Your one and only card for savings …

20 Id.
21 Dow Dep., p. 44.
22 Dow Dep., Exhibit 11. This is only the first paragraph of the letter. It is representative
of letters sent to the employees of other businesses that retain petitioner for its volume
discount buying services.
23 Dow Dep., p. 56.
Cancellation No. 92051006

15

Shopping in Your
Neighborhood Now
Has More Perks!24

See also Dow Deposition Exhibit 21, a “presentation or press kit folder that was
mailed out to potential clients or customers, and it described, again, the Perks
program and all the different benefits of the Perks program.”25 The press kit stated,
“Your greatest asset is your people,” “Shopping now has more perks,” “Excellent
recruiting tool,” and “Use in conjunction with: Benefits Programs, Promotions.”
Dow Deposition Exhibit 22 is an insert “that would go into a press kit folder
describing … how much somebody could save with the Perks program, how they
could get access to the Perks program, how to get in contact with us about the Perks
program, and also described different ways we could co-brand the PerksCard
program for them and their members or employees.”26 This insert has a page with
the following information:
YOUR GREATEST ASSET IS YOUR PEOPLE
CUSTOM BUILT
AROUND YOUR ASSOCIATION

* * *

Perks Group integrates a network of Local and National
vendors offering customized discounts and promotions
along with the ability to add key benefit programs. The
PerksCard allows your organization to have all the tools
you need in one easy-to-use platform.

* * *

24 Dow Dep., Exhibit 18. See also Dow Exhibit 23.
25 Dow Dep., p. 60.
26 Dow Dep., p. 62.
Cancellation No. 92051006

16

> Retain and Attract Constituents

* * *
> Build Loyalty

> Provide Strong Value To Your People

* * *
> Use in Conjunction with:

● Benefit Programs

Dow Exhibit 30 is “an example of the Perk of the Month e-mail that goes out
to our members, clients, and their employees.”27 It features the PerksCard Network
logo on the top. Below the logo is the statement “Perks of the Month – Both
National and Local Discounts.”
Dow Deposition Exhibit 43 consists of press releases from petitioner
“announcing different things that have happened, whether it be new clients or
accomplishments of our company.”28 Dow Deposition Exhibit 43 includes the
following:
1. October 14, 2010 press release announcing that
“PerksCard Network Named New York State Cooperative
and Experiential Education Association Employer of the
Year.”
* * *
Founded in 1988, PerksCard Network is an employee
benefit savings program that human resources and
benefits departments, association and other organizations
can offer to their employees and members.

27 Dow Dep., p. 72.
28 Dow Dep., p. 115.
Cancellation No. 92051006

17

2. The Gaffney Ledger (Cherokee County, South
Carolina) (May 6, 2005) – a news story reporting that
state workers are getting petitioner’s PerksCard
discounts.
State workers get discount cards
Columbia – State workers are getting discount cards that
trim their shopping bills at local and national retailers.
* * *
Sam Wilkens, the director of the state Office of Human
Resources, says the cards are a way of helping state
workers.
3. Undated press release announcing Schwan’s Global
Supply Chain as a new client.
PerksCard Network, an Augeo Affinity Marketing
company, is pleased to announce that Schwan’s Global
Supply Chain has become a new client. Schwan’s Global
Supply Chain will now provide all of their employees in
the Florence, KY area with PerksCards, providing them
with meaningful savings on products and services they
use on a weekly or even daily basis.
“We are very excited to launch this PerksCard program
and will be working on building up the merchants that
will be part of the program,” commented Bob Dow,
President of the PerksGroup. … “We feel we have created
a program that is like a hidden paycheck.”
About PerksCard Network:
Founded in 1988, PerksCard Network is a savings and
discount program that employers, associations and other
organizations can offer to their employees and members.
c. Respondent’s use of the word “Perks.”
Though we are, at this point in this opinion, assessing the counterclaim and
whether petitioner’s marks are perceived as generic by the relevant public, we have
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Cancellation No. 92051006

19

● Vacation Savings Club
* * *
● Home and Auto Insurance
* * *
● Legal Plans
* * *
● Computer Purchasing Programs
* * *
● Identity Theft Solutions
* * *
● Voluntary Employee Benefits
Smythe Deposition Exhibit 49 is a copy of respondent’s website.
Respondent’s website displays the following information:
PerkSpot manages discount and specialty benefits
programs on behalf of leading employers
* * *
It’s all about the perks! PerkSpot’s benefits platform
allows employees to save money with a benefits package
they will actually enjoy putting to use.
* * *
Overview
PerkSpot is the leading provider of specialty benefit and
discount programs.
* * *
Job Opportunities
Senior Developer
Cancellation No. 92051006

20

PerkSpot, a leading employee perks and loyalty company
with over 1.6 million employees accessing its platform, is
looking for a talented senior application developer to join
our growing tech team.
* * *
Clients
PerkSpot provides a comprehensive, flexible solution
designed to address the needs of organizations seeking a
robust and high ROI benefit offering.
* * *
The PerkSpot platform augments the existing core
benefits offering, providing employees with greater ability
to stretch their payroll dollars while client organizations
build ‘employer of choice’ reputations that attract and
retain top talent.
d. Third-party use of the word “Perks.”30
Having considered relevant dictionary definitions, and both petitioner’s and
respondent’s uses of their respective “Perks-” formative marks as evidence bearing
on likely public perception of petitioner’s marks, we now consider evidence of third-
party uses. The following references are a sampling of the evidence of third-party
use of the term “Perks” found on the Internet and introduced by respondent through
a notice of reliance.

30 Respondent introduced these documents through its notice of reliance on Internet
evidence. These documents are admissible only to show what has been printed, not the
truth of what has been printed. Safer Inc. v. OMS Investments, Inc. 94 USPQ2d at 1040.
We also note the mere introduction of a webpage does not tell us how many people have
viewed that webpage. “A party may increase the weight we will give such website evidence
by submitting testimony and proof of the extent to which a particular website has been
viewed.” Id. at 1039. In summary, the Internet documents are probative only for what
they show on their face.
Cancellation No. 92051006

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1. Pittsburgh Tribune Review (September 15, 2010) (pittsburghlive.com)
Drug company perks may sway doctors
Doctors rationalize that they can accept perks such as free
dinners and trips from pharmaceutical companies as a
reward for their years of hard work, according to a study
published Tuesday by Carnegie Mellon University
researchers.
2. About.com: Job Searching (jobsearch.about.com)
Benefits and Perks
Evaluating Employee Benefits and Perks
For many of us, the most important factor in considering
a job offer is salary. For others, job security is of primary
importance. Also high on the list of considerations are
benefits and perks. When considering perks, the desire to
work in a comfortable casual environment where
employees can set their own work schedule, have an
option to telecommute, and where there is a casual dress
code, are all important.
Typical Employee Benefit Packages
* * *
How to Evaluate Perks
* * *
As you can see there is no standard list of perks that you
can measure your job offer against. What you’ll need to
do is evaluate each offer on its merits – the salary, the
benefits and the perks, and determine how those perks
will benefit you.
3. Answers.com
Perk
Definition: benefit
U.S. Government Guide:
Cancellation No. 92051006

