Advanced Neuro Dynamics, Inc.v.Erica Puccio

Trademark Trial and Appeal Board

Aug 5, 2021

91249597 (T.T.A.B. Aug. 5, 2021)

Mailed: August 5, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Advanced Neuro Dynamics, Inc.
v.
Erica Puccio
_____

Opposition No. 91249597
_____

William G. Meyer III, Julia K. Brotman and Thomas E. Christensen of Settle Meyer
Law, LLLC for Advanced Neuro Dynamics, Inc.

Todd Wengrovsky of the Law Offices of Todd Wengrovsky, PLLC
for Erica Puccio.
_____

Before Cataldo, Bergsman and Heasley, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Erica Puccio (Applicant) seeks registration on the Principal Register of the mark
EMPOWERTUDE, in standard character form, for “life coaching services in the field
of leadership management; workshops and seminars in the field of life coaching, self-
empowerment and leadership management,” in International Class 41.1

1 Serial No. 88172180 filed October 28, 2018, under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b), based on Applicant’s claim of a bona fide intent to use her mark in
commerce.
This Opinion Is Not a
Precedent of the TTAB
Precedent of the TTAB
PrePrecedent of the TTAB
Opposition No. 91249597

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Advanced Neuro Dynamics, Inc. (Opposer) opposes registration of Applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that Applicant’s mark so resembles Opposer’s registered marks listed below as to be
likely to cause confusion:
● THE EMPOWERMENT PARTNERSHIP and design, reproduced below, for the
goods and services listed below:

Educational services, namely, conducting classes and
seminars in the field of self-improvement, in International
Class 41;2
Printed materials, namely, books in the field of self-
improvement, and printed instructional materials in the
field of self-improvement, in International Class 16;3 and
Digital media, namely, CDs and DVDs featuring self-
improvement, in International Class 9.4
Opposer disclaimed the exclusive right to use the word “Partnership.”
● EMPOWERING YOUR LIFE, in standard character form, for the following
goods and services:

2 Registration No. 3579749 registered February 24, 2009; renewed.
3 Registration No. 3579750 registered February 24, 2009; renewed.
4 Registration No. 3579751 registered February 24, 2009; renewed.
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Educational services, namely, conducting classes and
seminars in the field of self-improvement, in International
Class 41:5
Printed materials, namely, books relating to self-
improvement, and printed instructional, educational and
teaching materials relating to self-improvement, in
International Class 16;6 and
Pre-recorded digital media in the field of self-improvement,
in International Class 9.7
● TIME EMPOWERMENT, in standard character form, for the goods and services
listed below:
Educational services, namely, conducting classes and
seminars in the field of self-improvement, in International
Class 41;8
Printed materials, namely, books relating to self-
improvement, and printed instructional, educational and
teaching materials relating to self-improvement, in
International Class 16;9 and
Pre-recorded digital media in the field of self-improvement,
in International Class 9.10
Applicant, in her Answer, denies the salient allegations in the Notice of
Opposition.

5 Registration No. 3327186 registered October 30, 2007; renewed.
6 Registration No. 3327183 registered October 30, 2007; renewed.
7 Registration No. 3727487 registered December 22, 2009; renewed.
8 Registration No. 3327182 registered October 30, 2007; renewed.
9 Registration No. 3331964 registered November 6, 2007; renewed.
10 Registration No. 3654192 registered July 14, 2009; renewed.
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I. The Record
The record includes the pleadings, and pursuant to Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Applicant’s application file. The parties introduced the
testimony and evidence listed below:
A. Opposer’s testimony and evidence.
1. Notice of reliance on copies of Opposer’s pleaded registrations, printed from
the USPTO Trademark Status and Document Retrieval system (TSDR)
showing the current status of and title to the registrations:11
2. Testimony declaration of Julia K. Brotman, Opposer’s counsel, introducing
Opposer’s requests for admissions, to which Applicant failed to file a
response;12
3. Notice of reliance on excerpts from Opposer’s website;13
4. Notice of reliance on a dictionary definition of the term “-tude”;14 and
5. Testimony declaration of Janis Cravens, Opposer’s Vice President.15
B. Applicant’s evidence.
Applicant introduced copies of 10 third-party registrations incorporating the word
“Empower.”16

