Applied Policy, LLCv.Assertive Professionals, LLC

Trademark Trial and Appeal Board

Jun 12, 2020

92067712 (T.T.A.B. Jun. 12, 2020)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: June 12, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Applied Policy, LLC
v.
Assertive Professionals, LLC
_____

Cancellation No. 92067712
_____

Christopher W. Brody of Clark & Brody LP,
for Applied Policy, LLC.
Michael C. Whitticar of NOVA IP Law PLLC,
for Assertive Professionals, LLC.
_____

Before Wellington, Heasley, and Hudis,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
Petitioner, Applied Policy LLC, applied to register the stylized mark
for

Government relations consulting and management consulting services,
namely, developing government relations strategic plans for resolving
legislative, regulatory and other governmental issues affecting health care,
conducting research and analysis in the field of government health care
policies, assessing the economic impact of legislative and regulatory
alternatives in the field of health care, and coordinating and implementing
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issue advocacy in the field of health care; identifying, evaluating and
facilitating government contracting opportunities; and investigating and
monitoring government affairs programs of clients’ competitors” in
International Class 35.1

Petitioner’s application was initially refused registration and suspended based on
likelihood of confusion with Respondent Assertive Professionals, LLC’s registered
mark,
(with “PROFESSIONALS” disclaimed), for
“Business management consulting, strategic planning and business advisory services
provided to the United States Government, namely, the Department of Defense and
the United States Intelligence Community,” in International Class 35.2
Petitioner then instituted this proceeding to cancel Respondent’s registration,
claiming common law priority and likelihood of confusion between the two marks
under Trademark Act Section 2(d), 15 U.S.C. § 1052(d).3 Respondent’s Answer denied

1 Serial No. 87410419, filed April 13, 2017 claiming use in commerce under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), since July 1, 2011. The description of the mark reads:
The mark consists of the letters “A” and “P” that are stylized to be in the shape of a pretzel.
Color is not claimed as a feature of the mark.
2 Registration No. 5099465 issued on December 13, 2016, from an application (serial no.
86972810) filed April 12, 2016, claiming September 29, 2015 as the date of first use anywhere
and the date of first use in commerce. The description of the mark reads: The mark consists
of the letter “A” in red with subscript letter “P” in black, with the latter superimposed upon
the lower right portion of the former, and the stylized words “Assertive” in red and
“Professionals” in black, centered below the “A” and “P” combination, all upon a white
background. The color(s) red, white, and black is/are claimed as a feature of the mark.
3 Petition for Cancellation, 1 TTABVUE.
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the salient allegations of the petition for Cancellation.4
We deny the petition.
I. Standing

Any person who believes it is or will be damaged by registration of a mark has
standing to file a petition to cancel. Trademark Act Section 14, 15 U.S.C. § 1064. “A
petitioner is authorized by statute to seek cancellation of a mark where it has ‘both a
“real interest” in the proceedings as well as a “reasonable” basis for its belief of
damage.’” Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d
1058, 1062 (Fed. Cir. 2014) (quoting ShutEmDown Sports, Inc. v. Lacy, 102 USPQ2d
1036, 1041 (TTAB 2012) and citing Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d
1023 (Fed. Cir. 1999)).
A claim of likelihood of confusion that is not wholly without merit, including prior
use of a confusingly similar mark, may be sufficient to establish a reasonable basis for
a belief that one is damaged. DeVivo v. Ortiz, 2020 USPQ2d 116149, *2 (TTAB 2020).
As discussed below, Petitioner demonstrated it has been using its applied-for mark for
various services prior to any date that Respondent can rely upon for purposes of
priority. Id. Petitioner’s evidence that its pending application to register this mark
has been refused by the USPTO based on Respondent’s registration demonstrates

4 Answer, 6 TTABVUE. Respondent also asserted affirmative defenses in its Answer but did
not pursue them in its final brief, so they are waived. See TPI Holdings, Inc. v.
TrailerTrader.com LLC, 126 USPQ2d 1409, 1413 n.28 (TTAB 2018) (“Respondent also
asserted ‘estoppel, acquiescence and waiver,’ but does not argue any of these in its brief. They
are therefore waived.”)

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Petitioner has a real interest in the proceeding and a reasonable belief that it would
be damaged by the continued registration of Respondent’s mark.5 Id.; Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Hole in One
Drinks, Inc. v. Lajtay, 2020 USPQ2d 10020, * 3 (TTAB 2020). It has thus established
its standing.
II. The Record
The record contains the pleadings and the file of the registration sought to be
cancelled. Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b).
Petitioner’s evidence consists of its first notice of reliance, containing exhibit 1,
Trademark Status and Document Retrieval (TSDR) entries for Reg. No. 3949493 for
APPLIED POLICY in standard characters on the Supplemental Register; exhibit 2,
TSDR entries for Reg. No. 5373507 for APPLIED POLICY in standard characters on
the Principal Register; and exhibits 3-23, evidence of Petitioner’s early use of its
mark;6 the declaration of James G. Scott, Petitioner’s President and Chief
Executive Officer, with exhibits;7 and the declaration of John Voorhees, Petitioner’s
Senior Vice President, with exhibits.8

