Priori Planner Inc.

This Opinion is Not a
Precedent of the TTAB

Mailed: July 2, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Priori Planner Inc.
_____

Serial No. 87835651
_____

Gene Bolmarcich of Law Offices of Gene Bolmarcich,
for Priori Planner Inc.

Carl A. Konschak, Trademark Examining Attorney, Law Office 126,
Andrew Lawrence, Managing Attorney.

_____

Before Mermelstein, Lynch and Hudis,
Administrative Trademark Judges.

Opinion by Hudis, Administrative Trademark Judge:

Priori Planner Inc. (“Applicant”) seeks registration on the Principal Register of

the mark PRIORI PLANNER (in standard characters with the term “Planner”

disclaimed) for “day planners” in International Class 16.1 The Examining Attorney

refused registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the

1 Application
Serial No. 87835651 filed on March 15, 2018 under Trademark Act Section 1(a),
15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and first use in
commerce since at least as early as March 8, 2018.
Serial No. 87835651

ground that Applicant’s mark, as applied to the goods identified in the application, so

resembles the registered marks, owned by the same entity:

PRIORITY (in standard characters)

for:

“Looseleaf binders containing appointment calendars and forms for recording
and filing information, designed to be used as timekeeping and reminder
systems” – in International Class 16.
“Business consultation services in the field of marketing, negotiating business
contracts and sales techniques” – in International Class 35.
“Educational services, namely, conducting instructional seminars in time
management and organization for executives” – in International Class 41.2

and PRIORITY MANAGER Stylized as follows:

for:

“Looseleaf binders containing appointment calendars and forms for recording
and filing information, designed to be used as timekeeping and reminder
systems” – in International Class 16.3

on the Principal Register as to be likely to cause confusion, to cause mistake, or to

deceive.

After the Examining Attorney made the refusal final, Applicant appealed to this

Board. Applicant and the Examining Attorney filed briefs. We affirm the refusal to

register.

2 Registration No. 2718784, issued May 27, 2003; first renewal.
3 Registration No. 2209176, issued December 8, 1998; second renewal.

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Serial No. 87835651

I. Background

In the first Office Action, the Examining Attorney issued his likelihood of

confusion refusal and inquired whether “PRIORI” in Applicant’s mark had any

meaning in a foreign language.4 With the first Office Action, the Examining Attorney

made the following items of record:

1. Registration No. 2718784 (PRIORITY);5
2. Registration No. 2209176 (PRIORITY MANAGER & Design);6
3. Definition of “A Priori” – THE AMERICAN HERITAGE DICTIONARY OF THE
ENGLISH LANGUAGE
https://www.ahdictionary.com/word/search.html?q=a+priori (last visited
June 26, 2018);7
4. Definition of “Priority” – THE AMERICAN HERITAGE DICTIONARY OF THE
ENGLISH LANGUAGE
https://www.ahdicbonary.com/word/search.html?q=priority (last visited
June 26, 2018);8
5. The “About Us” page from Applicant’s website
https://www.myprioriplanner.com/about-us/ (last visited June 26, 2018);9
and
6. Italian to English translation of “Priori” – COLLINS ITALIAN TO ENGLISH
DICTIONARY

4 Office Action of June 28, 2018 TSDR 2-4. Page references herein to the application record
refer to the online database of the USPTO’s Trademark Status & Document Retrieval
(“TSDR”) system. All citations to documents contained in the TSDR database are to the
downloadable .pdf versions of the documents. References to the briefs on appeal refer to the
Board’s TTABVUE docket system. Coming before the designation TTABVUE is the docket
entry number; and coming after this designation are the page references, if applicable.
5 Id. at TSDR 9-10.
6 Id. at TSDR 7-8.
7 Id. at TSDR 12.
8 Id. at TSDR 14.
9 Id. at TSDR 16.

