Selective Insurance Group, Inc.v.Gabriels Technology Solutions, Inc.

Trademark Trial and Appeal Board

Jun 20, 2018

No. 91225550 (T.T.A.B. Jun. 20, 2018)

Mailed: June 20, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Selective Insurance Group, Inc.
v.
Gabriels Technology Solutions, Inc.
_____

Opposition No. 91225550
_____

Stephen P. McNamara and Tatyana Voloshchuk of St. Onge Steward Johnston &
Reens LLC, for Selective Insurance Group, Inc.

Thomas A. O’Rourke of Bodner & O’Rourke, LLP,
for Gabriels Technology Solutions, Inc.
_____

Before Bergsman, Hightower, and Coggins,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Gabriels Technology Solutions, Inc. (“Applicant”) seeks to register the mark
XCELERATE (in standard characters) on the Principal Register for:
Customer Relationship Management; Providing Customer
Relationship Management (CRM) Services via the
Internet; Providing Customer Relationship Management
(CRM) Services integrated into Internet Websites, in
International Class 35.1

1 Application Serial No. 86590054 was filed April 7, 2015 based on Applicant’s allegation of
first use and use in commerce as of December 3, 2014 under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a).
This Opinion Is Not a
Precedent of the TTAB
Opposition No. 91225550
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Selective Insurance Group, Inc. (“Opposer”) opposes registration under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), asserting priority and a likelihood of
confusion with the mark , registered on the Principal Register for
“providing temporary use of non-downloadable software for use by insurance agents
for insurance brokerage in the fields of personal automobile liability insurance,” in
International Class 42.2 We sustain the opposition.
I. Opposer’s Motion to Amend
On February 21, 2018, with its reply brief, Opposer filed a motion to amend the
Notice of Opposition to plead Registration No. 5259024 for XSELERATE in standard
characters, issued August 8, 2017.3 29-30 TTABVUE. Applicant opposes the motion,
arguing that it is prejudiced by Opposer’s unexplained delay of more than six months
after the registration issued in seeking to amend. 33 TTABVUE. Opposer argues that
Applicant is not prejudiced because Opposer submitted the application that matured
into the registration during its trial period, and Applicant addressed the new
registration in its trial brief. 34 TTABVUE.4 But in its trial brief, Applicant discussed
the new registration only after pointing out that it is not pleaded in the proceeding.
Applicant’s Brief at 29, 28 TTABVUE 36. We construe Applicant’s observation that
the new registration was not pleaded in the proceeding as an objection despite the

