Retirement Unlimited Ltd.

Trademark Trial and Appeal Board

Jan 10, 2022

88660147 (T.T.A.B. Jan. 10, 2022)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: January 10, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Retirement Unlimited Ltd. _____ Serial No. 88660147 _____ Roger Neal Keesee, Jr. of Woods Rogers PLC, for Retirement Unlimited Ltd. Alexandra Horn, Trademark Examining Attorney, Law Office 120, David Miller, Managing Attorney. _____ Before Kuhlke, Coggins, and Lebow, Administrative Trademark Judges. Opinion by Coggins, Administrative Trademark Judge: Retirement Unlimited Ltd. (“Applicant”) seeks registration on the Principal Register of the composite word-and-design mark at right for “beauty salon services, namely beauty, cosmetic, hair and body treatments at locations within assisted living facilities,” in International Class 44.1 1 Application Serial No. 88660147 was filed on October 18, 2019, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide intention to use the mark in commerce. The application contains the following statements: “The mark consists of a gold swirl design above the words ‘LUXE UNLIMITED’ in grey. All instances of white represent transparent background” and “[t]he colors gold and grey are claimed as a feature of the mark.” Serial No. 88660147 - 2 - 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 beauty salon services identified in the application, so resembles the stylized mark LUXE at left for “beauty salon and health spa services, namely, cosmetic body care services, massage therapy, skin care treatments, beauty care treatments, facials and body waxing services,” in International Class 44,2 on the Principal Register as to be likely to cause confusion, to cause mistake, or to deceive. After the Trademark Examining Attorney made the refusal final, the application abandoned for Applicant’s failure to respond. Applicant filed a petition to revive the abandoned application concurrently with an appeal to this Board. Once the petition was granted, the appeal was instituted and briefed. For the reasons discussed below, we affirm the refusal to register. I. Evidentiary Issue Applicant embedded in its appeal brief a list of purported third-party registrations for marks containing the term “luxe.” 6 TTABVUE 14.3 The Examining Attorney objects to the evidence as untimely and insufficient to make the registrations properly of record. 8 TTABVUE 4. The objection is well taken. The list of marks is untimely 2 Registration No. 4912422, issued March 8, 2015. The registration contains the following statements: “The mark consists of the word ‘LUXE’ with the ‘X’ in larger text” and “[c]olor is not claimed as a feature of the mark.” Sections 8 and 15 combined declaration accepted and acknowledged. 3 Citations to the briefs in the appeal record refer to the TTABVUE docket system. Citations to the prosecution file refer to the .pdf version of the TSDR system record. In re Consumer Protection Firm PLLC, 2021 USPQ2d 238, *3 n.3 (TTAB 2021). Serial No. 88660147 - 3 - inasmuch as the evidentiary record in an application should be complete prior to the filing of an ex parte appeal to the Board. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d). In addition, the submission of a list of registrations does not make such registrations part of the record. In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012) (mere listing of third-party registrations in brief insufficient to make them of record); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 1208.02 (2021). We will give the list, and arguments based thereon, no further consideration. II. Likelihood of Confusion Section 2(d) of the Trademark Act provides that a proposed mark, for which application has been made, may be refused registration if it “[c]onsists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods [or services] of the applicant, to cause confusion, or to cause mistake, or to deceive . . . .” 15 U.S.C. § 1052(d). Our determination under Section 2(d) involves an analysis of all of the probative evidence of record 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). We Serial No. 88660147 - 4 - consider each DuPont factor for which there is evidence and argument. In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). In applying the DuPont factors, we bear in mind the fundamental purposes underlying Trademark Act Section 2(d), which are to prevent confusion as to source and to protect registrants from damage caused by registration of confusingly similar marks. Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 224 USPQ 327, 331 (1985); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161, 1163 (1995); DuPont, 177 USPQ at 566. Varying weights may be assigned to the various DuPont factors depending on the evidence presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“the various evidentiary factors may play more or less weighty roles in any particular determination”). Two key considerations are the similarities between the marks and the relatedness of the services. See In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017); In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004). Applicant argues these first two DuPont factors as well as the third, fourth, fifth, and sixth factors. We address each factor below. A. Similarity or Dissimilarity of the Services, Trade Channels, and Classes of Consumers We begin with the second and third DuPont factors which consider “[t]he similarity or dissimilarity and nature of the goods or services as described in an application or registration,” and “the similarity or dissimilarity of established, likely- Serial No. 88660147 - 5 - to-continue trade channels.” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 and 1052 (Fed. Cir 2018) (quoting DuPont, 177 USPQ at 567). We must base our comparison of the services and trade channels on the identifications of services in the involved applications and cited registration. See Stone Lion Cap. Partners, LP v. Lion Cap. LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); 2014); In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The services need not be identical or directly competitive for there to be a likelihood of confusion, but the evidence must establish that the services are related in some manner, or that the conditions surrounding their marketing are such, that they would be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the services come from a common source. Coach Servs. Inc. v. Triumph Learning LLC, 688 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993); In re Rexel, Inc., 223 USPQ 830, 831 (TTAB 1984). It is sufficient for a finding of likelihood of confusion if relatedness is established for any service encompassed within the identification in a particular class. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Double Coin Holdings Ltd. v. Tru Dev., 2019 USPQ2d 377409, at *6 (TTAB 2019); In re Aquamar, Inc., 115 USPQ2d 1122, 1126, n.5 (TTAB 2015). Serial No. 88660147 - 6 - The services in the application are “beauty salon services, namely beauty, cosmetic, hair and body treatments at locations within assisted living facilities,” and the services in the registration are “beauty salon and health spa services, namely, cosmetic body care services, massage therapy, skin care treatments, beauty care treatments, facials and body waxing services.” Because Registrant’s cosmetic body care services and beauty care treatments encompass Applicant’s more narrowly identified beauty, cosmetic, and body treatments “within assisted living facilities,” the services are legally identical, in part. Applicant argues that its “services are provided inside an assisted living facility and are tailored only to residents of such facilities,” 6 TTABVUE 11, while “Registrant’s services focus on massage and are offered to members with memberships.” Id. (citing Ex. 3, 6 TTABVUE 20-23; also submitted with its July 29, 2020 Response to Office Action at TSDR 11).4 The Examining Attorney notes, however, that while Applicant’s services include a restriction on channels of trade to “locations within assisted living facilities,” the services in the cited registration have no restrictions as to their nature, type, channels of trade, or classes of purchasers. 8 TTABVUE 11. 4 Attaching previously-filed evidence to a brief and citing to the attachments, rather than to the original submissions, is discouraged and a waste of resources. In re Michalko, 110 USPQ2d 1949, 1950 (TTAB 2014). As the Board explained in Michalko, “[w]hen considering a case for final disposition, the entire record is available to the panel,” and “[b]ecause we must determine whether attachments to briefs are properly of record, citation to the attachment requires examination of the attachment and then an attempt to locate the same evidence in the record developed during the prosecution of the application,” which requires “more time and effort than would have been necessary if citations directly to the prosecution history were provided.” Id. at 1950-51. Serial No. 88660147 - 7 - Applicant’s evidence about Registrant’s services cannot be used to restrict the scope of the broad registration. Stone Lion, 110 USPQ2d at 1162 (Board must “give full sweep” to an identification of services regardless of registrant’s actual business); In re Bercut-Vanderboort & Co., 229 USPQ 763, 764-765 (TTAB 1986) (“[T]he question of likelihood of confusion must be determined by an analysis of the marks as applied to the [services] identified in the application vis-à-vis the [services] recited in the registration, rather than what extrinsic evidence shows those [services] to be.”). Because there are no limitations or restrictions in the cited registration as to the trade channels or classes of purchases for the beauty salon and health spa services, “we must presume that those . . . services are offered in all normal trade channels and to all normal classes of purchasers for such . . . services . . . including the same trade channels as those in which [A]pplicant’s services are marketed, and would include the same classes of purchasers” at locations within assisted living facilities. In re Ass’n of the U.S. Army, 85 USPQ2d 1264, 1272 (TTAB 2007). See also, In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even in absence of evidence regarding channels of trade and classes of consumers, where goods at issue were identical Board “entitled to rely on this legal presumption” that trade channels and consumers also were identical); Lincoln Nat’l Corp. v. Anderson, 110 USPQ2d 1271, 1283 (TTAB 2014) (when services are legally identical in part, we “presume and find that the trade channels and purchasers for the respective services likewise are similar and in part legally identical”); L. & J.G. Stickley, Inc. v. Cosser, 81 USPQ2d 1956, 1971 (TTAB 2007) (“Because the goods of both parties are at least Serial No. 88660147 - 8 - overlapping, we must presume that the purchasers and channels of trade would at least overlap.”); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981) (“[W]here the goods in a cited registration are broadly described and there are no limitations in the identification of goods as to their nature, type, channels of trade or classes of purchasers, it is presumed that the scope of the registration encompasses all goods of the