11 12 TTABVUE.
12 13 TTABVUE.
13 14 TTABVUE 4-18.
14 14 TABVUE 19-21.
15 15 TTABVUE. The Board posted the portions of the Craven declaration Opposer designated
confidential at 16 TTABVUE.
16 17 TTABVUE.
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II. Entitlement to a statutory cause of action17
Opposer’s entitlement to a statutory cause of action, formerly referred to as
“standing” by the Federal Circuit and the Board, is an element of the plaintiff’s case
in every inter partes case. See Corcamore, LLC v. SFM, LLC, 978 F.3d 1298,
2020 USPQ2d 11277 (Fed. Cir. 2020) ), cert. denied, ___ S. Ct. ___ (2021); Australian
Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d
10837 (Fed. Cir. 2020), reh’g en banc denied 981 F.3d 1083, 2020 USPQ2d 11438 (Fed.
Cir. 2020), petition for cert. filed; Empresa Cubana Del Tabaco v. Gen. Cigar Co.,
753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014). To establish entitlement to
a statutory cause of action, a plaintiff must demonstrate: (i) an interest falling within
the zone of interests protected by the statute and (ii) a reasonable belief in damage
proximately caused by the registration of the mark. Corcamore, 2020 USPQ2d 11277
at *4. See also Empresa Cubana, 111 USPQ2d at 1062; Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185, 189 (TTAB 1982).
Because Opposer has properly introduced into evidence copies of its pleaded
registrations showing the current status of and title to the registrations, Opposer has
established its entitlement to a statutory cause of action. Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Primrose Ret. Cmtys.,

17 Even though we now refer to standing as entitlement to a statutory cause of action, our
prior decisions and those of the Federal Circuit interpreting “standing” under §§ 1063 and
1064 remain applicable.
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LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1032 (TTAB 2016)
(standing established based on pleaded registration made of record).
III. Priority
Because Opposer has properly made of record copies of its pleaded registrations,
priority is not an issue as to the mark and goods and services covered by the
registrations. See Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1469
(TTAB 2016) (citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d. 1400,
182 USPQ 108, 110 (CCPA 1974)).
IV. Likelihood of Confusion
We base our determination under Section 2(d) on an analysis of all of the probative
facts in evidence that are relevant to the factors bearing on the likelihood of confusion.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973)
(“DuPont”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138,
113 USPQ2d 2045, 2049 (2015). See also In re Majestic Distilling Co., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). “In discharging this duty, the thirteen
DuPont factors ‘must be considered’ ‘when [they] are of record.’” In re Guild Mortg.
Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997) and DuPont,
177 USPQ at 567). “Not all DuPont factors are relevant in each case, and the weight
afforded to each factor depends on the circumstances. Any single factor may control
a particular case.” Stratus Networks, Inc. v. UBTA-UBET Commc’ns Inc., 955 F.3d
994, 2020 USPQ2d 10341, *3 (Fed. Cir. 2020) (citing Dixie Rests., 41 USPQ2d at 1406-
07).
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“Each case must be decided on its own facts and the differences are often subtle
ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387 (CCPA
1973). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods or services.
See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
Federated Foods, Inc. v. 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 the
marks.”). See also In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747
(Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for
which there is record evidence but ‘may focus … on dispositive factors, such as
similarity of the marks and relatedness of the goods.’”) (quoting Herbko Int’l v. Kappa
Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
A. The similarity or dissimilarity and nature of the goods and services.
Applicant is seeking to register its mark for, inter alia, “workshops and seminars
in the field of life coaching, self-empowerment and leadership management.” Opposer
registered its marks for, inter alia, “educational services, namely, conducting classes
and seminars in the field of self-improvement.”
The MERRIAM-WEBSTER DICTIONARY (merriam-webster.com) defines a “life coach”
as “an advisor who helps people make decisions, set and reach goals, or deal with
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problems.”18 Thus, “life coaching” is helping people make decisions, setting and
reaching goals, or dealing with problems.
The MERRIAM WEBSTER DICTIONARY defines “empower,” inter alia, as “enable” and
“to promote the self-actualization or influence of.”19 It defines “self-actualize” as “to
realize fully one’s potential,”20 and “empowerment” as “the action of empowering
someone or something.”21 Thus, “self-empowerment” is enabling someone to realize
his/her full potential.
Applicant is seeking to register its mark for workshops and seminars in the field
of helping people to make decisions, setting and reaching goals, or dealing with
problems, as well as enabling one to realize his or her full potential. In other words,
Applicant is conducting workshops and seminars in the field of helping people to
improve their lives, or self-improvement. These services are very similar, if not
identical, to Opposer’s classes and seminars in the field of self-improvement.
B. Established, likely-to-continue channels of trade and classes of
consumers.

