Clearly IP Holdings, SRL

Trademark Trial and Appeal Board

May 14, 2021

88156396 (T.T.A.B. May. 14, 2021)

Hearing: May 11, 2021 Mailed: May 14, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board
————
In re Clearly IP Holdings, SRL
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Serial Nos. 88150585 and 88156396
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Mark VB Partridge of Partridge Partners PC,
for Clearly IP Holdings, SRL.
Kerry A. Nicholson, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
————

Before Bergsman, Shaw, and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
Clearly IP Holdings, SRL (“Applicant”) seeks registration on the Principal
Register of the standard character mark CLEARLY SPARKLING1 (SPARKLING
disclaimed) and the stylized mark 2 (SPARKLING disclaimed),

1 Application Serial No. 88150585, filed on October 10, 2018, based on an allegation of a bona
fide intent to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C.
1051(b).
2 Application Serial No. 88156396, filed on October 16, 2018, based on an allegation of a bona
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Serial Nos. 88150585 and 88156396
2
both for “Sparkling waters; carbonated waters; drinking waters; flavored waters;
mineral waters; water beverages” in International Class 32.
The Trademark Examining Attorney refused registration of each of Applicant’s
marks under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
of likelihood of confusion with the stylized mark (SPARKLING
disclaimed) registered on the Principal Register for “Carbonated waters; Drinking
water; Seltzer water; Fruit-based beverages; Non-alcoholic beverages, namely,
carbonated beverages” in International Class 32.3
When the refusals were made final, Applicant appealed. The appeals are fully
briefed. After Applicant submitted its appeal briefs, it moved to consolidate the
appeals.4 Applicant’s motion to consolidate the appeals is granted because we find
that both appeals involve common questions of law and fact. See Fed. R. Civ. P. 42(a);
Regatta Sport Ltd. v. Telux-Pioneer Inc., 20 USPQ2d 1154 (TTAB 1991). We therefore

fide intent to use in the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C.
1051(b). The description of the mark reads as follows: “The mark consists of a stylized
rendering of the words ‘CLEARLY SPARKLING.’” Color is not claimed as a feature of the
mark.
3 Registration No. 5460013 issued on May 1, 2018. The description of the mark reads as
follows: “The mark consists of the word ‘Clear’ and a stylized ampersand stacked above the
word ‘Sparkling’, with the words ‘Clear’ and ‘Sparkling’ in the font as shown.” Color is not
claimed as a feature of the mark.
4 12 TTABVUE in Application Serial No. 88150585 and 13 TTABVUE in Application Serial
No. 88156396.
Unless otherwise specified, all TTABVUE and Trademark Status and Document Retrieval
(“TSDR”) citations reference the docket and electronic file database for Application Serial No.
88150585. All citations to the TSDR database are to the .pdf version of the documents.
Serial Nos. 88150585 and 88156396
3
decide both appeals in a single opinion. An oral hearing was held on May 11, 2021.
For the reasons explained below, we affirm the refusals to register.
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973) (“DuPont”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however,
two key considerations are the similarities between the marks and the similarities
between the goods or services. See 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.”). “[E]ach 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) (internal citations removed). In making
our determination, we consider each DuPont factor for which there is evidence and
argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63
(Fed. Cir. 2019).
A. Relatedness of the Goods
We initially compare the goods under the second DuPont factor. In making our
determination regarding the relatedness of the goods, we must look to the goods as
identified in Applicant’s applications and the cited registration. See Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162
Serial Nos. 88150585 and 88156396
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(Fed. Cir. 2014) (quoting 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 set forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods, the particular channels of
trade or the class of purchasers to which the sales of goods are directed.”)); see also In
re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011).
Moreover, we need not find similarity as to each and every good listed in an
applicant’s identification of goods. It is sufficient for a refusal based on likelihood of
confusion that relatedness is established for any item encompassed by the
identification of goods or services in a particular class in the application. See SquirtCo
v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 938-39 (Fed. Cir. 1983) (holding that a
single good from among several may sustain a finding of likelihood of confusion);
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).
Both Applicant’s applications and the cited registration identify the following
identical goods: Carbonated waters; Drinking water(s). Further, Applicant’s broadly-
worded identification of “water beverages” necessarily encompasses Registrant’s
more narrowly identified “seltzer water” and “sparkling water.” See In re Solid State
Design Inc., 125 USPQ2d 1409, 1413-14 (TTAB 2018) (where the goods in an
Serial Nos. 88150585 and 88156396
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application or registration are broadly described, they are deemed to encompass all
the goods of the nature and type described therein); In re Hughes Furniture Indus.,
Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant's broadly worded
identification of ‘furniture’ necessarily encompasses Registrant's narrowly identified
‘residential and commercial furniture.”’). Thus, Applicant’s goods and Registrant’s
goods are legally identical in part.
Accordingly, the second DuPont factor strongly favors a finding of likelihood of
confusion.
B. Similarity of Trade Channels and Classes of Purchasers
We now consider the third DuPont factor involving the established, likely-to-
continue channels of trade of the goods. Because we have found that Applicant’s and
Registrant’s goods are legally identical in part, we must presume that these legally
identical in part goods are provided in the same trade channels and are offered to the
same classes of purchasers. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908
(Fed. Cir. 2012) (finding Board entitled to rely on this legal presumption in
determining likelihood of confusion); In re Yawata Iron & Steel Co., 403 F.2d 752, 159
USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of
trade and classes of purchasers are considered to be the same). We thus find, at a
minimum, that the channels of trade and classes of purchasers overlap.
Accordingly, the third DuPont factor also weighs heavily in favor of finding a
likelihood of confusion.
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C. Strength of the Cited Mark
Applicant argues that the term “clear” is a weak, commonly used term for water-
based beverages and, therefore, consumers will look to the other features in
Applicant’s marks to differentiate the marks in appearance, sound, meaning and
commercial impression. Specifically, Applicant maintains that the designation “clear”
is diluted when used in associated with water- or fruit-based beverages.5 In support
of its argument, Applicant submitted twenty-eight live, use-based registrations that
incorporate the term “clear” in the registered mark for various water-based and fruit-
based beverages.6
The Examining Attorney discounts Applicant’s third-party registration evidence
by stating that third-party registrations are entitled to little weight on the issue of
confusing similarity because the registrations are not evidence that the registered
marks are actually in use of that the public is familiar with them.7 The Examining
Attorney is correct that third-party registrations do not constitute evidence
demonstrating use of the marks in commerce. See In re Midwest Gaming & Entm’t