5 Declaration of James G. Scott, Petitioner’s President and Chief Executive Officer, ¶ 6, 13
TTABVUE 4; Declaration of John Voorhees, Petitioner’s Senior Vice President, ¶ 5, 14
TTABVUE 3-4.
6 12 TTABVUE.
7 13 TTABVUE.
8 14 TTABVUE.
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Respondent’s evidence consists of its notice of reliance, containing exhibit 1,
Petitioner’s responses to Respondent’s interrogatories; and exhibit 2, a screen shot of
Respondent’s website displaying its mark;9 and the declaration of
Tiffany Shaffery, Respondent’s managing partner, with exhibits.10
Both parties attached materials to their briefs. The TRADEMARK TRIAL AND APPEAL
BOARD MANUAL OF PROCEDURE (TBMP) provides in pertinent part:
[T]he facts and arguments presented in the brief must be based on the
evidence offered at trial. A brief may not be used as a vehicle for the
introduction of evidence. … Exhibits to briefs are generally unnecessary
and are discouraged. To allow readers to easily locate materials in the
record, the parties should cite to the evidence in the trial record by
referencing the TTABVUE entry and page number, and not attach
previously-filed evidence to their briefs. … Evidence attached to the briefs
will not be considered.

TBMP § 801.01 (2019). Consequently, the materials attached to the parties’ briefs are
either untimely evidence or unnecessary copies of timely evidence. Life Zone Inc. v.
Middleman Grp., Inc., 87 USPQ2d 1953, 1955 (TTAB 2008). These attachments will
therefore be given no consideration. Double Coin Holdings Ltd. v. Tru Development,
2019 USPQ2d 377409, *2 n. 8 (TTAB 2019). We hasten to add that even if they had
been considered, this evidence would not change the outcome.
III. Priority

To establish priority on its likelihood of confusion claim under Section 2(d) of the

9 18 TTABVUE.
10 19 TTABVUE.
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Trademark Act, Petitioner must prove by a preponderance of the evidence that, vis-à-
vis Respondent, it owns proprietary rights in “a mark or trade name previously used
in the United States . . . and not abandoned . . . .” Threshold.TV, Inc. v. Metronome
Enterprises, Inc., 96 USPQ2d 1031, 1036-37 (TTAB 2010) (citing Otto Roth & Co. v.
Universal Foods Corp., 640 F. 2d 1317, 209 USPQ 40, 44 (CCPA 1981)).
Oral testimony, if sufficiently probative, is normally satisfactory to establish
priority of use in a trademark proceeding. Daniel J. Quirk, Inc. v. Village Car Co., 120
USPQ2d 1146, 1151 (TTAB 2016) (quoting Powermatics, Inc. v. Globe Roofing Prods.
Co., 341 F.2d 127, 144 USPQ 430, 432 (CCPA 1965)). The testimony of a single witness
with personal knowledge of the facts may be sufficient to prove first use if it is clear,
convincing, consistent, uncontradicted, and sufficiently circumstantial to convince the
Board of its probative value. See Bass Pro Trademarks, LLC v. Sportsman’s
Warehouse, Inc., 89 USPQ2d 1844, 1856 (TTAB 2008). “Oral testimony is strengthened
by corroborative documentary evidence.” Executive Coach Builders, Inc. v. SPV Coach
Co., Inc., 123 USPQ2d 1175, 1184 (TTAB 2017).
In this case, Petitioner adduces the declaration testimony of its President and
CEO, as well as its Senior Vice President, both of whom establish, with supporting
exhibits, that Petitioner has used its mark since as early as 2011 in
connection with the services described in its application.11

11 Scott Decl. ¶¶ 8-11, Exs. 4, 5, 7, 12, 21, 22; Voorhees Decl. ¶¶ 7-10, Exs. 4, 5, 7, 12, 21, 22;
13 TTABVUE 4-7, 40-179, 14 TTABVUE 4-7, 40-179.
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Respondent may rely on its April 12, 2016 application filing date, or introduce
evidence of an earlier date of first use for purposes of priority. Media Online Inc. v. El
Classificado Inc., 88 USPQ2d 1285, 1288 (TTAB 2008). Respondent is not restricted
to the September 29, 2015 dates of use claimed in its registration. See Hydro-
Dynamics, Inc. v. George Putnam & Co., 811 F.2d 1470, 1 USPQ2d 1772, 1773-74
(Fed. Cir. 1987); Brooks v. Creative Arts By Calloway LLC, 93 USPQ2d 1823, 1832-
33 (TTAB 2009). Respondent adduces evidence of its use of the mark
in 2016, 2017 and 2018,12 but it does not controvert Petitioner’s claimed prior use
dating from 2011. In fact, Respondent points to the parties’ contemporaneous use of
their marks for over four years—a period of time that is consistent with Respondent’s
first use of its mark in 2016.13
As Petitioner correctly concludes, “Registrant has not disputed the senior status of
Petitioner’s Mark. Therefore, the only issue to be decided in the Cancellation
proceeding is whether a likelihood of confusion exists between the marks such that
the Registration should be canceled or that the two marks should coexist.”14