nature and type described, that the identified goods move in all channels of trade that would be normal for such goods, and that the goods would be purchased by all potential customers.”). In view of the in-part legal identity of the services and the lack of limitation to the trade channels in the cited registration, the second and third DuPont factors favor a finding of likelihood of confusion. B. Consumer Sophistication The fourth DuPont factor considers “[t]he conditions under which and buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.” Stone Lion, 110 USPQ2d at 1162 (quoting DuPont, 177 USPQ at 567). Applicant argues that “the purchasing environment is a critical factor to be considered in this” appeal, 6 TTABVUE 11, and that Applicant’s and Registrant’s services “are not purchased on impulse,” but are selected after “great thought, research and care,” id. at 12, by consumers who “are sophisticated and only make selections after diligence which often times includes interviews (in person or via phone) with detailed questions about . . . qualifications of the service provider . . . .” Id. at 12-13. Serial No. 88660147 - 9 - Applicant, however, submitted no evidence of the cost of beauty salon or health spa services nor evidence of how consumers make purchasing decisions for them, and Applicant does not otherwise point to any evidence in the record to demonstrate that consumers of beauty salon and health spa services are sophisticated or would exercise a heightened degree of care. Because it is well settled that “[a]ttorney argument is no substitute for evidence,” Cai v. Diamond Hong, 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) (quoting Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005)), Applicant’s mere argument has no impact on our decision. The standard of care is that of the least sophisticated potential purchaser, Stone Lion, 110 USPQ2d at 1163, and there is no evidence of record to suggest that consumers of beauty salon services are sophisticated or only make service selection with diligence and after interviewing service providers. We find the fourth DuPont factor to be neutral. C. Strength of the Cited Mark, Including the Number and Nature of Similar Marks in use for Similar Services The fifth DuPont factor, the “fame” or strength of the prior mark, and the sixth factor, “the number and nature of similar marks in use [for] similar [services],” DuPont, 177 USPQ at 567, may be considered in tandem to determine the strength of the cited mark and the scope of protection to which it is entitled. Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1345 (TTAB 2017). Applicant argues that “the strength or weakness of the cited mark[] can be the most important” issue in this appeal. 6 TTABVUE 13. Serial No. 88660147 - 10 - In determining strength of the cited mark, 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).”). Turning first to inherent strength, Applicant argues that “while maybe not descriptive,” the registered mark is conceptually weak because it “is suggestive ([‘]luxe[’] means luxury and spa/salon services are viewed as a luxury) and must be accorded a narrow scope of protection.” 6 TTABVUE 13. Applicant focuses on the literal element LUXE in the cited mark, arguing “that the ‘dominant’ feature of the [cited m]ark is the word ‘LUXE’ which is used widely in the beauty and salon industry for luxury and luxurious and is suggestive.”5 Id. We agree that the cited mark as a whole is not descriptive. Because it is registered on the Principal Register without a claim to acquired distinctiveness, it is entitled to a presumption of validity under Sections 7(b) and 33(a) of the Trademark Act, 15 U.S.C. § 1057(b) and 1115(a), including that it is inherently distinctive for the services at issue. In re Fiesta Palms LLC, 85 USPQ2d 1360, 1363 (TTAB 2007); Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006). 5 Applicant does not mention in its brief the TESS printout of a list of third-part applications for marks containing the term “luxe” which it attached to the July 29, 2020 Response to Office Action at TSDR 17-18. This list is unhelpful for several reasons including that (1) third-party applications, as opposed to registrations, have no probative value other than as evidence that the applications were filed, and (2) it provides only the serial numbers of the applications, the wording in the marks, and whether they are live or dead (all are “live”). See TBMP § 1208.02. Serial No. 88660147 - 11 - Nonetheless, we may acknowledge the weakness of a registered mark in the course of a DuPont analysis. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1517-18 (TTAB 2016). There is no definition of LUXE of record, but we take judicial notice that it is defined as “[s]omething luxurious; a luxury.”6 Although Applicant provided no evidence that the beauty salon and health spa services identified in the cited registration would be considered luxuries, we find that based solely on the definition of the word “luxe,” the literal element LUXE in the cited mark conveys a laudatorily suggestive meaning. Turning next to commercial strength, while there is no evidence relating to commercial strength under the fifth DuPont factor,7 Applicant argues under the sixth factor that LUXE “is used widely in the beauty and salon industry.” 6 TTABVUE 13. In support of this argument, Applicant points to a Google search results page responsive to the search query “luxe salon.” July 29, 2020 Response to Office Action at TSDR 15-16. However, search summaries such as this Google results page have 6 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (ahdictionary.com, accessed January 6, 2022). The Board may sua sponte take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including definitions in online dictionaries that exist in printed format or have regular fixed editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016). 