Illinois Retina Associates, S.C.

Trademark Trial and Appeal Board

Apr 4, 2019

EX (T.T.A.B. Apr. 4, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 4, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Illinois Retina Associates, S.C.
_____

Serial No. 87501468
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Suzanne K. Ketler and Lindsie A. Everett, of Roetzel & Andress LPA,
for Illinois Retina Associates, S.C..
Roger T. McDorman, Trademark Examining Attorney, Law Office 109,
Michael Kazazian, Managing Attorney.
_____

Before Kuhlke, Wellington, and Coggins,
Administrative Trademark Judges.

Opinion by Coggins, Administrative Trademark Judge:
Illinois Retina Associates, S.C. (“Applicant”) seeks registration on the Principal
Register of the mark shown at right, with THE
RETINA CENTER disclaimed, for “medical services,
namely, diagnosis and treatment of diseases of the
retina, macula and vitreous,” in International Class
44.1

1 Application Serial No. 87501468 was filed June 22, 2017, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and

Serial No. 87501468
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The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied
to the services identified in the application, so resembles
the mark shown at right, with THE RETINA CENTER
disclaimed, for “health care services, namely, diagnosis and treatment of diseases in
the vitreous and retina, namely, diabetic diseases, retinal degenerative diseases,
retinal tears and detachment, age related retinal diseases, tumors, vascular and
inflammatory retinal diseases, and medical research of retinal and vitreous diseases,”
in International Class 42,2 on the Principal Register as to be likely to cause confusion,
to cause mistake, or to deceive.
When the refusal was made final, Applicant appealed and requested
reconsideration, 4 TTABVUE, which was denied. 5 TTABVUE. The appeal is fully
briefed. We affirm the refusal to register.
I. Evidentiary Issues
Before proceeding to the merits of the refusal, we address evidentiary matters.
The Examining Attorney objects to Applicant’s lists of registrations and applications
for marks that include the word RETINA which were submitted with Applicant’s

use in commerce since at least as early as August 1, 1996. “The mark consists of the words
‘The Retina Center’ with a stylized graphic design of a retina below the words. The ‘retina’
takes the form of a circle, outlined by a larger circle in a lighter shading. The upper-left corner
of the retina is embellished with a white eight-pointed star. An arterial structure is
concentrated on the right side of the retina and extends across the surface of the retina.”
Color is not claimed as a feature of the mark.

2 Registration No. 2774501, issued October 21, 2003; renewed.
Serial No. 87501468
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August 14, 2018 Request for Reconsideration, see TSDR 24-25 (list of 27 applications
and registrations) and TSDR 26 (list of 18 applications and registrations), and
resubmitted as attachments to its appeal brief. See Brief at 7 TTABVUE 96-98.3
The Examining Attorney objected to and advised Applicant that its mere
submission of a list of third-party registrations and applications in its August 14,
2018 Request for Reconsideration was insufficient to make the evidence of record. See
September 5, 2018 Request for Reconsideration Denied at TSDR 4, n.1 (objection); see
also Examining Attorney’s Brief, unnumbered p. 5, n.1 (9 TTABVUE 6) (maintaining
objection). Insofar as Applicant failed to properly make the third-party registrations
of record prior to the filing of the appeal, the objection is sustained.4 See e.g., In re
Fiat Grp. Mktg. & Corporate Commc’ns S.p.A., 109 USPQ2d 1593, 1596 (TTAB 2014).
See also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE § 1207.03
(2018).
Applicant attached exhibits to its opening and reply briefs which already form
part of the record. The Board discourages resubmitting evidence that is already of
record; the Board considers all evidence that is properly of record. In addition to
adding to the bulk of the file, ascertaining whether exhibits to a brief are properly of
record wastes the Board’s time. In re Lorillard Licensing Co., 99 USPQ2d 1312, 1315