12 Respondent’s Notice of Reliance, Ex. 2, 18 TTABVUE 33-34; Shaffery Decl. ¶¶ 5-6, Exs. 3-
5, 19 TTABVUE 3-11. In its brief, Respondent also refers to its interrogatory answer no. 2,
averring first use of its mark at least as early as July 2015. See Respondent’s Brief, 26
TTABVUE 20 n. 8. This interrogatory answer, however, was attached to Petitioner’s Brief, 20
TTABVUE 24, and not properly introduced at trial, so it has been given no consideration. Even
if it were considered, it would not suffice to negate Petitioner’s priority of use.
13 Respondent’s brief, 26 TTABVUE 20-21.
14 Petitioner’s Reply Brief, 28 TTABVUE 5-6.
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IV. Likelihood of Confusion

We base our determination of likelihood of confusion under Section 2(d) on an
analysis of all of the probative facts of record. See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”). In making our
determination, we consider each DuPont factor for which there is evidence and
argument. In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1161-62 (Fed.
Cir. 2019). See Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797,
1800 (Fed. Cir. 2018) (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257,
1259 (Fed. Cir. 2010) (“Not all of the DuPont factors are relevant to every case, and
only factors of significance to the particular mark need be considered.”)). 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”).
A presumption of validity attaches to a trademark registration, and the party
seeking cancellation must rebut this presumption by a preponderance of the evidence.
Real Foods Pty Ltd. v. Frito-Lay North America, Inc., 906 F.3d 965, 128 USPQ2d 1370,
1373 n. 1 (Fed. Cir. 2018); West Fla. Seafood Inc. v. Jet Rests. Inc., 31 F.3d 1122, 31
USPQ2d 1660, 1662 (Fed. Cir. 1994).
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A. The Parties’ Services, Channels of Trade, and Customers
The second DuPont factor concerns the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration…,” the third
DuPont factor concerns the “similarity or dissimilarity of established, likely-to-
continue trade channels,” and the fourth DuPont factor concerns “[t]he conditions
under which and buyers to whom sales are made, i.e., ‘impulse’ vs. careful,
sophisticated purchasing.” DuPont, 177 USPQ at 567.
A proper comparison of the services “considers whether ‘the consuming public may
perceive [the respective … services of the parties] as related enough to cause confusion
about the source or origin of the goods and services.’” In re St. Helena Hosp., 774 F.3d
747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting Hewlett-Packard Co. v. Packard
Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002)) quoted in In re
FabFitFun, Inc., 127 USPQ2d 1670, 1672 (TTAB 2018). To make this comparison, we
determine if “the respective goods and services are related in some manner, or [if] the
conditions and activities surrounding the marketing of the goods and services are such
that they would or could be encountered by the same persons under circumstances
that could give rise to the mistaken belief that they originate from the same source.”
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722
(Fed. Cir. 2012) quoted in DeVivo v. Ortiz, 2020 USPQ2d 116149, at *11.
Again, Respondent’s services are “Business management consulting, strategic
planning and business advisory services provided to the United States
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Government, namely, the Department of Defense and the United States
Intelligence Community.” (Emphasis added.).
Petitioner has proven prior use of its mark in connection with the same services
listed in its application:15
Government relations consulting and management consulting services,
namely, developing government relations strategic plans for resolving
legislative, regulatory and other governmental issues affecting health
care, conducting research and analysis in the field of government health
care policies, assessing the economic impact of legislative and regulatory
alternatives in the field of health care, and coordinating and
implementing issue advocacy in the field of health care; identifying,
evaluating and facilitating government contracting opportunities; and
investigating and monitoring government affairs programs of clients’
competitors. (Emphasis added.)

In making our determination, we look to Petitioner’s services vis-a-vis those
recited in Respondent’s registration.16 Aycock Eng’g. Inc. v Airflite, Inc., 560 F.3d 1350,
90 USPQ2d 1301, 1304 n.6 (Fed. Cir. 2009) (“Registration must be examined based on
the identification description.”).
Petitioner argues that both parties provide “government-related consulting
services.”17 Although the parties’ services have “consulting” in common, and involve
government agencies to varying degrees, a finding that these services are similar “is
not based on whether a general term or overarching relationship can be found to
encompass them both.” Edwards Lifesciences Corp. v. VigiLanz Corporation, 94
USPQ2d 1399, 1410 (TTAB 2010). We agree with Respondent that there are material

