Sprout Family, Inc. v. Robert Van Roo

This Opinion is Not a
Precedent of the TTAB

Mailed: June 29, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Sprout Family, Inc.
v.
Robert Van Roo
_____

Opposition No. 91238263
_____

Meaghan Zore of Zore Law,
for Sprout Family, Inc.

Amanda R. Conley of Brand & Branch LLP,
for Robert Van Roo.

_____

Before Taylor, Ritchie, and Pologeorgis,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Robert Van Roo (“Applicant”) has filed two applications, both seeking registration

on the Principal Register for the standard character mark SPROUT, for:

“Educational services, namely, developing leadership and
executive development training programs and providing
business education programs to entrepreneurs in the gay,
lesbian, bisexual, and transgender community; organizing
and hosting of events for educational purposes in the field
of entrepreneurship and diversity in the cannabis industry;
organization and arrangement of educational and
Opposition No. 91238236

instructional seminars and conferences regarding the
intersection of lesbian, gay, bisexual, and transgender
issues with entrepreneurship and advocacy in the adult use
and medical cannabis industries; Providing news in the
field of current events relating to the intersection of
lesbian, gay, bisexual, and transgender issues with
entrepreneurship and advocacy in the adult use and
medical cannabis industries” in International Class 41
(Application Serial No. 87201893); and

“Arranging, organizing, conducting, and hosting business
networking events; organizing business networking events
for entrepreneurs; Association services, namely, promoting
the interests of the lesbian, gay, bisexual, and transgender
communities; promoting public awareness and public
advocacy to promote awareness in the fields of lesbian, gay,
bisexual, and transgender topics; promoting public
awareness of prejudice and discrimination against gay,
lesbian, bisexual, and transgender persons; providing on-
line web directory services featuring hyperlinks to websites
of others; Association services, namely, promoting the
interests of those wishing to discuss the intersection of
lesbian, gay, bisexual, and transgender issues with
entrepreneurship and advocacy in the adult use and
medical cannabis industries” in International Class 35
(Application Serial No. 87201894).1

Sprout Family, Inc. (“Opposer”) has opposed registration of Applicant’s mark on

the ground of priority and likelihood of confusion under Section 2(d) of the Trademark

Act, 15 U.S.C. § 1052(d).2 Opposer has alleged ownership of the following previously

1Both applications were filed on October 13, 2016, and are based upon Applicant’s allegation
of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b).
2We note that likelihood of confusion is the only claim included in Opposer’s “STATEMENT
OF THE ISSUES” portion of its brief and the only claim we address in our decision. See Inter
IKEA Systems B.V. v. Akea, LLC, 110 USPQ2d 1734 (TTAB 2014).
Citations in this opinion are to the TTABVUE docket entry number and, where applicable,
the electronic page number where the document or testimony appears. Because the Board
primarily uses TTABVUE in reviewing evidence, it prefers that citations to non-confidential
parts of the record include the TTABVUE docket entry number and the TTABVUE page

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Opposition No. 91238236

used and registered marks:3 Registration No. 5130459 for the stylized mark

for,

“Medical clinics; Medical information; Medical screening;
Medical services, namely, assisted reproductive
procedures, gynecological healthcare, human egg donation
services, matching human egg donors with recipients, the
collection, storage, preservation and implantation of
human eggs for human fertilization purposes, providing
medical advice, consultation and counseling in the field of
human reproductive healthcare and fertility, including in
vitro fertilization, ovulation induction, intrauterine
insemination, intracytoplasmic sperm injection, blastocyst
transfer, pre-implantation genetic diagnosis of embryos,
administration of egg and sperm donations, treatments
involving third-party gestational carriers, and laparoscopy;
Mental health therapy services; Obstetric and gynecology
services; Providing personalized healthcare and medical
information in the nature of reproductive health,
infertility, and assisted reproductive procedures; Providing
a website featuring information about health and wellness,
namely, reproductive health, infertility, and assisted
reproductive procedures; Providing medical information in
the field of reproductive access and culturally sensitive
care; Providing medical information to health providers in
the form of reports in the field of reproductive access and
culturally sensitive care; Providing news and information
in the field of culturally sensitive care and reproductive
health; Providing on-line information, news and
commentary in the field of health and wellness relating to
reproductive access and culturally senstive [sic] care;
Providing personalized healthcare and medical
information in the nature of reproductive access and
culturally sensitive care; Genetic testing for medical
purposes; Human egg donation services; Maintaining
patient medical records and files; Multi-disciplinary,

number. See RxD Media, LLC v. IP Application Dev. LLC, 125 USPQ2d 1801, 1804 (TTAB
2018); TBMP §§ 801.01 and 801.03 (2019).
3 1 TTABVUE.

