Meeker Cooperative Light & Power Association

Trademark Trial and Appeal Board

Jan 24, 2022

88796032 (T.T.A.B. Jan. 24, 2022)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: January 24, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Meeker Cooperative Light & Power Association _____ Application Serial No. 88794758 Application Serial No. 88794786 Application Serial No. 88794798 Application Serial No. 88796032 _____ Tye Biasco of Patterson Thuente Pedersen, P.A., for Meeker Cooperative Light & Power Association. Kevin M. Dinallo, Trademark Examining Attorney, Law Office 107, J. Leslie Bishop, Managing Attorney. _____ Before Bergsman, Lykos, and Greenbaum, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Meeker Cooperative Light & Power Association (“Applicant”) seeks registration on the Principal Register of the four marks listed below all for “Internet access provider services; Internet service provider,” in International Class 38:1 1 Application Serial Nos. 88794758, 88794786, and 88794798 were filed on February 12, 2020, and Serial No. 88796032 was filed on February 13, 2020, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), upon Applicant’s claim of first use anywhere and use in commerce since at least as early as December 3, 2018. Serial Nos. 88794758, 88794786, 88794798, and 88796032 - 2 - ● Serial No. 88794758 for the mark VIBRANT, in standard characters; ● Serial No. 88794786 for the mark VIBRANT BROADBAND, in standard characters. Applicant disclaims the exclusive right to use the word “Broadband”; ● Serial No. 88794798 for the mark VIBRANT - U, in standard characters; and ● Serial No. 88796 032 for the mark VIBRANT BROADBAND and design, reproduced below: The description of the mark reads as follows: The mark consists of the stylized word “VIBRANT” above the stylized word “Broadband,” with a dot inside of a stylized letter “V” with two transmission signals emanating from the dot toward the opening of the “V” and a semi-circle encompassing the “V.” Color is not claimed as a feature of the mark. Applicant disclaims the exclusive right to use the word “Broadband.” In each instance, the Examining Attorney refused to register Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the registered marks VIBRANT TV NETWORK, in standard characters,2 and VIBRANT TV NETWORK and design,3 reproduced below, both for, inter alia, the services listed below, as to be likely to cause confusion. Communications services, namely, transmitting streamed sound and audio-visual recordings via the Internet, cable 2 Registration No. 4913947, registered March 8, 2016. 3 Registration No. 4913948, registered March 8, 2016. Serial Nos. 88794758, 88794786, 88794798, and 88796032 - 3 - networks, wireless networks, satellite, or interactive multimedia networks; audio and video broadcasting services over the Internet; transmission of information in the audio-visual field; television broadcasting services; cable television broadcasting; satellite television broadcasting; mobile media services in the nature of electronic transmission of entertainment media content; video-on-demand transmission services; providing on-line chat rooms and electronic bulletin boards for transmission of messages among users in the field of general interest, in International Class 38. The description of the mark reads as follows: Color is not claimed as a feature of the mark. The mark consists of three vertical lines to the left of the words “VIBRANT TV NETWORK”. Registrant disclaims the exclusive right to use the term “TV NETWORK” in both registrations. The Board consolidated these appeals in its October 6, 2021 order.4 Citations to the prosecution record refer to the USPTO Trademark Status and Document Retrieval system (TSDR) in the downloadable .pdf format by page number in Serial No. 88794758 unless otherwise indicated. Citations to the briefs refer to TTABVUE, the Board’s online docket system. See, e.g., New Era Cap Co., Inc. v. Pro Era, LLC, 2020 USPQ2d 10596, *2 n.1 (TTAB 2020). 4 TTABVUE 12. Serial Nos. 88794758, 88794786, 88794798, and 88796032 - 4 - We base our determination under Section 2(d) on an analysis of all of the 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) (setting forth factors to be considered, referred to as “DuPont factors”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 113 USPQ2d 2045, 2049 (2015). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). “In discharging this duty, the thirteen DuPont factors ‘must be considered’ ‘when [they] are of record.’” In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997) and DuPont, 177 USPQ at 567). “Not all DuPont factors are relevant in each case, and the weight afforded to each factor depends on the circumstances. Any single factor may control a particular case.” Stratus Networks, Inc. v. UBTA-UBET Commc’ns Inc., 955 F.3d 994, 2020 USPQ2d 10341, at *3 (Fed. Cir. 2020) (citing Dixie Rests., 41 USPQ2d at 1533). “Each case must be decided on its own facts and the differences are often subtle ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387 (CCPA 1973). “Two key factors in every Section 2(d) case are the first two factors regarding the similarity or dissimilarity of the marks and the goods or services, because 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.’” In re Embiid, 2021 USPQ2d 577, at *10 (TTAB 2021) (quoting Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)); In re Chatam Int’l Serial Nos. 88794758, 88794786, 88794798, and 88796032 - 5 - Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004). See also In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for which there is record evidence but ‘may focus … on dispositive factors, such as similarity of the marks and relatedness of the goods.’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)). We focus our likelihood of confusion analysis on Registration No. 4913947 for the mark VIBRANT TV NETWORK in standard characters because the design element in Registration No. 4913948 for the mark VIBTANT TV NETWORK and design arguably contains additional points of difference with Applicant’s marks. That is, if confusion is likely between Applicant’s marks and the standard character mark, there is no need for us to consider the likelihood of confusion with the cited mark with design elements; the standard character mark is sufficient for us to affirm the refusal of registration. Conversely, if we find there is no likelihood of confusion between Applicant’s marks and the cited mark in standard characters, then there would be no likelihood of confusion with the mark with design elements. See, e.g., North Face Apparel Corp. v. Sanyang Indus. Co., 116 USPQ2d 1217, 1225 (TTAB 2015); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). I. The similarity or dissimilarity and nature of the services. In determining whether the services are related, it is not necessary that the services of Applicant and Registrant be similar or competitive in character to support a holding of likelihood of confusion; it is sufficient for such purposes that a party Serial Nos. 88794758, 88794786, 88794798, and 88796032 - 6 - claiming damage establish that the services are related in some manner or that conditions and activities surrounding marketing of these services are such that they would or could be encountered by same persons under circumstances that could, because of similarities of marks used with them, give rise to the mistaken belief that they originate from or are in some way associated with the same producer. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012). To prove the services are related, the Examining Attorney submitted copies of 29 third-party use based registrations for services listed in both the applications and registration at issue,5 as well as excerpts from 11 third-party websites showing those entities advertising the services under the same mark.6 Third-party registrations based on use in commerce that individually cover a number of different services have probative value to the extent that they serve to suggest that the listed services are of a type that may emanate from the same source. In re Country Oven, Inc., 2019 USPQ2d 443903, at *8 (TTAB 2019); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d mem. 864 F.2d 149 (Fed. Cir. 1988). We list below representative registrations, with relevant portions of the identifications. MARK REG. NO. SERVICES SMART PEOPLE BUY DUMB PIPES 5775925 Communication services, namely, transmission of voice, audio, visual images and data by telecommunications 5 May 15, 2020 Office Action (TSDR 15-56); December 3, 2020 Office Action (TSDR 7-49). 