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Perks (1992)
Elected officials enjoy many benefits of office, known as
perquisites, or “perks.” Members of Congress send mail
free of airports [sic], and are reimbursed for trips they
make to their home state and abroad. At the Capitol they
have special subways, gymnasiums, shops that offer
discount-price supplies, and free plants from the
Botanical Gardens to decorate their offices, assigned cars
and drivers.
Critics of perks argue that the people’s representatives
should not receive special privileges at the taxpayers’
expense. …
4. Mommy Perks (mommyperks.com)
This website is a social network for mothers. It identifies a “variety of
friendly businesses that offer you Perks and discounts,” as well as newsletters and
business reviews.
5. DenverPostPerks.com
Welcome to Denver Post Perks
An exclusive online benefit for Denver Post subscribers
Denver Post Perks offers and specials are only available
to registered DenverPostPerks.com users who have an
active Denver Post subscription. Now we have added
even more value and money saving perks to your
subscription anytime you need it even from your handheld
device. Denver Post Perks is designed to offer exclusive
values from our advertisers just for you.
6. Dunkin’ Donuts (dunkindonuts.com)
DDPERKS
LIFE RUNS BETTER WITH PERKS.
IT ALL STARTS WITH A FREE BEVERAGE …
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Enroll in Dunkin’ Perks® today and get a free medium
beverage, plus another free medium beverage for your
birthday.
You’ll also enjoy:
● Exclusive in-store and online offers
● The inside scoop on new store openings, new
products and more

● Special perks, just for you
7. OfficeMax (officemaxperks.com)
MaxPerks® Rewards for Business
With MaxPerks Rewards for Business, you’ll get rewarded
for just buying the supplies you need for your business or
home office.
As a member, you’ll earn a $25 reward in your MaxPerks
account for every $500 you spend on qualified purchases.
Plus there is no limit on how much you can earn
throughout the calendar year.
Earn More Reward with MaxPerks Recycling
8. DiningPerks.com
What are Dining Perks®?
Dining Perks® are certificates that spend like cash in
participating restaurants in and around Metro Atlanta.
We have certificates with a value of $5 a piece, and $25
certificates that cost you only $12.50 each. Use up to $250
worth per table.
9. The Washington Post (October 20, 2009)
At rescued banks, perks keep rolling
Even as the nation’s biggest financial firms were
struggling and the federal government was spending
hundreds of billions of dollars to save many of them, the
companies as a group were boosting the perks and
benefits they pay their chief executives.
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The firms, accounting for more than $350 billion in
federal bailout funds, increased these perks and benefits 4
percent on average last year, according to an analysis of
corporate disclosures filed in recent months.
* * *
In the meantime, Kenneth R. Feinberg, the Obama
administration official assigned to set pay for top
executives at seven of the companies receiving the most
help, plans to curtail perks such as country club fees
when he rules on compensation later this month,
according to people familiar with the matter. Perks worth
more than $25,000 are getting particular scrutiny from
Feinberg.
10. Army Military News (army.mil/-news) (April 9, 2010)
Perks card program at Fort Bragg offers customer
discounts.
Coupon clippers have long extolled the advantages of
saving money at the cash register. Well, with one swipe
of the Family and Morale, Welfare and Recreation Perks
card, discounts abound for soldiers, families and
authorized users.
* * *
The card was the brainchild of Lori Bruschi, FMWR
marketing director, said Thomas. It is designed for
customers to get VIP perks and privileges.
* * *
The Perks card program is new, but depending on its
success, could be expanded.
e. Third-party registrations with the word “Perk.”
Below is a sampling of third-party registrations on the Principal Register,
without a claim of acquired distinctiveness, containing the word “Perk” introduced
Cancellation No. 92051006

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by respondent through a notice of reliance, which we present in table form for ease
of reference.31
Mark Registration No. Services

PERKS 2453390

Promoting the goods and services of
others by providing an award program
for frequent users of websites

PERQZ 3291476 Providing a purchase incentive reward
program, namely, a program that
provides discounts and related benefits
to reward repeat customers for
purchasing products and services

PerkShare 4029941 Administration of a program for
enabling participants to obtain
discounts on products and services

PERKS
RESOURCES
2930976

Employee discount and incentive
programs, namely, online retail services
featuring discounts for employees

FASTperks 3077460

Administration of a discount program
for enabling participants to obtain
discounts on goods and services through
the use of a membership program

PERKCHASE 3590776 An interactive web site for users to
obtain coupons and discounts on goods
and services provided by sponsors

PUMP PERKS and
design
3027901 Administration of a discount program
for enabling participants to obtain
discounts on gasoline.

PURPLE PERKS
“Perks” disclaimed
3044733

Administration of a discount program
enabling members to obtain discounts
on goods and services through the use of
a discount membership card

31 Where these registrations include disclaimers, we have noted them.
Cancellation No. 92051006

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Mark Registration No. Services

FIT:PERKS 2785019 Administration of a discount program
for enabling participants to obtain
discounts on goods and services through
health club membership

GEVITY PERKS
“Perks” disclaimed
3525190 Providing and administering employee
discount programs for retail goods and
services for others

PERKS FOR EYES 3544943 Administration of a discount program
for enabling participants to obtain
discounts on goods and services through
the use of a discount membership card

partnerPERKS 3621652 Administration of a discount program
for enabling participants to obtain
discounts on goods and services through
the use of a discount membership card

PLUS PERKS 3381375 Administration of a discount program
entitling participants to obtain
discounts on goods and services of
others through use of a member
identification card

CENTRAL PARK
PERKS
“Central Park”
disclaimed
3245852 Administration of a discount program
for enabling participants to obtain
discounts on goods and services through
the use of a discount membership card

CARPERKS 3236578 Administration of a discount program
for corporations for use as a value-
added employee benefit, namely, a
discount program enabling employee
participants to obtain discount group
offerings and specialized private pricing
on automobiles.