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Opposition No. 91238236

integrative, outpatient health care delivery and medical
consultations” in International Class 44;4 and

Registration No. 5270016 for the standard character mark SPROUT FAMILY for,

“Clinical medical practice consultation services; Genetic
testing for medical purposes; Human egg donation
services; Maintaining patient medical records and files;
Medical information; Medical screening; Medical services,
namely, assisted reproductive procedures, gynecological
healthcare, human egg donation services, matching human
egg donors with recipients, the collection, storage,
preservation and implantation of human eggs for human
fertilization purposes, providing medical advice,
consultation and counseling in the field of human
reproductive healthcare and fertility, including in vitro
fertilization, ovulation induction, intrauterine
insemination, intracytoplasmic sperm injection, blastocyst
transfer, pre-implantation genetic diagnosis of embryos,
administration of egg and sperm donations, treatments
involving third-party gestational carriers, and laparoscopy;
Mental health therapy services; Multi-disciplinary,
integrative, outpatient health care delivery and medical
consultations; Obstetric and gynecology services; Providing
medical information in the field of reproductive access and
culturally sensitive care; Providing medical information to
health providers in the form of reports in the field of reports
in the field of reproductive access and culturally sensitive
care; Providing news and information in the field of
culturally sensitive care and reproductive health health
[sic]; Providing on-line information, news and commentary
in the field of health and wellness relating to reproductive
access and culturally senstive [sic] care; Providing
personalized healthcare and medical information in the
nature of reproductive health, infertility, assisted
reproductive procedures, reproductive access and
culturally sensitive care; Providing a website featuring
information about health and wellness, namely,
reproductive health, infertility, and assisted reproductive

4 Issued January 25, 2017. The registration includes the following description: “The mark
consists of the literal element ‘SprOUT’. The ‘S’, and ‘OUT’ in ‘SprOUT’ are larger capitalized
letters than the others. The font is not claimed as a feature of the mark.”

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Opposition No. 91238236

procedures; Clinical medical practice consultation services”
in International Class 44.5

Applicant has denied the salient allegations in the notice of opposition and asserts

the affirmative defenses of “estoppel” and “waiver,”6 but failed to explain, pursue or

prove these asserted defenses at trial, which are accordingly waived. Miller v. Miller,

105 USPQ2d 1615, 1616 n.3 (TTAB 2013); Baroness Small Estates Inc. v. American

Wine Trade Inc., 104 USPQ2d 1224, 1225 n.2 (TTAB 2012).

I. Accelerated Case Resolution (ACR)

During discovery, the parties filed a joint stipulation to elect accelerated case

resolution (ACR), which was accepted by the Board. See 5 and 9 TTABVUE. The

parties stipulated to multiple facts, including, among others, the following:

Factual Stipulations:

• That Applicant filed applications for the above-referenced services based on
“intent-to-use” and that it did not offer any of the services identified therein in
connection with the mark SPROUT prior to October 13, 2016;

• That Opposer obtained registrations for the services referenced above on
January 24, 2017, and claims use of the mark SPROUT in connection with such
services prior to October 13, 2016;

• That the opposed mark SPROUT is identical to Opposer’s federally registered
mark SPROUT;

• That other than the applications opposed in this proceeding, Applicant does
not own any other U.S. trademark applications or registrations that include
the term SPROUT in whole or in part; and

5 Issued August 22, 2017.
6Applicant’s “First Affirmative Defense” is more in the nature of amplifications of its denials
and has been so treated.

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Opposition No. 91238236

• That Opposer has never consented, permitted, or otherwise authorized
Applicant to use or register the SPROUT mark in connection with any goods
or services.

The parties also adopted numerous procedural stipulations common to ACR

proceedings.