15 Petitioner’s Answer to Interrogatory no. 6, Respondent’s Notice of Reliance, 18 TTABVUE
19, Petitioner’s Brief, 20 TTABVUE 14-15; Petitioner’s Reply Brief, 28 TTABVUE 6.
16 Petitioner’s Brief, 20 TTABVUE 14-15. Respondent’s Brief, 26 TTABVUE 9.
17 Petitioner’s Reply Brief, 28 TTABVUE 9.
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differences in the parties’ services, channels of trade, and classes of customers, and
that the differing classes of sophisticated customers will exercise care in their selection
of services, thus minimizing any likelihood of confusion.
In assessing likelihood of confusion, “the inquiry generally will turn on whether
actual or potential ‘purchasers’ are confused. … ‘If likelihood of confusion exists, it
must be based on the confusion of some relevant person; i.e., a customer or purchaser.’”
Elec. Design & Sales, Inc. v. Elec. Data Sys. Corp., 954 F.2d 713, 21 USPQ2d 1388,
1390 (Fed. Cir. 1992) (quoting Astra Pharmaceutical Prods, v. Beckman Instruments,
718 F.2d 1201, 220 USPQ 786, 790 (1st Cir. 1983), quoted in Palm Bay Imps., Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689,
1695 (Fed. Cir. 2005).
In this case, Respondent’s business management consulting, strategic planning
and business advisory services are expressly “provided to the United States
Government, namely, the Department of Defense and the United States Intelligence
Community.” Petitioner questions whether this language limits the “United States
Intelligence Community” to the U.S. government, or includes private companies, as
well.18 We answer that the term “namely” is definite, and sets forth with great
particularity Respondent’s target customers in the U.S. Government. See In re Solid
State Design Inc., 125 USPQ2d 1409, 1413 n. 8 (TTAB 2018) (quoting the TRADEMARK
MANUAL OF EXAMINING PROCEDURE (TMEP) § 1402.03(a)). So Respondent directly

18 Petitioner’s Brief, 28 TTABVUE 8.
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advises certain federal agencies in the Department of Defense and U.S. government
intelligence community.19
Petitioner’s services, on the other hand, mainly consist of “government relations
consulting” directed toward “health care,” “health care policies,” “in the field of health
care.” That is, Petitioner assists private entities—such as health care providers,
health care associations and nonprofits, government contractors, and pharmaceutical
manufacturers—in their dealings with government agencies in the field of health
care.20 Petitioner’s website touts its services: “Applied Policy is the go-to firm for
navigating health reform implementation, the Centers for Medicare & Medicaid
Services and other agencies of the U.S. Department of Health and Human Services.”21
Its other exhibits show the same sort of consulting services: to the National
Association of Dental Plans,22 to the Academy of Managed Care Pharmacy,23 to
Healthcare Supply Chain Association,24 and the like.

19 Respondent’s Brief, 26 TTABVUE 2. Respondent’s managing partner also authenticates
several of its websites stating that Respondent is an Economically Disadvantaged Woman
Owned Small Business (EDWOSB) and a Service Disabled Veteran Owned Small Business
(SDVOSB), dual statuses that further narrow its range of potential contracts in ways
Petitioner cannot match. Respondent’s brief, 26 TTABVUE 15, Shaffery Decl. ¶¶ 5-6, Exs. 3-
5, 19 TTABVUE 3-11. That, however, is extrinsic evidence, which we cannot draw upon to
narrow the description of services in Respondent’s registration. See Octocom v. Houston Comp.
Servs., 16 USPQ2d at 1787. Petitioner’s attempt to expand the range of Respondent’s services
is similarly unavailing—first because it is based on extrinsic evidence, and second because
that evidence is attached as exhibits to its Reply Brief that were not presented at trial. See
Petitioner’s Reply Brief, 28 TTABVUE 8-9, 18-90.
20 Scott Decl. Ex. 1, AppliedPolicy.com, 13 TTABVUE 15-19.
21 Scott Decl. Ex. 1, AppliedPolicy.com, 13 TTABVUE 14.
22 Scott Decl. Ex. 11, 13 TTABVUE 129.
23 Scott Decl. Ex. 12, 13 TTABVUE 136.
24 Scott Decl. Ex. 14, 13 TTABVUE 142.
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Petitioner protests that its services of “identifying, evaluating and facilitating
government contracting opportunities; and investigating and monitoring government
affairs programs of clients’ competitors” are not so limited.25 Such services—keeping
a lookout for government contracting opportunities and monitoring competitors—are
directed, however, to private entities seeking to do business with a governmental
agency, and are not directed to the government itself. The evidence shows these
customers are mainly, if not exclusively, in the health care field. Petitioner has not
proven the relatedness of the parties’ respective services or classes of customers. That
is, there is no evidence of record showing that one entity, like Respondent, which
provides consulting services directly to government defense and intelligence agencies,
would also offer consulting services to other businesses that seek to deal with the
government. So even though the parties’ services could both be described by the broad,
overarching term “government-related consulting services,” they are different in kind,
directed to entirely different customers. See Edwards Lifesciences v. VigiLanz, 94
USPQ2d at 1410.
The differing classes of customers for the parties’ respective services would tend to
be sophisticated purchasers. See Dynamics Research Corp. v. Langenau Mfg. Co., 704
F.2d 1575, 217 USPQ 649 (Fed. Cir. 1983) (affirming Board decision finding no
likelihood of confusion and noting, “The Board found that Langenau’s goods were
‘quite distinct’ from those of Dynamics, and that Langenau offered them not to an
uneducated public that could not distinguish between their sources, but to large