However, we note that, absent evidence of actual use, third-party
registrations have little probative value because they are not evidence that the
Cancellation No. 92051006

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marks are in use on a commercial scale or that the public has become familiar with
them. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462,
463 (CCPA 1973) (the purchasing public is not aware of registrations reposing in
the U.S. Patent and Trademark Office); Productos Lacteos Tocumbo S.A. de C.V. v.
Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011). Nevertheless,
these registrations have some value because they may be used in the manner of a
dictionary to show that a mark or a portion of a mark is descriptive or suggestive of
goods and services. See Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ
693, 694-695 (CCPA 1976) (“[A]lthough third-party registrations are entitled to
little weight on the question of likelihood of confusion where there is no evidence of
actual use, they may be given some weight to show the meaning of a mark in the
same way that dictionaries are used.”); In re J. M. Originals Inc., 6 USPQ2d 1393,
1394 (TTAB 1988); In re Imperial Jade Mining, Inc., 193 USPQ 725, 726 (TTAB
1977).
4. Discussion – Respondent’s Counterclaim v. Petitioner’s Marks.
The dictionary evidence shows that a “perk” is an employee benefit in
addition to salary. The evidence of third-party use shows that the term “perks” has
been extended to describe not only employee benefits, but also benefits provided to a
person in order to induce him into a commercial relationship (for example, as a
customer or as a member of an organization) or provided as a reward in order to
build loyalty among existing customers or members. Although a volume discount
buying program may be offered to an employee or customer as a “perk” (just as a
Cancellation No. 92051006

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company car, country club membership, or first-class seating during air travel may
be offered as a “perk”), neither the term PERKS nor the term PERKSCARD is the
generic name for such services. A volume discount buying program is a commercial
arrangement whereby a person or entity, acting as a middleman, procures for its
customers reduced prices for goods and services of others. Such a service is
different in its nature from a perquisite offered to an employee or customer, and it
may be offered to a customer otherwise than as compensation for employment or as
an inducement for entering into some other commercial relationship. A volume
discount buying service is not, by its nature, a “perk” and neither PERKS nor
PERKSCARD is the generic name of such a service. In other words, while a volume
buying discount buying service may be a “perk,” not all volume discount buying
services are “perks.” Thus, we find that respondent’s evidence fails to show that the
relevant public understands the designations PERKS and PERKSCARD to refer
primarily to volume discount buying services. In view of the foregoing, the
counterclaim to cancel petitioner’s two remaining pleaded registrations on the
ground that they are generic is dismissed.
IV. Whether the term “Perks” is merely descriptive?
We now consider respondent’s alternative counterclaim to cancel Registration
No. 3210654 for the mark Perks, in standard character form, for “buying services,
namely, providing volume discounts for consumer products and services via a
magnetically encoded card,” on the ground that it is merely descriptive. As
indicated above in footnote No. 3, Registration No. 3210654 was cancelled for failure
Cancellation No. 92051006

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to file a declaration of use in accordance with Section 8 of the Trademark Act, 15
U.S.C. § 1058. Trademark Rule 2.134(b), 37 CFR § 2.134(b), provides that in this
situation “an order may be issued allowing respondent until a set time … in which
to show cause why such cancellation … should not be deemed to be the equivalent of
a cancellation by request of respondent without the consent of the adverse party
and should not result in entry of judgment against respondent.” Because the
parties have litigated and briefed the issue of whether the mark is merely
descriptive, we find that there is sufficient cause to decide the issue on the merits.
In analyzing whether Perks is merely descriptive, we note that petitioner is
also the owner of Registration No. 1786961 for the mark PERKS, in typed drawing
format, for “providing volume discount buying services to others.” However,
Registration No. 1786961 was more than five years old when petitioner filed its
petition for cancellation and, therefore, it may not be cancelled by respondent on the
ground that it is merely descriptive. Section 14 of the Trademark Act, 15 U.S.C. §
1064. Moreover, the registration is incontestable under the provisions of 15 U.S.C.
§ 1065 and, consequently, it is “conclusive evidence of the validity of the registered
mark” pursuant to Trademark Act § 33(b), 15 U.S.C. §1115(b).
As explained in footnote 2 above, a mark depicted as a typed drawing is the
legal equivalent of a standard character mark. Therefore, the marks Perks and
PERKS are legal equivalents.
“Providing volume discount buying services to others,” the services of
petitioner’s incontestable registration, is an identification broad enough to
Cancellation No. 92051006

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encompass the “buying services, namely, providing volume discounts for consumer
products and services via a magnetically encoded card,” identified in the more
recently issued registration. Therefore, the services are substantially equivalent.
Petitioner argues that the counterclaim to cancel its Perks registration is a
collateral attack on the incontestable rights of its incontestable PERKS registration,
citing Park ‘N Fly v. Dollar Park and Fly, Inc., 469 US 189, 224 USPQ 3127
(1985).32 Park ‘N Fly is not applicable because we are not entertaining the
counterclaim to cancel the incontestable PERKS registration on the ground that it
is merely descriptive, nor can we, because that registration, being more than five
years old when the petition for cancellation was filed, is not susceptible to
cancellation on this ground. 15 U.S.C. § 1064.
Nevertheless, it appears illogical to allow respondent to cancel Perks for
“buying services, namely, providing volume discounts for consumer products and
services via a magnetically encoded card” on the ground that it is merely descriptive
when there is conclusive evidence in the record showing that the legally identical
mark PERKS is a “valid” and incontestable mark for substantially equivalent
services.33 See In re American Sail Training Association, 230 USPQ 879, 880
(TTAB 1986). Cf. Morehouse Manufacturing Corp. v. J. Strickland and Co., 407
F.2d 881, 160 USPQ 715, 717 (CCPA 1969) (“the opposer cannot be damaged,
within the meaning of section 13 of the statute, by the issuance to the applicant of a

32 Petitioner’s rebuttal brief, p. 19.
33 See Petitioner’s Reg. No. 1786961 interpreted according to the provisions of 15 U.S.C.
§ 1115(b).
Cancellation No. 92051006