Because the services described in the application and Opposer’s pleaded
registrations are very similar, if not in part identical, we presume that the channels

18 Accessed August 4, 2021. The Board may take judicial notice of dictionary definitions,
including online dictionaries that exist in printed format. In re Cordua Rests. LP,
110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir.
2016); In re S. Malhotra & Co. AG, 128 USPQ2d 1100, 1104 n.9 (TTAB 2018); In re Red Bull
GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
19 Accessed August 2, 2021.
20 Accessed August 4, 2021.
21 Accessed August 2, 2021.
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of trade and classes of purchasers are the same. See In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods are presumed to
travel in same channels of trade to same class of purchasers); In re Inn at St. John’s,
LLC, 126 USPQ2d 1742, 1745 (TTAB 2018), aff’d mem. (No. 18-2236) (Fed. Cir.
September 13, 2019) (“Because the services described in the application and the cited
registration are identical, we presume that the channels of trade and classes of
purchasers are the same.”); United Glob. Media Grp., Inc. v. Tseng, 112 USPQ2d
1039, 1049 (TTAB 2014); Am. Lebanese Syrian Associated Charities Inc. v. Child
Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
C. Strength of Opposer’s marks.
In determining the strength of a mark, we consider both its inherent strength
based on the nature of the mark itself and its commercial strength, based on the
marketplace recognition value of the mark. See In re Chippendales USA, Inc.,
622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is
measured both by its conceptual strength (distinctiveness) and its marketplace
strength (secondary meaning).”); Top Tobacco, L.P. v. N. Atl. Operating Co., Inc.,
101 USPQ2d 1163, 1171-72 (TTAB 2011) (the strength of a mark is determined by
assessing its inherent strength and its commercial strength); Tea Bd. of India v.
Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006); 2 MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION § 11:80 (5th ed. 2021) (“The first enquiry
focuses on the inherent potential of the term at the time of its first use. The second
evaluates the actual customer recognition value of the mark at the time registration
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is sought or at the time the mark is asserted in litigation to prevent another’s use.”).
Market strength is the extent to which the relevant public recognizes a mark as
denoting a single source. Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d at 1899.
In other words, it is similar to acquired distinctiveness. For purposes of analysis of
likelihood of confusion, a mark’s renown may “var[y] along a spectrum from very
strong to very weak.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC,
857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (internal quotations
omitted). The proper standard is the mark’s “renown within a specific product
market,” id., and “is determined from the viewpoint of consumers of like products,”
id. at 1735, and not from the viewpoint of the general public.
1. Inherent Strength
At the outset, because Opposer’s marks are registered on the Principal Register,
with no claim of acquired distinctiveness under Section 2(f), for “educational services,
namely, conducting classes and seminars in the field of self-improvement,” we must
presume that they are inherently distinctive, i.e., that they are at worst suggestive of
those services. 15 U.S.C. § 1057(b) (registration is “prima facie evidence of the validity
of the registered mark”); In re Fiesta Palms, LLC, 85 USPQ2d 1360, 1363 (TTAB
2007) (when mark is registered on the Principal Register, “we must assume that it is
at least suggestive”).
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To show that Opposer’s marks are conceptually weak, Applicant introduced ten
third-party registrations incorporating the word “empower” in connection with
improving something. We list the registrations below:22
Mark Reg. No. Pertinent Services
EMPOWER 6106497 Conducting conferences and programs in the
field of information management; IT
training
EMPOWER SERIES 6098872 Workshops in the field of finance,
entrepreneurship, life insurance, estate
planning, physical fitness and wellness, and
personal development and improvement
EMPOWER THYSELF 5919034 Seminars, workshops, classes and courses in
the field of self-improvement
EMPOWER
YOURSELF FOR
BETTER HEALTH
5721114 Seminars, workshops, and lectures in the
field of personal health, personal
development and wellness
EMPOWER U and
design
5246541 Programs in the field of financial literacy
EMPOWER ME
ACADEMY
5421821 Workshops, classes and seminars in the field
of sports
EMPower 4555633 Providing professional development
workshops for math teachers
EMPOWER TRAINING
SERVICES
5087813 Training seminars in the field of workplace
safety
EMPOWER
PERFORMANCE
4960122 Physical fitness training
EMPOWER 4118313 Providing a website with information
relating to fitness and exercise