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Serial No. 87835651

https://www.collinsdictionary.com/dictionary/italian-english/priori (last
visited June 26, 2018).10

In its Response to the first Office Action, Applicant responded to the Examining

Attorney’s inquiry by stating that the wording “PRIORI” had no meaning in a foreign

language, and also submitted arguments traversing the Section 2(d) refusal to

register.11 With its Office Action Response, Applicant made the following of record:

1. Definition of “A Priori” – MERRIAM-WEBSTER (no Internet URL or print date
given).12

In the second Office Action, the Examining Attorney continued and made final his

refusal to register under Section 2(d), and advised that Applicant had satisfied the

Examining Attorney’s inquiry whether “PRIORI” had any meaning in a foreign

language.13 With the second Office Action, the Examining Attorney made the

following items of record:

1. Definition of “Manage” – THE AMERICAN HERITAGE DICTIONARY OF THE
ENGLISH LANGUAGE
https://www.ahdictionary.com/word/search.html?q=manage (last visited
December 9, 2018);14
2. Definition of “Manager” – THE AMERICAN HERITAGE DICTIONARY OF THE
ENGLISH LANGUAGE
https://www.ahdictionary.com/word/search.html?q=manager (last visited
December 9, 2018);15

10 Id. at TSDR 27.
11 Response to Office Action of October 28, 2018 TSDR 5-9.
12 Id. at TSDR 10.
13 Office Action of December 21, 2018 TSDR 3-7.
14 Id. at TSDR 9.
15 Id. at TSDR 11.

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Serial No. 87835651

3. Mead Simplicity 2-Year Monthly Pocket Planner – advertised for sale on
the MEAD website
https://www.mead.com/mead/browse/product/Simplicity+2-
Year+Monthly+Pocket+ Planner/TL4720 (last visited December 21,
2018);16
4. Day Runner Harrison Slim Profile Starter Set Planner – advertised for sale
on the MEAD website
https:/www.mead.com/mead/browse/product/Harrison+Slim+Profile+Start
er+Set/307-0304 (last visited December 21, 2018);17
5. Daily Undated Wire-bound 31-Day Planner – advertised for sale on the
FRANKLIN PLANNER website
https://shop.franklinplanner.com/store/buy/Daily/Daily-Undated-Wire-
bound-31-Day-Planner/prod2030023/?skuld=33193 (last visited December
21, 2018);18
6. Basics Binder and Planner Bundle Planner – advertised for sale on the
FRANKLIN PLANNER website
https://shop.franklinplanner.corn/store/buy/BF-Planner-Bundles/Basics-
Binder-and-Planner-Bundle/prod4080004/?skuld=69285 33193 (last visited
December 21, 2018);19
7. AT-A-GLANCE Day Runner Weekly Planner Refill Size 2 – advertised for
sale on the DAY RUNNER website
https://www.dayrunner.com/dayrunner/browse/product/Weekly+Planner+
Refill+ Size+2/064-287 (last visited December 21, 2018);20
8. Day Runner Tempo Day Planner 2 – advertised for sale on the DAY RUNNER
website
https://www.dayrunner.corn/dayrunner/browse/product/Tempo+Day+Plan
ner/2102-0386 (last visited December 21, 2018);21
9. Spiral Planners 2 – advertised for sale on the CARPE DIEM website
https://carpediemplanners.com/pages/collection-04 (last visited December
21, 2018);22

16 Id. at TSDR 13.
17 Id. at TSDR 18.
18 Id. at TSDR 23.
19 Id. at TSDR 25.
20 Id. at TSDR 27.
21 Id. at TSDR 32.
22 Id. at TSDR 37.