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second registration where applicant already has an existing registration of the same
mark for the same goods”).
However, because the prior registration defense set forth in Morehouse is an
equitable defense, see O–M Bread, Inc. v. U.S. Olympic Committee, 65 F.3d 933, 36
USPQ2d 1041, 1045 (Fed. Cir. 1995) (“The prior registration or Morehouse defense
is an equitable defense …”), it is unavailable against a claim of mere
descriptiveness. See TBC Corp. v. Grand Prix Ltd., 12 USPQ2d 1311, 1313 (TTAB
1989). The reason for this policy was explained by the Board in Southwire Co. v.
Kaiser Aluminum & Chemical Corp., 196 USPQ 566, 573 (TTAB 1977) as follows:
The theory underlying this principle * * * is that it is
within the public interest to preclude registration of
merely descriptive designations, to cancel registrations
which are void ab initio because of this disability of the
registered mark as of the time the application was filed,
and to cancel those registrations where the registered
marks have, since the time of registration, become terms
of art or common description; and that this interest or
concern cannot be waived by the inaction of any single
person or concern, no matter how long the delay persists.
Because the prior registration defense is related to the equitable defenses of laches
or acquiescence, it is unavailable in an inter partes proceeding predicated on mere
descriptiveness of a mark. Cf. Sunbeam Corp. v. Boukidis, 172 USPQ 156, 157 n.3
(TTAB 1971) (“While applicant has pleaded that opposer acquiesced in the use of
applicant’s mark because it did not take any action against this prior registration, it
is well-established that such a defense is unavailable in an opposition based on
descriptiveness of a mark.”).
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If we find that petitioner’s Perks registration is descriptive and order it
canceled, that cancellation does not affect in any way petitioner’s rights under its
incontestable registration. There is nothing in Park ‘N’ Fly that entitles petitioner
to have the later registration treated as if it were older than five years, when it is
not. Nothing entitles petitioner to the benefits of this new, different registration,
which has a different filing date (and accordingly grants petitioner a different date
of constructive use) and has a different term and could, therefore, outlive the old
registration. We therefore proceed to determine whether the mark Perks is
descriptive.
A term is merely descriptive if it “immediately conveys … knowledge of the
ingredients, qualities, or characteristics of the goods … with which it is used, or
whether ‘imagination, thought, or perception is required to reach a conclusion on
the nature of the goods.’” In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed.
Cir. 1987). Whether a particular term is merely descriptive is determined in
relation to the goods or services for which registration is sought and the context in
which the term is used, not in the abstract or on the basis of guesswork. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle,
66 USPQ2d 1222, 1224 (TTAB 2002). This requires consideration of the context in
which the mark is used or intended to be used in connection with those goods or
services, and the possible significance that the mark would have to the average
purchaser of the goods or services in the marketplace. See In re Chamber of
Commerce, 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Bayer,
Cancellation No. 92051006

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488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007); In re Abcor Dev. Corp., 200
USPQ at 218; In re Venture Lending Assocs., 226 USPQ 285, 286 (TTAB 1985). The
question is not whether someone presented only with the mark could guess the
activities listed in the recitation of services. Rather, the question is whether
someone who knows what the activities are will understand the mark to convey
information about them. DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd.,
695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re Tower Tech, Inc., 64
USPQ2d 1314, 1316-1317 (TTAB 2002).
As indicated above, the dictionary evidence shows that a “perk” is an
employee benefit in addition to salary. This definition has been adopted by
businesses that have registered the term “perks” as part of their marks. Also, the
third-party registrations show that the term “perks” is recognized as a benefit when
used in connection with the administration of a discount program for obtaining
discounts for the purchase of goods and services. In re J. M. Originals Inc., 6
USPQ2d at 1394 (third-party registrations listed are relevant to show how language
is used). This finding of fact is corroborated by the use of the term “perks” by
petitioner, respondent and third parties previously discussed above and noted below
for emphasis.
Petitioner advertises its services as shown in the following examples:
1. Petitioner’s specimen supporting its use of PERKS (Registration No.
3210654) states that “Shopping In Your Neighborhood Now Has More Perks!”
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2. Petitioner’s form letter sent to the employees of business partners
describes its services as “an exclusive benefit.”
Dear Employee:
We are excited to announce the Burke Perks Program: As
a Burke PerksCard member the PerksCard is an
exclusive benefit that will help you save both time and
money on many of your everyday purchases.
3. In its press releases, petitioner identifies itself as a provider of
employee benefits.
Founded in 1988, PerksCard Network is an employee
benefit savings program that human resources and
benefits departments, associations and other
organizations can offer to their employees and members.
Respondent also advertises its PerkSpot “administration of a program for
enabling participants to obtain discounts from retailers and service providers” as
featuring a “perk.” As noted above, respondent’s specimen of use touts the fact that
“We are your ‘Perks Department,’” “Perks Management,” and “Its [sic] all about the
perks!”
The third-party uses of the word “Perks,” including use as part of a
trademark in connection with loyalty programs, show that consumers perceive
perks as encompassing a wide variety of benefits, including discounts. For example,
1. OfficeMax (officemaxperks.com)
MaxPerks® Rewards for Business
With MaxPerks Rewards for Business, you’ll get rewarded
for just buying the supplies you need for your business or
home office.

Cancellation No. 92051006

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2. DiningPerks.com
What are Dining Perks®?
Dining Perks® are certificates that spend like cash in
participating restaurants in and around Metro Atlanta.
We have certificates with a value of $5 a piece, and $25
certificates that cost you only $12.50 each. Use up to
$250 worth per table.
3. DenverPostPerks.com
Welcome to Denver Post Perks
An exclusive online benefit for Denver Post subscribers
Denver Post Perks offers and specials are only available
to registered DenverPostPerks.com users who have an
active Denver Post subscription. Now we have added
even more value and money saving perks to your
subscription anytime you need it even from your handheld
device. Denver Post Perks is designed to offer exclusive
values from our advertisers just for you.
The evidence shows that petitioner administers employee benefit programs
as a component of its volume discount buying service. Petitioner has described its
service as having the purpose of “enabling industry leaders to attract and retain
their employees, members and customers” and has offered to perform the
administration of the employee benefit program as part of its service: “Our ability
to… handle all administration is unsurpassed.”34 As part of providing its service,
petitioner has had direct contact with its customers’ employees, to whom it
described its service as “an exclusive benefit that will help you save both time and
money….”35 Petitioner’s PERKS program press kit urged potential customers to

34 PERKSCARD program marketing materials, Dow Dep., Exhibit 2.
35 Letter to Burke Healthcare employees, Dow Dep., Exhibit 11.
Cancellation No. 92051006

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“Use [the PERKS program] in conjunction with: Benefits Programs….”36 Petitioner
has described its service as “an employee benefit savings program”37 and “a savings
and discount program that employers, associations and other organizations can
offer to their employees and members.”38 Based on the foregoing, we find that the
term “Perks” directly conveys information concerning a characteristic of the service:
that is, petitioner’s discount volume buying services are administered as “perks”
programs, are marketed to employers as “perks” to be passed on to employees, and
are promoted to employees as “perks” of employment. Accordingly, the mark Perks
for “buying services, namely, providing volume discounts for consumer products and
services via a magnetically encoded card” is merely descriptive, and judgment is
entered in respondent’s favor on this counterclaim.39
V. Likelihood of Confusion
Having granted respondent’s counterclaim as to one of petitioner’s three
pleaded registrations, we now consider petitioner’s claim of likelihood of confusion
as based on the other two registrations.
A. Standing.
Because petitioner has properly made its pleaded registrations of record,
petitioner has established its standing, Cunningham v. Laser Golf Corp., 222 F.3d

36 Dow Dep., Exhibit 21.
37 Press release of October 14, 2010, Dow Dep., Exhibit 43.
38 Undated press release announcing Schwan’s Global Supply Chain as new client, Dow
Dep., Exhibit 43.
39 Petitioner did not plead or argue in the alternative that its Perks mark has acquired
distinctiveness and, therefore, we have not considered whether it is registrable under the
provisions of Section 2(f) of the Trademark Act.
Cancellation No. 92051006

