DFO Global Performance Commerce Limited

Trademark Trial and Appeal Board

Sep 29, 2020

88025994 (T.T.A.B. Sep. 29, 2020)

This Opinion is not a
Precedent of the TTAB

Mailed: September 29, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re DFO Global Performance Commerce Limited
_____

Serial No. 88025994
_____

Brent D. Sausser of Sausser Summers, PC
for DFO Global Performance Commerce Limited
Cristel John, Trademark Examining Attorney, Law Office 125,
Heather Biddulph, Managing Attorney.
_____

Before Bergsman, Greenbaum, and Heasley
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
Applicant, DFO Global Performance Commerce Limited, seeks registration on the
Principal Register of the standard character mark CIRCACHARGE for “Battery
chargers; Battery chargers for mobile phones; Battery chargers for use with digital
electronic devices, namely, cell phones, mobile phones, smart phones; Wireless
chargers; Cell phone battery chargers; Cell phone battery chargers for use in vehicles”
Serial No. 88025994
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in International Class 9.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of
likelihood of confusion with the registered mark CIRCATECH (in standard
characters) for “Batteries; battery components, namely, battery plates” in
International Class 9.2
When the refusal was made final, Applicant appealed, and later requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal proceeded. Applicant, which had filed its main appeal
brief before its request for reconsideration was considered, was allowed to file a
supplemental brief. The Examining Attorney filed her brief in response. We affirm
the refusal to register.
I. Likelihood of Confusion
Section 2(d) of the Trademark Act prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). 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

1 Application Serial No. 88025994 was filed on July 5, 2018, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s claim of first use anywhere and in
commerce since at least as early as March 6, 2018.

Page references to the application record are to the downloadable .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs, motions
and orders on appeal are to the Board’s TTABVUE docket system.
2 Registration No. 5018941 issued on the Principal Register on Aug. 9, 2016.
Serial No. 88025994
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& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”). In making our
determination, we have considered 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.”)).
“The Lanham Act provides national protection of trademarks in order to secure
to the owner of the mark the goodwill of his business and to protect the ability of
consumers to distinguish among competing producers.” Park ‘N Fly, Inc. v. Dollar
Park & Fly, Inc., 469 U.S. 189, 224 USPQ 327, 331 (1985). Consistent with these
purposes, varying weights may be assigned to each DuPont factor depending on the
evidence presented in a particular case. 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”). “In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the similarities between the goods and services.” In re Chatam Int’l
Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004), cited in Ricardo Media
Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, *5 (TTAB 2019).

Serial No. 88025994
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A. Relatedness 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
DuPont factor concerns the “similarity or dissimilarity of established, likely-to-
continue trade channels.” DuPont, 177 USPQ at 567. A proper comparison of the
goods “considers whether ‘the consuming public may perceive [the respective goods
or 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 determine the relationship between the respective goods, we look to the
identifications in Applicant’s involved application and the cited registration. In re
Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) (“Likelihood
of confusion must be determined based on an analysis of the marks as applied to the
[goods or] services recited in applicant’s application vis-à-vis the [goods or] services
recited in [a] …registration, rather than what the evidence shows the [goods or]
services to be.”) (citing Canadian Imperial Bank v. Wells Fargo Bank, N.A., 811 F.2d
1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987)).
Applicant identifies:
“Battery chargers; Battery chargers for mobile phones; Battery chargers
for use with digital electronic devices, namely, cell phones, mobile phones,
smart phones; Wireless chargers; Cell phone battery chargers; Cell phone
Serial No. 88025994
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battery chargers for use in vehicles” in International Class 9 (emphasis
added.)

Registrant identifies: “Batteries; battery components, namely, battery plates” in
International Class 9 (emphasis added).
In its brief and supplemental brief, Applicant does not challenge the relatedness
of the respective identified goods.3 In the course of examination, however, it argued
that even though the goods may fall under the same general product category, they
operate in separate niches:
Applicant’s Mark falls in just such a niche category — that of a wireless
mobile phone charger for use inside vehicles…. In contrast, the
Registrant’s mark is used in connection with battery plates, generally used
in heavy machinery and/or construction and manufacturing.4

We agree with the Examining Attorney, though, that the goods are closely related.
The Application identifies “Battery chargers” and the Registration identifies
“Batteries”—the goods highlighted above. The semicolons in each identification
separate them from the other identified goods. See In re Midwest Gaming & Entm’t
LLC, 106 USPQ2d 1163, 1166 (TTAB 2013) (finding that, because a semicolon
separated the two relevant clauses in registrant’s identification, its ‘restaurant and
bar services’ is a discrete category of services that stands alone and independently as
a basis for likelihood-of-confusion analysis, and is not connected to nor dependent on
the services set out on the other side of the semicolon); TRADEMARK MANUAL OF
EXAMINING PROCEDURE (TMEP) § 1402.01(a) (Oct. 2018).