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Serial No. 87835651

10. A5 Planners – advertised for sale on the CARPE DIEM website
https://carpediemplanners.com/pages/collection-02 (last visited December
21, 2018);23
11. TUL™ Custom Note-Taking System Discbound Notebook, Letter Size,
Leather Cover, Gray – advertised for sale on the OFFICE DEPOT OFFICE MAX
website
https://www.officedepot.com/a/products/415748/TUL-Custom-Note-Taking-
System-Discbound/;jsessionid=0000IVwl
ExqzNBSiV52noaFSJq:17h4h7ado (last visited December 21, 2018);24
12. TUL™ Custom Note-Taking System Discbound Monthly Teacher Planner,
8 1/2″ x 11”, Navy, July 2018 to June 2019 – advertised for sale on the
OFFICE DEPOT OFFICE MAX website
https://www.officedepot.com/a/products/745091/TUL-Custom-Note-Taking-
System-Discbound/ (last visited December 21, 2018);25
13. TUL™ Custom Note-Taking System Discbound Weekly/Monthly Refill
Pages, 8 1/2″ x 11″, White, January to December 2019 – advertised for sale
on the OFFICE DEPOT OFFICE MAX website
https://www.officedepot.corm/a/products/3936833/TUL-Custom-Note-
Taking-System-Discbound/ (last visited December 21, 2018);26
14. Vinyl Binders – advertised for sale on the PRIORITY website
https://pmusastore.com/usastore/vinyl-binders (last visited December 21,
2018);27
15. 2019 One-Page Annual Supply Pack – Junior – advertised for sale on the
PRIORITY website
https://pmusastore.com/usastore/2018-one-page-annual-supply-pack (last
visited December 21, 2018);28

23 Id. at TSDR 40.
24 Id. at TSDR 48.
25 Id. at TSDR 53.
26 Id. at TSDR 58.
27Id. at TSDR 62. This website and products shown therein appear to be affiliated with the
owner of Registration No. 2718784 (PRIORITY) and Registration No. 2209176 (PRIORITY
MANAGER & Design) cited by the Examining Attorney as the bases for the likelihood of
confusion refusal to register Applicant’s mark.
28 Id. at TSDR 64. Again, this website and products shown therein appear to be affiliated
with the owner of Registration No. 2718784 (PRIORITY) and Registration No. 2209176
(PRIORITY MANAGER & Design) cited by the Examining Attorney as the bases for the
likelihood of confusion refusal to register Applicant’s mark.

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Serial No. 87835651

II. Evidentiary Issue

Before proceeding to the merits of the refusal, we address an evidentiary matter.

In his Brief, the Examining Attorney objects to Applicant’s submission of the online

definition of “A Priori” from MERRIAM-WEBSTER because no Internet URL or print

date were given. See Safer Inc. v. OMS Invs. Inc., 94 USPQ2d 1031, 1039 (TTAB 2010)

and In re I-Coat Co., 126 USPQ2d 1730, 1733 (TTAB 2018) (applying the Safer rule

to evidence submitted by examining attorneys and applicants in ex parte cases); see

also 37 C.F.R. § 2.122(e)(2) (internet materials admissible in inter partes proceedings

if “the date the internet materials were accessed and their source (e.g., URL) are

provided.”).

The Examining Attorney’s objection is well taken, and we thus give the online

definition of “A Priori” submitted by Applicant no consideration. We hasten to add,

however, that the Examining Attorney himself submitted an online definition of “A

Priori” from a different online dictionary. We will use the Examining Attorney’s

submitted definition, since it was properly made of record.

III. Applicable Law

We base our determination of likelihood of confusion under Trademark Act Section

2(d), 15 U.S.C. § 1052(d), on an analysis of all of the probative facts in evidence that

are relevant to the factors enunciated in In re E. I. du Pont de Nemours & Co., 476

F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”), cited in B&B Hardware, Inc.

v. Hargis Indus., Inc., 575 U.S. __, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015);

see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.

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Serial No. 87835651

2003). We must consider each DuPont factor for which there is evidence and

argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-

63 (Fed. Cir. 2019). However, “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).

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. We have considered each DuPont factor that is

relevant and of record, and have treated any other factors as neutral. See M2

Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir.

2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB

2015) (“While we have considered each factor for which we have evidence, we focus

our analysis on those factors we find to be relevant.”).