6 December 3, 2020 Office Action (TSDR 53-112); June 30, 2021 Denial of Request for Reconsideration (TSDR 4-32). Serial Nos. 88794758, 88794786, 88794798, and 88796032 - 7 - MARK REG. NO. SERVICES networks, wireless communication networks, the Internet, information services networks and data networks; Internet service provider services RISE ABOVE THE REST 5199507 Providing transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, wireless communication networks and the Internet; Internet service provider PIRANAH FIBER 5229683 Transmission of voice, data, graphics, images, audio, and video by means of telecommunications networks, wireless communication networks, and the Internet; Internet access provider services C SPIRE 5349109 Communication services, namely, transmission of voice, audio, visual images and data by telecommunications networks, wireless communication networks, the Internet, information services networks and data networks; Providing Internet access via broadband optical or wireless networks CASAIR 5359407 Telecommunications services, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, wireless communications networks, and the Internet; Internet service provider As the Examining Attorney pointed out in his brief, the excerpts from the third- party websites show that it is common for providers of Internet access and service Serial Nos. 88794758, 88794786, 88794798, and 88796032 - 8 - providers to bundle Internet access with cable television services, streaming and video on-demand services, and other telecommunication services. For example, ● AT&T website (att.com) advertising internet access and transmitting streamed sound and audio-visual recordings via the Internet;7 ● Dish website (dish.com) advertising internet access and transmitting streamed sound and audio-visual recordings via the Internet;8 and ● Xfinity website (xfinity.com) advertising internet access and cable television broadcasting.9 Webpage evidence showing the same mark used for the services at issue is probative to demonstrate the relationship between Applicant’s services and Registrant’s services for likelihood of confusion purposes. See, e.g., In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (relatedness supported by evidence that third parties sell both types of goods under same mark, showing that “consumers are accustomed to seeing a single mark associated with a source that sells both.”); In re Embiid, 2021 USPQ2d 577, at *22-23 (citing Ox Paperboard, 2020 USPQ2d 10878, at *5; and Hewlett-Packard, 62 USPQ2d at 1004); In re Integrated Embedded, 120 USPQ2d 1504, 1514-15 (TTAB 2016) (websites made of record by examining attorney “demonstrate[d] that services of the type offered by both Applicant . . . and Registrant are marketed and sold together online under the 7 December 3, 2020 Office Action (TSDR 53-60). 8 December 3, 2020 Office Action (TSDR 54-67). 9 December 3, 2020 Office Action (TSDR 101-105). Serial Nos. 88794758, 88794786, 88794798, and 88796032 - 9 - same marks” and “[s]uch evidence is sufficient to find that the services at issue are related.”). Applicant argues that its “services are narrowly restricted to Internet access provider services and Internet service provider” that “do not include content or telecommunication services” provided under the Registrant’s mark.10 Thus, a consumer of services under a mark including “TV NETWORK” would not likely be confused with an internet service provider that does not provide entertainment content.11 However, the issue is not whether purchasers will confuse Applicant’s services with Registrant’s services, but rather whether there is a likelihood of confusion as to the source of these services. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); In re I-Coat Co., LLC, 126 USPQ2d 1730, 1737 (TTAB 2018) (“the test is not whether consumers would be likely to confuse these goods, but rather whether they would be likely to be confused as to their source.”); In re Cook Med. Tech. LLC, 105 USPQ2d 1377, 1380 (TTAB 2012); Helene Curtis Indus. Inc. v. Suave Shoe Corp., 13 USPQ2d 1618, 1624 (TTAB 1989); In re Rexel Inc., 223 USPQ 830 (TTAB 1984). As discussed above, the third- party website evidence shows that Internet service providers often bundle Internet access with content such as transmitting streamed sound and audio-visual recordings 10 Applicant’s Brief, p. 5 (9 TTABVUE 6). 11 Applicant’s Reply Brief, p. 2 (14 TTABVUE 3). Serial Nos. 88794758, 88794786, 88794798, and 88796032 - 10 - via the Internet, television broadcasting services, and cable television broadcasting and sell them under the same mark. We find that Applicant’s services and Registrant’s services are related, meaning that this DuPont factor favors a likelihood of confusion. II. Established, likely-to-continue channels of trade and classes of consumers. The excerpts from the third-party websites summarized above show that Applicant’s Internet service provider services and Registrant’s content related services such as transmitting streamed sound and audio-visual recordings via the Internet, television broadcasting services, and cable television broadcasting are offered in the same channels of trade to the same classes of consumers. As such, this DuPont factor also weighs in favor of a likelihood of confusion. III. Similarity or dissimilarity of the marks. We now turn to the DuPont factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at 567. “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d mem., 777 F. App’x 516 (Fed. Cir. 2019); accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.”) (citation omitted). Serial Nos. 88794758, 88794786, 88794798, and 88796032 - 11 - “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.