II. The Record

The record consists of the pleadings and, without any action by the parties, the

files of Applicant’s involved applications. Trademark Rule 2.122(b)(1), 37 C.F.R. §

2.122(b)(1). Opposer also made of record the submissions summarized below:

• Copies of its pleaded registrations, which were submitted via current printouts
from the USPTO’s Trademark Status & Document Retrieval (TSDR) electronic
database attached as exhibits to the Amended Notice of Opposition, pursuant
to Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1);7

• Opposer’s Notice of Reliance on Internet screen captures and a Wikipedia
article;8

• The Declaration of Katherine Hsiao, M.D., Opposer’s Medical Director and
predecessor in interest.9

Applicant did not submit any evidence or testimony during his assigned testimony

period. Both Opposer and Applicant filed briefs.

III. Opposer’s Standing and Priority

Standing is a threshold issue that must be proven by the plaintiff in every

inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d

1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); see also, e.g., Bell’s Brewery, Inc. v.

7 1 TTABVUE.
8 11 TTABVUE.
9 13 TTABVUE.

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Opposition No. 91238236

Innovation Brewing, 125 USPQ2d 1340, 1344 (TTAB 2017). Opposer’s standing to

oppose registration of Applicant’s mark is established by its pleaded registrations,

which the record shows to be valid and subsisting, and owned by Opposer. See,

e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed.

Cir. 2000); N.Y. Yankees P’ship v. IET Prods. & Servs., Inc., 114 USPQ2d 1497,

1501 (TTAB 2015). Opposer’s pleaded registrations are of record, so priority is not

at issue with respect to the marks and goods identified in Opposer’s pleaded

registrations. See King Candy Co. v. Eunice King’s Kitchen, 496 F.2d 1400, 182

USPQ 108, 110 (CCPA 1974).

Because Opposer has established its standing and priority as to its pleaded marks,

we turn to the question of likelihood of confusion.

IV. Likelihood of Confusion

Our determination under Trademark Act Section 2(d) is based on an analysis

of all probative facts in evidence that are relevant to the factors bearing on the issue

of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,

177 USPQ 563, 567 (CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d

1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis,

however, two key considerations are the similarities between the marks and the

similarities between the goods or services, the first two du Pont factors. See

Federated Foods, Inc. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29

(CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative

effect of differences in the essential characteristics of the goods and differences in

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Opposition No. 91238236

the marks.”). Opposer bears the burden of proving its claim of likelihood of confusion

by a preponderance of the evidence. Cunningham, 55 USPQ2d at 1848.

In analyzing likelihood of confusion, we limit our discussion to Registration

No. 5130459 for the pleaded stylized mark for the identified services,

which are substantially similar to those recited in Opposer’s other pleaded mark. If

we find likelihood of confusion between this mark and Applicant’s standard character

mark SPROUT, there is no need for us to consider the likelihood of confusion with

Opposer’s pleaded SPROUT FAMILY mark (Registration No. 5270016). Conversely, if

we find there is no likelihood of confusion with the SPROUT mark, we would

find no likelihood of confusion with the other pleaded mark. See In re Max Capital

Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). We address in turn each of the

du Pont factors bearing on our decision for which the parties submitted evidence or

argument.

While all the du Pont factors must be considered when they are of record, the

various factors “may play more or less weighty roles in any particular determination.”

du Pont, 177 USPQ at 567. “Indeed, any one of the factors may control a particular

case.” In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir.

1997) (citing du Pont, 177 USPQ at 567)); see also Giersch v. Scripps Networks Inc.,

90 USPQ2d 1020, 1027 (TTAB 2009) (finding no likelihood of confusion where “the

services are different and unrelated”).

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Opposition No. 91238236

A. Similarity of the Marks

We initially turn to the first du Pont likelihood of confusion factor which focuses

on the similarity or dissimilarity of the marks, and compare the marks, as we must,

in their entireties in terms of appearance, sound, meaning and commercial

impression. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin En 1722, 396 F.3d

1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). Because Applicant’s mark is in

standard characters, its display is not limited to any particular font style, size, or

color. We therefore must consider that it might be used in any stylized display,

including the same or similar lettering style as Opposer’s mark. See In re

Viterra, 671 F.3d 1358, 101 USPQ2d 1905,1909-10 (Fed. Cir. 2012); Citigroup Inc. v.

Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir.

2011); In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1886 (TTAB 2018) (literal

elements of standard character marks may be presented in any font style, size or

color). In addition to being identical in sight and sound, there is no indication that

they would have any difference in commercial impression. Accordingly, we find the

marks legally identical. Indeed, the parties stipulated that the respective SPROUT

marks are identical. This du Pont factor thus favors a finding of likelihood of

confusion.

B. Relatedness of the Services

We now consider the services, keeping in mind that the greater the degree of

similarity between the marks at issue, the lesser the degree of similarity between the

respective services is required to support a finding of likelihood of confusion. In re

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Opposition No. 91238236

Opus One, Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); In re Concordia Int’l

Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). Where, as here, Applicant’s

mark is legally identical to Opposer’s mark, there need only be a viable relationship

between the services to find that there is a likelihood of confusion. See In re Shell Oil

Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993) (“even when the goods or

services are not competitive or intrinsically related, the use of identical marks can

lead to the assumption that there is a common source”); Concordia Int’l Forwarding

Corp., 222 USPQ at 356.

In making our determination regarding the similarity or relatedness of the

services, we must look to the services as identified in Applicant’s involved application

vis-à-vis the services identified in Opposer’s pleaded Registration No. 5130459 for the

mark . See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d

1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Houston

Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re

Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011).

As Opposer points out, under this du Pont factor, we need not find similarity as to

each and every service listed in the recitation of services. It is sufficient for a refusal

based on likelihood of confusion that relatedness is established for any service

encompassed by the identification in a particular class in the application. Tuxedo

Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA

1981); In re i.am.symbolic, llc, 866 F.3d 1315, 116 USPQ2d 1406, 1409 (TTAB 2015);

Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014).

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Opposition No. 91238236

As noted, Applicants services are:

“Educational services, namely, developing leadership and
executive development training programs and providing
business education programs to entrepreneurs in the gay,
lesbian, bisexual, and transgender community; organizing
and hosting of events for educational purposes in the field
of entrepreneurship and diversity in the cannabis industry;
organization and arrangement of educational and
instructional seminars and conferences regarding the
intersection of lesbian, gay, bisexual, and transgender
issues with entrepreneurship and advocacy in the adult use
and medical cannabis industries; Providing news in the
field of current events relating to the intersection of
lesbian, gay, bisexual, and transgender issues with
entrepreneurship and advocacy in the adult use and
medical cannabis industries”; and

“Arranging, organizing, conducting, and hosting business
networking events; organizing business networking events
for entrepreneurs; Association services, namely, promoting
the interests of the lesbian, gay, bisexual, and transgender
communities; promoting public awareness and public
advocacy to promote awareness in the fields of lesbian, gay,
bisexual, and transgender topics; promoting public
awareness of prejudice and discrimination against gay,
lesbian, bisexual, and transgender persons; providing on-
line web directory services featuring hyperlinks to websites
of others; Association services, namely, promoting the
interests of those wishing to discuss the intersection of
lesbian, gay, bisexual, and transgender issues with
entrepreneurship and advocacy in the adult use and
medical cannabis industries”

and the services identified in Opposer’s Registration No. 5130459 are as follows:

“Medical clinics; Medical information; Medical screening;
Medical services, namely, assisted reproductive
procedures, gynecological healthcare, human egg donation
services, matching human egg donors with recipients, the
collection, storage, preservation and implantation of
human eggs for human fertilization purposes, providing
medical advice, consultation and counseling in the field of
human reproductive healthcare and fertility, including in
vitro fertilization, ovulation induction, intrauterine

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Opposition No. 91238236

insemination, intracytoplasmic sperm injection, blastocyst
transfer, pre-implantation genetic diagnosis of embryos,
administration of egg and sperm donations, treatments
involving third-party gestational carriers, and laparoscopy;
Mental health therapy services; Obstetric and gynecology
services; Providing personalized healthcare and medical
information in the nature of reproductive health,
infertility, and assisted reproductive procedures; Providing
a website featuring information about health and wellness,
namely, reproductive health, infertility, and assisted
reproductive procedures; Providing medical information in
the field of reproductive access and culturally sensitive
care; Providing medical information to health providers in
the form of reports in the field of reproductive access and
culturally sensitive care; Providing news and information
in the field of culturally sensitive care and reproductive
health; Providing on-line information, news and
commentary in the field of health and wellness relating to
reproductive access and culturally senstive [sic] care;
Providing personalized healthcare and medical
information in the nature of reproductive access and
culturally sensitive care; Genetic testing for medical
purposes; Human egg donation services; Maintaining
patient medical records and files; Multi-disciplinary,
integrative, outpatient health care delivery and medical
consultations.”