2 Registration No. 3177139, issued November 28, 2006; renewed. The mark contains the
following description: “The mark consists of the stylized word XSELerate. Five horizontal
lines appear before the letter X and a semi-circle appears around and to the right of the letter
X.” Color is not claimed as a feature of the mark.
3 The new registration identifies goods and services in International Classes 9, 36, and 42.
4 There is nothing in the record to indicate that Opposer pleaded ownership of the new
application or otherwise put Applicant on notice that it intended to rely on the application.
Opposition No. 91225550
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fact that Applicant did not expressly object to the new application/registration. To do
otherwise would exalt form over substance. We find that the new registration was not
tried by consent, and that Applicant would be prejudiced by amending the Notice at
this late stage of the proceeding. The motion is denied.
II. Record
The record consists of the pleadings and, without any action by the parties, the
file of the involved application. Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1).
The record also comprises the evidence summarized below.
A. Opposer’s Evidence
Opposer made the following evidence of record:
• Opposer’s pleaded Registration No. 3177139. The registration was received
in evidence and made part of the record when Opposer submitted with the
Notice of Opposition a reasonably contemporaneous copy of information
from the Trademark Status & Document Retrieval (TSDR) electronic
database records of the Office showing the current status and title of the
registration. 1 TTABVUE 14-16; Trademark Rule 2.122(d)(1), 37 C.F.R.
§ 2.122(d)(1).
• The testimony declaration of Cynthia Heismeyer, Opposer’s Vice President
and Director of Marketing, with Exhibits 1-33, 16 TTABVUE.
• By Notice of Reliance:
o The prosecution file history of Opposer’s pleaded Registration
No. 3177139. Exhibit 34, 17 TTABVUE 6-46.
o Applicant’s Supplemental Responses and Objections to Opposer’s
Interrogatories. Exhibit 36, 17 TTABVUE 210-25.
o Applicant’s Responses to Opposer’s Requests for Admission. Exhibit
37, 17 TTABVUE 226-34.
Opposer also attempted to submit by Notice of Reliance the entire transcript of a
discovery deposition of Michael Gabriel, Applicant’s Chief Executive Officer, with a
list of numerous “pages to be read.” 17 TTABVUE 2-3. The discovery transcript was
submitted in condensed format, four pages per sheet. See Exhibit 35, 17 TTABVUE
Opposition No. 91225550
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47-209. Trademark Rule 2.123(g)(1), 37 C.F.R. § 2.123(g)(1), requires that deposition
transcripts “must be submitted in full-sized format (one page per sheet), not
condensed (multiple pages per sheet).” Accordingly, we have given the transcript no
consideration.
B. Applicant’s Evidence
Applicant submitted into evidence the testimony declaration, with exhibits, of
Michael Gabriel, Applicant’s Chief Executive Officer, 23-25 TTABVUE. Applicant
also submitted six Notices of Reliance, comprising:
o Opposer’s Objections and Reponses to Applicant’s Interrogatories
Nos. 3-6, 8, and 13. First Notice of Reliance, 20 TTABVUE 2-9.
o Printouts of four third-party registrations from the Office’s
Trademark Electronic Search System (TESS) database. Second
Notice of Reliance, 20 TTABVUE 10-16.
o Internet printouts of definitions (Fourth Notice of Reliance, 22
TTABVUE 2-36) and third-party websites and advertisements
(Third, Fifth, and Sixth Notices of Reliance, 21 TTABVUE and 22
TTABVUE 37-170).
III. Opposer’s Standing and Priority
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014); see also, e.g., Bell’s Brewery, Inc. v. Innovation
Brewing, 125 USPQ2d 1340, 1344 (TTAB 2017). Opposer’s standing to oppose
registration of Applicant’s mark is established by its pleaded Registration
No. 3177139 for the mark , which the record shows to be valid and
subsisting, and owned by Opposer. See, e.g., Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). In addition, because Opposer’s
Opposition No. 91225550
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pleaded registration is of record, priority is not at issue with respect to the services