3 The TTABVUE and Trademark Status and Document Retrieval (“TSDR”) citations refer to
the docket and electronic file database for the involved application. All citations to the TSDR
database are to the downloadable .pdf version of the documents.
4 Further, even if they were in evidence, the third-party applications submitted by Applicant
would have no probative value other than as evidence that they were filed. In re Toshiba
Med. Sys. Corp., 91 USPQ2d 1266, 1270 n.8 (TTAB 2009); In re Fiesta Palms LLC, 85
USPQ2d 1360, 1366 n.7 (TTAB 2007).
Serial No. 87501468
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(TTAB 2011); In re SL&E Training Stable Inc., 88 USPQ2d 1216, 1220 n.9 (TTAB
2008); In re Thor Tech Inc., 85 USPQ2d 1474, 1475 n.3 (TTAB 2007). Accordingly, we
have not separately reviewed the exhibits to Applicant’s brief; to the extent that
copies of the exhibits were properly made of record during prosecution of the
application, we have considered them.
II. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the 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 Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). In any likelihood of confusion analysis, however, 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 [or services] and
differences in the marks.”).
A. Similarity of the Services and Channels of Trade
We first consider the second and third du Pont factors, the similarity of the
services, channels of trade, and classes of customers. Applicant’s services are “medical
services, namely, diagnosis and treatment of diseases of the retina, macula and
vitreous.” Registrant’s services include “heath care services, namely, diagnosis and
treatment of diseases in the vitreous and retina, namely diabetic diseases, retinal
Serial No. 87501468
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degenerative diseases, retinal tears and detachment, age related retinal diseases,
tumors, vascular and inflammatory retinal diseases.” Although Registrant’s services
specify the ocular diseases in which it specializes, Applicant’s broad wording
“diseases of the retina . . . and vitreous” in the Application encompasses all such
diseases including those specified in the cited registration.5 See In re Hughes
Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly
worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly
identified ‘residential and commercial furniture.”’). In its appeal briefs, Applicant
does not dispute that its identified services are identical to (or encompass)
Registrant’s vitreous and retinal diagnosis and treatment services.
To the extent indicated, the identified services in the application are legally
identical to the services in the registration. Given the legal identity of the services in
part, and the lack of restrictions or limitations in the application and registration as
to their nature, channels of trade, or classes of purchasers, we must presume that the
channels of trade and classes of purchasers are also the same (i.e., ordinary
consumers in need of diagnosis and treatment of diseases of the vitreous or retina).
In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1518-19 (TTAB 2016); see also
In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding