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943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
B. Priority.
In a cancellation proceeding such as this one where both parties own
registrations, priority is in issue. Brewski Beer Co. v. Brewski Brothers Inc., 47
USPQ2d 1281, 1283-84 (TTAB 1998).
Petitioner’s Registration No. 1786961 for the mark PERKS for “providing
volume discount buying services to others” was registered on August 10, 1993 based
on an application filed on November 16, 1990. Petitioner’s Registration No.
2580914 for the mark PERKSCARD “buying services, namely, providing volume
discounts for consumer products and services” was registered on June 18, 2002
based on an application filed on May 17, 2000. Robert Dow, petitioner’s president,
testified that petitioner began using the PERKS mark in 1988 and the
PERKSCARD mark in 1997.40
Respondent’s Registration No. 3355480 for the mark PERKSPOT was
registered on December 19, 2007, based on an application filed on March 28, 2007.
Christopher Hill, respondent’s Chief Executive Officer and co-founder, testified that
respondent first used the PERKSPOT mark in August 2006.41

40 Dow Dep., pp. 28-29.
41 Hill Dep., pp. 30-31. See also Smythe Dep., p. 11, identifying June 2006 as the date of
first use.
Cancellation No. 92051006

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In view of the foregoing, we find that petitioner has established priority of
use for the marks PERKS and PERKSCARD for the services set forth in the
registrations.
C. du Pont Analysis.
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 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 services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 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”). These factors, and any
other relevant du Pont factors in the proceeding now before us, will be considered in
this decision, involving comparison of petitioner’s incontestable registration for
PERKS, its registration for PERKSCARD, and respondent’s registration for
PERKSPOT.
1. The similarity or dissimilarity and nature of the services, the
established likely-to-continue channels of trade and classes of
consumers.

The recitation of services in respondent’s registration for PERKSPOT is
“administration of a program for enabling participants to obtain discounts from
Cancellation No. 92051006

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retailers and service providers.” The recitation of services in petitioner’s two
registrations cover “providing volume discount buying services,” and “buying
services, namely, providing volume discounts for consumer products and services.”
In comparing these recitations of services, we note that respondent’s specimen of
use noted above provides that respondent “partners with top employers, educational
institutions, and professional groups to provide member discount programs through
a customized, outsourced solution.” Petitioner describes its services as “a lifestyle
product and service discount and savings program.”42 In view of the foregoing, we
find that the parties’ services are legally identical.
Because the services described in respondent’s registration and petitioner’s
registrations are legally identical, we must presume that the channels of trade and
classes of purchasers are the same. See In re Yawata Iron & Steel Co., 403 F.2d
752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the
channels of trade and classes of purchasers are considered to be the same);
American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994). 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).

42 Dow Dep., Exhibit 2.
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The evidence of record supports the noted presumption because it shows that
the channels of trade and classes of consumers actually are the same. Petitioner
offers “an employee benefit savings program that human resources and benefits
departments, association and other organizations can offer to their employees and
members.”43 Petitioner’s typical client is “any employer group of 500 or more
employees. That ranges from hospitals, schools, universities, associations,
charitable foundations, major corporations.”44 Petitioner targets “human resource
professionals, personnel, employee activities.”45
Respondent is a competitor of petitioner.46 Respondent’s typical client is a
governmental agency, school district, hospital, or company with 5,000 plus
employees.47 Respondent’s sales staff typically target human resource, procurement
or employee services personnel.48
In view of the foregoing, we find that the services are legally identical, and
the channels of trade and classes of consumers are the same.
2. The strength of petitioner’s marks, including the number and nature of
similar marks in use in connection with similar services, and the
similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.

43 Dow Dep., Exhibit 43.
44 Dow Dep., p. 13.
45 Dow Dep., p. 81.
46 Dow Dep., p. 82.
47 Smythe Dep., pp. 24-25.
48 Smythe Dep., pp. 26-27.
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The sixth du Pont factor requires us to consider evidence pertaining to the
number and nature of similar marks in use on similar goods. “The purpose of a
defendant introducing third-party uses is to show that customers have become so
conditioned by a plethora of such similar marks that customers ‘have been educated
to distinguish between different such marks on the bases of minute distinctions.’”
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005), quoting Veuve Clicquot
Ponsardin v. Palm Bay Imports, Inc., Opp'n No. 115,438, 2000 WL 21953664 (TTAB
Aug. 4, 2003).
On this record, we cannot conclude that there has been such an impact in the
marketplace as a result of the widespread use of the terms PERKS and PERKS
coupled with CARD, in connection with the parties’ respective services, that minor
differences between the third party Perks- formative marks will necessarily enable
consumers to distinguish them. Third-party registrations, as discussed above, are
not evidence that the registered marks actually have been used in commerce. The
third-party websites containing the term “Perks” involving volume discount buying
services or similar services are not accompanied by any other evidence indicating
the length of time said marks have been in use, the degree of exposure, or the
popularity of such marks vis-a-vis the relevant purchasing public. Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at
1693-94. Accordingly, this factor remains neutral in our analysis.
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In determining the strength of a mark, we consider both its inherent strength
based on the nature of the mark itself and its commercial strength, based on the
marketplace recognition value of the mark. See In re Chippendales USA, Inc., 622
F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured
both by its conceptual strength (distinctiveness) and its marketplace strength
(secondary meaning).”) Top Tobacco, L.P. v. North Atlantic Operating Co., Inc., 101
USPQ2d 1163, 1171-72 (TTAB 2011) (same); Tea Board of India v. Republic of Tea
Inc., 80 USPQ2d 1881, 1899 (TTAB 2006); McCarthy on Trademarks and Unfair
Competition § 11:83 (4th ed. 2013) (“The first enquiry focuses on the inherent
potential of the term at the time of its first use. The second evaluates the actual
customer recognition value of the mark at the time registration is sought or at the
time the mark is asserted in litigation to prevent another's use.”). Market strength
is the extent to which the relevant public recognizes a mark as denoting a single
source. Tea Board of India v. Republic of Tea Inc., 80 USPQ2d at 1899. In other
words, it is similar to acquired distinctiveness.
The record establishes that the term “perks” has little conceptual strength.
In the unusual circumstances presented in this case, despite petitioner’s
incontestable registration for the mark PERKS for “providing volume discount
buying services to others,” we have found that the separately registered mark
Perks used in connection with “buying services, namely, providing volume
discounts for consumer products and services via a magnetically encoded card” is
merely descriptive, and must be cancelled. Therefore, for the purpose of
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determining the strength of PERKS in an inter partes proceeding involving Section
2(d), we find on this record that it is descriptive. By so finding, we are not holding,
nor could we, that this registration is invalid because the mark PERKS is merely
descriptive. Under Park ‘N Fly v. Dollar Park and Fly, Inc., 224 USPQ at 330, such
a ruling is off-limits.49 While an incontestable registration may not be challenged as
invalid for mere descriptiveness, for purposes of determining the inherent strength
of a mark as a factor relevant to likelihood of confusion, incontestability does not
preclude us from finding that, in terms of conceptual strength, PERKS is
descriptive. See, e.g., Lone Star Steakhouse & Saloon, Inc. v. Alpha of Va., Inc., 43
F.3d 922, 935 (4th Cir.1995). Likewise, we find that the mark PERKSCARD for
“buying services, namely, providing volume discounts for consumer products and
services” is, for purposes of determining the inherent strength of a mark as a factor
relevant to likelihood of confusion, also descriptive because it describes a card used
to obtain the perks or benefits. See Dow Dep. Exhibit 18 which provides the
following:
PerksCard
Your one and only card for savings …