identified in Opposer’s pleaded registration. 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
Because Opposer established its standing and priority as to its pleaded mark, we
turn to the question of likelihood of confusion. Our determination under Trademark
Act 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); 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,
the first two du Pont factors. 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 [services] and differences in the marks.”).
Opposer bears the burden of proving its claim of likelihood of confusion by a
preponderance of the evidence. Cunningham, 55 USPQ2d at 1848. We address each
of the du Pont factors for which the parties submitted evidence or argument.
A. Strength of Opposer’s Marks
We begin by evaluating the strength of Opposer’s mark and the scope of protection
to which it is entitled. The fifth du Pont factor is the fame of the prior mark, and the
Opposition No. 91225550
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sixth factor is the number and nature of similar marks in use for similar goods or
services. In determining strength of a mark, we consider both inherent strength,
based on the nature of the mark itself, and commercial strength or recognition.
Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1476
(TTAB 2014); see also 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).”).
Third-party registrations may be relevant to show the sense in which a mark is
used in ordinary parlance; that is, an element 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 inherently relatively weak. 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); see also In re
Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016) (“[T]hird-
party registrations are relevant evidence of the inherent or conceptual strength of a
mark or term because they are probative of how terms are used in connection with
the goods or services identified in the registrations.”). Evidence of use of similar
marks by third parties for similar or related goods or services, in turn, is relevant to
a mark’s commercial strength. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d
1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015).
Applicant argues that Opposer’s mark is inherently weak because it is suggestive
of “accelerate,” connoting speed, a desirable software quality. See Applicant’s Brief at
40-41, 28 TTABVUE 47-48; see also Heismeyer Decl. ¶ 14, 16 TTABVUE 4 (stating
Opposition No. 91225550
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that XSELERATE is a play on “accelerate,” among other meanings). Applicant also
contends that the marks are distinguishable because Opposer’s mark comprises the
first syllable of Opposer’s name (SEL-), and that the field of similar marks for similar
services is crowded, limiting the scope of protection to which Opposer’s mark is
entitled. See Applicant’s Brief at 23, 41-42, 28 TTABVUE 30, 48-49. Applicant relies
on the following four third-party registrations, each with a different owner, submitted
along with Internet printouts displaying use of each mark:5
Reg. No. Mark Class 42 Services
3937680 XCELERATE Data conversion of electronic information; providing electronic conversion services of financial data and
non-financial data for others
5192704 XCELERATE Software as a service (SAAS) services featuring software for vehicle fleet management and driver and
fleet data analytics
4426649 XCELERATE
SOLUTIONS
Computer consulting services in the field of
programming, analysis, design and implementation;
research and development for new information
technology products for others in the field of
information technology
3979480 BROADSOFT
XCELERATE
Design and development of computer hardware and
software; file sharing services, namely, providing a
website featuring technology enabling selected users
to download electronic files; providing a[n] interactive
website featuring technology that allows users to
upload, download and share software applications . . .
Opposer does not address third-party registration and use in its briefing. We give
probative weight to Applicant’s evidence as indicating that the term XCELERATE is
used by some third parties for information technology services.