5 While the other services listed in the registration appear highly related to Applicant’s
services, we need not discuss them because the application and registration contain legally
identical services. It is sufficient for a refusal based on likelihood of confusion that
relatedness is established for any item encompassed by the identification of services in a
particular class in the application. In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB
2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); Tuxedo Monopoly, Inc. v. Gen.
Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Inter IKEA Sys. B.V. v.
Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014).
Serial No. 87501468
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Board entitled to rely on this legal presumption in determining likelihood of
confusion).
The second and third du Pont factors weigh in favor of a finding that confusion is
likely.
B. Sophistication of Consumers
Relying on Carefirst of Md., Inc. v. FirstHealth of the Carolinas, Inc., 77 USPQ2d
1492, 1503 (TTAB 2005), which holds that “it is common knowledge that even
ordinary consumers tend to exercise some sophistication when it comes to decisions
relating to healthcare . . . services,” Applicant contends that purchasers of its services
are sophisticated. Brief, pp. 15-16 (7 TTABVUE 16-17); Reply, pp. 8-10 (11 TTABVUE
9-11).
Applicant submitted no evidence to support this assertion. Nonetheless, assuming
for purposes of this appeal that ordinary consumers in need of Applicant’s health care
services (i.e., diagnosis and treatment of diseases of the retina, macula and vitreous)
will tend to exercise an elevated level of care when it comes to decisions relating to
those services, it is not so high as to outweigh the other du Pont factors. Moreover, it
is well-settled that even careful, sophisticated purchasers are not immune from
source confusion, especially in cases such as this involving similar marks and
identical services. See Cunningham v. Laser Golf Cop., 222 F.3d 943, 55 USPQ2d
1842, 1846 (Fed. Cir. 2000); In re Research & Trading Corp., 793 F.2d 1276, 230
USPQ 49, 50 (Fed. Cir. 1986); In re Cynosure Inc., 90 USPQ2d 1644, 1647 (TTAB
2009). To the extent that we take notice that consumers will likely exercise some care
Serial No. 87501468
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when it comes to health decisions, the fourth du Pont factor weighs in favor of no
likelihood of confusion.
C. Similarity or Dissimilarity of the Marks in Their Entireties
We next consider the first du Pont likelihood of confusion factor, which focuses on
“‘the similarity or dissimilarity of the marks in their entireties as to appearance,
sound, connotation and commercial impression.’” Palm Bay Imps., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691
(Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). “The proper test is not a side-
by-side comparison of the marks, but instead whether the marks are sufficiently
similar in terms of their commercial impression such that persons who encounter the
marks would be likely to assume a connection between the parties.” Coach Servs. Inc.
v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(quotation omitted). Under actual marketing conditions, consumers do not
necessarily have the luxury of making side-by-side comparisons between marks, and
must rely upon their imperfect recollections. Dassler KG v. Roller Derby Skate Corp.,
206 USPQ 255, 259 (TTAB 1980). The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks. United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB
2014); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009). Here, as noted above, the
relevant consumers are those in need of diagnosis and treatment of diseases of the
vitreous or retina.
In comparing the marks, we acknowledge that our analysis cannot be predicated
on dissection of the involved marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
Serial No. 87501468
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749, 751 (Fed. Cir. 1985). Rather, we consider the marks in their entireties. Id. at
750. Nonetheless, there is nothing improper in stating that, for rational reasons, more
or less weight has been given to a particular feature of a mark, provided the ultimate
conclusion rests on a consideration of the marks in their entireties. Stone Lion Capital
Partners, LP v. Lion Capital LLP, 76 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014). For instance, merely descriptive matter that is disclaimed has been accorded
subordinate status relative to the more distinctive portions of a mark. Nat’l Data, 224
USPQ at 751 (“That a particular feature is descriptive . . . with respect to the relevant
goods or services is one commonly accepted rationale for giving less weight to a
portion of the mark.”). However, it also has frequently been recognized that where a
mark consists of a word and a design, the words generally play a dominant role. In re
Viterra, 101 USPQ2d at 1908 (“In the case of a composite mark containing both words
and a design, ‘the verbal portion of the mark is the one most likely to indicate the
origin of the goods to which it is affixed.”’) quoting CBS Inc. v. Morrow, 708 F.2d 1579,
218 USPQ 198, 200 (Fed. Cir. 1983); In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593
(TTAB 2001) (“words are normally accorded greater weight because they would be
used by purchasers to request the goods”).
The crux of the Examining Attorney’s argument is that the literal portion of each
mark (i.e., THE RETINA CENTER) is identical and, although disclaimed, is more
likely to indicate source than the design element of each mark because the literal
portion of the marks will be used when referring to or requesting the services. Brief,
unnumbered pp. 4-5 (9 TTABVUE 5-6). The crux of Applicant’s argument is that
Serial No. 87501468
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because the phrase THE RETINA CENTER is descriptive, weak, and has been
disclaimed in the application and cited registration, the design element must be the
dominant portion of each mark.6 See Brief, p. 9 (7 TTABVUE 10).
In determining what weight to accord the wording THE RETINA CENTER, we
consider both inherent strength, based on the nature of the mark itself, and
commercial strength or recognition. 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).”); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d
1458, 1476 (TTAB 2014).
There is no evidence of third-party use in the record to analyze commercial
strength or weakness of the wording THE RETINA CENTER. As to the conceptual
strength of the common element of the marks, we note that the Examining Attorney
determined that the wording THE RETINA CENTER is descriptive of Applicant’s
services which involve diseases of the retina, and Applicant disclaimed this wording.
Similarly, the same wording is disclaimed in the cited registration which also
identifies services involving diseases of the retina. The dictionary definitions of
“retina” and “center” submitted by the Examining Attorney, see July 13, 2017 Office