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., 101 USPQ2d at 1721); Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012). We keep in mind that “[s]imilarity is not a binary factor but is a matter of degree.” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1062 (Fed. Cir. 2003)). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB 2014); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012). Because the services at issue are “Internet access provider services; Internet service provider” and, inter alia, “transmitting streamed sound and audio-visual recordings via the Internet, cable networks, wireless networks, satellite, or interactive multimedia networks” and “cable television broadcasting,” the average customer is an ordinary consumer. Applicant is seeking to register the marks VIBRANT, VIBRANT BROADBAND, VIBRANT - U, and VIBRANT BROADBAND and design, reproduced below: Serial Nos. 88794758, 88794786, 88794798, and 88796032 - 12 - Registrant’s mark is VIBRANT TV NETWORK. The MERRIAM-WEBSTER DICTIONARY (merriam-webster.com) defines “Vibrant as “pulsating with life, vigor, or activity,” “oscillating or pulsating rapidly,” “readily set in vibration,” “responsive, sensitive,” “sounding as a result of vibration: resonant,” and “bright.”12 When used in connection with Registrant’s communication services (e.g., “transmitting streamed sound and audio-visual recordings via the Internet, cable networks, wireless networks, satellite, or interactive multimedia networks,” “cable television broadcasting,” etc.), the word “Vibrant” has no descriptive meaning and, therefore, we consider it to be an arbitrary term forming an inherently or conceptually strong mark. See Nautilus Grp., Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330, 71 USPQ2d 1173, 1180 (Fed. Cir. 2004) (defining an arbitrary mark as a “known word used in an unexpected or uncommon way” and observing that such marks are typically strong); see also Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (arbitrary terms are conceptually strong trademarks); In re Ginc UK Ltd., 90 USPQ2d 1472, 1479 (TTAB 2007) (completely unique and arbitrary, if not coined, nature of 12 The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); In re S. Malhotra & Co. AG, 128 USPQ2d 1100, 1104 n.9 (TTAB 2018); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). Serial Nos. 88794758, 88794786, 88794798, and 88796032 - 13 - mark in relation to goods entitles the registered mark to a broad scope of protection, and significantly increases the likelihood that the marks, when used in connection with the identical goods would cause confusion). Applicant argues to the contrary referring to cancelled Registration No. 4527896 for the mark VIBRANT CONVERSATIONS, in standard character form, for, inter alia, “electronic, electric and digital transmission of voice, data, images, signals and messages,” in International Class 38.13 The fact that the Cited Marks coexisted on the Principal Register with the previously cited U.S. Registration No. 4,527,896 (“the ‘896 Registration) and there was no confusion is strong evidence of not only the relative weakness of the Cited Marks, but also that registration of Applicant’s Mark is equally unlikely to cause confusion.14 First, Unify Software and Solutions GmbH filed the underlying application for Registration No. 4527896 under Section 44(d) of the Trademark Act claiming a priority filing date based on its European Trademark Office application and based its subsequent registration on the European trademark registration under Section 44(e) of the Trademark Act, not on use in commerce. Thus, there is no evidence that Unify Software and Solutions ever used the mark VIBRANT CONVERSATIONS in commerce. Second, the USPTO cancelled Registration No. 4527896 under Section 8 of the Trademark Act because Unify Software and Solutions failed to file a declaration of 13 Registered May 13, 2014; cancelled December 18, 2020. 