5 Applicant’s Appeal Brief, p. 10; 4 TTABVUE 11.
6 July 25, 2019 Response to Office Action; TSDR, pp. 6-38. Applicant also submitted
registrations for the marks BERRY CLEAR and PERFECTLY CLEAR, i.e., Registration Nos.
4307876 and 5244548, respectively. However, these two marks registered under Section 44(e)
of the Trademark Act and, therefore, cannot be considered as being probative of exposure to
U.S. consumers through use in commerce. See In re Albert Trostel & Sons Co., 29 USPQ2d
1783 (TTAB 1993). In addition, four of the registrations submitted by Applicant have been
cancelled (Registration Nos. 2083310, 3618020, 4386473, and 4396444). These registrations
also cannot be considered. See Action Temporary Services Inc. v. Labor Force Inc., 870 F.2d
1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“[A] cancelled registration does not provide
constructive notice of anything.”); In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1264 (TTAB
2011) (“‘dead’ or cancelled registrations have no probative value at all.”).
7 Examining Attorney’s Brief, p. 10; 6 TTABVUE 11.
Serial Nos. 88150585 and 88156396
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LLC, 106 USPQ2d 1163, 1167 n.5 (TTAB 2013) (citing In re Mighty Leaf Tea, 601 F.3d
1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)); see TRADEMARK MANUAL OF
EXAMINING PROCEDURE (TMEP) § 1207.01(d)(iii) (Oct. 2018). However, third-party
registration evidence is entitled to more weight in determining the strength of a mark
than argued by the Examining Attorney. In fact, the Federal Circuit has explained
that the “[t]hird party registrations are relevant to prove that some segment of the
composite marks which both contesting parties use has a normally understood and
well-recognized descriptive or suggestive meaning, leading to the conclusion that that
segment is relatively weak.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334,
115 USPQ2d 1671, 1675 (Fed. Cir. 2015). Moreover, even if “there is no evidence of
actual use,” as is the case here, such registrations “may be given some weight to show
the meaning of a mark in the same way that dictionaries are used” to illustrate how
a term is perceived in the trade or industry and, therefore, may be considered
somewhat weak. Id. (quoting Textronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 917
(CCPA 1976)).8
After a careful review of Applicant’s third-party registration evidence, we find
that some of the third-party registration evidence submitted by Applicant are for