This characterization of petitioner’s marks is corroborated by the numerous
third-party registrations for marks that include the designation PERKS that the
Office has allowed to register, one over another, indicating that the term “Perks” is

49 See also In re Chippendales USA Inc., 622 F.2d 1346, 96 USPQ2d 1681, 1685 (Fed. Cir.
2010) (“once a mark has achieved incontestable status under 15 U.S.C. § 1065, it is entitled
to the benefits of section 1115(b), which precludes all but a limited number of challenges to
a mark’s validity or enforceability”); Sunrise Jewelry Mfg. Corp. v. Fred S.A., 175 F.3d 1322,
50 USPQ2d 1532, 1534 (Fed. Cir. 1999) (“an incontestable mark cannot be challenged, for
example, for mere descriptiveness”).
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not particularly distinctive for the administration of programs enabling participants
to obtain discounts. See In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ
721, 722 (CCPA 1968).
In Plus Products v. Natural Organics, Inc., 204 USPQ 773 (TTAB 1979),
which involved an opposition to the registration of NATURE'S PLUS for vitamins
by the owner of the mark PLUS, also for vitamins, the applicant made of record
eight third-party registrations that issued prior to opposer's registration, and seven
registrations that issued after, all for marks containing the word PLUS and all for
goods that are the same or closely related to vitamins. The Board drew the
following inferences from the co-existence of these registrations:
1. Opposer was satisfied to register PLUS side-by-side with eight existing
registrations;
2. The Patent and Trademark Office has historically registered PLUS
marks for vitamins to different parties so long as there has been some difference,
not necessarily created by a distinctive word, between the marks as a whole, e.g.,
VITAMINS PLUS and IRON PLUS; and
3. A number of different trademark owners have believed, over a long
interval of time, that various PLUS marks can be used and registered side-by-side
without causing confusion provided there are at least minimal differences between
the marks.
Id. at 779. See also Jerrold Electronics Corp. v. The Magnavox Company, 199 USPQ
751, 758 (TTAB 1978) (third-party registrations “reflect a belief, at least by the
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registrants, who would be most concerned about avoiding confusion and mistake,
that various ‘STAR’ marks can coexist provided that there is a difference.”); In re
Sien Equipment Co., 189 USPQ 586, 588 (TTAB 1975) (the suggestive meaning of
the word “Brute” explains the numerous third-party registrations incorporating
that word with other wording or material no matter how little additional
significance they may add to the word “Brute” per se).
Because of the descriptive nature of the term “Perks,” the third-party
registrations, and the evidence of third-party use of the term “Perks” referring to
various types of benefits, the same inferences apply in this case as in Plus Products.
It is clear from the third-party registrations that any addition to the word “Perks”
has been sufficient for the Patent and Trademark Office to view these marks as
being sufficiently different from petitioner’s registered marks, and from each other,
such as not to cause confusion. We presume that petitioner did not object to the
registration of these third-party marks, as the “Perk”-formative registrations listed
in the table above all issued after the registration of petitioner’s PERKS
registration without challenge by petitioner. In fact, when the application for
Registration No. 3291476 for the mark PERQZ was cited as a bar to petitioner’s
application for Registration No. 3210654 for the mark Perks, petitioner argued
“PERQS is sufficiently distinctive from the [petitioner’s] request for registration of
Perks,”50 and “the letter Q sufficiently distinguishes Perks from Perkqs [sic].”51

50 Registration No. 3210654, prosecution history file, petitioner’s June 21, 2006 response to
Office action. Because Registration No. 3210654 is the subject of respondent’s counterclaim
for cancellation, the prosecution history is of record pursuant to Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b).
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Unlike a situation involving an arbitrary or fanciful mark, the addition of
other matter to a descriptive word like “Perks” may be enough to distinguish it from
another mark. In re Hunke & Jocheim, 185 USPQ 188, 189 (TTAB 1975). As
explained in Sure-Fit Products Company v. Saltzson Drapery Company, 254 F.2d
158, 117 USPQ 295, 297 (CCPA 1958):
It seems both logical and obvious to us that where a party
chooses a trademark which is inherently weak, he will not
enjoy the wide latitude of protection afforded the owners
of strong trademarks. 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. The essence of all we have said is that in the
former case there is not the possibility of confusion that
exists in the latter case.
Under these circumstances, marks comprising the term “Perks” in connection with
discount buying programs should be accorded a narrow scope of protection because
competitors in this field should be free to use the term “Perks” when describing
their own discount buying services offered to employees and customers as a benefit,
even if petitioner was the first to use or register that term. See In re Styleclick.com
Inc., 58 USPQ2d 1523, 1527 (TTAB 2001).
Keeping this in mind, we find that the mark PERKSPOT is sufficiently
different from the marks PERKS and PERKSCARD to avoid a likelihood of
confusion. Although the marks all feature the term “Perk,” respondent’s mark
PERKSPOT has a separate and distinct meaning and commercial impression; that
is, the place for perks. Since, as discussed above, the term “perks” is descriptive,

51 Registration No. 3210654, prosecution history file, petitioner’s September 8, 2006
response to Office action.
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consumers are unlikely to place much source identifying function in the term “perk”
or “perks” per se; rather, consumers will consider the mark PERKSPOT in its
entirety and consider the mark as signifying the place for perks.
We recognize that respondent’s mark PERKSPOT differs from petitioner’s
mark PERKS only by the inclusion of the word “Spot” and that it differs from
petitioner’s mark PERKSCARD by substitution of the word “Spot” for “Card,” and
that such differences, in other circumstances, might be insufficient to distinguish
two marks for identical goods or services. However, given the fact that third-party
registrations for administration of discount programs enabling participants to
obtain discounts have issued for marks which differ from petitioner’s marks by the
inclusion of terms such as “Share,”52 “Chase,”53 and “Resources”54 and without
objection by the registrant, it would appear that the registrant itself considers
slight differences sufficient to distinguish the marks. As we have found, the mark
PERKS is, as a conceptual matter, descriptive, and therefore the scope of protection
to which that registration is entitled is quite limited. The addition of matter has
been found sufficient to distinguish the marks under circumstances where the
common element is descriptive or highly suggestive and/or has been frequently used
and/or registered by others in the same or related fields. See, e.g., Rocket
Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066 (TTAB 2011) (ZU
ELEMENTS, stylized, not confusingly similar to ELEMENTS for identical apparel);