25 Petitioner’s reply brief, 28 TTABVUE 7.
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corporations and government agencies, whose purchasing agents have sufficient
expertise to distinguish between the sources of the goods.”); Globalaw Ltd. v. Carmon
& Carmon Law Office & Globalaw Inc., 452 F. Supp.2d 1, 55 (D.D.C. 2006) (“C&C’s
clients are often ‘corporations’ and ‘the United States Government’ - two sets of parties
that typically are quite sophisticated.”). Respondent’s consumers are uniquely federal
government agencies in the defense and government intelligence community.
Petitioner’s consumers are health care organizations and other government
contractors. Thus, in addition to belonging to distinctly different classes of customers,
they are, in their own right, likely to exercise an elevated degree of care in their
business decisions.
“Purchaser sophistication may tend to minimize likelihood of confusion.” Palm Bay
Imps., 73 USPQ2d at 1695. Government agencies would naturally engage in an
extended and deliberate process of requests for proposals, bids, and negotiation of
terms, before entering into contracts for consulting services. See Valador, Inc. v. HTC
Corp., 241 F. Supp. 3d 650, 670, (E.D.Va. 2017) (“Indeed, plaintiff’s relevant market
includes especially sophisticated consumers, namely, NASA and the Department of
Veterans Affairs, that make purchasing decisions based on detailed proposals and
thorough bidding processes.”).
Health care organizations also would tend to exercise care and deliberation in
contracting for extended and complex consulting services.26 Edwards Lifesciences v.

26 See Scott Decl. ¶ 4, 13 TTABVUE 2-3 (describing Petitioner’s healthcare consulting
services).
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VigiLanz, 94 USPQ2d at 1411 (“We are left with a record showing that the same people
do not encounter the marks and [services]; or, if they did, they would do so only in the
context of lengthy sales processes leaving no room for misunderstanding about the
sources of the respective [services].”). Cf. Hewlett-Packard Co. v. Human Performance
Measurement Inc., 23 USPQ2d 1390, 1396 (TTAB 1991) (“Given the deliberation
involved in determining the suitability of particular medical instruments for specific
patient care applications, and since customers and prospective purchasers typically
deal directly with the parties in making their purchasing decisions, we believe that
the parties’ marks [HP and HPM and design] are not so similar that confusion as to
the origin or affiliation of their medical instruments would be likely to occur.”). In
short, “[w]here the relevant buyer class is composed only of professionals or
commercial buyers familiar with the field, they are usually knowledgeable enough to
be less likely to be confused by trademarks that are similar.” 4 J. T. McCarthy,
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION (“McCarthy”) § 23:101 (5th ed.
June 2020 update).
The second, third, and fourth DuPont factors thus militate against a finding of
likelihood of confusion.
B. Comparison of the Marks

Under the first DuPont factor, we determine the similarity or dissimilarity of
Petitioner’s and Respondent’s marks in their entireties, taking into account their
appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at
567; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1160 (Fed. Cir. 2014); Palm Bay Imps., 73 USPQ2d at 1692.
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The parties’ respective marks, once again, are as follows:

Petitioner’s Applied-For Mark Respondent’s Registered Mark

Petitioner argues that:

The marks are similar because the dominant portion of both parties’ marks
are the two letters AP. The AP portion of the marks is identical, pronounced
the same, and certainly how consumers would verbally ask about the
respective brands. Further, the AP lettering is similar in both marks, both
having the P overlapping or extending to the bottom right of the A. While
the registered mark also contains other wording (which is much smaller and
partially disclaimed), consumers are generally more inclined to focus on the
first word, prefix, or syllable in any trademark or service mark. …
The dominant part of the marks is the letters A and P. Accordingly, if two
marks for related goods or services share identical or similar dominant
features and the marks, when viewed in their entireties, create similar
overall commercial impressions, then confusion is likely.

Petitioner’s brief, 20 TTABVUE 17-18 (citing inter alia In re J.M. Originals Inc., 6
USPQ2d 1393 (TTAB 1987) (holding JM ORIGINALS (with ‘ORIGINALS’ disclaimed)
for various items of apparel, and JM COLLECTABLES for sport shirts, likely to cause
confusion)).
Respondent responds:
Petitioner’s asserted mark is the two-letter initials or acronym “AP”
standing alone in a rounded font formed by two intersecting candy-cane
shapes, which together form a pretzel-shape, which is barely recognizable
as the letters “AP”. In contrast, Registrant’s AP ASSERTIVE
PROFESSIONALS mark is very linear and angular in appearance and has
a red “A” intersecting a black “P.” The Registrant’s and Respondent’s “AP
ASSERTIVE PROFESSIONALS” mark consists of the letters “AP” in red
and black immediately over the words: “ASSERTIVE PROFESSIONALS.”
…
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Viewing the marks as a whole, the presence of the capitalized words
“ASSERTIVE PROFESSIONALS” immediately under the letters “AP” in
Registrant’s mark clearly designates Registrant as the source of its own
services and dispels any notion that Registrant’s AP ASSERTIVE
PROFESSIONALS logo or services emanate from “APPLIED POLICY”
rather than from the clearly and expressly identified “ASSERTIVE
PROFESSIONALS.”
The parties’ marks in this case, viewed in their entireties, are sufficiently
different in appearance and commercial impression that they dispel rather
than create [any] likelihood of confusion.