8 The sixth DuPont factor requires us to consider evidence of the number and nature of similar
marks in use on similar goods. DuPont, 177 USPQ at 567; Primrose Ret. Cmtys., LLC v.
Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1033 (TTAB 2016). Here, Applicant has
not submitted any evidence demonstrating third-party use of marks similar to the cited mark
for goods similar to those listed in the cited registration. Thus, the record does not
demonstrate that the cited mark is commercially weak and, therefore, the sixth DuPont factor
is neutral. Additionally, the fifth DuPont factor concerns the fame of the prior mark. DuPont,
177 USPQ at 567. Because there is no evidence of record regarding the fame of the cited
mark, the fifth DuPont factor is also neutral.
Serial Nos. 88150585 and 88156396
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marks that convey differing connotations and overall commercial impressions than
the cited mark , i.e., THE CHOICE IS CLEAR, CRYSTAL CLEAR,
CLEAR MIND, ORIGINAL NEW YORK SELTZER THE CHOICE IS CLEAR and
design, and CLEAR CUT PHOCUS. As such, we find that these registrations do not
diminish the scope of protection to be afforded the cited mark.
We nonetheless find Applicant’s third-party registration evidence sufficient to
show that the term “clear” has been commonly registered as an element of a
trademark for various water-based and fruit-based beverages. As a result, a mark
comprising, in whole or in part, the word “clear” in connection with water- or fruit-
based beverages should be given somewhat of a restricted scope of protection. Pizza
Inn, Inc. v. Russo, 221 USPQ 281, 283 (TTAB 1983). In other words, the cited mark
is not entitled to such a broad scope of protection that it is a bar to the registration of
every mark comprising, in whole or in part, the term “clear”; it will only bar the
registration of marks “as to which the resemblance to [the cited mark] is striking
enough to cause one seeing it to assume that there is some connection, association or
sponsorship between the two.” Id. See also Anthony’s Pizza & Pasta Int’l Inc. v.
Anthony’s Pizza Holding Co., 95 USPQ2d 1271, 1278 (TTAB 2009), aff’d, 415 Fed.
Appx. 222 (Fed. Cir. 2010).
D. Similarity of the Marks
We next consider the similarity or dissimilarity of the marks in their entireties
as to appearance, sound, connotation and commercial impression. See Stone Lion
110 USPQ2d at 1160; Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison
Serial Nos. 88150585 and 88156396
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Fondee En 1772, 369 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005); TMEP
§1207.01(b)-(b)(v). “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 mem., Slip Op. No. 18-2236 (Fed. Cir. Sept. 13, 2019); TMEP
§ 1207.01(b).
“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.” In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744,
1748 (Fed. Cir. 2017) (quoting Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d
1356, 101 USPQ2d 1713 1721 (Fed. Cir. 2012) (internal quotation marks omitted)).
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); Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106, 108 (TTAB 1975).
Our analysis cannot be predicated on dissecting the marks into their various
components; that is, the decision must be based on a comparison of the entire marks,
not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985). See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212
USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected
and considered piecemeal; rather, it must be considered as a whole in determining
Serial Nos. 88150585 and 88156396
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likelihood of confusion.”). However, “in articulating reasons for reaching a conclusion
on the issue of confusion, there 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.” In re
Nat’l Data, 224 USPQ at 751.
Finally, where the goods of an applicant and registrant are identical or legally
identical in part, as is the case here, the degree of similarity between the marks
required to support a finding that confusion is likely declines. See Cai v. Diamond
Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re
Viterra Inc., 101 USPQ2d at 1908).
Applicant’s marks are CLEARLY SPARKLING in standard characters and the
stylized mark . The cited mark is . In the present
case, the respective marks are similar in appearance and commercial impression
because they share a form of the term “CLEAR” and the identical term
“SPARKLING.”
Although the marks have slight differences in sound due to the addition of an
ampersand in Registrant’s mark and the suffix “LY” in Applicant’s marks, slight
differences in the sound of similar marks will not avoid a likelihood of confusion. In
re Viterra Inc., 101 USPQ2d at 1912; In re Energy Telecomm. & Elec. Ass’n, 222 USPQ
350, 351 (TTAB 1983). In this case, aural similarity of CLEARLY SPARKLING and
CLEAR & SPARKLING is enhanced by their identical cadence.
Serial Nos. 88150585 and 88156396
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Moreover, while we recognize that both Applicant and Registrant have disclaimed
the term SPARKLING in their respective marks, disclaimers of terms comprising the
marks at issue do not necessarily serve to avoid confusion. See Cancer Care, Inc. v.
Am. Family Life Assurance Co. of Columbus, 211 USPQ 1005 (TTAB 1981). As the
wording of the disclaimer indicates (i.e., “no claim is made to the exclusive use of ...
apart from the mark as shown”), the disclaimed matter is accorded significance as an
integral part of the composite mark. See Am. Dietaids Co., Inc. et. al. v. Plus Prods.,
191 USPQ 146 (D.C.N.Y. 1976). The disclaimer of matter in a mark does not have the
effect of removing the matter from the mark. Bordon, Inc. v. W.R. Grace & Co., 180
USPQ 157 (TTAB 1973). It is well established that a disclaimer is of no legal
significance in determining likelihood of confusion, rather, the disclaimed matter
must be considered. See Kellogg Co. v. Pack ‘Em Enters. Inc., 14 USPQ 2d 1545 (TTAB
1990); Glamorene Prods. Corp. v. Boyle-Midway, Inc., et. al., 188 USPQ 145 (S.D.N.Y.
1975). Moreover, the public viewing the mark is unaware of what, if any, portions of
a mark may be disclaimed in a federal registration. See In re Nat’l Data, 224 USPQ
at 749. Thus, we must consider all of the wording in the marks in determining their
points of similarity and dissimilarity.
As to stylization, one of Applicant’s marks is a standard character mark, and
marks appearing in standard character form may be displayed in any font style, color
and size, including the identical stylization of the cited mark, because the rights
reside in the wording and not in any particular display or rendition. See SquirtCo,
216 USPQ at 939 (“[T]he argument concerning a difference in type style is not viable
Serial Nos. 88150585 and 88156396
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where one party asserts rights in no particular display. By presenting its mark
merely in a typed drawing, a difference cannot legally be asserted by that party.”); In
re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186-87 (TTAB 2018). Thus,
because Applicant’s CLEARLY SPARKLING standard character mark may be
displayed in the identical manner as the cited mark, the mere stylization of the words
in cited mark is insufficient to distinguish the respective marks.
Likewise, the overall presentation of Applicant’s stylized mark
and Registrant’s mark are quite similar. Both
marks appear in similar fonts and the wording CLEARLY in Applicant’s mark and
the term CLEAR in Registrant’s appear above the wording SPARKLING in a
comparable manner.
As to connotation, we take judicial notice of the term “clearly” which is defined as
“without equivocation; decidedly,” as well the dictionary definition of the word “clear”
which is defined as “transparent; pellucid.”9 In light of these dictionary definitions,
we acknowledge that Applicant’s mark CLEARLY SPARKLING and the cited mark
CLEAR & SPARKLING may convey different meanings. However, it is unlikely that
consumers of water beverages, carbonated beverages or fruit-based beverages will
even notice the difference. See B.V.D. Licensing Corp. v. Body Action Design, Inc., 846