22 17 TTABVUE. Third-party registrations may be used in the manner of a dictionary to show
how a term is perceived. See Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334,
115 USPQ2d 1671, 1675 (Fed. Cir. 2015) (“[a] real evidentiary value of third party
registrations per se is to show the sense in which … a mark is used in ordinary parlance.”)
(citing 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:90 (4th ed. 2015);
Institut National des Appellations D’Origine v. Vintners Int’l Co. Inc., 958 F.2d 1574,
22 USPQ2d 1190, 1196 (Fed. Cir. 1992) (third-party registrations show the sense in which a
word is used in ordinary parlance and that a particular term has descriptive significance as
applied to certain goods or services).
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Likwise, Opposer, in its website, uses the term “Empower,” or variations thereof,
to suggest its services enable oneself to improve. We list below excerpts from
Opposer’s website showing such suggestive use:
● “We’re here to Empower You with the Integrative NLP Practitioner Online
Course.”23
● “Used by leading minds, coaches, and business leaders, Neuro Linguistic
Programming (NLP) is scientifically proven to reprogram, transform, and empower
the brain to achieve more in life.”24
● “We believe in empowering people to harness the language of their own minds,
because we are all meant to embark on a journey toward discovery and self-
improvement.”25
● “See Empowerment in Action.”26
● “Find Empowerment at our next event.”27
● “Empowerment Breakthrough Training.”28
● “Master Practitioner Empowerment Breakthrough Training.”29
The term “empowerment” or variations of the word “empower” when used in
connection with Opposer’s “educational services, namely, conducting classes and

23 14 TTABVUE 4.
24 14 TTABVUE 5.
25 14 TTABVUE 13.
26 15 TTABVUE 109.
27 Id.
28 15 TTABVUE 112, 120, and 123.
29 15 TTABVUE 128.
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seminars in the field of self-improvement” is highly suggestive of the purpose or
function of Opposer’s services (i.e., to enable and promote self-improvement). The
term, shared by others in the field—witness Applicant’s third-party registration
evidence—is thus conceptually weak.
2. Commercial Strength
Opposer introduced the testimony and evidence listed below to establish the
commercial strength of its “Empowerment” marks:
● A table containing “the total number of educational training programs Opposer
has offered nationwide each year in connection with the EMPOWER marks and the
total annual attendance for such programs from 2015 to 2019:”30
Total number of education
training programs
Total annual attendance
2019 45 2,251
2018 43 1,526
2017 39 1,511
2016 36 1,300
2015 31 1,445

● Opposer’s profits from registration fees, coaching, writing and appearances,
mobile applications, CDs and DVDs, and other written material show that Opposer
is successful but not necessarily well-known.31 Opposer did not provide any testimony
or other evidence to put its profits into context vis-à-vis third parties rendering