Respondent’s brief, 26 TTABVUE 18-19 (citing inter alia Diamond Alkali Co. v.
Dundee Cement Co., 343 F.2d 781, 145 USPQ 211 (CCPA 1965) (court affirmed the
finding of the TTAB that the parties’ use of stylized Ds on the same product (bags of
cement) created no likelihood of confusion because the competing stylized “D” marks,
when considered in their entirety, had sufficiently dissimilar appearances)).27
We find that JM Originals, 6 USPQ2d 1393 (JM ORIGINALS for apparel
confusable with JM COLLECTABLES for knitted sport shirts), on which Petitioner
relies, is distinguishable. In that case, both marks were in standard characters (then
known as typed drawings),28 the identified goods were legally identical, which reduced
the degree of similarity needed to render the marks confusingly similar, the apparel
goods were offered to general consumers, and the added terms “originals” and
“collectables” were deemed “by no means uncommon” in the apparel industry. Id. at

27 Respondent also argues that “There are at least 30 other marks registered in [International]
class 35 that consist of the letters ‘AP’ alone or followed by a further description.” Respondent’s
brief, 26 TTABVUE 17. However, the Trademark Electronic Search System (TESS) listing on
which Respondent rests this argument was attached to its brief, was not introduced properly
at trial, and did not make the underlying registrations of record. See Edom Labs. Inc. v.
Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012); Truescents LLC v. Ride Skin Care LLC, 81
USPQ2d 1334, 1337 (TTAB 2006).
28 See TMEP § 807.03(i), explaining the change in nomenclature in 2003.
Cancellation No. 92067712
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1394. Here, Petitioner’s mark is a stylized mark, not a standard character word mark,
the parties’ marks are used in connection with differing services offered to
sophisticated and careful purchasers, and the added terms in Respondent’s mark
identify Respondent.
Because Petitioner’s mark is stylized, rather than standard character, Petitioner
is not entitled to claim all depictions of “AP”, regardless of font style, size, or color. See
In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909-10 (Fed. Cir. 2012);
Trademark Rule 2.52(a), 37 C.F.R. § 2.52(a). Petitioner is limited to its stylized mark,
which, as Respondent notes, is barely recognizable as letters. See In re Change Wind
Corp., 123 USPQ2d 1453, 1459 n.6 (TTAB 2017) (“the drawing of the mark, not the
words an application uses to describe it, controls what the mark is”).
“For such [stylized] marks, the lettering style may be sufficient to prevent a
likelihood of confusion.” 4 McCarthy § 23:33.29 For example, in Georgia-Pacific
Corporation v. General Paper Corporation of Pittsburgh, 196 USPQ 762 (TTAB 1977),
Petitioner Georgia-Pacific, owner of the senior mark , petitioned to cancel
Respondent General Paper’s stylized letter mark on the ground of likelihood
of confusion. The Board denied the petition, finding in pertinent part:
Petitioner’s mark is clearly and recognizably the letters or notation “GP”.
Registrant’s mark, while undoubtedly incorporating the letters “GP”, falls
far short of being considered a literal mark. That is, the letters “GP” have

29 Citing Diamond Alkali v. Dundee Cement, 145 USPQ 211, 213 (CCPA 1965) affirming the
Board’s finding that the parties’ stylized “D” letter marks were dissimilar, even though they
were affixed to the same product (bags of cement)).
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been so artistically arranged or incorporated in the overall logo that, at first
impact, the mark projects the image of a distinctive design mark without
any attempt by the viewer to penetrate the intricacies of the design to
uncover the letters “GP” which would take on this significance only by
reference to respondent’s trade name. Under these circumstances and even
taking into consideration the fallibility of consumers in their
recollection of trademarks and the fact that this case presents a
situation where a person can view both marks at the same time on
cartons, it is not believed that a purchaser would equate the two
marks or even form an association therewith. (Emphasis added).
Id. at 772.
In a similar case decided three years later, the Court of Customs and Patent
Appeals affirmed the Board’s finding that Georgia-Pacific’s “G-P” logo, ,
was unlike the Great Plains Bag Company’s “G-P” stylized letter mark, . The
Court agreed that “It must be remembered that Great Plains’ trademark consists of
highly stylized letters and is therefore in the gray region between pure design marks
which cannot be vocalized and word marks which are clearly intended to be.” Georgia-
Pacific Corp. v. Great Plains Bag Co., 614 F.2d 757, 204 USPQ 697, 699 (CCPA 1980),
aff’g Georgia-Pacific Corporation v. Great Plains Bag Co., 200 USPQ 601 (TTAB 1978).
Even though both logos were used on identical paper goods, the Court ruled that “[a]
subjective comparison of the marks in their commercial setting, i. e., on paper bags,
does not convince us that the marks are sufficiently similar to draw one into the
conclusion that the goods had a common source.” Id.
A decade later, the Federal Circuit echoed its predecessor: “The nature of stylized
letter marks is that they partake of both visual and oral indicia, and both must be
Cancellation No. 92067712
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weighed in the context in which they occur. … In Georgia-Pacific the court observed
that even if the letter portion of a design mark could be vocalized, that was not
dispositive of whether there would be likelihood of confusion. A design is viewed, not
spoken, and a stylized letter design can not be treated simply as a word mark.” In re
Electrolyte Laboratories Inc., 913 F.2d 930, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990).
Here, as in the Georgia-Pacific cases, Petitioner’s stylized mark comprising two
wide intersecting curved lines bears little resemblance to Respondent’s linear, angular
mark. In Respondent’s mark, the “A” and “P” are clear and recognizable, set off in red
and black capital letters. Petitioner’s curved, pretzel-like mark, on the other hand, is
barely discernable as a combination of letters. It would take careful study to decipher
an upper-case “A” and “P” in Petitioner’s mark, which could be perceived, initially, as
a pretzel shape, or as staggered “P’s,” if one perceives letters at all. As the court put
it, Petitioner’s mark resides “in the gray region between pure design marks which
cannot be vocalized and word marks which are clearly intended to be.” Georgia-Pacific
v. Great Plains Bag Co., 204 USPQ at 699.
Those who would take the time to verbalize a stylized letter mark “are also
sufficiently sophisticated in the pertinent goods [or services] to know whose trademark
they are verbalizing.” Georgia-Pacific Corp. v. Great Plains Bag Co., 204 USPQ at 700.
This is demonstrated by Electronic Design & Sales. 21 USPQ2d 1388. In that case, the
Federal Circuit found that “nearly all of opposer’s and applicant’s purchasers would
be highly sophisticated,” and could distinguish data processing and
telecommunications services sold under opposer’s standard character EDS mark from
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batteries sold under applicant’s mark. Id. at 1392-93. It accordingly
reversed the Board’s finding of likelihood of confusion, stating, “The near identity of
the marks here is apparent and is not seriously disputed. But it too was given
excessive weight by the Board in light of the sophistication of purchasers here.” Id. at
1392 n. 2. In this case, the parties’ marks are even more dissimilar in style and
wording than in Electronic Design & Sales, so the relevant corporate and government
purchasers can be expected to distinguish between them.
Respondent underscores the difference by inserting its name, ASSERTIVE
PROFESSIONALS, in matching red and black colors under “AP”:

The addition of a mark owner’s name to its mark can assist potential purchasers
in differentiating it from potentially similar letter marks. See Christian Broadcasting
Network Inc. v. ABS-CBN Int’l, 84 USPQ2d 1560, 1569 (TTAB 2007) (“Respondent’s
argument fails because the corporate names are not part of either party's
registrations, and moreover there is no evidence that respondent uses its ABS-CBN
mark in proximity to the underlying corporate name.”). Even though
“PROFESSIONALS” has been disclaimed in Respondent’s mark, it contributes to the
overall commercial impression made by the mark. See In re Inn at St. John’s, LLC,
126 USPQ2d 1742, 1748 (TTAB 2018) aff’d 777 Fed. Appx. 516 (Fed. Cir. 2019). “The
disclaimed elements of a mark, however, are relevant to the assessment of similarity
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…. This is so because confusion is evaluated from the perspective of the purchasing
public, which is not aware that certain words or phrases have been disclaimed.” Shen
Mfg. v. Ritz Hotel, Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1355 (Fed. Cir. 2004).
All in all, even though the parties’ marks have some characteristics in common,
Petitioner has not proven by a preponderance of the evidence that they are so similar,
taken in their entireties, that they would pose anything more than a de minimis chance
of confusion when viewed by the parties’ differing and sophisticated purchasers. In the
words of the Federal Circuit:
We are not concerned with the mere theoretical possibilities of confusion,
deception or mistake or with de minimis situations but with the practicalities
of the commercial world, with which the trademark laws deal.

Electronic Design & Sales v. Electronic Data Systems, 21 USPQ2d at 1391 (quoting
Witco Chemical Co. v. Whitfield Chemical Co., Inc., 418 F.2d 1403, 164 USPQ 43, 44-
45 (CCPA 1969) quoted in Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d
at 1414 and Primrose Ret. Commns. v. Edward Rose Senior Living, 122 USPQ2d at
1040.
C. Absence of Actual Confusion

The eighth DuPont factor is “[t]he length of time during and conditions under
which there has been concurrent use without evidence of actual confusion.” DuPont,
177 USPQ at 567. Respondent points to the parties’ contemporaneous use of their
marks for four years—since its first documented use of its mark on March 29, 2016.30

30 Respondent claims concurrent use of the two marks for over four years, see Respondent’s
brief, 26 TTABVUE 20-21, but the earliest documented use is March 29, 2016. See
Respondent’s notice of reliance, ex. 2, 18 TTABVUE 34.
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It also points to its interrogatory no. 17, requiring Petitioner to describe any instances
of actual confusion between the marks, and Petitioner’s answer, conceding that “there
is no information responsive to this interrogatory.”31 From this Respondent concludes
that the evidence “strongly supports a finding of no likelihood of confusion.”32
Petitioner contends that four years of concurrent use do not render a registration
immune to cancellation based on likelihood of confusion:
[T]rademarks may, statutorily only be deemed incontestable as early as five
years after registration. In the instant situation, the registration at issue is
only just over three years old, being registered in December 2016. As such,
it is perfectly legitimate for Petition to challenge the registration based on
a likelihood of confusion and the fact that there is no actual confusion to
date does not mean that there is no likelihood of confusion present when
considering the two marks.33

The issue is not whether Respondent’s registered mark is rendered incontestable,
but whether contemporaneous use of the parties’ marks for approximately four years,
taken together with the other factors, weighs in favor of finding no likelihood of
confusion. It is true that “a showing of actual confusion is not necessary to establish a
likelihood of confusion.” Zheng Cai v. Diamond Hong, Inc., 127 USPQ2d at 1800
(quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380
(Fed. Cir. 2002)).
While a showing of actual confusion may be highly probative, the opposite is not
true; an absence of evidence of actual confusion carries little weight. See J. C. Hall Co.