6 In its reply brief, Applicant argues that “it is well-established that terms in a composite
mark that are merely descriptive of the services are considered unregistrable.” Reply, p. 2 (11
TTABVUE 3). Because Applicant uses the word “unregistrable,” it implies that THE RETINA
CENTER is generic for the services; however, Applicant has not submitted evidence to show
that THE RETINA CENTER is generic for the services and therefore incapable of source
identification. As discussed below, we find the term to be descriptive and conceptually weak;
but, on this thin record we do not find that the term is generic.
Serial No. 87501468
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Action at TSDR 10 and 13-14, support the assertion that THE RETINA CENTER is
descriptive of services involving diseases of the retina. In support of its position that
THE RETINA CENTER portion of Registrant’s mark is weak and entitled only to a
limited scope of protection, Applicant points to the following five third-party
registrations for marks incorporating the term RETINA for medical services
involving the eye, which Applicant submitted with its August 14, 2018 Request for
Reconsideration (at TSDR 27-34):7
Reg. No. Mark Information Relevant Services
3559539 NATIONAL RETINA INSTITUTE

registered under § 2(f) with disclaimer of
RETINA INSTITUTE
Medical services, surgery and
treatment of eye diseases
and conditions
3691979

disclaimer of RETINA CARE

Medical services
4185543

disclaimer of RETINA ASSOCIATES
Medical services, namely,
diagnosis and treatment of
ailments affecting the retina
and macula
4509913

disclaimer of RETINA HEALTH CENTER

Medical services, namely,
treatment of eye diseases
and conditions

7 Applicant did not submit status and title copies of the registrations or copies from the
electronic database records of the Office showing the current status and title of the
registrations. Instead, Applicant submitted photocopies of the registrations and a list of
applications and registrations from the TESS database (at TSDR 26) on which status
information for the registrations appears. Notwithstanding Applicant’s unusual and
incomplete manner of submission, we treat these third-party registrations as stipulated into
the record because the Examining Attorney discussed them without objection in his appeal
brief and in the September 5, 2018 Request for Reconsideration Denied. See TBMP § 1208.02.
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Reg. No. Mark Information Relevant Services
4586988

disclaimer of RETINA-VITREOUS CENTER
Medical services in the field
of ophthalmology and
ailments of the eye, retina
and macula