30 Cravens Testimony Decl. ¶5 (15 TTABVUE 3).
31 Cravens Testimony Decl. ¶8-12 (15 TTABVUE 4).
Opposer designated its revenues and advertising expenditures as confidential and, therefore,
we may refer to those figures only in general terms.
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similar services and selling similar products. The raw numbers are not particularly
impressive in a vacuum.
● Opposer’s advertising expenditures are even less impressive than its profits.32
● “Opposer’s Goods and Services offered in connection with the EMPOWER Marks
have been featured on prominent media outlets, including Fox News, ABC News,
Inside Edition, The Huffington Post, Psychology Today, and Newsy,”33 and have
generated “approximately 22,733,881 [Facebook] marketing impressions;”34 however,
these exposures have not translated into sales, as shown by annual attendance at
Opposer’s seminars, discussed above.
With respect to the commercial strength of Opposer’s EMPOWERMENT marks,
we find that they fall in the middle of the spectrum of from very strong to very weak.
In sum, we find that because Opposer’s EMPOWERMENT marks are highly
suggestive, they are entitled to a narrow scope of protection or exclusivity of use. See
Anthony’s Pizza & Pasta Int’l, Inc. v. Anthony’s Pizza Holding Co., Inc., 95 USPQ2d
1271, 1278 (TTAB 2009), aff’d, 415 Fed. Appx. 222 (Fed. Cir. 2010); Pizza Inn, Inc. v.
Russo, 221 USPQ2d 281, 283 (TTAB 1983) (TTAB 1983). In other words, Opposer’s
EMPOWERMENT marks are not entitled to such a broad scope of protection that
they will bar to the registration of every mark comprising, in whole or in part, the
word EMPOWER, EMPOWERMENT or variations thereof in connection with self-

32 Cravens Testimony Decl. ¶¶14-16 (15 TTABVUE 4-15).
33 Cravens Testimony Decl. ¶13 (15 TTABVUE 4).
34 Cravens Testimony Decl. ¶15 (15 TTABVUE 5).
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improvement educational services; they will only bar the registration of marks “as to
which the resemblance to [opposer’s mark] is striking enough to cause one seeing it
to assume that there is some connection, association or sponsorship between them.”
Id.
D. Similarity or dissimilarity of the marks.
We now turn to the DuPont factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound, connotation and commercial
impression. DuPont, 177 USPQ at 567. In comparing the marks, we are mindful that
where, as here, the services are in part identical, the degree of similarity necessary
to find likelihood of confusion need not be as great as where there is a recognizable
disparity between the goods. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d
1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21 Real Estate Corp. v.
Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
“The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797,
1801 (Fed. Cir. 2018) (quoting Coach Servs., 101 USPQ2d at 1721). See also
Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103
USPQ2d 1435, 1440 (Fed. Cir. 2012).
Opposer’s registered marks are THE EMPOWERMENT PARTNERSHIP and
design, EMPOWERING YOUR LIFE, and TIME EMPOWERMENT. Applicant is
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seeking to register EMPOWERTUDE. The marks are similar because they share they
root word “Empower” and, therefore, engender the commercial impression of
empowering an individual toward self-improvement. However, since empowering
individuals for self-improvement is the purpose of the parties’ services, the marks are
highly suggestive. As discussed above, just because Applicant’s mark includes the
word “Empower” that does not furnish, in and of itself, a sufficient basis on which to
find it similar to Opposer’s EMPOWERMENT marks—especially here where
Applicant’s mark EMPOWERTUDE is a coined term. See Safer, Inc. v. OMS
Investments, Inc., 94 USPQ2d 1031, 1044 (TTAB 2010) (DEER-B-GON is not similar
to DEER AWAY and DEER AWAY PROFESSIONAL).
Unlike a situation involving an arbitrary or fanciful mark, adding matter to a
suggestive word, such as “Empower” in Registrant’s marks, may be enough to
distinguish it from another mark. In re Hunke & Jochheim, 185 USPQ 188, 189
(TTAB 1975).
It seems both logical and obvious to us that where a party
chooses a trademark which is inherently weak, he will not
enjoy the wide latitude of protection afforded the owners of
strong trademarks. Where a party uses a weak mark, his
competitors may come closer to his mark than would be the
case with a strong mark without violating his rights. The
essence of all we have said is that in the former case there
is not the possibility of confusion that exists in the latter
case.
Sure-Fit Prods. Co. v. Saltzson Drapery Co., 254 F.2d 158, 117 USPQ 295, 297 (CCPA
1958).
As discussed above, marks comprising the term "Empower” in connection with
self-improvement educational services are weak, and should be accorded a narrow
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scope of protection. Keeping this in mind, we find in this case that Applicant’s mark
EMPOWERTUDE is sufficiently different from Opposer’s marks THE
EMPOWERMENT PARTNERSHIP, EMPOWERING YOUR LIFE, and TIME
EMPOWERMENT to avoid the likelihood of confusion.
We recognize that in certain cases where one party’s marks incorporate the
entirety of the other party’s mark, we have found such differences insufficient to
distinguish the respective marks for identical services. See In re Mighty Leaf Tea, 601
USPQ2d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (applicant’s mark ML is
similar to opposer’s mark ML MARK LEES both for personal care and skin products);
Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406, 407 (CCPA 1967)
(THE LILLY as a mark for women's dresses is similar to LILLI ANN for women's
apparel including dresses); Hunter Indus., Inc. v. Toro Co., 110 USPQ2d 1651, 1660
(TTAB 2014) (applicant’s mark PRECISION is similar to opposer’s mark PRECISION
DISTRIBUTION CONTROL); In re U.S. Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)
(CAREER IMAGE for women’s clothing stores and women's clothing likely to cause
confusion with CREST CAREER IMAGES for uniforms including items of women's
clothing).
However, given that three third-party “Empower” registrations for self-
improvement related services have issued for marks with only peripheral differences
from Opposer’s marks and without apparent objection by Opposer, it appears that
until now Opposer recognized the limited scope of protection to which its
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EMPOWERMENT marks were entitled.35 Inasmuch as we have found Opposer’s
EMPOWERMENT marks highly suggestive, they are entitled to only a very limited
scope of protection. In a similar circumstance, the Board has made the following
observation:
The question involved in this proceeding is what measure
of protection should be afforded a mark like “ROYAL.” It is
settled that, unlike in the case of arbitrary or unique
designations, suggestive or highly suggestive terms,
because of their obvious connotation and possible frequent
employment in a particular trade as a part of trade
designations, have been considered to fall within the
category of “weak” marks, and the scope of protection
afforded these marks have been so limited as to permit the
use and/or registration of the same mark for different goods
or of a composite mark comprising this term plus other
matter, whether such matter be equally suggestive or even
descriptive, for the same or similar goods.
Standard Brands Inc. v. Peters, 191 USPQ 168, 172 (TTAB 1976). See also Glamorene
Prods. Corp. v. Earl Grissmer Co., Inc., 203 USPQ 1090, 1096 (TTAB 1978) (“Both
marks [RINSENVAC and SPRAY ‘N VAC] are highly suggestive of their products and
this only enhances the association of each mark with its own goods.”).
We find therefore that Applicant’s mark EMPOWERTUDE is not similar to
Opposer’s marks THE EMPOWERMENT PARTNERSHIP and design,
EMPOWERING YOUR LIFE, and TIME EMPOWERMENT.

