Southern Associates

Trademark Trial and Appeal Board

May 19, 2021

88713943 (T.T.A.B. May. 19, 2021)

This Opinion is not a
Precedent of the TTAB

Mailed: May 19, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Southern Associates
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Serial No. 88713943

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Joseph S. Heino and Erin E. Kaprelian of Davis & Kuelthau, s.c.,
for Southern Associates.

Judy Helfman, Trademark Examining Attorney, Law Office 111,
Chris Doninger, Managing Attorney.
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Before Zervas, Taylor and Goodman,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Southern Associates (“Applicant”) has filed an application pursuant to Section 1(a)
of the Trademark Act, 15 U.S.C. § 1051(a), for registration on the Principal Register
of the following mark for “metal casting” in International Class 40:1

1 Application Serial No. 88713943, filed on December 3, 2019. The application claims first use
and first use in commerce on January 1, 2010.
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 and orders
on appeal are to the Board’s TTABVUE docket system.
Serial No. 88713943
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The application describes the mark as “consist[ing] of the stylized letters ‘AMI’
with matching shaded triangles above and below the letter ‘A,’ and matching angles
above and below the letters ‘MI’.” Color is not claimed as a feature of the mark.
The Examining Attorney refused registration pursuant to Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark is likely to
cause confusion with the mark AMI METALS in typed form2 on the Principal Register
for “manufacturing to the order and specification of others aluminum, stainless steel,
titanium, nickel and alloy steel plate, sheet and bar products and processing for
others aluminum, stainless steel, titanium, nickel and alloy steel plate, sheet and bar
products” in International Class 40.3
After the refusal was made final, Applicant appealed and filed a request for
reconsideration.4 The Board suspended the appeal and remanded the application to

2 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings.
Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R § 2.52, was amended to replace
the term “typed” drawing with “standard character” drawing. A typed mark is the legal
equivalent of a standard character mark. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1909 n.2 (Fed. Cir. 2012) (“until 2003, ‘standard character’ marks formerly were known
as ‘typed’ marks.”).
3 Registration No. 2262204, registered July 20, 1999 and twice renewed.
4 Applicant submitted a list of applications and registrations from the TESS database with
its Request for Reconsideration (TSDR 8-11). The Examining Attorney objected to
consideration of this list in the December 9, 2020 Denial of Applicant’s Request for
Reconsideration (TSDR 2) on the ground that applications and registrations may not be made
Serial No. 88713943
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the Examining Attorney for consideration of the request for reconsideration. The
Examining Attorney denied the request for reconsideration, the appeal resumed and
Applicant and the Examining Attorney filed briefs. We affirm the refusal to register.
Our determination under Section 2(d) of the Trademark Act is based on an
analysis of the probative facts in evidence that are relevant to the factors bearing on
a likelihood of confusion. See In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973) (“DuPont”); see also Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005);
In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
considering the evidence of record on these factors, we keep in mind that “[t]he
fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods [or services] and differences in the
marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ
24, 29 (CCPA 1976).
We consider each DuPont factor that is relevant or for which there is argument
and evidence of record. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160,
1162-63 (Fed. Cir. 2019). “Not all of the [DuPont] factors are relevant to every case,
and only factors of significance to the particular mark need be considered.” Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1719 (Fed.

of record through the submission of a list. In view of the Examining Attorney’s objection, we
give no further consideration to this list. See TRADEMARK MANUAL OF EXAMINING
PROCEDURE (TMEP) § 710.03 (Oct. 2018).
Serial No. 88713943
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Cir. 2012) (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259
(Fed. Cir. 2010)).
a. Similarity of the Services and Trade Channels
We evaluate the relatedness of the respective services based on their
identifications in the subject application and cited registration. Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir.
2014); see also Octocom Sys. Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the question of
registrability of an applicant’s mark must be decided on the basis of the identification
of goods [or services] set forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods [or services], the particular
channels of trade or the class of purchasers to which the sales of goods [or services]
are directed.”).
We find that Applicant’s and Registrant’s services overlap and hence are legally
identical in part. Specifically, we find on the face of the identifications that
Registrant’s recited services of “manufacturing to the order and specification of others
aluminum, stainless steel, titanium, nickel and alloy steel plate, sheet and bar
products and processing for others aluminum, stainless steel, titanium, nickel and
alloy steel plate, sheet and bar products” encompasses Applicant’s recited “metal
casting” services in this application. Applicant did not argue to the contrary and, in
fact, was silent on this issue.
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Turning to the trade channels, in the absence of limitations as to channels of trade
or classes of purchasers in the identified services of the application and the cited
registration, we must presume that such services travel in all of the normal trade
channels, and are available to all potential classes of consumers of such services. In
re I-Coat Co., LLC, 126 USPQ2d 1730, 1737-38 (TTAB 2018)) (citing Citigroup Inc. v.
Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011);
In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211
USPQ 639, 640 (TTAB 1981)).5 Because the services are legally identical in part, we
presume that the trade channels and classes of purchasers for those services are the
same. Accordingly, Applicant’s and Registrant’s services overlap. See In re Linkvest
S.A., 24 USPQ2d 1716 (TTAB 1992). In addition, the common purchasers for
Applicant’s and Registrant’s services are businesses requiring metal casting.
The DuPont factors regarding the similarity of the services, trade channels and
classes of consumers hence weigh heavily in favor of finding a likelihood of confusion.
b. Similarities of the Marks
We now consider whether Applicant’s and Registrant’s marks are similar when
viewed in their entireties in terms of appearance, sound, connotation and commercial