5 See Applicant’s Second and Third Notices of Reliance, 20 TTABVUE 10-16 and 21
TTABVUE; Gabriel Decl. at ¶¶ 9-13 & Exhibits B-I, 23 TTABVUE 4-5, 141-240.
Opposition No. 91225550
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While we agree with Applicant that there is a suggestive quality to the literal
portion of Opposer’s registered mark , we do not find these four
examples of registration and apparent use for similar or related services sufficient to
significantly narrow the scope of protection for Opposer’s mark. See In re
i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) (stating
that evidence of third-party use “falls short of the ‘ubiquitous’ or ‘considerable’ use of
the mark components present in [applicant’s] cited cases”); cf. Jack Wolfskin, 116
USPQ2d at 1136 (discussing “voluminous evidence” of registration and use of paw
print design elements); Juice Generation, 115 USPQ2d at 1674 (referencing evidence
of “a fair number” of third-party marks).
Considering the record as a whole, we find that Opposer’s mark is inherently
distinctive and accord it the normal scope of protection to which inherently distinctive
marks are entitled. See Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC,
857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (stating that likelihood of
confusion fame varies along a spectrum from very strong to very weak).
B. Similarity of the Marks
We next address the first du Pont factor, the similarity of the parties’ marks. In a
likelihood of confusion analysis, we compare the marks in their entireties for
similarities and dissimilarities in appearance, sound, connotation and overall
commercial impression. StonCor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327,
111 USPQ2d 1649, 1651 (Fed. Cir. 2014). “The proper test is not a side-by-side
comparison of the marks, but instead whether the marks are sufficiently similar in
Opposition No. 91225550
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terms of their commercial impression such that persons who encounter the marks
would be likely to assume a connection between the parties.” Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(quotation omitted).
As noted, Applicant’s mark XCELERATE and the literal portion of Opposer’s
mark are variations on the word “accelerate” differing by only one
letter (i.e., a single C in place of an S). We find that the two terms are phonetic
equivalents.6 Moreover, although we consider each mark on a case-by-case basis, we
normally accord the wording in composite word and design marks greater weight in
a likelihood of confusion analysis because the verbal portion is more likely to indicate
the origin of the services and be used by purchasers to request or refer to the services.
In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re
Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018). We likewise find
it appropriate here to give more weight to the literal, verbal portion of the cited mark,
given that the design elements of Opposer’s mark are relatively minor and appear to
reinforce the suggestion of the word “accelerate.”
Considered as a whole, we find the marks highly similar in sight, sound, meaning,
and overall commercial impression. The first du Pont factor thus weighs in favor of a
finding that confusion is likely.