52 Registration No. 4029941 for the mark PerkShare.
53 Registration No. 3590776 for the mark PERKCHASE.
54 Registration No. 2930976 for the mark PERKS RESOURCES.
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Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005)
(NORTON MCNAUGHTON ESSENTIALS for ladies’ sportswear not confusingly
similar to ESSENTIALS for women’s clothing because ESSENTIALS is a highly
suggestive term for articles of clothing); In re Hunke & Jochheim, 185 USPQ 188,
189 (TTAB 1975) (HIG-DURABLE for stationery articles not likely to cause
confusion with DURABL, on the Supplemental Register, for record books); In re
Merchandising Motivation, Inc., 184 USPQ 364 (TTAB 1974) (MEN’S WEAR for a
semi-monthly magazine not confusingly similar to MMI MENSWEAR for fashion
consulting for men because “MENSWEAR” is merely descriptive of such services).
Likewise, viewing the marks PERKSPOT, PERKS and PERKSCARD in the
context of the facts and circumstances presented by the record in this case, we find
that the word “Spot” in respondent’s mark is sufficient to render respondent’s mark
distinguishable from petitioner’s marks PERKS and PERKSCARD. In other words,
in this case, the strength or weakness of the term “Perks” in petitioner’s marks is an
important factor. See, e.g., Kellogg Co. v. Pack-Em Enterprises Inc., 951 F.2d 330,
21 USPQ2d 1142, 1145 (Fed. Cir. 1991) (“We know of no reason why, in a particular
case, a single duPont factor may not be dispositive. … ‘each [of the thirteen
elements] may from case to case play a dominant role.’”).
3. The nature and extent of any actual confusion.
Petitioner contends that “[t]here have been eight (8) instances made of record
in this proceeding where professionals, customer employees or other third persons
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have actually confused Perks and PerkSpot.”55 In analyzing these purported
instances of actual confusion, we note that where petitioner has adopted a weak
mark, “his competitors may come closer to his mark than would be the case with a
strong mark without violating his rights.” Kenner Parker Toys, Inc. v. Rose Art
Indus., Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992), quoting Sure-Fit
Products Company v. Saltzson Drapery Company, 117 USPQ at 296. “If any
confusion results, that is a risk the plaintiff accepted when it decided to identify the
product with a mark that uses a well-known descriptive phrase.” KP Permanent v.
Lasting Impression, 543 U.S. 111, 72 USPQ2d 1833, 1838 (2004). See also
Milwaukee Nut Co. v. Brewster Food Service, 277 F.2d 190, 125 USPQ 399, 401
(CCPA 1960) (“appellee, in adopting a word which is highly suggestive to the trade
in which it was catering, ran the risk of having similar merchandise sold by others
for the same purpose to the same trade offered to the witness when he requested
‘BEER NUTS.’”); Bass Pro Trademarks, LLC v. Sportsman’s Warehouse, Inc., 89
USPQ2d 1844, 1857 (TTAB 2008) (“when a business adopts a mark, or a portion of a
mark incorporating a descriptive term, it assumes the risk that competitors may
also use that descriptive term.”).
Petitioner designated the testimony and evidence relating to the instances of
actual confusion as confidential. Accordingly, we will not identify the companies or
individuals involved.

55 Petitioner’s Brief, p. 15.
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a. Emails in the Smythe deposition.
Petitioner identified three sets of email chains that it contends show evidence
of actual confusion.
1. Exhibit 50 is an email chain from one of petitioner’s sales persons to a
prospective customer seeking to enroll the customer in petitioner’s program. The
prospective customer wrote to petitioner’s representative that she “received this
email attached last week. Is this the same company?” Presumably, the prospective
customer is referring to an email from respondent. This is not evidence of actual
confusion because it indicates the prospective customer suspected that there were
two different companies seeking business. See Marshall Field & Co. v. Mrs. Fields
Cookies, 25 USPQ 1321, 1334 (TTAB 1992). Another reason this email chain is
unpersuasive is that the prospective customer was not called as a witness and
questioned and cross-examined as to the reasons for her inquiry. Id.
Petitioner argues that respondent “could have subpoenaed and deposed the
confused individuals identified in the email strings” and that respondent “failed to
do so should not be held against” petitioner.56 However, properly introducing
instances of actual confusion into the record and persuading the trier of fact as to
the probative value of such evidence is petitioner’s burden. See Georgia-Pacific
Corp. v. Great Plains Bag Co., 614 F.2d 757, 204 USPQ 697, 701 (CCPA 1980)
(“Actual confusion is entitled to great weight but only if properly proven.”).

56 Petitioner’s Rebuttal Brief, p. 24.
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2. Exhibit 51 is an email chain from a prospective customer of respondent
who reported that her “corporate office is working with someone else from your
company and has been for some time.” When respondent’s Mr. Smythe asked for
the name of the person with whom she had been working [one of petitioner’s sales
persons], the prospective customer noted that “maybe it isn’t part of your company.”
This email chain does not show actual confusion because the prospective customer
also realized that there were two different entities. Moreover, the evidence does
nothing to explain why the individual drew the conclusion that another individual
in the same organization may have been working with one of the parties. The
confusion, if any, could be explained by factors other than the similarity of the
marks, such as the way in which the individual was informed of or became aware of
the work of another individual in the organization.
3. Exhibit 52 is an email chain from one of respondent’s prospective or
actual customers forwarding a sales inquiry from petitioner. Respondent’s
prospective or actual customer asked respondent’s sales representative whether
“you would be able to assist me with this?” While this email chain is offered by
petitioner to indicate the customer’s “state of mind” rather than for the truth of the
matter contained therein, its probative value is diminished by the fact that the
prospective or actual customer was not called as a witness to testify and be subject
to cross-examination as to the circumstances and conditions under which she
received the email and why she contacted respondent.