7 In an ex parte appeal, the owner of the cited registration is not a party, and the Examining Attorney is under no obligation to demonstrate exposure to or recognition of the cited mark in the marketplace. In re Integrated Embedded, 120 USPQ2d 1504, 1512 (TTAB 2016). For that reason, “in ex parte proceedings, the . . . [fifth DuPont] factor is usually treated as neutral in such proceedings.” TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 1207.01(d)(ix) (July 2021). Serial No. 88660147 - 12 - limited probative value because they are in the nature of listings of documents (i.e., the websites to which the summary links) rather than documents themselves, see Edom Lab. Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012); Calypso Tech., Inc. v. Calypso Capital Mgmt., LP, 100 USPQ2d 1213, 1219 (TTAB 2011), and the list of Internet search results has little probative value because it may not show the context in which the term “luxe” is used on the listed web pages. See 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 the website pages that show how the term is actually used. Nevertheless, we review the hit list to glean whatever value it has. To the extent that we can extract context and content from the search summary, we have no idea if the summary lists hits or locations for licensees of Registrant, or multiple locations for other third-parties, but we assume it does not. Even assuming that each hit is a separate entity, these ten third-party uses of the term “luxe,” without any evidence regarding the extent to which that term is used or the impact of such use, does not dilute the strength of Registrant’s mark. See Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1059 (TTAB 2017) (“As to commercial weakness, ‘[t]he probative value of third-party trademarks depends entirely upon their usage.”’) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 369 F.3d 1369, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005)). Serial No. 88660147 - 13 - Applicant’s lack of evidence of third-party registration of “luxe,” and minimal evidence of third-party use of the term “luxe” for beauty salon and health spa services that we have found to have diminished value, is a far cry from the large quantum of evidence of third-party use and third-party registrations that was held to be significant in both 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), and Juice Generation v. GS Enters., LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). See also In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018). On the present record, we find that the cited mark is entitled to no less than the normal scope of protection accorded to any inherently distinctive mark. Even if it were entitled to a slightly reduced level of protection due to the suggestive nature of the literal element LUXE, “even weak marks are entitled to protection against confusion.” Hunt Control Sys. Inc. v. Koninklijke Philips Elecs. N.V., 98 USPQ2d 1558, 1567-68 (TTAB 2011) (quoting King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974)). See also In re Max Cap. Grp. Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010) (“[E]ven suggestive or weak marks are entitled to protection from the use of a very similar mark for legally identical services”); In re Great Lakes Canning, Inc., 227 USPQ 483, 485 (TTAB 1985) (“[T]he fact that a mark may be somewhat suggestive does not mean that it is a ‘weak’ mark entitled to a limited scope of protection”). Serial No. 88660147 - 14 - D. Similarity or Dissimilarity of the Marks Under the first DuPont factor, we consider “the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imps., 73 USPQ2d at 1691 (quoting DuPont, 177 USPQ at 567). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” Inn at St. John’s, 126 USPQ2d at 1746 (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). We keep in mind that the legal identity of the services reduces the degree of similarity between the marks necessary for confusion to be likely. See, e.g., Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); In re RiseSmart Inc., 104 USPQ2d 1931, 1935 (TTAB 2012) (because “the services are legally identical, the degree of similarity between the marks necessary to support a determination that confusion is likely declines”) (citing Viterra, 101 USPQ2d at 1908). Applicant argues that the marks are “drastically different in . . . visual appearance” due to the “prominent gold colored circle design” in its proposed mark and the “large stylized ‘X’” in the cited mark. 6 TTABVUE 8. We acknowledge that when the marks and are viewed next to each other, there are visual dissimilarities. For example, Applicant’s mark contains a curl design within a golden circle, while Registrant’s mark contains an exaggerated X. On the other hand, the marks appear similar to the extent each contains the word LUXE, Serial No. 88660147 - 15 - and this similarity is made apparent with the presentation of LUXE in bold at the beginning of Applicant’s mark which emphasizes this element. However, the proper test regarding similarity “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, 127 USPQ2d at 1801 (quoting Coach Servs. v. Triumph Learning, 101 USPQ2d at 1721) (internal quotation marks and citation omitted). “The proper perspective on which the analysis must focus is on the recollection of the average customer, who retains a general rather than specific impression of marks.” In re i.am.symbolic, llc, 127 USPQ2d 1627, 1630 (TTAB 2018) (citations omitted). The Examining Attorney argues that “when evaluating a composite mark consisting of words and a design or stylization, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the . . . services,” 8 TTABVUE 5, and that “consumers are generally more inclined to focus on the first word” in Applicant’s mark. 8 TTABVUE 6. Applicant counters that that “[t]here is no general rule as to whether letters or designs will dominate in composite marks; nor is the dominance of letters or design dispositive of the issue.” 