3 8, 13 TTABVUE.
4 Feb. 18, 2018 Response to Office Action at 6.
Serial No. 88025994
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We must consider Applicant’s and Registrant’s goods to include all goods of the
type identified. See, e.g., Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719
F.3d 1367, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013). “[W]here the goods in an
application or registration are broadly described, they are deemed to encompass ‘all
the goods of the nature and type described therein . . . .’” In re Solid State Design Inc.,
125 USPQ2d 1409, 1413 (TTAB 2018) (quoting In re Jump Designs LLC, 80 USPQ2d
1370, 1374 (TTAB 2006)). So Applicant’s description of goods encompasses all types
of battery chargers and Registrant’s description of goods encompasses all kinds of
batteries.
Battery chargers and batteries are clearly complementary in nature, as consumers
would purchase and use one to recharge the other. “If goods are complementary in
nature, or used together, this relatedness can support a finding of likelihood of
confusion. See, e.g., In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289, 1290 (Fed. Cir. 1984).” In re Cook Medical Technologies, LLC, 105
USPQ2d 1377, 1380 (TTAB 2012). And the relatedness of these goods—battery
chargers and batteries—can support a finding of likelihood of confusion as to all of
the Class 9 goods. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209
USPQ 986, 988 (CCPA 1981) (likelihood of confusion must be found if there is likely
to be confusion with respect to any item that comes within the identification of goods
or services in the application) cited in In re Information Builders Inc., 2020 USPQ2d
10444, *2 (TTAB 2020).
Serial No. 88025994
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The Examining Attorney corroborates this relatedness by making of record
printouts from nine websites showing that the same entity commonly provides
batteries and battery chargers under the same mark. These entities include Rayovac,
Philips, Energizer, Sony, Panasonic, and Samsung.5 This evidence supports a finding
that the goods identified in the subject application and registration are indeed related
products. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB
2009); In re Toshiba, 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009). It also shows
that Applicant’s and Registrant’s goods are sold through the same channels of trade—
retail stores such as Ikea and BestBuy—to the same class of consumers: the general
public.6 See 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.”). As with the
relatedness of the goods, Applicant’s brief does not challenge the similarity of trade
channels or classes of customers.
We find accordingly that the second and third DuPont factors weigh in favor of a
likelihood of confusion.
B. Similarity of the Marks

Under the first DuPont factor, we determine the similarity or dissimilarity of
Applicant’s and Registrant’s marks in their entireties, taking into account their

5 Examining Attorney’s brief, 15 TTABVUE 11-12; Aug. 28, 2018 Office Action at TSDR 8-13;
March 13, 2019 Office Action at 6-15; Feb. 20, 2020 Office Action at 8-40.
6 Examining Attorney’s brief, 15 TTABVUE 12; August 28, 2018 Office Action at 8 -10;
February 20, 2020 Office Action at 5-23.

Serial No. 88025994
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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., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). “Similarity in any one of these elements may be sufficient to find the marks
confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB
2018) aff’d 777 Fed. Appx. 516 (Fed. Cir. 2019) (citing In re Davia, 110 USPQ2d 1810,
1812 (TTAB 2014)).
Applicant’s and Registrant’s respective marks are , once again, CIRCACHARGE
and CIRCATECH, both in standard characters. The Examining Attorney notes that
“In this case, Applicant’s mark and Registrant’s mark create substantially similar
commercial impressions because they share the arbitrary wording ‘CIRCA’. The
wording ‘CIRCA’ is the dominant element of the mark because it’s the first term in
both marks and the additional wording in the respective marks are merely descriptive
of the applied for goods.”7 Applicant counters that the marks must be compared in
their entireties, and not dissected;8 the last syllable of each mark, CHARGE and
TECH, distinguishes them visually and aurally.9
We agree with the Examining Attorney, though, that “there is nothing improper
in stating that . . . more or less weight has been given to a particular feature of a

