Creativity IP PLLC

Trademark Trial and Appeal Board

Aug 20, 2020

88120181 (T.T.A.B. Aug. 20, 2020)

Oral Hearing: August 13, 2020 Mailed: August 20, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re Creativity IP PLLC
————
Serial No. 88120181
————
Manuel Cordovez of Creativity IP PLLC, pro se.

Nora Buchanan Will, Trademark Examining Attorney, Law Office 116,
Elizabeth F. Jackson, Acting Managing Attorney.
————
Before Zervas, Pologeorgis, and Lebow,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
Creativity IP PLLC (“Applicant”) seeks registration on the Principal Register of
the standard character mark CREATIVITY IP (“IP” disclaimed) for “legal services”
in International Class 45.1
The Trademark Examining Attorney 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 mark CREATIVITY LAW (in standard characters;

1 Application Serial No. 88120181, filed on September 17, 2018, based on an allegation of use
in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming August
3, 2015 as the date of first and April 20, 2018 as the date of first use in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Serial No. 88120181
2
“LAW” disclaimed) registered on the Principal Register for “legal services for the
enforcement, licensing, use, establishment and maintenance of intellectual property
rights” in International Class 45.2
When the refusal was made final, Applicant appealed and requested
reconsideration. When the request for reconsideration was denied, this appeal
resumed. The appeal is fully briefed. An oral hearing was held on August 13, 2020.
For the reasons explained below, we affirm the refusal to register.3
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). We have considered each DuPont factor for
which there is evidence and argument of record. See In re Guild Mortg. Co., 912 F.3d
1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Varying weights may be assigned
to each DuPont factor depending on the evidence presented. See Citigroup Inc. v.
Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011);
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“[T]he
various evidentiary factors may play more or less weighty roles in any particular

2 Registration No. 3562636, issued on January 13, 2009; renewed.
3 The TTABVUE and Trademark Status & Document Retrieval (“TSDR”) citations refer to
the docket and electronic file database for the involved application. All citations to the TSDR
database are to the downloadable .PDF version of the documents.
Serial No. 88120181
3
determination.”).
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 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, Inc. v.
Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
A. Similarity of the Services
We initially turn to the comparison of the services under the second DuPont
factor. In making our determination regarding the relatedness of the services, we
must look to the services as identified in Applicant’s application and the cited
registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,
110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Hous.
Computs. 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
Serial No. 88120181
4
purchasers to which the sales of goods [or services] are directed.”); see also In re
Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011).
Applicant’s services are identified as “legal services.” The Registrant’s services
are identified as “legal services for the enforcement, licensing, use, establishment and
maintenance of intellectual property rights.” Because the identification of services
recited in Applicant’s involved application contains no limitations, Applicant’s “legal
services” are presumed to encompass all types of legal services, including the more
delineated legal services provided by Registrant under its registered mark. See, e.g.,
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.’”) ; Sw. Mgmt.,
Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015) (where the goods [or
services] in an application or registration are broadly described, they are deemed to
encompass all the goods [or services] of the nature and type described therein); In re
Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018) (same). As such,
Registrant’s services are encompassed within Applicant’s services and they are
therefore legally identical in part.
Thus, the second DuPont factor strongly favors a finding of likelihood of
confusion.
B. Similarity of Trade Channels and Classes of Purchasers
Next we consider established, likely-to-continue channels of trade, the third
DuPont factor. Because Applicant’s and Registrant’s services are legally identical in
part, we must presume that these services travel through the same channels of trade
Serial No. 88120181
5
and are offered to the same or overlapping 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).
Accordingly, the third DuPont factor also weighs in favor of finding a likelihood
of confusion.
C. 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 Palm Bay Imps.,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 369 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005). “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, 123 USPQ2d
at 1748 (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 (TTAB 1975).
Although marks must be considered in their entireties, it is settled that one
Serial No. 88120181
6
feature of a mark may be more significant than another, and it is not improper to give
more weight to this dominant feature in determining the commercial impression
created by the mark. In re Viterra Inc., 101 USPQ2d at 1908; In re Nat’l Data Corp.,
753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“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. Indeed, this type of analysis appears to be unavoidable.”).
Further, where, as here, the services at issue are in-part legally identical, the degree
of similarity between the marks necessary to find a likelihood of confusion declines.
In re Viterra, 101 USPQ2d at 1908; In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d
1257, 1260 (Fed. Cir. 2010); In re Max Capital Grp., Ltd., 93 USPQ2d 1243, 1248
(TTAB 2010).
Applicant’s mark is CREATIVITY IP in standard characters and the cited mark
is CREATIVITY LAW also in standard characters. Due to the shared term
CREATIVITY, the marks are similar in appearance, sound, connotation and
commercial impression. The addition of a merely descriptive or generic term in
Applicant’s mark, i.e., “IP”, and Registrant’s mark, i.e., “LAW,” which have been
disclaimed, does not detract from the similarity of the marks. Disclaimed matter that
is descriptive of or generic for a party’s services is typically less significant or less
dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128
USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405,
1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TRADEMARK MANUAL OF EXAMINING
Serial No. 88120181
7
PROCEDURE (‘TMEP”) §§ 1207.01(b)(viii) and (c)(ii) (October 2018).
Moreover, both marks begin with the identical term CREATIVITY. It is often the
first part of a mark which is most likely to be impressed upon the mind of a purchaser
and remembered when making purchasing decisions. Palm Bay Imps., Inc., 73
USPQ2d at 1692; see also Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895,
1897 (TTAB 1988). As such, consumers will focus more on the term CREATIVITY in
both Applicant’s mark and Registrant’s mark as the source-indicator for the parties’
respective services.
In challenging the refusal, Applicant maintains that its applied-for mark is
distinct from the cited mark visually, aurally and in overall commercial impression.4
Specifically, Applicant contends that the marks at issue differ in the number of
syllables that comprise the marks, their pronunciation and cadence, and their overall
sound due to the added (disclaimed) wording.5 Applicant further maintains that the
term “IP” constitutes the dominant element of its applied-for mark and drives its
commercial impression.6 Additionally, Applicant contends that the term “IP” is
merely suggestive and not descriptive of Applicant’s identified services.7
Applicant also argues that the term CREATIVITY is diluted when used in
connection with legal services and, as a result, consumers will look to other elements,