Opposer maintains that the respective services are related, particularly arguing

that:10

[i]n this case, Applicant’s educational, informational, and
advocacy services on behalf of members of the LGBTQ
[lesbian, gay, bisexual, transgender, and queer] community
that work within the cannabis industry are related to
Opposer’s Services, particularly, Opposer’s educational,
informational and healthcare services in relation to the
provision of medical, health, and wellness services to
members of the LGBTQ community, since cannabis
products and services are frequently marketed and sold for
medicinal and/or health and wellness. Accordingly,
consumers encountering Applicant’s educational,

10 Opposer’s Trial Brief, p. 13, 12 TTABVUE 17.

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Opposition No. 91238236

informational, and advocacy services on behalf of LGBTQ
cannabis professionals on the one hand and Opposer’s
educational, informational, and healthcare services on
behalf of LGBTQ-related medical, health, and wellness
issues on the other, under identical marks could, and are
likely, to mistakenly believe that the services emanate
from a single source.

Opposer does not highlight any specific evidence to support the asserted

relatedness between the parties’ respective services, and we therefore have focused

our attention on the testimony declaration of Opposer’s Medical Director, Ms.

Katherine Hsiao. In her declaration, Ms. Hsiao states: “Opposer is in the business of

providing culturally competent information, education, and healthcare services,

namely with respect to reproductive matters and family planning to a wide audience,

specifically including lesbian, gay, bisexual, transgender, and queer (“LGBTQ”)

individuals.”11 This statement confirms that Opposer’s information, education, and

healthcare services are primarily reproductive-related in nature, and that focus is

reflected in the limiting or explanatory language in the recitation of services in

Opposer’s pleaded registration. In contrast, a careful review of Applicant’s recitation

of services reveals that while Applicant also engages in educational, informational

and other public awareness services, those services primarily are limited to business-,

entrepreneurship- and networking opportunity-related services in the medical

cannabis industry.

In her declaration, Ms. Hsiao also states that these services, as well as the recited

“organization and arrangement of educational and instructional seminars and

11 Hsiao Decl. ¶ 7, 13 TTABVUE 4.

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Opposition No. 91238236

conferences regarding the intersection of lesbian, gay, bisexual, and transgender

issues with entrepreneurship and advocacy in the adult use and medical cannabis

industries” and “provi[sion of] news in the field of current events relating to the

intersection of lesbian, gay, bisexual, and transgender issues with entrepreneurship

and advocacy in the adult use and medical cannabis industries” are related because

“Opposer’s provision of “[c]linical medical practice consultation services,” “[m]ental

health therapy services,” “[provision of] medical information in the field of

reproductive access and culturally sensitive care,” and “[provision of] a website

featuring information about health and wellness, namely, reproductive health,

infertility, and assisted reproductive procedures” are likely to include Applicant’s

described services.”12 (emphasis added.). She adds that Opposer’s services include the

provision of educational and informational services with regard to cannabis use to

both consumers and health providers, and points out, by way of example, that

Opposer provides its educational-, informational- and heathcare-related services to

LGBTQ individuals who are HIV+. However, her explanatory statement that

“[h]istorically, individuals who are HIV+ have been recognized as being more

inclined to use medical cannabis”13 is not based on any evidence of record.

That Opposer may provide information and counseling regarding the use of

medical cannabis does not convince us, without additional evidentiary support, that

consumers would confuse the source of Opposer’s medical cannabis counseling and

12 Id. at ¶ 24, TTABVUE 9.
13 Id. at ¶ 25, 13 TTABVUE 11.

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Opposition No. 91238236

information services with Applicant’s education and information services in the

business area of the cannabis industry. Nor are we convinced, solely on Opposer’s

declaration testimony, that Applicant’s LGBTQ entrepreneurs and service providers

in the cannabis industry, especially in the context of the growing medical cannabis

industry, are likely to include the same health providers to whom Opposer provides

medical information.