6 See Applicant’s Response to Opposer’s Request for Admission No. 12, 17 TTABVUE 233
(admitting that “Applicant’s XCELERATE Mark is the phonetic equivalent of the Opposer’s
XSELERATE Mark”).
Opposition No. 91225550
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C. Similarity of the Services, Customers, and Channels of Trade
We next analyze the second, third, and fourth du Pont factors, the similarity or
dissimilarity of the parties’ services, channels of trade, classes of customers, and
conditions of sale.
1. Services
Our decision is based on the identification of services as set forth in the application
and pleaded registration. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014). The test is not whether
consumers are likely to confuse the services, but rather whether they are likely to be
confused as to their source. E.g., Bond v. Taylor, 119 USPQ2d 1049, 1053
(TTAB 2016). Therefore, to support a finding of likelihood of confusion, it is not
necessary that the services be identical or even competitive. It is sufficient that the
services are related in some manner, or that the circumstances surrounding their
marketing are such that they would be encountered by the same persons in situations
that would give rise, because of the marks, to a mistaken belief that they originate
from the same source or that there is an association or connection between the sources
of the services. Apple Comput. v. TVNET.net Inc., 90 USPQ2d 1393, 1397
(TTAB 2007). The more similar the parties’ marks, the lesser the degree of similarity
between their services necessary to support a finding of likelihood of confusion. See
Bd. of Regents, Univ. of Tex. Sys. v. S. Ill. Miners, LLC, 110 USPQ2d 1182, 1189
(TTAB 2014).
The services in Opposer’s pleaded registration are “providing temporary use of
non-downloadable software for use by insurance agents for insurance brokerage in
Opposition No. 91225550
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the fields of personal automobile liability insurance.” The subject application
identifies Customer Relationship Management (CRM) services and providing CRM
services via the Internet or integrated into Internet websites. Applicant explains:
Customer relation management services enable companies
to manage and analyze customer interactions and data [ ].
Customer Relationship Management Software or CRM
software consolidates customer information and
documents into a CRM database so that business users can
more easily access and manage the data.
Applicant’s Brief at 6, 28 TTABVUE 13 (evidentiary citations omitted).
Opposer contends that the parties’ services are “related and/or overlapping.”
Opposer’s Brief at 14, 26 TTABVUE 20. Opposer argues:
There is a direct relationship between the parties’ software
services in that Applicant’s software products/services are
customer relationship management (CRM) services and
Opposer’s software products/services integrate to
insurance agency customer relationship management
(CRM) software. Both involve software and services for
receiving and using customer information to provide
service to a customer.
Id. at 16, 26 TTABVUE 22; see also Reply Brief at 7, 31 TTABVUE 8 (stating that
“both services involve software for receiving, storing, and using customer information
to provide service to a customer”).
Comparing the services as identified by the parties, we find that Opposer’s non-
downloadable software “for use by insurance agents for insurance brokerage” – i.e.,
for selling insurance to customers – is related to Applicant’s Customer Relationship
Management services. Because Opposer’s identification is somewhat vague, we take
into account the testimony Opposer cites as to the nature of those services:
Opposition No. 91225550
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13. [Opposer] Selective selected the trademark XSELERATE
in 2005 to identify a new software platform which allows
independent insurance agents that work with Selective to
export information from the insurance agent’s agency
management system to Selective’s underwriting systems
and agency intranet site, making it easier for agents to
submit business and inquire about existing accounts.
20. Selective uses the trademark XSELERATE through its
subsidiary and/or affiliate companies in connection with an
electronic platform that allows an insurance agent to
automatically export information from the insurance
agent’s agency management system to Selective’s
underwriting systems and agency intranet site to speed up
quote delivery and policy issuance processes, as well as
inquiries, and thus facilitate the process of obtaining and
managing customers and sales. Selective’s services under
the XSELERATE mark are available throughout the
United States.
24. Selective offers its XSELERATE software services to
insurance agents, and those agents use XSELERATE
software services to obtain insurance quotes, which are
provided to consumers. Therefore, Selective’s
XSELERATE services are used to facilitate insurance
transactions with consumers.
Heismeyer Decl., 16 TTABVUE 4, 6-7 (cited in Opposer’s Brief at 16, 26 TTABVUE
22). See Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1410, 1413
(TTAB 2010) (considering extrinsic evidence to understand nature of identified
technical goods); In re Trackmobile Inc., 15 USPQ2d 1152, 1154 (TTAB 1990)
(considering extrinsic evidence where description of goods is somewhat vague).
Opposer’s identified services are limited to the field of personal automobile
liability insurance. Applicant submitted evidence that it offers its CRM services only
in the real estate field. See, e.g., Gabriel Decl. ¶¶ 30-31, 23 TTABVUE 13-14. The
application, however, is not restricted or limited. Applicant’s Customer Relationship
Management services therefore are presumed to encompass CRM services of all
Opposition No. 91225550
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types. See, e.g., Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d
1367, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013). The record does not suggest that CRM
services in general are limited to any particular type of business or trade channel.
Therefore, we find that Applicant’s identified CRM services encompass managing
relationships with consumers of personal automobile liability insurance.
Bearing in mind the high degree of similarity between the parties’ marks, we find
that the second du Pont factor weighs in favor of a finding that confusion is likely.
2. Trade Channels, Classes of Customers, and Conditions of Sale
We next consider the third and fourth du Pont factors, assessing the similarity of
the parties’ established, likely-to-continue trade channels and the “conditions under
which and buyers to whom sales are made i.e., ‘impulse’ vs. careful, sophisticated
purchasing,” respectively. du Pont, 177 USPQ at 567. Because Applicant’s description
of services encompasses Opposer’s description of services, we presume that the
channels of trade and classes of purchasers are the same. See Viterra, 101 USPQ2d
at 1908; In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA
1968); United Glob. Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014).
Applicant points out that while it sells its CRM services directly to customers,
Opposer provides its services free of charge, as part of a web portal used by
independent insurance agents working with Opposer. See Applicant’s Brief at 32, 28
TTABVUE 39; Heismeyer Decl. ¶¶ 22-25, 16 TTABVUE 6-7. Applicant argues that
“Opposer’s mark essentially has no trade route since it is given from Opposer to its
customers directly and free of charge.” Applicant’s Brief at 32, 28 TTABVUE 39.
Opposition No. 91225550
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Although the independent insurance agents who work with Opposer do not pay to
use Opposer’s software services, the record shows that Opposer’s services are
marketed to them. For example, Opposer submitted the following webpage screenshot
explaining the services offered under its mark:7