31 Respondent’s notice of reliance, Petitioner’s answer to interrogatory no. 17, 18 TTABVUE
25.
32 Respondent’s brief, 26 TTABVUE 20.
33 Petitioner’s reply brief, 28 TTABVUE 12-13.
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v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965). For the
absence of actual confusion to be probative, there must have been a reasonable
opportunity for confusion to have occurred. Gillette Canada Inc. v. Ranir Corp., 23
USPQ2d 1768, 1774 (TTAB 1992); Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d
1283, 1287 (TTAB 2007) (the probative value of the absence of actual confusion
depends upon there being a significant opportunity for actual confusion to have
occurred).
The eighth DuPont factor “requires us to look at actual market conditions, to the
extent there is evidence of such conditions of record.” In re Guild Mortg. Co., 2020
USPQ2d 10279, at *6. In this case, there is a paucity of such evidence. It appears that
both parties are situated in Northern Virginia—one in Arlington, the other in
Alexandria—and that both focus their services on U.S. government agencies in the
area—one for the agencies, the other for private clients interacting with the agencies.
These circumstances indicate some opportunities for actual confusion to have
occurred, but there are other countervailing considerations:
• Neither party has documented its number of clients or extent of sales under its
respective mark;
• Petitioner states that “Advertising of services advertised or sold under
Petitioner’s Rejected Logo or Word Marks have been in excess of $10 million
since 2011,”34 but does not differentiate between the logo and word marks.

34 Petitioner’s answer to interrogatory no. 22, 18 TTABVUE 28.
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• Petitioner’s exhibits tend to show use of the applied-for logo mark together with
its APPLIED POLICY word mark, not the logo mark alone:
35

36
37
That added wording further differentiates Petitioner’s use of its mark in commerce
from Respondent’s mark, which carries its own explanatory wording.
• The parties’ marks have coexisted for only a few years.
See Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030,
1039-40 (TTAB 2016) (“the marks have been in contemporaneous use for only a short

35 Voorhees decl. ex. 1, 14 TTABVUE 12.
36 Customer marketing publication, Voorhees decl. ex. 4, 14 TTABVUE 41.
37 Facebook page, Voorhees decl. ex. 20, 14 TTABVUE 175.
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time, since 2013. Thus, the opportunity for actual confusion to have occurred in the
marketplace is minimal.”). This is far shorter period of time than those in other cases.
E.g. Barbara’s Bakery v. Landesman, 82 USPQ2d at 1287 (where the respective marks
coexisted in the marketplace for at least nine years, absence of actual confusion
nonetheless deemed “of little probative value” because of the absence of a significant
opportunity for such confusion to occur, given “the minimal scope of applicant’s actual
use of her mark in the marketplace”); King Candy Co. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974) (absence of confusion for over 20
years supports finding that confusion is not likely).
Thus, even though Petitioner reports no instances of actual confusion, it is difficult
to assign probative value to this evidence, as it is unclear whether there has been a
significant opportunity for actual confusion to have occurred. We accordingly find that
this factor is neutral.
D. Interface between the Parties and Respondent’s Good Faith

The tenth DuPont factor pertains to the market interface between the parties, and
the thirteenth factor pertains to “any other established fact probative of the effect of
use.” DuPont, 177 USPQ at 567. Under these factors, Respondent maintains that
“There has been no market interface between the parties, and Registrant’s intent was
innocent and in good faith as ‘AP’ are the initials of ‘Assertive Professionals,’ the name
‘ASSERTIVE PROFESSIONALS’ is expressly stated in the mark, and Registrant had
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never even heard of the Petitioner or its mark prior to the instant trademark
dispute.”38
“Whether there is evidence of intent to trade on the goodwill of another is a factor
to be considered, but the absence of such evidence does not avoid a ruling of likelihood
of confusion.” J & J Snack Foods Corp. v. McDonald’s Corp., 18 USPQ2d 1889, 1891
(Fed. Cir. 1991) cited in Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511,
1516 (TTAB 2009) (“However, it is settled that while evidence of bad faith adoption
typically will weigh against an applicant, good faith adoption typically does not aid an
applicant attempting to establish no likelihood of confusion.”). So Respondent’s good
faith adoption of its mark does not weigh against finding a likelihood of confusion; that
determination depends, in this case, on the other factors. These factors are neutral.
E. Conclusion: Likelihood of Confusion

We have considered of all of the evidence of record and all of the parties’ arguments
as they pertain to the relevant DuPont likelihood of confusion factors. We find that
Petitioner has not shown, by a preponderance of the evidence, the existence of a
likelihood of confusion, and thus has not established its claim under Section 2(d).
Decision: The petition to cancel is denied.

38 Respondent’s brief, 26 TTABVUE 24.