9 Dictionary.com Unabridged Based on the Random House Unabridged Dictionary, Random
House, Inc. 2021. The Board may sua sponte take judicial notice of dictionary definitions,
Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982),
aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including definitions in online diction-
aries that exist in printed format or have regular fixed editions. 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).
Serial Nos. 88150585 and 88156396
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F.2d 727, 6 USPQ2d 1719, 1721 (Fed. Cir. 1988) (“The purchasing public, we believe,
does not indulge in such recognitional contortions but sees things as they are.”);
Grandpa Pidgeon’s of Mo., Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573, 574
(CCPA 1973) (differences in marks not likely to be recalled by consumers at spaced
intervals; purchasers do not engage in trademark dissection); In re Johnson Prods.
Co., 220 USPQ 539, 540 (TTAB 1983) (“studied analysis” of marks is unlikely to
occur).
In addition, the fact that the marks may have different connotations does not
necessarily overcome a finding that the marks are confusingly similar. Clairol Inc. v.
Roux Labs., 442 F.2d 980, 169 USPQ 589, 590 (CCPA 1971) (Even though the words
“Plus” and “Puff” “may have different meanings by themselves, this difference alone
does not overcome the conclusion that when the marks are viewed in their entireties
a likelihood of confusion exists”); see also Miles Labs., Inc. v. Whorton Pharmacal Co.,
199 USPQ 758, 761 (TTAB 1978) (marks ACNETONE and ACNE-DOME “scarcely
distinguishable, especially in sound” and “any difference in connotation will not have
any practical chance of avoiding error.”). As noted above, similarity in appearance,
sound, connotation, or commercial impression may be sufficient to find the marks
confusingly similar.
We find in analyzing the marks as a whole that differences in connotation are
overcome by similarities in sound, appearance and commercial impression between
the respective marks, particularly when applied to goods that are legally identical in
part. While we have not overlooked the suffix “ly” in the term CLEARLY in
Serial Nos. 88150585 and 88156396
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Applicant’s involved mark, the ampersand in the cited mark, or the stylization of the
cited mark and one of Applicant’s involved marks, we nonetheless conclude that
Applicant’s marks and the cited mark, when considered in their entireties, are
confusingly similar. We make this finding despite the fact that Applicant’s third-
party registration evidence supports a finding that the cited mark should be accorded
a somewhat narrower scope of protection than that to which arbitrary and strong
marks are entitled. Nonetheless, even weak marks are entitled to protection against
confusion. See Max Capital Grp. Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010); see also
King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109
(CCPA 1974).
Thus, the first DuPont factor favors a finding of likelihood of confusion.
E. Actual Confusion
Applicant argues that there is no evidence of actual consumer confusion.10
Applicant’s reliance on the purported absence of actual confusion is misplaced,
because there is no evidence of record regarding the extent of Applicant’s use of its
marks, or the extent of Registrant’s use of the cited mark. Therefore, we cannot gauge
whether or the extent to which there has been an opportunity for confusion to occur
if it were likely to occur.11 See Nina Ricci S.A.R.L. v. E.T.F. Enters. Inc., 889 F.2d
1070, 12 USPQ2d 1901, 1903 (Fed. Cir. 1989) (“The absence of any showing of actual