Ms. Hsiao’s use of such vague terms as “likely,” “historically,” and “more inclined”

renders her testimony unclear, vague and unconvincing and calls it into question,

particularly in the absence of corroborating evidence. Accordingly, we are not

convinced that the respective services are sufficiently related for purposes of finding

a likelihood of confusion. But see Powermatics, Inc. v. Glebe Roofing Prods. Co., 341

F.2d 127, 144 USPQ 430, 432 (CCPA 1965) (testimony alone of a single, credible

witness is enough to establish common law use of a mark for the identified goods or

services); Nat’l Bank Book Co. v. Leather Crafted Prods., Inc., 218 USPQ 826,

828 (TTAB 1993) (oral testimony may be sufficient to prove the first use of a party’s

mark when it is based on personal knowledge, is clear and convincing, and has not be

contradicted).

Further, as discussed infra, the record shows that both Applicant and Opposer

provide, or will provide, their respective services, in part, over the Internet to the

same target consumer, namely members of the LGBTQ community. However, this

evidence is insufficient for us to conclude that these individuals will believe that

Applicant’s business-centric services are related to Opposer’s heathcare-centric

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Opposition No. 91238236

services. If there were evidence of record, such as third-party declarations or other

indicia of third-party use or registration, of the same types of services offered by both

Applicant and Opposer being offered by the same entity, then we may have reached

a different conclusion.

Thus, the second du Pont factor concerning the relatedness of the services does

not support a finding that confusion is likely.

C. The Relatedness of the Channels of Trade and Classes of Consumers

On the face of the identifications, the obvious overlap between the services

provided by Applicant and Opposer is not the relatedness of their services performed

or to be performed, but the target consumer, the LGBTQ community. Because there

are no limitations as to channels of trade or classes of purchasers in Opposer’s

identifications of services, we must presume that Opposer’s services move in all

channels of trade usual for these services and to all classes of purchasers, including

those of Applicant. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047,

1052 (Fed. Cir. 2018) (citing i.am.symbolic, 123 USPQ2d at 1750 (“In the absence of

meaningful limitations in either the application or the cited registrations, the Board

properly presumed that the goods travel through all usual channels of trade and are

offered to all normal potential purchasers.”)). Further, as noted above, the record

demonstrates that both Opposer and Applicant provide their respective services, in

part, over the Internet – a known pervasive marketplace.

Accordingly we find that the du Pont factors regarding the channels of trade and

classes of purchasers favor a finding of likelihood of confusion.

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Opposition No. 91238236

D. Conditions of Sale

In the absence of substantiating evidence, we are not persuaded by Opposer’s

contention that services related to the provision of information, education and web-

links provided to or for the benefit of specific demographic groups are typically offered

for free, and therefore likely to be consumed casually and on impulse, thus increasing

the risk of confusion. As such, we find this du Pont factor to be neutral.

E. No Actual Confusion

Opposer also argues that it need not show actual confusion because Applicant’s

applications are based on intent-to-use, so there has been no real opportunity for

actual confusion to occur. We agree. In any event, the test is likelihood of confusion,

not actual confusion, and, as often stated, it is unnecessary to show actual confusion

in establishing likelihood of confusion.” In re Big Pig Inc., 81 USPQ2d 1436, 1439-40

(TTAB 2006); see also Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14

USPQ2d 1840 (Fed. Cir. 1990).

F. Conclusion

Having considered all the evidence and arguments on the relevant du Pont factors,

we conclude that although the parties’ marks are legally identical and the parties’

respective services travel in overlapping trade channels and are offered or will be

offered to overlapping classes of purchasers, on balance, Opposer has not met its

burden to show that the respective services are sufficiently related, such that they

would be encountered by the same persons under circumstances that would give rise

to the mistaken belief that they originate from the same source. Accordingly, we find

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Opposition No. 91238236

that Opposer has failed to prove its claim of likelihood of confusion by a

preponderance of the evidence.

Decision: The opposition is dismissed.

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