6 TTABVUE 10 (quoting In re Electrolyte Labs., Inc., 913 F.2d 930, 16 USPQ2d 1239, (Fed. Cir. 1990)). Where both words and a design comprise a mark, the words are normally accorded greater weight because they are more likely to make an impression upon purchasers, Serial No. 88660147 - 16 - would be remembered by them, and would be used by them to call for or discuss the services. Viterra, 101 USPQ2d at 1912 (citing CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983) (“[I]n a composite mark comprising a design and words, the verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed.”)). The word LUXE is the only verbal portion of the cited mark, while the words LUXE UNLIMITED are the verbal portion of Applicant’s mark. The marks are similar in sound to the extent that each contains or comprises LUXE. The design elements of the marks serve to reinforce the LUXE wording in each mark. As discussed below in the analysis of the connotation of the marks, the gold design in Applicant’s mark suggests luxury, while the exaggerated X in Registrant’s mark emphasizes the literal LUXE element to imply that the luxury is large or outsized. We find the word LUXE to be the dominant word in Applicant’s mark. In addition to being the first word in that mark, it is bolded and therefore more prominent than the lighter, trailing word UNLIMITED which modifies the suggestive LUXE to indicate that Applicant’s services are “[w]ithout qualification or exception; absolute.”8 See Palm Bay Imps., 73 USPQ2d at 1692 (“To be sure, CLICQUOT is an important term in the mark [VEUVE CLICQUOT], but VEUVE nevertheless remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label.”); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 8 We take judicial notice of the definition of “unlimited.” THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (ahdictionary.com, accessed January 6, 2022). Serial No. 88660147 - 17 - 1988) (“Although there are differences in appearance between the marks [KID WIPES and KID STUFF], there are also similarities between them in that both start with the term ‘KID’ (a matter of some importance since it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered) and have the same number of letters and syllables.”). See also Detroit Athletic Co., 128 USPQ2d at 1049 (“The identity of the marks’ initial two words is particularly significant because consumers typically notice those words first.”). In addition, the commercial impressions and connotations of the marks are highly similar: each mark suggests luxury. As indicated above, the trailing word UNLIMITED in Applicant’s mark modifies LUXE, indicating that Applicant’s services are luxurious without qualification. The gold design in Applicant’s mark reinforces the connotation of luxury. Similarly, the exaggerated X in the cited mark emphasizes the literal LUXE portion to imply that the luxury is large or outsized. Even considering the suggestive nature of LUXE, in the context of the in-part legally identical services, use of the word LUXE, whether reinforced with a golden design or an exaggerated X, is likely to have the same suggestive connotation in each mark. See In re 1st USA Realty Pros., 84 USPQ2d 1581, 1586-87 (TTAB 2007) (finding that the respective marks carry the identical suggestive connotation). As indicated above, similarity in any one of the elements of appearance, sound, connotation, or commercial impression may be sufficient to find the marks confusingly similar. Inn at St. John’s, 126 USPQ2d at 1746. We find similarity in three: the marks have similar sounds when spoken, create similar commercial Serial No. 88660147 - 18 - impressions, and convey similar connotations when used in connection with legally identical services. Although the marks have some visual differences when viewed side-by-side, the overall import of the differences are minimized because the marks carry highly similar commercial impressions and connotations. Further, where the services are legally identical, as they are in part in this case, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse services. See In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (citing Coach Servs., 101 USPQ2d at 1721); United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014) (quoting Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992)). The first DuPont factor weighs in favor of finding a likelihood of confusion. E. Summary on Likelihood of Confusion We find the services to be in-part legally identical. Because Registrant’s services are unrestricted, the services are presumptively offered in overlapping trade channels to overlapping classes of purchasers. There is no evidence of consumer sophistication. While the term LUXE may be suggestive of Registrant’s services, the cited mark is distinctive and entitled to a normal scope of protection. While there are visual differences between the marks, they have similar sounds, commercial impressions, and connotations. On balance, we find that confusion is likely. Serial No. 88660147 - 19 - III. Decision The refusal to register Applicant’s mark is affirmed.