7 Examining Attorney’s brief, 15 TTABVUE 4-5.
8 Applicant’s supplemental brief, 13 TTABVUE 7.
9 Applicant’s supplemental brief, 13 TTABVUE 8.
Serial No. 88025994
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mark, provided the ultimate conclusion rests on consideration of the marks in their
entireties.” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1050 (Fed.
Cir. 2018) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751
(Fed. Cir. 1985)). “[O]ne feature of a mark may make a greater impression on the
public’s awareness than another portion, and thus for rational reasons, we may
consider that dominant portion to be more significant than another.” TiVo Brands
LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1116 (TTAB 2019) (citing In re Nat’l Data
Corp., 224 USPQ at 751).
In this case, the shared term CIRCA is the dominant component of both marks.
Because it is distinctive, consumers are more likely to perceive it as the source-
indicating feature of the mark. Tao Licensing, LLC v. Bender Consulting Ltd., 125
USPQ2d 1043, 1059 (TTAB 2017). Because it is displayed prominently as the first
term in each mark, consumers are more likely to notice and remember it. See Palm
Bay Imps., 73 USPQ2d at 1692 (“Veuve” is the most prominent part of the mark
VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word
to appear on the label); Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d
1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to
be impressed upon the mind of a purchaser and remembered”) cited in In re Mr.
Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016).
“[T]he identical wording at the beginning of the marks ‘lessens the possible
influence of differing wording at the end.’” In re Detroit Athletic, 128 USPQ2d at 1049
n. 3 (approving Board finding). The word CHARGE at the end of Applicant’s mark
Serial No. 88025994
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merely describes its goods’ function: to charge batteries.10 The word TECH at the end
of Registrant’s mark is an abbreviation for “TECHNOLOGY ,”11 a weak term that may
be adopted by any number of technology companies. See In re Hutchinson Tech. Inc.,
852 F.2d 552, 7 USPQ2d 1490, 1491-92 & n. 5 (Fed. Cir. 1988) (finding “a mark
including the term ‘technology,’ which mark is used on computer products, is a weak
mark for those goods,” and allowing disclaimer of “TECHNOLOGY” in
“HUTCHINSON TECHNOLOGY). Descriptive suffixes of this sort are less likely to
be perceived as source-identifying, Ricardo Media v. Inventive Software, 2019
USPQ2d 311355 at *5, and are therefore subordinate to the dominant component,
CIRCA.
Applicant argues that the prefix CIRCA is weak because there are four other
registered marks (aside from Registrant’s) using the wording “CIRCA” for electronic
products:
Mark and
Registration No.
Class 9 Goods
CIRCADIOMETER
(App.Ser. No. 88050814
Cancelled)

Scientific apparatus used to measure the intrinsically
photosensitive retinal ganglion cell, scotopic, S-, M-, L-cone,
and other human responses to light in the nature of
characterizing the light emission properties of luminous
scenes Cl. 9

Reg. No. 3984902
Circuit boards.
Cl. 9.
CIRCA
Reg. No. 5225239
Scientific, checking, supervision, measuring apparatus and
instruments, namely, radiation-measuring instruments,
radiation detectors; apparatus and instruments for
radiography and gamma radiography, for non-medical use,

10 See Merriam-Webster.com, Feb. 20, 2020 Office Action at 5 (“charge” means “to give
an electric charge to”).
11 Merriam-Webster.com, Feb. 20, 2020 Office Action at 6-7 (“tech”: “technology”).
Serial No. 88025994
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Mark and
Registration No.
Class 9 Goods
namely, gamma ray projector not for medical use; data
processing equipment and computers; gloves and suits for
protection against radiation, for industrial use. Cl. 9.
CIRCA Magnetically encoded debit cards; Magnetically encoded
prepaid debit cards; Magnetically encoded debit cards
inclusive of a strip or an electronic chip.
Cl. 912

Applicant contends that “Third party use diminishes the strength of a registered
mark. Again, if the evidence establishes that the consuming public is exposed to third-
party use of similar marks on similar goods, this evidence is relevant to show that a
mark is relatively weak and entitled to only a narrow scope of protection.”13
As the Examining Attorney notes, there are several problems with Applicant’s
third-party evidence. First, it does not show use of the marks in commerce; just
registration. As the Board declared in a similar case, “In this case there is no evidence
of third-party usage, there is only evidence of just a few third-party registrations. The
‘existence of [third-party] registrations is not evidence of what happens in the market
place or that customers are familiar with them.’ AMF Inc. v. Am. Leisure Prods., Inc.,
474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973).” In re Inn at St. John’s, LLC, 126
USPQ2d at 1746.
Second, Applicant’s evidence of a paltry four third-party registrations falls far
short of the volume of evidence needed to prove that a mark’s component is weak. Id.