Even considering only the narrower CRM services Applicant actually offers in the
real estate field, Opposer submitted evidence that some of the insurance agents who
currently use its automobile insurance services also offer real estate services.
Heismeyer Decl. ¶¶ 12, 28-41 & Exhibits 6-18, 16 TTABVUE 4, 7-10, 51-106. Thus,
the record shows that some users of Opposer’s services also are potential customers
for Applicant’s services. This overlap in the channels of trade and classes of customers
for the parties’ services weighs in favor of a finding that confusion is likely.

7 Heismeyer Decl. ¶ 21 & Exhibit 3, 16 TTABVUE 6, 42.
Opposition No. 91225550
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Applicant’s CEO, Michael Gabriel, testified that Applicant’s services are relatively
expensive, typically ranging from $5,000 to $12,500 for initial set-up plus user fees of
$500 to $10,000 or more per month. Gabriel Decl. ¶¶ 62-63, 23 TTABVUE 33.
Mr. Gabriel also provided extensive testimony concerning the lengthy purchase and
implementation process for its services. See id. at ¶¶ 39-75, 23 TTABVUE 27-35.
We reiterate, however, that we must assess the services as identified in the
application regardless of what the record may reveal as to the particular nature of
Applicant’s services, the particular channels of trade or the class of purchasers to
which sales of the services are directed. Stone Lion, 110 USPQ2d at 1162. The record
provides minimal evidence from which we may extrapolate that the time and expense
purchasers invest in Applicant’s particular services is the same for the general CRM
services identified in the application. Nonetheless, Applicant submitted a definition
of Customer Relationship Management from WhatIs.com supporting the argument
that some of these types of services are likely to entail careful, sophisticated
purchasing. In a discussion of “The CRM Technology Market,” this evidence states
that on-premises CRM software “resides on the company’s own servers and the user
assumes the cost of any upgrades and usually requires a prolonged installation
process to fully integrate a company’s data.”8 The discussion contrasts cloud-based

8 Applicant’s Fourth Notice of Reliance, Exhibit J, 22 TTABVUE 19 (from searchcrm.
techtarget.com/definition/CRM). This exhibit, as with much of Applicant’s evidence, is
submitted in such poor quality that it is difficult to read. Exhibits must be clear and legible.
Trademark Rule 2.126(a)(2), 37 C.F.R. § 2.126(a)(2).
Opposition No. 91225550
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CRM as “a more cost-effective option” with “quick, relatively easy deployment
capabilities.”9
Applicant’s ID is broad enough to cover all types of CRM services. Because the
evidence indicates that CRM services are relatively expensive and labor-intensive to
implement, we find that customer sophistication weighs against a finding that
confusion is likely.
V. Other du Pont Factors
Applicant argues that all of the remaining du Pont factors also weigh against a
likelihood of confusion. Applicant’s Brief at 42-48, 28 TTABVUE 49-55. We find,
however, that no other du Pont factor weighs significantly in the likelihood of
confusion analysis. In particular, the parties had been using their respective marks
concurrently for less than three years at the time of trial,10 which on these facts is a
relatively short period for assessing du Pont factor eight, the length of time during
and conditions under which there has been concurrent use without evidence of actual
confusion. See, e.g., Majestic Distilling, 65 USPQ2d at 1205 (stating that “[t]he lack
of evidence of actual confusion carries little weight”); Nike, Inc. v. WNBA Enters.,
LLC, 85 USPQ2d 1187, 1202 (TTAB 2007) (stating that cited cases “do not compel a
finding in this case or in any given case that a three-year period of contemporaneous
use without confusion is per se significant”). We find the seventh through twelfth
du Pont factors to be neutral.

9 Id.
10 See Applicant’s Response to Opposer’s Interrogatory No. 3 (“The date of first use of the
mark for the services identified in the Applicant’s trademark application is at least as early
as December 3, 2014.”), 17 TTABVUE 217-18. Trial ended November 8, 2017.
Opposition No. 91225550
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VI. Conclusion
We have carefully considered all arguments and evidence properly of record,
including any not specifically discussed herein, as they pertain to the relevant
likelihood of confusion factors. To the extent that any other du Pont factors for which
no evidence was presented by Applicant or Opposer nonetheless may be applicable,
we treat them as neutral.
We have found that the similarity of the marks, services, channels of trade, and
classes of customers weigh in favor of a finding that confusion is likely. Although the
conditions of sale of Applicant’s services weighs against confusion, we find that it does
not outweigh the first three factors. The remaining factors are neutral. Considering
the record evidence as a whole, we find that Opposer has established by a
preponderance of the evidence that Applicant’s mark is likely to cause consumer
confusion with Opposer’s mark in association with the services identified in the
application.
Decision: The opposition to registration of application Serial No. 86590054 is
sustained due to a likelihood of confusion with the mark in Registration No. 3177139.