Varying weights may be assigned to each DuPont factor depending on the evidence

presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98

USPQ2d 1253, 1261 (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 similarities between the goods. See In re

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Serial No. 87835651

i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting

Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375 (Fed. Cir.

2002) (“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.’”)).

IV. Analysis

We now review the arguments of Applicant and the Examining Attorney in view

of applicable law and the evidence of record.

A. The Registered Mark that is compared to Applicant’s Mark on
this Appeal

For purposes of the DuPont factors that are relevant to this appeal, we will

consider the cited standard-character PRIORITY mark and identified goods in Class

16 that is the subject of cited Registration No. 2718784 (the “`274 Registration”),

identifying “looseleaf binders containing appointment calendars and forms for

recording and filing information, designed to be used as timekeeping and reminder

systems” If likelihood of confusion is found as to the mark and Class 16 goods in the

`274 Registration, it is unnecessary to consider the PRIORITY MANAGER (Stylized)

mark and goods of Registration No. 2209176 (the “`176 Registration”) also cited by

the Examining Attorney and reciting the same Class 16 goods as in the `274

Registration. Conversely, if likelihood of confusion is not found as to the mark and

goods in the `274 Registration, we would not find likelihood of confusion as to the

mark and goods in the `176 Registration. In re I-Coat Co., 126 USPQ2d at 1734 (citing

In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010)).

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Serial No. 87835651

B. Comparison of the Goods and Channels of Trade

The second DuPont factor concerns the “similarity or dissimilarity and nature of

the goods or services as described in an application or registration…,” and the third

factor concerns the “similarity or dissimilarity of established, likely-to-continue trade

channels.” DuPont, 177 USPQ at 567; Stone Lion Capital Partners, LP v. Lion Capital

LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1359 (Fed. Cir. 2014).

We compare the Class 16 goods as identified in the Application and in the `274

Registration. See Stone Lion 110 USPQ2d at 1162 (quoting Octocom Sys., Inc. v.

Houston Comput. Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)

(“The authority is legion that the question of registrability of an applicant’s mark

must be decided on the basis of the identification of goods set forth in the application

regardless of what the record may reveal as to the particular nature of an applicant’s

goods, the particular channels of trade or the class of purchasers to which the sales

of goods are directed.”)); See also In re FabFitFun, Inc., 127 USPQ2d 1670, 1672

(TTAB 2018).

The respective identified Class 16 goods are identical in part. Applicant’s broadly

worded “day planners”29 encompass the Registrant’s more narrowly worded “looseleaf

binders containing appointment calendars and forms for recording and filing

29 In the online version of the MERRIAM-WEBSTER dictionary, one definition of “Planner” is
“something (such as a device, program, or notebook) that provides a schedule and is used for
planning activities, travels, etc.” The Board may take judicial notice of dictionary definitions,
including online dictionaries that exist in printed format, definitions in technical dictionaries,
translation dictionaries and online dictionaries. See In re White Jasmine LLC, 106 USPQ2d
1385, 1392 n.23 (TTAB 2013) (Board may take judicial notice of online dictionaries that exist
in printed format or have regular fixed editions). We provide this definition for completeness,
because it was not made of record by Applicant or the Examining Attorney.

– 10 –
Serial No. 87835651

information, designed to be used as timekeeping and reminder systems.” 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 re Linkvest S.A., 24

USPQ2d 1716, 1716 (TTAB 1992) (“Registrant’s goods are broadly identified as

computer programs recorded on magnetic disks, without any limitation as to the kind

of programs or the field of use. Therefore, we must assume that registrant’s goods

encompass all such computer programs including those which are for data integration

and transfer.”).

Given the legal identity of the goods, and the lack of restrictions or limitations in

the Application and the `274 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. 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 Board entitled to rely on this legal presumption in

determining likelihood of confusion). See also L. & J.G. Stickley, Inc. v. Cosser, 81

USPQ2d 1956, 1971 (TTAB 2007) (“Because the goods of both parties are at least

overlapping, we must presume that the purchasers and channels of trade would at

least overlap.”).