12 Applicant’s supplemental brief, 13 TTABVUE 9; Request for Reconsideration, 5 TTABVUE
9-10, 14-36.
13 Applicant’s Supplemental Brief, 13 TTABVUE 6 (citing Palm Bay Imps, 396 F.3d at 1373;
TMEP §1207.01(d)(iii) (internal punctuation omitted)).
Serial No. 88025994
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at 1745-46 (two third-party registrations for related but not identical services and
two registrations for identical services with a non-identical but similar mark were
not sufficient to prove Registrant’s mark was conceptually or inherently weak).
And third, the goods identified in the registrations are far afield of the goods at
issue in this case. See In re Thor Tech, Inc., 90 USPQ2d 1634, 1639 (TTAB 2009)
(third-party registrations found to be of limited value because goods identified in the
registrations appeared to be in fields which were far removed from the involved
products).” Evidence of third-party registrations for similar marks with different or
unrelated goods has “no bearing on the strength of the term in the context relevant
to this case.” Tao v. Bender, 125 USPQ2d at 1058 (TTAB 2017) (citing In re
i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017)). Their
inclusion in International Class 9 is solely for the convenience of the PTO, and “is
wholly irrelevant to the issue of registrability under section 1052(d), which makes no
reference to classification.” In re Detroit Athletic, 128 USPQ2d at 1051 (quoting Jean
Patou Inc. v. Theon Inc., 9 F.3d 971, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993) also
quoted in Ricardo Media v. Inventive Software, 219 USPQ2d 311355 at *11 n. 16.
The goods in the involved Application and cited Registration—complementary
battery chargers and batteries—are far more closely related than the goods identified
in Applicant’s third-party registrations. Applicant’s third-party registration evidence
is thus of little or no probative value. The shared term CIRCA remains the dominant
component of Applicant’s and Registrant’s marks.
Serial No. 88025994
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For these reasons, we find that the marks are more similar than dissimilar, and
the first DuPont factor weighs in favor of finding a likelihood of confusion.
C. Conditions of Sale

Under the fourth DuPont factor, we consider “[t]he conditions under which and
buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.”
DuPont, 177 USPQ at 567.
The Examining Attorney contends that:

Moreover, Applicant’s and Registrant’s products are generally of low cost
which is evidenced by the attached webpages of record from
www.anker.com, www.ikea.com, www.insigniaproducts.com,
www.usa.philips.com, www.rayovac.com indicating the costs of these goods
start at as low as three U.S. Dollars. For products that are relatively low-
priced and subject to impulse buying, the risk of likelihood of confusion
increases because purchasers of these products are held to a lesser
standard of purchasing care.14

Given the broad identification of goods, “batteries” and “battery chargers,” we
agree that these goods encompass low-priced items, which would be offered to the
general public. The standard of care is that of the least sophisticated potential
purchaser. Stone Lion Capital Partners v. Lion Capital, 110 USPQ2d at 1163 cited
in In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) aff’d 778 Fed. Appx. 962
(Fed. Cir. 2019) (“Board precedent requires our decision to be based on the least
sophisticated potential purchasers.”).
Applicant does not contest this argument in its brief.
The fourth DuPont factor therefore weighs in favor of a likelihood of confusion.

14 Feb. 20, 2020 Office Action at 3; Examining Attorney’s brief, 15 TTABVUE 13.

Serial No. 88025994
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II. Conclusion

Applicant urges that “those in the industry itself can decide whether or not they
believe that registration of its CIRCACHARGE mark will interfere with their right
to compete or adversely impact their business.”15 That position, however, would
require the Examining Attorney to abdicate her duty to protect both consumers and
registrants against a likelihood of confusion. As the Federal Circuit’s predecessor
court once put it:
[W]here likelihood of confusion, mistake, or deception, is as clear as it is in
this case--albeit that is admittedly a subjective judgment--we cannot agree
with the appellant that “the public interest and the rights of the parties
are better served” by passing the application to publication in order to see
whether the owner of the reference registration will oppose. Not only does
the act impose on the Patent Office and on us the duty to make the
subjective judgment but it is intended, we feel, to afford rights to
registrants without constantly subjecting them to the financial and other
burdens of opposition proceedings.

In re Apparel, Inc., 366 F.2d 1022, 151 USPQ 353, 354 (CCPA 1966) cited in In re
Dixie Rests., 41 USPQ2d at 1535.
We find that the marks are similar and the goods are closely related, with
overlapping channels of trade to members of the general public, consumers who may
not be sophisticated or exercise more than a normal amount of care in making their
purchases. There is therefore a likelihood of confusion under Section 2(d). 15 U.S.C.
§ 1052(d).
Decision: The refusal to register Applicant’s mark is affirmed.

15 Applicant’s supplemental brief, 13 TTABVUE 11.