14 Applicant’s Brief, p. 6 (9 TTABVUE 6). See also Applicant’s Reply Brief, p. 3 (14 TTABVUE 4). Serial Nos. 88794758, 88794786, 88794798, and 88796032 - 14 - continued use. “[A] cancelled registration is of no evidentiary value as to the scope of protection to be afforded to [a] claimed mark[s].” Nat’l Pork Bd. v. Supreme Lobster and Seafood Co., 96 USPQ2d 1479, 1484 (TTAB 2010) (citing Action Temp. Servs. Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“a cancelled registration does not provide constructive notice of anything.”)). See also Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601, 1606 (TTAB 2018) (a cancelled registration is only evidence that the registration issued, and is not evidence of use of the mark at any time); Sinclair Mfg. Co. v. Les Parfums de Dana, Inc., 191 USPQ at 294 (a cancelled registration is not evidence that a mark has ever been used). Finally, unlike cases in which extensive evidence of third-party use and other evidence in the record and the Court of Appeals for the Federal Circuit found to be “powerful on its face” inasmuch as “a considerable number of third parties use [of] similar marks was shown,” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015), Applicant presented one cancelled registration, well short of the volume of evidence found convincing in Juice Generation and Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015). “Vibrant” is the dominant part of Registrant’s mark VIBRANT TV NETWORK because “TV NETWORK” is highly descriptive, if not generic, when used in connection with, inter alia, “television broadcasting services” and, therefore, Registrant disclaimed the exclusive right to use it. It is well-settled that disclaimed, descriptive matter may have less significance in likelihood of confusion Serial Nos. 88794758, 88794786, 88794798, and 88796032 - 15 - determinations. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing Dixie Rests., 41 USPQ2d at 1533-34); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion.’”) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s commercial impression”). There is nothing improper in stating that, for rational reasons, we have given more or less weight to a particular feature of a mark, such as a common dominant element, provided the ultimate conclusion rests on a consideration of the marks in their entireties. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); Nat’l Data Corp., 224 USPQ at 751. Further highlighting the importance of the word “Vibrant” in Registrant’s mark VIBRANT TV NETWORK is its position as the first part of the mark. As the Court of Appeals for the Federal Circuit often has said, the lead element in a mark has a position of prominence; it is likely to be noticed and remembered by consumers and to play a dominant role in the mark. See Detroit Athletic Co., 128 USPQ2d at 1049 (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”); Palm Bay Imps., 73 USPQ2d at 1692 (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label); Serial Nos. 88794758, 88794786, 88794798, and 88796032 - 16 - Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first notice the identical lead word). Likewise, the word “Vibrant” is the dominant part of Applicant’s marks because it is either the only word in the mark, it is the first word (i.e., VIBRANT BROADBAND and VIBRANT - U), or the other words in the marks are descriptive (i.e., broadband).15 With respect to Applicant’s mark , the word “Vibrant” is the dominant part of the mark because (i) words generally dominant design elements, (ii) “Vibrant is displayed in larger print and is the visually most prominent feature of the mark, (iii) “Vibrant” is the first word, and (iv) “Broadband” is descriptive, if not generic. “In the case of marks, such as Applicant’s, consisting of words and a design, the words are normally accorded greater weight because they are likely to make a greater impression upon purchasers, to be remembered by them, and to be used by them to request the goods.” In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing Viterra, 101 USPQ2d at 1908; CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983)). That is because “[t]he word portion of a word and 15 The MACMILLAN DICTIONARY (macmillandictionary.com/dictionary/american/) defines “Broadband” as “a type of connection to the internet that allows you to receive or send a lot of information very quickly.” Examining Attorney’s Brief (13 TTABVUE 20). Serial Nos. 88794758, 88794786, 88794798, and 88796032 - 17 - design mark ‘likely will appear alone when used in text and will be spoken when requested by