10 Applicant’s Appeal Brief, p. 18; 4 TTABVUE 19.
11 Indeed, the lack of actual confusion in this case is particularly inapplicable because the
applications at issue are based on an intent to use and, as noted, Applicant has not shown
that it has used its marks in the United States so there has been no opportunity for actual
confusion to have occurred.
Serial Nos. 88150585 and 88156396
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confusion is of very little, if any, probative value here because (1) no evidence was
presented as to the extent of ETF's use of the VITTORIO RICCI mark on the
merchandise in question in prior years ....”); In re Kangaroos U.S.A., 223 USPQ 1025,
1026-27 (TTAB 1984). In any event, a lack of evidence of actual confusion carries little
weight in an ex parte case such as this. Majestic Distilling, 65 USPQ2d at 1205. “[I]t
is unnecessary to show actual confusion in establishing likelihood of confusion.” Giant
Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir.
1983). This factor is neutral.
F. Applicant’s Other Arguments
Applicant raises a number of other arguments that are based on its ownership of
numerous registrations for CLEARLY-formative marks for various alcoholic
beverages and water beverage products.12 In particular, Applicant argues that there
is no likelihood of confusion because (1) Applicant has a family of CLEARLY-
formative marks; and (2) registration of Applicant’s involved marks for the identified
goods is within Applicant’s zone of expansion. Additionally, Applicant asserts that
there is no likelihood of confusion between the relevant marks because a prior