5 Applicant argues that “[c]learly, the owner’s use of the mark AMI METALS makes it quite
apparent that it provides services for the aerospace industry.” Applicant’s brief at p. 9, 6
TTABVUE 14. Because there is no restriction to the aerospace industry in Registrant’s
identification of services, Applicant’s argument is untenable. An applicant may not restrict
the scope of its goods or the scope of the goods covered in the cited registration by extrinsic
argument or evidence. See, e.g., In re Midwest Gaming & Entertainment LLC, 106 USPQ2d
1163, 1165 (TTAB 2013); In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008); In re
Bercut-Vandervoort & Co., 229 USPQ 763, 764-65 (TTAB 1986).
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impression. See Stone Lion Capital Partners, 110 USPQ2d at 1160 (quoting Palm Bay
Imps., 73 USPQ2d at 1689). The test under this DuPont factor is not whether the
marks can be distinguished when subjected to a side-by-side comparison, but rather
whether the marks are sufficiently similar that confusion as to the source of the
services offered under the respective marks is likely to result. See i.am.symbolic, 123
USPQ2d at 1748; Coach Servs. Inc., 101 USPQ2d at 1721. The focus is on the
recollection of the average purchaser, who normally retains a general rather than a
specific impression of trademarks. See Mini Melts, Inc. v. Reckitt Benckiser LLC, 118
USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089
(TTAB 2016). Also, “when marks would appear on virtually identical goods or
services, the degree of similarity necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992).
While we must consider the marks in their entireties, it is entirely appropriate to
accord greater importance to the more distinctive elements in the marks than to the
less distinctive elements in determining whether the marks are similar. In re Nat’l
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“[T]here is nothing
improper in stating that, for rational reasons, more or less weight has been given to
a particular feature of a mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties.”).
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We first clarify the proper focus of the analysis, which Applicant discusses in its
brief.6 It is well established that, in contrast to an infringement action where a court
examines the visual appearance of the marks in the context of actual use, in
proceedings before the Board, actual use is not relevant. Jim Beam Brands Co. v.
Beamish & Crawford, Ltd., 937 F.2d 729, 19 USPQ2d 1352 (2d Cir. 1991). Applicant’s
arguments regarding the context in which marks are displayed in actual use and that
Registrant’s services are limited to the aerospace industry7 are not relevant to the
analysis. The right to register a mark must be determined “exactly as shown in the
application” regardless of the manner of actual use. Id. at 1356 (distinguishing
infringement proceedings from Board proceedings); see also Bellbrook Dairies, Inc. v.
Hawthorn-Mellody Farms Dairy, Inc., 117 USPQ 213, 214 (CCPA 1958); Blue Cross
and Blue Shield Ass’n v. Harvard Community Health Plan Inc., 17 USPQ2d 1075,
1077 (TTAB 1990).
Turing to “AMI” which appears in both marks, the Examining Attorney maintains
that “ami” is defined in the RANDOM HOUSE UNABRIDGED DICTIONARY (2020) accessed
at dictionary.com8 as “a friend, especially a male friend.” The definition indicates that
it is a French term. Other definitions introduced by the Examining Attorney also

6 Applicant’s brief at pp. 4-11, 6 TTABVUE 9-16. Applicant cites Louis Vuitton Malletier v.
Dooney & Bourke, Inc., 454 F.3d 108, 79 USQP2d 1481, 1486 (2nd Cir. 2006), for the
proposition that “courts must analyze the mark’s overall impression on a consumer,
considering the context in which the marks are displayed and the totality of factors that could
cause confusion among prospective purchasers (citations omitted).”
7 Applicant’s brief at pp. 9-10, 6 TTABVUE 14-15.
8 Reconsideration Denial Letter, Dec. 9, 2020, TSDR 5-6.
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indicate that “ami” is a French term.9 No examples of use in English are provided in
any of the definitions. “Ami” does not appear in MERRIAM WEBSTER’S dictionary as a
single term in English. In view thereof, and because we consider “AMI” in the context
of services involving metal casting, we are not persuaded that consumers would
perceive “AMI” as a French term for “friend” but find that “AMI” would be perceived
as an initialism with no apparent significance.
Because both marks contain the identical letters AMI, we find the marks to be
more similar than dissimilar “in their entireties as to appearance, sound, connotation
and commercial impression.” Palm Bay Imps., 73 USPQ2d at 1691 (quoting DuPont,
177 USPQ at 567). Indeed, the first term in a mark such as Registrant’s is often its
dominant portion. Presto Prods. Inc. v. Nice-Pak Prods., 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”); see also Palm Bay Imps., 73
USPQ2d at 1692; Century 21 Real Estate 23 USPQ2d at 1700.
In addition to being first, AMI is the dominant portion of Registrant’s mark
because the term that follows it, METALS, is at least merely descriptive of a feature
of Registrant’s services. It is settled that descriptive or generic terms are entitled to
less weight in our analysis. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has
noted that the ‘descriptive component of a mark may be given little weight in reaching
a conclusion on the likelihood of confusion.’”) (quoting In re Nat’l Data, 224 USPQ at