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b. Dow Deposition
1. Robert Dow, petitioner’s President, testified that during a WebEx
conference with a prospective client who was looking at petitioner’s website, the
prospective client “continually referred to us as PerkSpot.”57
Q. And what did you say to the customer when he kept
doing that?
A. We made a comment that we are PerksCard, not
PerkSpot. He laughed and then we continued on
with the presentation, and again when seeing the
PerksCard site he referred to us as Perkspot.
Q. And did you try to correct him again?
A. We did.
Q. And how did he respond?
A. Again, he apologized, laughed, and we continued on
with the presentation.
Q. And so during this – this was a telephone
conversation?
A. It was telephone and WebEx. So he was actually
looking at our Web site via the computer while we
were doing the presentation.
Q. So just to be clear, he was looking at the PerksCard
Web [sic] site?
A. That’s correct.58
The probative value of this testimony is limited because the prospective client
was not called as a witness to testify and be cross examined as to why he referred to
petitioner as PerkSpot. It could have been a “slip of the tongue,” rather than

57 Dow Dep., p. 86.
58 Dow Dep., pp. 85-86.
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confusion. While petitioner was unable to close this sale, there is no testimony that
it was because the prospective customer confused the source of petitioner’s services
with the source of respondent’s services.
2. Mr. Dow testified that “[w]e had an incident where a [customer] called
our customer service center, spoke to one of our customer service reps thinking they
were calling for Perkspot, and our call center rep handled that call.”59 This is
technically hearsay within hearsay (i.e., the call center representative reported
what the witness was thinking), and although there are instances where hearsay
statements concerning alleged instances of actual confusion are admissible as
“present sense impressions” under Fed. R. Evid. 803(1), we do not believe this
highly generalized testimony provides us with enough circumstantial guarantees of
trustworthiness to warrant attributing any probative value to it..
3. Exhibit 33 is an email chain from a prospective client responding to an
email from petitioner’s sales representative who sent the customer a summary of a
recent sales presentation. Despite referencing “PerksCard” four times in his email,
the prospective customer wrote, “is there someway [sic] that I could have a
username and password to walk my client thought the PerkSpot web site? If that
requires me to become a member of an existing PerksCard client, that’s OK with
me.” Since the prospective customer was not called as a witness to explain his
reference to PerkSpot, we do not know whether the prospective client was confused
or whether he just made a “slip of the tongue.” While the prospective client

59 Dow Dep., p. 87.
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substituted PerkSpot for PERKSCARD, there is no evidence that this prospective
client, or any prospective customer, ever retained respondent’s services thinking
they came from petitioner.
The Lanham Act seeks to prevent consumer confusion
that enables a seller to pass “off his goods as the goods of
another.” Programmed Tax Systems, Inc. v. Raytheon Co.,
439 F.Supp. 1128, 1132 [ 197 USPQ 509 ] (S.D.N.Y. 1977)
(quoting Jean Patou, Inc, v. Jacqueline Cochran, Inc., 201
F.Supp. 861, 863 [ 133 USPQ 242 ] (S.D.N.Y. 1962), aff'd,
312 F.2d 125 [ 136 USPQ 236 ] (2d Cir. 1963). In
Programmed Tax Systems, the court explained that the
relevant confusion is that which affects “the purchasing
and selling of the goods or services in question.” Id. The
Restatement concurs, citing to Judge Lasker's opinion in
Beneficial Corp. v. Beneficial Capital Corp., 529 F.Supp.
445, 450 [ 213 USPQ 1091 ] (S.D.N.Y. 1982), for the
proposition that “trademark infringement protects only
against mistaken purchasing decisions and not against
confusion generally.” Restatement, supra, § 20 reporter's
note at 179.
Lang v. Retirement Living Publishing Co., Inc., 949 F.2d 576, 21 USPQ2d 1041,
1046 (2d Cir. 1991). It is not clear what prompted the error on the part of
petitioner’s prospective customer.
4. Exhibit 34 is an email chain from one of petitioner’s customers to one
of petitioner’s project managers complaining that the customer’s Vice President of
Human Resources is getting messages from a John Hughes asking her to sign up for
Perks even though the customer is “already a member of Perks.” John Hughes was
not employed by petitioner.60 One of petitioner’s employees investigated by calling
respondent’s telephone number which listed John Hughes in the employee phone

60 Dow Dep., p. 92.
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directory.61 As indicated above, the customer’s Vice President assumed John
Hughes was selling petitioner’s services, but there is no evidence that this customer
or any customer ever retained respondent’s services thinking the services were
rendered by or associated with petitioner.
5. Exhibit 35 is an email chain from one of petitioner’s executives to a
“professional” who was working with petitioner on a product launch for some of
petitioner’s customers. When responding to petitioner’s inquiry, the “professional”
apparently looked at respondent’s website instead of petitioner’s website. When
petitioner pointed out Ms. Nelson’s mistake, she wrote “WOW – talk about a rookie
error!!! The funny thing is I get annoyed with people on my end when they call you
a Perkspot or call your competitor Perksgroup.” Because the “professional” was not
called as a witness, we do not know why the “professional” accessed respondent’s
website when she was clearly aware that respondent and petitioner were two
distinct entities. In other words, we do not know whether she confused the source of
the services offered by respondent and petitioner, or whether the way in which she
attempted to access petitioner’s website inadvertently led her to respondent’s
website.
After carefully reviewing these purported instances of actual confusion, there
is no reason to believe that the so-called confusion represented by these instances
reflect confusion as to source in the form of either a potential diversion of sales,
damage to goodwill, or loss of control over reputation because of the similarity of the

61 Dow Dep., p. 94.
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marks. See General Instrument Corp. v. Autotote Ltd., 220 USPQ 283, 288 (TTAB
1983) (“None of the evidence offered by opposer concerning these instances of
alleged actual confusion suggests that mistakes were made as the result of use of
applicant’s mark.”). We have given these purported instances of confusion
appropriate consideration. In this regard, evidence of actual confusion “is too
important to be established by means of an inference, unsupported by corroborating
evidence.” Toys “R” Us, Inc. v. Lamps R Us, 219 USPQ 340, 346 (TTAB 1983).
Accordingly, we find that this evidence has de minimis value.
4. Balancing the du Pont factors.
Because of the descriptive nature of the marks PERKS and PERKSCARD,
the proliferation of registered “Perks” marks, the use of “Perks” to describe
employee and customer benefits, the marks PERKS and PERKSCARD are entitled
to only a very narrow scope of protection or exclusivity of use. Accordingly, we find
that consumers are likely able to distinguish between different PERKS marks based
on small differences in the marks. Thus, respondent’s mark PERKSPOT for
“administration of a program for enabling participants to obtain discounts from
retailers and service providers” is not likely to cause confusion with petitioner’s
marks PERKS for “providing volume discount buying services to others or
PERKSCARD for “buying services, namely, providing volume discounts for
consumer products and services.”
Decision: Respondent’s counterclaim to cancel petitioner’s pleaded
registrations on the ground that petitioner’s marks are generic is dismissed.
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Judgment is entered in respondent’s favor on its counterclaim to cancel
Registration No. 3210654 as involving a descriptive term. However, since the
registration has already been cancelled, no further action is necessary by the Board.
Petitioner’s petition to cancel respondent’s registration on the ground of
likelihood of confusion is dismissed.