Over and above the legal presumption of overlap in the Class 16 goods and trade

channels due to what is recited in the Application and the `274 Registration, as

discussed above the Examining Attorney made of record portions of six websites

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Serial No. 87835651

showing Applicant’s type of goods and the Registrant’s type of goods in Class 16 made

available for purchase under the same mark from the same source. This evidence

demonstrates, at least from the face of these submitted website pages, relatedness of

the goods and an actual overlap in channels of trade. See In re Detroit Ath. Co., 903

F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018).

The second and third DuPont factors weigh in favor of a finding that confusion is

likely.

C. Comparison of Applicant’s Mark to the Cited Mark in the `274
Registration

Under the first DuPont factor, we determine the similarity or dissimilarity of

Applicant’s and the Registrant’s marks in their entireties, taking into account their

appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at

567; Detroit Ath., 128 USPQ2d at 1048. “Similarity in any one of these elements may

be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810,

1812 (TTAB 2014). See also, In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB

2016).

Under actual marketing conditions, consumers do not necessarily have the luxury

of making side-by-side comparisons between marks, and must instead rely upon their

imperfect recollections. Puma-Sportschuhfabriken Rudolf Dassler KG v. Roller Derby

Skate Corp., 206 USPQ 255, 259 (TTAB 1980). “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

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Serial No. 87835651

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).

To be sure, the parties’ 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) (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565

F.2d 683, 196 USPQ 1 (CCPA 1977)). Therefore, the focus is on the recollection of the

average purchaser, who normally retains a general rather than a specific impression

of trademarks. In re Assoc. of the U.S. Army, 85 USPQ2d 1264, 1268 (TTAB 2007). In

this appeal, because the Class 16 goods at issue are “day planners” and “looseleaf

binders containing appointment calendars and forms for recording and filing

information, designed to be used as timekeeping and reminder systems,” the average

purchaser is an ordinary adult consumer.

Because the similarity or dissimilarity of the marks is determined based on the

marks in their entireties, our analysis cannot be predicated on dissecting the marks

into their various components; that is, the decision must be based on the entire

marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ

749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d

1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be

dissected and considered piecemeal; rather, it must be considered as a whole in

determining likelihood of confusion.”).

On the other hand, different features may be analyzed to determine whether the

marks are confusingly similar. Price Candy Co. v. Gold Medal Candy Corp., 220 F.2d

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Serial No. 87835651

759, 105 USPQ 266, 268 (CCPA 1955). In this connection, as discussed below,

Applicant’s mark is PRIORI PLANNER and the Registrant’s mark is PRIOIRTY. See

In re Nat’l Data, 224 USPQ at 751 (“in articulating reasons for reaching a conclusion

on the issue of confusion, 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 consideration of the marks in their entireties”).

Although we must consider the marks in their entireties, we find the term PRIORI

to be the dominant portion of Applicant’s mark. PRIORI is the first term in

Applicant’s mark and PRIORITY is the entirety of the mark in the `274 Registration.

See Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)

(“[I]t is often the first part of a mark which is most likely to be impressed upon the

mind of a purchaser and remembered”). Thus, the dominant portion of Applicant’s

mark “PRIORI” and the entirety of the cited PRIORITY mark is the “term most likely

to be remembered by consumers” and “used in calling for the [products]” or in

otherwise referring to the products. In re Binion, 93 USPQ2d 1531, 1534 (TTAB

2009).

While we do not disregard it, the significance of the second term in Applicant’s

mark is diminished in the comparison of marks because consumers are not inclined

to rely on descriptive or generic terms to indicate source. See In re Dixie Rests., Inc.,

105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data, 224

USPQ at 752. Because the descriptive, and disclaimed, term “Planner” names the

type of product Applicant sells, it has very little, if any, source-identifying

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Serial No. 87835651

significance. See, e.g., In re Dixie Rests., 41 USPQ2d at 1533-34 (“DELTA,” not the

disclaimed generic term “CAFE,” was the dominant portion of the mark THE DELTA

CAFE).