9 See Id., at TSDR 4-5
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752); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (BINION’S, not disclaimed
word ROADHOUSE, is dominant element of BINION’S ROADHOUSE); In re Code
Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often
“less significant in creating the mark’s commercial impression”).
We have not ignored the design component of Applicant’s mark, which according
to Applicant comprises matching shaded triangles and angles.10 However, here, the
shared letters AMI are more important than the design, because AMI will be used to
refer to the services and more clearly and readily identifies the source of Applicant’s
services than the design. In cases involving marks “consisting of words and a design,
the words are normally accorded greater weight because they are likely to make a
greater impression upon purchasers, to be remembered by them, and to be used to
request the goods [or services].” In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181,
1184 (TTAB 2018) (citing Viterra, 101 USPQ2d at 1908). The same general principle
applies to composite marks involving letters and designs because letters, like words,
are more likely to be recalled than designs and to be used in verbalizing composite
marks in the course of referring to the mark owner or requesting its goods or services.
Furthermore, because Registrant’s mark is in standard character format, it could be
displayed in any lettering style, color or font, and Registrant would be free to display
its mark in a font much as Applicant displays the letters AMI in its mark, heightening

10 Applicant’s brief at p. 7, 6 TTABVUE 12. Applicant characterizes its mark as including
“highly distinctive graphic elements.” Id. at 12, 6 TTABVUE 18. We disagree that the design
elements in Applicant’s mark are highly distinctive. Its citation to various cases in which the
Board found the design elements dominated the applied-for mark are inapposite. See Reply
brief pp. 5-7, 9 TTABVUE 6-8.
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the visual similarities. In re Viterra Inc., 101 USPQ2d at 1909; Citigroup, 98 USPQ2d
at 1258-59; In re Strategic Partners Inc., 102 USPQ2d 1397, 1399 (TTAB 2012).
While the design in Applicant’s mark aids in distinguishing the marks when
considered side-by-side, that is not the test. Rather, the test is whether the marks are
sufficiently similar in terms of their overall commercial impression that confusion as
to the source of the services offered under the marks is likely to result. San Fernando
Elec. Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3
(CCPA 1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB
1991). Here, the marks are sufficiently similar given that they share the identical,
apparently arbitrary letters AMI, which appear first in Registrant’s mark and are
the dominant feature of both marks and will be used to refer to Applicant’s and
Registrant’s services.
Upon consideration of the foregoing, we remain unpersuaded by Applicant’s
arguments that the marks are dissimilar. As we noted above, “when marks would
appear on virtually identical … services the degree of similarity necessary to support
a conclusion of likely confusion declines.” Century 21 Real Estate, 23 USPQ2d at 1700;
see also In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010). The
DuPont factor regarding the similarity of the marks hence favors a finding of
likelihood of confusion.
d. Purchaser Sophistication
Because Applicant believes that Louis Vuitton Malletiern, supra, applies to this
case, Applicant argues purchasers of Registrant’s services are in the aerospace
Serial No. 88713943
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industry and thus “one must conclude that its customers are sophisticated buyers
with highly specialized needs ….”11 We do not agree with Applicant that based on
actual use, Registrant’s purchasers are sophisticated, but we find that based on
Registrant’s identification of services, consumers of the described services are likely
sophisticated. We hasten to point out though that the fact that purchasers are
sophisticated or knowledgeable in a particular field does not necessarily mean that
they are sophisticated or knowledgeable in the field of trademarks or immune from
source confusion. See, e.g., Stone Lion, 746 F.3d 1317, 110 USPQ2d 1157, 1163-64.
“[E]ven sophisticated purchasers are not immune from source confusion, especially
in cases such as the present one involving [very similar] marks and related goods
[and/or services].” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1413 (TTAB 2015)
(citing In re Research & Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir.
1986)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). The similarity of the
marks and the relatedness of the services sold thereunder “outweigh any presumed
sophisticated purchasing decision.” In re i.am.symbolic, 116 USPQ2d at 1413 (citing
HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819, 1823 (TTAB 1989)), aff’d,
902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990)). We nonetheless find the DuPont
factor regarding purchaser sophistication slightly favors a finding that confusion is
unlikely.

11 Applicant’s brief at p. 10, 6 TTABVUE 15.
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e. Conclusion
We have found Applicant’s and Registrant’s services to be legally identical in part
and presume the trade channels and purchasers to also be identical in part. In
addition, we have found the marks to be similar. We therefore conclude that
Applicant’s mark for its services would likely be confused with Registrant’s
AMI METALS mark for its services.
Decision: The refusal to register under Section 2(d) is affirmed.