35 The three relevant third party registrations are (i) Registration No. 6098872 for the mark
EMPOWER SERIES for workshops in the field of finance, entrepreneurship, life insurance,
estate planning, physical fitness and wellness, and personal development and improvement,
(ii) Registration No. 5919034 for the mark EMPOWER THYSELF for seminars workshops,
classes and courses in the field of self-improvement, and (iii) Registration No. 5721114 for
the mark EMPOWER YOURSELF FOR BETTER HEALTH for seminars, workshops, an
lectures in the field of personal health, personal development and wellness.
Opposition No. 91249597

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E. Conclusion
Viewing Applicant’s mark EMPOWERTUDE and Opposer’s marks THE
EMPOWERMENT PARTNERSHIP and design, EMPOWERING YOUR LIFE, and
TIME EMPOWERMENT in the context of the facts and circumstances presented by
the record in this case, we find that Applicant’s coined mark EMPOWERTUDE is
distinguishable from Opposer’s EMPOWERMENT marks. We find the strength or
weakness of Opposer’s marks is a dominant factor in our analysis. See, e.g., Kellogg
Co. v. Pack-Em Enters. Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991)
(“We know of no reason why, in a particular case, a single duPont factor may not be
dispositive … ‘each [of the thirteen elements] may from case to case play a dominant
role.”). Because of the highly suggestive nature of Opposer’s EMPOWERMENT
marks, consumers are able to distinguish between different marks incorporating the
word “Empower” in connection with self-improvement services. Accordingly, we find
that Applicant’s mark EMPOWERTUDE for “life coaching services in the field of
leadership management; workshops and seminars in the field of life coaching, self-
empowerment and leadership management” is not likely to cause confusion with
Opposer’s EMPOWERMENT marks for, inter alia, “educational services, namely,
conducting classes and seminars in the field of self-improvement.”
Decision: We dismiss the opposition.