4 Applicant’s Appeal Brief, pp. 5-9, 7 TTABVUE 10-14.
5 Id. at p. 6; 7 TTABVUE 11.
6 Id. at p. 7; 7 TTABVUE 12.
7 Id. at p. 8; 7 TTABVUE 13.
Serial No. 88120181
8
such as the purported dominant term “IP” in Applicant’s mark, to distinguish the
marks at issue.8 In support of this argument, Applicant submitted copies of the
following third-party registrations:9
Reg. No. Mark Relevant Services
2417346 WE SPECIALIZE IN THE
LAW OF CREATIVITY
“legal services, namely
prosecution, protection,
licensing, litigation, and
dispute resolution of
patent, trademark,
copyright, trade secret,
and unfair competition
matters” in Class 45.
3756862 COLLABORATIONS IN
CREATIVITY & THE
“Providing news,
information and

8 Id. at p. 15; 7 TTABVUE 20.
9 April 3, 2019 Response to Office Action, TSDR pp. 16-28; October 9, 2019 Request for
Reconsideration, TSDR pp. 21-23, 25, 30-33, 38-46, 49-52, 57-64, and 73-80.
Applicant also submitted numerous third-party registrations for marks including the term
CREATIVITY or variations thereof for goods and services that are unrelated to Registrant’s
legal services. See October 9, 2019 Request for Reconsideration, TSDR pp. 24, 26-29, 33-35,
47-48, 53-56, and 65-72. Because these third-party registrations have no bearing on the
determination of the scope of protection afforded the cited CREATIVITY LAW mark for the
services provided thereunder, they are given no further consideration. See Kay Chems., Inc.
v. Kelite Chems. Corp., 464 F.2d 1040, 1042, 175 USPQ 99, 101 (CCPA 1972); 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).
Additionally, Applicant submitted a copy of a third-party registration for the mark
SYNTHETIC CREATIVITY for “Consulting in the field of intellectual property licensing;
intellectual property consultation; patent and industrial property consultation; providing
information about intellectual and industrial property rights; providing information in the
field of intellectual property,” in Class 45. See October 9, 2019 Request for Reconsideration,
TSDR pp. 36-37. This registration, however, has been canceled. A canceled registration has
limited, if any, probative value and, in any event, is not evidence of use of a mark or that the
public is familiar with its use. Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601, 1606 (TTAB
2018) (a cancelled registration is not evidence of use of the mark at any time); In re Pedersen,
109 USPQ2d 1185, 1197 (TTAB 2013) (citing Anderson, Clayton & Co. v. Krier, 478 F.2d 1246,
1248, 178 USPQ 46, 47 (CCPA 1973) (statutory benefits of registration disappear when the
registration is cancelled)). Thus, we give no further consideration to this particular third-
party registration.
Serial No. 88120181
9
Reg. No. Mark Relevant Services
LAW commentary in the field
of law by means of a
global computer
network,” in Class 45.
4581512 MERAKI LAW
(LAW disclaimed)
(The English translation of
MERAKI in the mark is
used to describe doing
something with soul,
creativity, or love; putting
something of oneself into
what one is doing.)
“Legal consultation
services; Legal services;
Legal services, namely,
providing customized
documentation,
information, counseling,
advice and consultation
services in all areas of
business law, real estate
law, civil law, estates
and trusts, and
employment law;
Providing customized
legal information,
counseling, and advice,
and litigation services in
the field of business law,
real estate law, civil law,
estates and trusts, and
employment law,” in
Class 45.
4731148 CREATIVE GENUIS LAW
(LAW disclaimed)
“Legal services, namely,
providing customized
documentation,
information, counseling,
advice and consultation
services in all areas of
transactional,
intellectual property,
social media, advertising,
marketing and
promotions law,” in Class
45.
Serial No. 88120181
10
Reg. No. Mark Relevant Services
4907825