Applicant argues that because these registrations show that RETINA has been
disclaimed it “tend[s] to show that the phrase ‘THE RETINA CENTER’ is ‘weak’ when
used in connection with the [a]pplied-[f]or services . . . .” Brief, p. 8 (7 TTABVUE 9).
While the “existence of [third-party] registrations is not evidence of what happens
in the market place or that customers are familiar with them,” AMF Inc. v. Am.
Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973), third-party
registrations “are relevant to prove that some segment of the composite marks which
both contesting parties use has a normally understood and well-recognized
descriptive or suggestive meaning, leading to the conclusion that that segment is
relatively weak.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115
USPQ2d 1671, 1675 (Fed. Cir. 2015) (quoting Textronix, Inc. v. Daktronics, Inc., 534
F.2d 915, 189 USPQ 693, 694 (CCPA 1976)). We scrutinize the third-party marks
carefully to determine whether they show that the term THE RETINA CENTER is
weak for eye-related medical services. None of the registrations contains the term
THE RETINA CENTER or even RETINA CENTER. The fifth registration contains
the only mark that combines the words “retina” and “center,” and that is for the term
RETINA-VITREOUS CENTER. Although limited in number and none comprising
the entirety of the shared wording, the third-party registrations further support that
Serial No. 87501468
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THE RETINA CENTER is descriptive and therefore conceptually weak for
Applicant’s and Registrant’s services. Based on the definitions, disclaimers, and
third-party registrations, we find THE RETINA CENTER to be descriptive and
therefore conceptually weak for Applicant’s and Registrant’s services.
While we do not make a side-by-side comparison of the marks, it is helpful to
reproduce both marks below. Applicant’s and Registrant’s marks are, respectively:
and .
The identical wording THE RETINA CENTER, which is presented in slightly
different fonts, plays a central role in each mark. The wording appears above
Applicant’s design element, and is large and appears emphasized by the underline
element in the upper portion of Registrant’s mark. Both marks use small capitals for
the wording RETINA CENTER, with the first letter of each word capitalized. The
design element of each mark presents the representation of an eye. Specifically,
Applicant’s design element is circular and appears to contain the inner portion on an
eye, with a realistic depiction of retinal arteries to the right and a point of light to the
left; and Registrant’s design element includes a circular design suggesting a stylized
eyeball with a lens, and a straight line, suggestive of light, in contact with the lens,
and a triangle suggesting refraction and projection of light behind the eye.
The ultimate determination of similarity of the marks must be based on the two
word-and-design composite marks in their entireties – including the disclaimed
Serial No. 87501468
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portion THE RETINA CENTER. In re Viterra, 101 USPQ2d at 1911 (citing Giant
Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ2d 390, 395 (Fed.
Cir. 1983) (“[I]t is well settled that the disclaimed material still forms a part of the
mark and cannot be ignored in determining likelihood of confusion.”) and 3 J. THOMAS
MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 19:72 (4th ed.
2011) (“For purposes of determining the likelihood of confusion of a mark with a
registered composite mark of which portions are disclaimed, the disclaimed matter
cannot be ignored.”)).
The literal element of each mark (i.e., THE RETINA CENTER) leads the viewer
to associate the respective designs with an eye. While Registrant’s design element
suggests a stylized eye using basic geometric shapes, and Applicant’s design element
suggests a more realistic depiction of an eye with the interior thereof visible, both
marks connote an eyeball combined and light. The overall commercial impression of
each mark is similar – particularly in light of the identical wording in each mark.
The Federal Circuit has “previously . . . found that the dominant portion of a
composite word and design mark is the literal portion, even where the literal portion
has been disclaimed.” In re Viterra Inc., 101 USPQ2d at 1911 (citing Giant Food v.
Nation’s Foodservice, 218 USPQ2d at 395 (finding that the term GIANT was the
dominant portion of a mark consisting of the words GIANT HAMBURGERS with a
large background design, even though the applicant had disclaimed GIANT
HAMBURGERS). As in Viterra and Giant Food, the Board may accord greater weight
to the literal portion of the mark, and we do so in this appeal with the wording THE
Serial No. 87501468
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RETINA CENTER which is a visually important part of each mark, and which being
the only wording is the only pronounceable part of each mark, even though it is
conceptually weak. In support of this weight, we note that THE RETINA CENTER
appears integrated into Registrant’s mark because it is emphasized by the underline
element (which is suggestive of a light beam), the placement of THE above the eyeball
element, and the white space between THE and the sloping eyeball which leads the
viewer’s eye to the thick lines of RETINA CENTER.
With respect to the design features in the marks, we have considered the presence
of a realistic, scientific representation of the interior of an eye and retinal blood
vessels, and point of light, in Applicant’s mark versus the geometric representation
of an eye, light beam, lens, and refracted light in Registrant’s mark. While these
design elements differ, they are not so distinctive to outweigh the significance that