12 Applicant submitted status and title copies of its prior CLEARY-formative registrations for
the first time with its appeal brief. The evidentiary record should be complete prior to filing
an ex parte appeal to the Board. Trademark Rule 2.142(d); 37 CFR § 2.142(d). However, we
consider this evidence of record because the Examining Attorney both did not object to it and
discussed it in her brief. See In re Litehouse Inc., 82 USPQ2d 1471, 1475 n.2 (TTAB 2007)
(third-party registrations submitted for first time with applicant’s appeal brief considered
because examining attorney did not object in her brief and instead presented arguments in
rebuttal of this evidence).
During oral argument, Applicant’s counsel also advanced the argument that consumers
would perceive the term CLEARLY as Applicant’s brand or house mark. There is no evidence
of record to demonstrate that Applicant’s potential or actual customers perceive the word
CLEARLY as Applicant’s brand name or house mark. Thus, this argument is unavailing.
Serial Nos. 88150585 and 88156396
16
examining attorney allowed the cited mark to overcome a likelihood of confusion
refusal with a third party’s prior registration (Reg. No. 3327392) for the standard
character mark CLEARLY SPARKLING for “non-alcoholic beverages, namely
carbonated water beverages.” We have considered these arguments, but find them
unpersuasive.
First, the family of marks doctrine is unavailable to applicants seeking to
overcome a likelihood of confusion in an ex parte proceeding. The focus is on the mark
an applicant is seeking to register and not on any other marks the applicant may
have used or registered. In re Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB 2009).
See also In re Hitachi High-Techs. Corp., 109 USPQ2d 1769, 1772 (TTAB 2014)
(establishment of a “family of marks” requires consideration of use of the marks,
which usually is beyond the scope of examination in an ex parte proceeding).
Second, the expansion of trade doctrine has limited application in ex parte
proceedings, and usually is applied in inter partes proceedings where a plaintiff
claims that its priority of use of a mark for its goods or services should be extended
to include the defendant’s goods or services because they are in the natural zone of
expansion of the plaintiff’s goods or services. See Orange Bang, Inc. v. Ole Mexican
Foods, Inc., 116 USPQ2d 1102, 1119 (TTAB 2015) (“natural zone of expansion”
doctrine normally applies in inter partes where priority is an issue). The Board
considers the concept in ex parte proceedings through a traditional relatedness of
goods and services approach. In re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261, 1266
(TTAB 2011); In re Ginc UK Ltd., 90 USPQ2d 1472, 1480 n.9 (TTAB 2007). We have
Serial Nos. 88150585 and 88156396
17
done so here. As discussed above, the goods identified in the involved applications
and the cited registration include legally identical goods. The coexistence of the cited
registration with Applicant’s prior registrations for CLEARLY-formative marks does
not compel a different result.13
Finally, Applicant’s argument that a likelihood of confusion should not be affirmed
because the cited mark overcame a Section 2(d) with a third party’s prior registration
for the standard character mark CLEARLY SPARKLING for “non-alcoholic
beverages, namely carbonated water beverages” is also unavailing. While we
appreciate Applicant’s desire for equity under the particular circumstances of this
case, the Board is not bound by the prior decisions of examining attorneys in allowing
marks for registration. Although the USPTO strives for consistency, each case must
be decided on its own facts and record. See In re Shinnecock Smoke Shop, 571 F.3d
1171, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009) (“Even if all of the third-party
registrations should have been refused registration . . . , such errors do not bind the
USPTO to improperly register Applicant’s marks.”) (citation omitted); In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some
prior registrations had some characteristics similar to [Applicant’s] application, the
PTO’s allowance of such prior registrations does not bind the Board or this court.”);
In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141,

13 We note that some of Applicant’s prior CLEARLY-formative registered marks are for
various water beverages. Thus, Applicant’s zone of expansion argument is misplaced since
Applicant is already providing goods identical or similar to the goods listed in the cited
registration under its prior registrations for its CLEARLY-formative marks.
Serial Nos. 88150585 and 88156396
18
1142 (Fed. Cir. 1987). As such, we are obligated to assess, and have assessed, the
registrability of Applicant’s marks on their own merits and not simply based on the
fact that Registrant overcame a likelihood of confusion refusal of a third-party mark
that is identical to Applicant’s marks and for identical or similar goods.
II. Conclusion
We have considered all of the arguments and evidence of record, and all relevant
DuPont factors of which there is evidence of record. Given the similarity of the marks
and our finding that the goods at issue are legally identical in part and therefore are
presumed to travel in identical trade channels and offered to the same classes of
purchasers, we find that confusion is likely. We make this ultimate finding despite
our finding of some weakness of the cited mark used in connection
with the goods listed in the cited registration. That is, in spite of any narrowing of
the scope of protection for Registrant's mark, we find it is still entitled to protection
against registration of Applicant’s confusingly similar marks for goods that are
legally identical in part to Registrant’s goods. King Candy Co., Inc., 182 USPQ 109;
see also In re i.am.symbolic, 127 USPQ2d 1627, 1636 n.13 (TTAB 2018).
Decision: The refusals to register Applicant’s marks in application Serial Nos.
88150585 and 88156396 under Section 2(d) of the Trademark Act are affirmed.