Disclaimed, descriptive matter has less significance in likelihood of confusion

determinations. See 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.’”); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702

(TTAB 2001) (disclaimed wording is often “less significant in creating the mark’s

commercial impression”).

The Examining Attorney argues that PRIORI PLANNER is similar to the

registered mark PRIORITY primarily because the dominant words PRIORI and

PRIORITY are highly similar in appearance, sound, and connotation, which gives the

marks similar overall commercial impressions. The words PRIORI and PRIORITY

are similar in appearance, says the Examining Attorney, differing only in that the

word PRIORI lacks the trailing letters T-Y, and consumers could easily mistake one

word for the other at a glance, citing, In re Corning Glass Works, 229 USPQ 65, 66

(TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar) and In

re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and

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Serial No. 87835651

MILLTRONICS confusingly similar).30 The Examining Attorney also says the words

PRIORI and PRIORITY sound similar, as shown by their similar spellings.31

The Examining Attorney further contends that PRIORI and PRIORITY are

similar in meaning, sharing the common Latin etymological root “prior.”32 In support

of this contention, the Examining Attorney made of record the definitions of the

following terms:

Term Meaning Source
A Priori 1. Proceeding from a known or THE AMERICAN HERITAGE
assumed cause to a necessarily DICTIONARY OF THE
related effect; deductive; 2. a. ENGLISH LANGUAGE
Derived by or designating the
process of reasoning without
reference to particular facts or
experience; 2. b. Knowable
without appeal to particular
experience; 3. Made before or
without examination; not
supported by factual study.

30 7 TTABVUE 7.
31 Id.
327 TTABVUE 7-8. We question the entire forcefulness of this argument standing alone as
to confusing similarity, given that average purchasers of the goods at issue generally are
unlikely to be aware of the common Latin root of words. See Ferro Corp. v. Nicofibers, Inc.,
196 USPQ 41, 45 (TTAB 1977) (“understanding of the marks must be determined in light of
the relevant purchasing sector and not that of linguistics experts or those familiar with the
meaning or derivation of words”). The Examining Attorney’s other arguments regarding
confusing similarity are more persuasive.

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Serial No. 87835651

Priority 1. Precedence, especially THE AMERICAN HERITAGE
established by order of importance DICTIONARY OF THE
or urgency; 2. a. An established ENGLISH LANGUAGE
right to precedence; 2. b. An
authoritative rating that
establishes such precedence; 3. A
preceding or coming earlier in
time; 4. Something afforded or
deserving prior attention.

Priori and “Priori” is a Latin term meaning Applicant’s Website
A Priori “before” or “earlier”. “A priori”
refers to ideas and conclusions
you draw based on previous
experience, knowledge, and
life insights.

Priori invariable adjective: prior, a priori COLLINS ITALIAN TO
adverb: at first glance, initially ENGLISH DICTIONARY

The definition of “A Priori” submitted by the Examining Attorney is of no

assistance to his position of similarity, because this definition is different from the

definition of “Priority” also made of record. However, the definition of “Priori” from

Applicant’s website and the Italian-to-English translation of this term submitted by

the Examining Attorney do evince a similarity in meaning to “Priority.”

Applicant argues that although the letters P-R-I-O-R-I are contained in both

Applicant’s mark and the cited PRIORITY mark, these letters are so integrated into

the term “Priority” that it loses its individual identity therein, citing Castle & Cooke,

Inc. v. Oulevay, S.A., 152 USPQ 115 (CCPA 1967) (FARENDOLE not confusingly

similar to DOLE for related food products because DOLE is “so merged into

[FARANDOLE] that it loses its individual identity therein”); J. P. Stevens & Co. Inc.

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v. Farbenfabriken Bayer AG, 124 USPQ 432, 433 (TTAB 1960) (RAMA not confusingly

similar to CUPRAMA).