(LAW NETWORK
disclaimed)
“Legal services, namely,
providing customized
documentation,
information, counseling,
advice and consultation
services in all areas of
business, intellectual
property, and
entertainment law,” in
Class 45.
5614549 THE CREATIVE LAW
SHOP (LAW SHOP
disclaimed)
“Downloadable contract
and business form
templates for small
business owners” in
Class 9.
3487819 DRAWING ON OUR …
CREATIVITY
“Legal services,” in Class
45.
3988423 CREATIVITY IN BLOOM “Providing an on-line
database featuring
information on
intellectual property and
annotated links to other
information on
intellectual property
from other sources;
providing news in the
field of intellectual
property; providing a
website featuring
information in the field of
intellectual property,” in
Class 45.
4468910 TECHNOLOGY
PROTECTING
CREATIVITY
“Intellectual property
watch services, namely,
providing electronic
monitoring and tracking
of intellectual property
for others, and
investigating use and
potential misuse or abuse
of intellectual property
rights by third parties;
Serial No. 88120181
11
Reg. No. Mark Relevant Services
licensing of intellectual
property for others;
consultation in the field
of intellectual property
licensing; consultation
services in the field of
intellectual property
monitoring and tracking
services,” in Class 45.
4556793 UNEQUALED
CREATIVITY,
ABSOLUTE
PARTNERHSIP: GAME-
CHANGING
ADVANTAGES
“Legal services,” in Class
45.
4528499

(LITIGATION,
EXPERIENCE, METHOD,
EFFICIENCY and
CREATIVITY disclaimed)
“Providing online
educational information
in the fields of litigation
practice, professional
development in the legal
field and law firm client
development,” in Class
45.
4794711 ADDING EXCLUSIVITY
TO YOUR CREATIVITY
“Legal services,” in Class
45.
4927224 UNLEASH YOUR
CREATIVITY
Legal services; Legal
services, namely,
intellectual property
consulting services in the
field of identification,
strategy, analytics, and
invention; Legal services,
namely, preparation of
applications for
trademark registration,”
in Class 45.
5125479 EMPOWERING
CREATIVITY
“Legal services,” in Class
45.
Serial No. 88120181
12
Reg. No. Mark Relevant Services
5867190 IDENTIFYING,
SECURING AND
ADVANCING
CREATIVITY
“Legal services in the
field of intellectual
property law,” in Class
45.

We find Applicant’s arguments unpersuasive. The Federal Circuit has held that if
there is evidence that a mark, or an element of a mark, is commonly adopted by many
different registrants, that may indicate that the common element has some non-
source identifying significance that undermines its conceptual strength as an
indicator of a single source.10 Jack Wolfskin Ausrustung Fur Draussen GmbH & Co.
KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136
(Fed. Cir. 2015) (“[E]vidence of third-party registrations is relevant to ‘show the sense
in which a mark is used in ordinary parlance,’ … that is, some segment that is
common to both parties’ marks may have ‘a normally understood and well-recognized
descriptive or suggestive meaning, leading to the conclusion that that segment is
relatively weak’”) (quoting Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334,
115 USPQ2d 1671, 1674 (Fed. Cir. 2015)).
We initially note that cited mark issued on the Principal Register without a
showing of acquired distinctiveness under Section 2(f) of the Trademark Act.