both Applicant’s and Registrant’s mark share the identical literal term THE RETINA
CENTER presented in small caps. We bear in mind that the “marks ‘must be
considered . . . in light of the fallibility of memory,”’ In re St. Helena Hosp., 774 F.3d
747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014), and that the proper focus is on the
recollection of the average customer, who retains a general rather than specific
impression of the marks. See Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d
1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB
2016). In this case, there is a much higher probability that the THE RETINA
CENTER literal element in each mark will be impressed upon the average consumer’s
mind and retained for purposes of later recalling the marks. Thus, in terms of
Serial No. 87501468
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appearance, sound, connotation, and commercial impression, we find the marks share
a good deal of similarity based on the common wording THE RETINA CENTER and
the designs calling to mind an eye and light. In view thereof, the first du Pont factor
weighs in favor of likelihood of confusion.
D. Length of Use without Evidence of Actual Confusion
Invoking du Pont factor eight (i.e. “the length of time during and conditions under
which there has been concurrent use without evidence of actual confusion,” du Pont,
177 USPQ at 567), Applicant argues that its mark and the cited mark “have coexisted
in the marketplace for 15 years and on the USPTO register for almost eight years.”
Brief, p. 13 (7 TTABVUE 14); see also Reply, p. 5, 6 (11 TTABVUE 6, 7).
There is no evidence of use of Applicant’s mark for the period claimed. See
Trademark Rule 2.122(b)(2), 35 C.F.R. § 2.122(b)(2) (“The allegation in an application
for registration, or in a registration, of a date of use is not evidence on behalf of the
applicant or registrant; a date of use of a mark must be established by competent
evidence.”); see also Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601, 1606 (TTAB
2018) (cancelled registration not evidence of use of the registered mark at any time).
The argument of counsel cannot take the place of evidence lacking in the record. See,
e.g., In re U.S. Tsubaki, Inc., 109 USPQ2d 2002, 2006 (TTAB 2014) (disregarding
outside counsel’s conclusory unverified statements made without proper foundation
regarding marketing of goods) (citing In re Simulations Publ’ns, Inc., 521 F.2d 797,
187 USPQ 147, 148 (CCPA 1975) (where appellant argued that the magazines at
issue deal with unrelated subject matter, the court held that “[s]tatements in a brief
cannot take the place of evidence”).
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Similarly, the record is devoid of evidence relating to the extent of use of
Applicant’s and Registrant’s marks that would enable us to determine whether there
have been meaningful opportunities for instances of actual confusion to have occurred
in the marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1847 (Fed. Cir. 2000). See also In re Binion, 93 USPQ2d 1531, 1536 (TTAB
2009) (suggestion that there has been no actual confusion between the marks, based
on the coexistence of applicant’s previously issued registration and the cited
registration, entitled to little probative value in the context of an ex parte appeal);
but cf. In re Strategic Partners, Inc., 102 USPQ2d 1397, 1400 (TTAB 2012) (“[U]nique
situation” of coexistence of an applicant’s existing registration with a cited
registration for over five years, when the applicant’s applied-for mark is substantially
similar to its existing registered mark, both for identical goods, was probative and
relevant under thirteenth du Pont factor. We analyze this factor below).
In any event, we note that “the relevant test is likelihood of confusion, not actual
confusion.” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1053 (Fed.
Cir. 2018). The absence of actual confusion is entitled to little weight, especially in an
ex parte context. See Majestic Distilling Co., 65 USPQ2d at 1205 (uncorroborated
statements of no known instances of actual confusion are of little evidentiary value,
and lack of evidence of actual confusion carries little weight in an ex parte context).
See also In re Kangaroos U.S.A., 223 USPQ 1025, 1026-17 (TTAB 1984) (a claim of no
“actual confusion as a result of the contemporaneous use of the marks of applicant
and registrant is of little probative value in an ex parte proceeding where we have no
Serial No. 87501468
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evidence pertaining to the nature and extent of the use by applicant and registrant”
and “the registrant has no chance to be heard from . . . .”). Accordingly, the eighth
factor is neutral.
E. Cancelled Registration No. 3643214
We consider Applicant’s prior registration under the thirteenth du Pont factor
which relates “to ‘any other established fact probative of the effect of use.’” Strategic
Partners, 102 USPQ2d at 1399 (quoting du Pont, 177 USPQ at 567).8 Applicant
argues that it owned a prior registration for a mark almost identical to the subject
mark and for identical services, which was cancelled on January 29, 2016, because
Applicant unintentionally failed to file a timely Section 8 affidavit or declaration of
use.9 Brief, pp. 6, 13 (7 TTABVUE 7, 14).
The Board’s decision in Strategic Partners is instructive. In that case, the
applicant owned a registered mark that had coexisted with the cited mark for over
five years. Because the applicant’s prior registration was over five years old, the
Board noted that any challenge thereto by the owner of the cited registration based
on a claim of likelihood of confusion would be time-barred under Section 14 of the Act.