consumers.’” Id. (quoting Viterra, 101 USPQ2d at 1911). With respect to Applicant’s mark VIBRANT, Registrant’s mark VIBRANT TV NETWORK incorporates Applicant’s entire mark. While there is no express rule that we must find marks similar when Registrant’s mark incorporates the entirety of Applicant’s mark, these circumstances certainly increase the similarity between the two marks. See, e.g., In re Mighty Leaf Tea, 601 USPQ2d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (applicant’s mark ML is similar to opposer’s mark ML MARK LEES both for personal care and skin products); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406, 407 (CCPA 1967) (THE LILLY as a mark for women’s dresses is likely to be confused with LILLI ANN for women’s apparel including dresses); Hunter Indus., Inc. v. Toro Co., 110 USPQ2d 1651, 1660 (TTAB 2014) (applicant’s mark PRECISION is similar to opposer’s mark PRECISION DISTRIBUTION CONTROL); In re U.S. Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (CAREER IMAGE for women's clothing stores and women’s clothing likely to cause confusion with CREST CAREER IMAGES for uniforms including items of women’s clothing). In U.S. Shoe, the Board observed, “Applicant’s mark would appear to prospective purchasers to be a shortened form of registrant’s mark.” 229 USPQ at 709. Likewise, Applicant’s mark VIBRANT appears to be a shortened form of Registrant’s mark VIBRANT TV NETWORK. Serial Nos. 88794758, 88794786, 88794798, and 88796032 - 18 - As discussed above, Applicant’s internet service provider services are closely related to Registrant’s communication services, including “transmission of information in the audio-visual field; television broadcasting services; cable television broadcasting; satellite television broadcasting.” Accordingly, consumers familiar with Registrant’s VIBRANT TV NETWORK encountering Applicant’s VIBRANT BROADBAND or VIBRANT - U services may mistakenly believe that the VIBRANT BROADBAND and VIBRANT - U services are a new or related line of services emanating from the same source as the VIBRANT TV NETWORK services because the marks feature the arbitrary term “Vibrant.” Applicant argues to the contrary that the term “TV NETWORK” in Registrant’s mark VIBRANT TV NETWORK and where appropriate “BROADBAND” in Applicant’s mark VIBRANT BROADBAND provide significant and clearly distinguishing differences by distinguishing the services identified by the marks.16 However, Applicant conflates the analysis of the similarity of the marks with the similarity of the services. We are analyzing whether VIBRANT, VIBRANT BROADBAND, VIBRANT BROADBAND and design, and VIBRANT - U are similar to VIBRANT TV NETWORK. As we pointed out above, because VIBRANT is an arbitrary term entitled to a broad scope of protection and the dominant part of all the marks, consumers may mistakenly believe that Applicant’s VIBRANT, VIBRANT BROADBAND, VIBRANT BROADBAND and design, and VIBRANT - U are a variation of Registrant’s VIBRANT TV NETWORK. 16 Applicant’s Brief, p. 4 (9 TTABVUE 5). Serial Nos. 88794758, 88794786, 88794798, and 88796032 - 19 - We find that Applicant’s marks VIBRANT, VIBRANT BROADBAND, VIBRANT - U, and VIBRANT BROADBAND and design are similar to Registrant’s mark VIBRANT TV NETWORK in terms of appearance, sound, connotation and commercial impression. This factor weighs in favor of finding a likelihood of confusion. IV. Conclusion Because the marks are similar, the services are related, and Applicant and Registrant may offer the services in the same channels of trade to the same classes of consumers, we find that Applicant’s marks for “Internet access provider services; Internet service provider” are likely to cause confusion with the registered mark VIBRANT TV NETWORK for “communications services, namely, transmitting streamed sound and audio-visual recordings via the Internet, cable networks, wireless networks, satellite, or interactive multimedia networks; audio and video broadcasting services over the Internet; transmission of information in the audio- visual field; television broadcasting services; cable television broadcasting; satellite television broadcasting; mobile media services in the nature of electronic transmission of entertainment media content; video-on-demand transmission services; providing on-line chat rooms and electronic bulletin boards for transmission of messages among users in the field of general interest.” Decision: We affirm the refusal to register Applicant’s marks VIBRANT, VIBRANT BROADBAND, VIBRANT - U, and VIBRANT BROADBAND and design under Section 2(d) of the Trademark Act.