10 Because Applicant did not provide evidence of any third-party use of marks consisting of
or comprised of the term CREATIVITY for the same or similar services as identified in the
cited registration, we have no evidence of commercial weakness. See Palm Bay Imps., 73
USPQ2d at 1693 (“Evidence of third-party use of similar marks on similar goods [or services]
is relevant to show that a mark is relatively weak and entitled to only a narrow scope of
protection.”); Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1059 (TTAB
2017) (“As to commercial weakness, ‘the probative value of third-party trademarks depends
entirely upon their usage’”) (quoting Palm Bay Imps., 73 USPQ2d at 1693).
Serial No. 88120181
13
Accordingly, we find Registrant’s CREATIVITY LAW mark, when viewed in its
entirety, is inherently distinctive and, therefore, is entitled to the normal scope of
protection accorded an inherently distinctive mark.
With regard to Applicant’s third-party registration evidence, we observe that some
of the third-party registrations identify services which differ significantly from the
legal services identified in the cited mark such as information services in the field of
intellectual property, intellectual property watch services, providing legal forms via
the Internet, and providing online educational information in the fields of litigation
practice, professional development in the legal field and law firm client development.
The use of the term CREATIVITY in these registered marks hence does not affect the
scope of protection afforded the cited mark.
As for the remaining third-party registrations for legal services, we find that some
of these registered marks are slogans which convey a commercial impression different
from the cited mark. As such, these registrations also do not diminish the scope of
protection afforded to the cited mark. Further, some of these third-party registrations
do not even contain the term CREATIVITY but instead include the term CREATIVE,
which has a different connotation.11 These registrations also do not support a finding
that term CREATIVITY is somehow diluted as applied to legal services.

11 With regard to the third-party registration for the mark MARAKI LAW, we find that
although the English translation of the term MARAKI provided in the registration may be
translated to mean doing something with creativity, the mark is nonetheless dissimilar in
sound and appearance as compared to the cited CREATIVITY LAW mark. We find that such
dissimilarities support a finding that this particular registered mark does not diminish the
scope of protection accorded the cited mark.
Serial No. 88120181
14
We also find Applicant’s contention that the phrase “IP” in its applied-for mark
constitutes the dominant element of the mark and is merely suggestive of Applicant’s
identified services unavailing. By disclaiming the letters “IP” in its mark, Applicant
has conceded that these letters are merely descriptive of its identified services. See
In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2014 n.4 (TTAB 1988). Indeed,
Applicant’s own specimen of record demonstrates that Applicant provides legal
services in the field of intellectual property:12

Applicant employs the letters “IP” as an acronym for “intellectual property” in its
specimen of record. As such, Applicant’s own specimen supports a finding that the
acronym “IP” in Applicant’s applied-for mark is, at a minimum, merely descriptive of
Applicant’s identified services. Thus, we find that actual and potential consumers

12 See Applicant’s specimen submitted on April 3, 2019.
Serial No. 88120181
15
would view the term CREATIVITY as the dominant element of Applicant’s mark.
In sum, when viewing the marks in their entireties, we find that Applicant’s
CREATIVITY IP mark and the cited CREATIVITY LAW mark are far more similar
than dissimilar. Moreover, we find that the third-party registration evidence
submitted by Applicant does not diminish the scope of protection afforded the cited
mark. Given that both Applicant’s mark and the cited mark begin with the identical
term CREATIVITY followed by disclaimed, merely descriptive or generic wording, we
find their commercial impressions are similar and sufficient to cause purchasers and
prospective purchasers who then encounter the other’s mark on the other’s services,
to mistakenly believe that these services originate from or are sponsored by the same
entity, particularly since the services at issue are legally identical in part. See
Century 21 Real Estate Corp. v. Century Life of America , 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992).
Accordingly, the first DuPont factor favors a finding of likelihood of confusion.
D. Sophistication of Consumer
Applicant argues that its purchasers are sophisticated and discriminating.13
Specifically, Applicant contends that its “CREATIVITY IP” mark is not likely to be
confused with the cited mark CREATIVITY LAW because the average consumer of
legal services is a sophisticated purchaser with a narrowly focused need, and because
legal services are purchased, not through common retail channels, but through