What distinguishes the Castle & Cooke and J. P. Stevens cases from the instant

appeal is that the shorter term is merged into a new, fanciful or arbitrary and

unfamiliar term resulting in an overall distinct commercial impression; whereas here

PRIORI is merged into a commonly understood and familiar term in English,

PRIORITY, having the same derivation, similar spelling and sound, and a similar

commercial impression.

Applicant also contends that PRIORITY is a common English word, familiar to

English speaking consumers; whereas PRIORI is not a common English word.

Applicant submits that in cases analyzing the similarity of marks “the familiar is

readily distinguishable from the unfamiliar[,]” citing In re Gen. Elec. Co., 134 USPQ

190, 192 (CCPA 1962) (finding consumers would easily differentiate between

VULCAN and VULKENE because they would recognize VULCAN as something

already known, while VULKENE is a coined word, stating: “the human mind has

little difficulty differentiating between the familiar and the unfamiliar”); Nat’l

Distillers & Chem. Corp. v. William Grant & Sons, Inc., 505 F.2d 719, 184 USPQ 34,

35 (CCPA 1974) (Court found that consumers would not confuse DUVET with DUET,

both for alcoholic beverages, because virtually everyone is familiar with DUET and

its meaning, while consumers would not view DUVET as an English word, and would

not know its definition); Jacobs v. Int’l Multifoods Corp., 668 F.2d 1234, 212 USPQ

641, 642 (CCPA 1982) (Court found no likelihood of confusion between BOSTON SEA

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Serial No. 87835651

PARTY for restaurant services with BOSTON TEA PARTY for tea, finding the latter

to be a commonly known phrase and the former an uncommon one); Faberge, Inc. v.

Dr. Babor GmbH & Co., 219 USPQ 848, 851 (TTAB 1983) (involving the marks

BABOR & Design and BABE & Design, both for cosmetic products. In finding no

likelihood of confusion, the Board stated: “One recognizes instantly that which is

familiar. Conversely, that which is unfamiliar would be given closer scrutiny and in

this way could be distinguished from the familiar.”)

Initially, we observe that PRIORI is not as “unfamiliar” as Applicant would

suggest. PRIORI is a dictionary-defined term, and Applicant has not established that

this term is unfamiliar or rarely used. Even if Applicant was to show that PRIORI is

an unfamiliar term, which it has not on this record, what distinguishes the Gen. Elec.,

Nat’l Distillers, Jacobs and Faberge proceedings from the instant appeal is that the

marks compared in those cases were disparate from one another by appearance,

sound and meaning; whereas here PRIORI and PRIORITY are quite similar when

tested by these elements.

Based on the evidence made of record, we find the decisions cited by the

Examining Attorney are closer to the facts of this appeal than those decisions cited

by Applicant. We also are mindful “it is well accepted that when [as here] the goods

are identical or otherwise closely related, the degree of similarity in the marks

necessary to conclude that there will be the likelihood of confusion declines.” In re

L.C. Licensing Inc., 49 USPQ2d 1379, 1381 (TTAB 1998) (citing Century 21 Real

Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.

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1992)). Thus, the first DuPont factor weighs in favor of a finding that confusion is

likely.

D. No Other Likelihood of Confusion Factors have been discussed,
and are Therefore Presumed to be Neutral

Neither Applicant nor the Examining Attorney submitted evidence or argument

on the other likelihood of confusion factors discussed by the Court of Customs and

Patent Appeals in DuPont, 177 USPQ at 567. We therefore treat them as neutral.

V. Decision

Applicant’s and the Registrant’s goods are legally identical and are promoted and

sold in overlapping channels of trade. Applicant’s PRIORI PLANNER mark is similar

to the registered PRIORITY mark of Registration No. 2718784. We therefore find it

unnecessary to consider the PRIORITY MANAGER Stylized mark and goods of

Registration No. 2209176 for likelihood of confusion purposes. As noted, because no

evidence or argument were submitted on the other DuPont factors, we treat them as

neutral. The refusal to register Applicant’s mark PRIORI PLANNER is affirmed.

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