8 Applicant’s reference to the so-called Morehouse defense, see Morehouse Mfg. Corp. v. J.
Strickland & Co., 407 F.2d 881, 166 USPQ 715 (CCPA 1969), is misplaced. See Brief, p. 14 (7
TTABVUE 14). “The Morehouse defense is an equitable affirmative defense which, in
appropriate circumstances, may be asserted by a defendant/applicant in an inter partes
proceeding. . . . This defense does not apply in an ex parte context.” Strategic Partners, 102
USPQ2d at 1399-400.
9 Registration No. 3643214; issued June 23, 2009, from an application filed November 26,
2008; cancelled January 29, 2016. See August 14, 2018 Request for Reconsideration at TSDR
16-17.
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102 USPQ2d at 1399. In finding no likelihood of confusion in Strategic Partners, the
Board provided the following explanation:
[T]he present case involves the unique situation presented
by the coexistence of applicant's existing registration with
the cited registration for over five years, when applicant’s
applied-for mark is substantially similar to its existing
registered mark, both for identical goods. When we
consider these facts under the thirteenth du Pont factor,
we find in this case that this factor outweighs the others
and leads us to conclude that confusion is unlikely.
Id. at 1400.
While we acknowledge that refusing to register the mark now before us may at
first blush be considered inconsistent with the issuance of Applicant’s prior
registration, we must consider that the prior registration has been cancelled and thus
is not entitled to any of the presumptions of Section 7(b) of the Trademark Act, 15
U.S.C. § 1057(b). See Anderson, Clayton & Co. v. Krier, 478 F.2d 1246, 178 USPQ 46,
47 (CCPA 1973) (“Whatever benefits a registration conferred upon appellee were lost
by him when he negligently allowed his registration to become canceled.”); In re
Hunter Publ’g Co., 204 USPQ 957, 963 (TTAB 1979) (cancellation “destroys the
Section [7(b)] presumptions and makes the question of registrability ‘a new ball game’
which must be predicated on current thought.”). Unlike the situation in Strategic
Partners, Applicant’s earlier registration is not an “existing registered mark.” 102
USPQ2d at 1400 (emphasis added). The special circumstances and “unique situation”
of Strategic Partners are not present here. Id.
While we are sympathetic to Applicant’s position on this point, we do not consider,
on this record, the issuance of Applicant’s earlier, now-cancelled registration to
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outweigh the other du Pont factors. Moreover, it would be improper to give preclusive
effect to the decision of the Examining Attorney in granting Applicant’s earlier
registration, and the Board is not bound by the prior decisions of examining attorneys
in allowing marks for registration. In re Cordua Rests., Inc., 823 F.3d 594, 600, 118
USPQ2d 1632, 1635 (Fed. Cir. 2016) (“The [US]PTO is required to examine all
trademark applications for compliance with each and every eligibility requirement .
. . even if the PTO earlier mistakenly registered a similar or identical mark suffering
the same defect.”); see also In re Boulevard Entm’t Inc., 334 F.3d 1336, 67 USPQ2d
1475, 1480 (Fed. Cir. 2003) (“The fact that, whether because of administrative error
or otherwise, some marks have been registered even though they may be in violation
of the governing statutory standard does not mean that the agency must forgo
applying that standard in all other cases.”); In re USA Warriors Ice Hockey Program,
Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017). Indeed, as is often noted by the
Board and the courts, each case must be decided on its own merits. The determination
of registrability of a mark in another case does not control the merits in the case now
before us. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001) (“[D]ecisions regarding other registrations do not bind either the agency or this
court.”); see also, In re Kent-Gamebore Corp., 59 USPQ2d 1373 (TTAB 2001); In re
Wilson, 57 USPQ2d 1863 (TTAB 2001). The issuance of an earlier registration to
Applicant, even for an almost identical mark, does not compel the approval of another
if, as in this case, it would otherwise be improper to do so.10 See, e.g., In re Perez, 21

10 Applicant is in no different a position vis-à-vis the cited registration than it was when
Applicant filed its earlier application which led to now-cancelled Registration No. 3643214.
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USPQ2d 1075, 1077 (TTAB 1991) (Section 2(d) refusal affirmed even though the cited
registration had not been cited against applicant’s previous registration, now expired,
of the same mark for the same goods). For the reasons previously discussed, the
Examining Attorney’s refusal is justified on the record in this case.
III. Decision:
Based on the similarity of the marks, the legally identical services with
presumptively identical trade channels and classes of consumers, confusion is likely,
regardless of any presumed higher level of consumer care by the relevant consumers
or conceptual weakness of the literal portion of the mark. The refusal to register
Applicant’s mark is affirmed.

Specifically, at the time Applicant filed its earlier application (i.e., November 26, 2008) the
cited registration was already more than five years-old, having issued on October 21, 2003;
in view thereof, Applicant was unable then, as it is now, to petition to cancel the cited
registration under Section 2(d).