13 Applicant’s Appeal Brief, pp. 9-10; 7 TTABVUE 14-15.
Serial No. 88120181
16
careful consideration and by entering into individualized representation
agreements.14
Applicant has not pointed us to any evidence supporting its argument that
purchasers of legal services are sophisticated and make purchasing decisions through
careful consideration. In addition, its argument is not plausible given the
identifications of services involved in this appeal. Because there are no restrictions
as to purchasers, we find that the purchasers of legal services are members of the
general public, who necessarily encompass both sophisticated consumers of legal
services as well as those who have limited experience seeking legal advice and may
be seeking legal advice for the first time in their lives on a simple matter. Our decision
must be based on the “least sophisticated purchasers,” Stone Lion, 110 USPQ2d at
1163, and we consider those purchasers.
For those sophisticated purchasers that Applicant identifies who use care, we
point out that they may not be sophisticated or knowledgeable in the field of
trademarks or immune from source confusion. See In re Shell Oil Co., 992 F.2d 1204,
1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993) (indicating that “even sophisticated
purchasers can be confused by very similar marks”); Top Tobacco, LP v. N. Atl.
Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011); TMEP § 1207.01(d)(vii). And in
the present circumstance where the marks at issue are very similar and the services
are legally identical in part, confusion is often found likely despite customer
sophistication and care. “That the relevant class of buyers may exercise care does not

14 Id. at p. 10; 7 TTABVUE 15.
Serial No. 88120181
17
necessarily impose on that class the responsibility of distinguishing between similar
trademarks for similar goods [or services]. ‘Human memories even of discriminating
purchasers . . . are not infallible.’” In re Research & Trading Corp., 793 F.2d 1276,
230 USPQ 49, 50 (Fed. Cir. 1986) (quoting Carlisle Chem. Works, Inc. v. Hardman &
Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)); Wincharger Corp. v.
Rinco, Inc., 297 F.2d 261, 132 USPQ 289, 292 (CCPA 1962) (“Being skilled in their
own art does not necessarily preclude their mistaking one trademark for another
when the marks are as similar as those here in issue, and cover merchandise in the
same general field.”); In re Wilson, 57 USPQ2d 1863, 1865–66 (TTAB 2001) (where
marks are very similar and goods [or services] related, confusion may be likely even
among sophisticated purchasers).
Thus, this DuPont factor is neutral.
E. Extent of Potential Confusion
Applicant also argues that the twelfth DuPont factor, the extent of potential
confusion, i.e., whether de minimis or substantial, is also a relevant consideration.
According to Applicant, any potential confusion would be de minimis because
Registrant purportedly does not use the cited mark CREATIVITY LAW as a source
indicator for its legal services.15 Instead, Applicant maintains that Registrant, i.e.,
Springut Law PC, employs the designation “SPRINGUT LAW” as its service mark
for its legal services and merely uses the phrase CREATIVITY LAW to highlight its

15 Applicant’s Appeal Brief, p. 17; 7 TTABVUE 22.
Serial No. 88120181
18
expertise in intellectual property.16 Applicant submitted screenshots from
Registrant’s website to support its argument.17
Applicant’s argument that Registrant uses the phrase SPRINGUT LAW instead
of CREATIVITY LAW as the source indicator of its legal services constitutes an
impermissible collateral attack on the cited registration. For purposes of our Section
2(d) analysis, we are constrained to make our determination based on the cited mark,
as registered, and not on its manner of use based on extrinsic evidence. See e.g., Coach
Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at 1722; Octocom Sys., Inc. v.
Houston Computer Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Because we have found that (1) the marks at issue are very similar; (2) the parties’
respective services are legally identical in-part; (3) the parties’ respective services are
provided in the same or overlapping trade channels to the same or overlapping
consumers; and (4) the evidence of record does not demonstrate that the cited
CREATIVITY LAW mark is weak in relation to “legal services for the enforcement,
licensing, use, establishment and maintenance of intellectual property rights,” we
disagree that the potential for confusion is de minimis.
Accordingly, this DuPont factor is also neutral.
II. Conclusion
We have considered all of the arguments and evidence of record. We find that the
Applicant’s services and the services identified in the cited registration are legally

16 Id.
17 October 9, 2019 Request for Reconsideration, 4 TTABVUE 81-88.
Serial No. 88120181
19
identical in part, and are presumed to move in common channels of trade to the same
or overlapping classes of consumers. We further find Applicant’s mark and the mark
in the cited registration are more similar than dissimilar, and the third-party
registration evidence of record does not establish that the cited mark should be
accorded a diminished scope of protection. In view thereof, we conclude that
Applicant’s CREATIVITY IP mark, as used in connection with “legal services”
identified in its involved application, so resembles the cited mark CREATIVITY LAW
for Registrant’s identified services as to be likely to cause confusion or mistake, or to
deceive under Section 2(d) of the Trademark Act.
Decision: The refusal to register Applicant’s standard character CREATIVITY
IP mark under Section 2(d) of the Trademark Act is affirmed.