SmartThings, Inc.v.SmartBeings Inc

Trademark Trial and Appeal Board

Jan 27, 2021

91241345 (T.T.A.B. Jan. 27, 2021)

This Opinion is not a
Precedent of the TTAB

Mailed: January 27, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____
TRADEMARK TRIAL AND APPEAL BOARD
_____

SmartThings, Inc.
v.
SmartBeings, Inc.

Opposition No. 91241345

Julia Spoor Gard, Esq., Sarah P. Harrell, Esq. and Caitlin R. Byczko, Esq. of Barnes
& Thornburg for Opposer, SmartThings, Inc.

Himanshu Kaul, Founder of SmartBeings, Inc. and Cliff Kuehn, Esq. of
SmartBeings, Inc. for Applicant, SmartBeings, Inc.

_____

Before Taylor, Kuczma and Hudis,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
SmartBeings, Inc. (“Applicant”) filed an intent to use application under Section
1(b) of the Trademark Act, 15 U.S.C. § 1051(b), to register the mark:

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for:
Computer software for voice command and recognition;
computer software for speech to text conversion; computer
software used for the control of voice controlled information
and communication devices; Computer software for use as
a personal assistant; Computer software for home
automation and home device integration; Computer
software, namely, wireless communication software for
voice, audio, video, and data transmission; Computer
software for controlling stand-alone voice controlled
information and personal assistant devices; Computer
software for personal information management; Computer
software for accessing, browsing, and searching online
databases, audio, video and multimedia content, games,
and software applications; computer software for
accessing, browsing and searching software application
marketplaces; Computer software for accessing,
monitoring, tracking, searching, saving, and sharing
information on topics of general interest; computer
software for use in completing retail and ordering services
for a wide variety of consumer goods; Computer software
for use to connect and control internet of things (Iot)
electronic devices; Computer software for connecting,
operating, integrating, controlling, and managing
networked consumer electronic devices, home climate
devices and lighting products via wireless networks;
Computer software for others to use for the development of
software to manage, connect, and operate internet of things
(IoT) electronic devices; Computer software for use as an
application programming interface (API); Computer
software for facial detection, identification and recognition;
Downloadable cloud computing software for updating and
upgrading software and firmware over the cloud; Software
Development kits; Computer software for video
conferencing, video, text and voice chat communication
over personal and handheld computers, mobile phones,
smart phones, wireless communications devices and
personal digital assistant devices; Computer software for
platform to use and integrate data for analytics, reporting
and building artificial intelligence to enhance customer
experience; Computer software for Home, Office, Retail,
Commercial, Industrial and Government use, namely,
software for use in controlling and integrating data on
Opposition No. 91241345
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personal digital assistant devices, in International Class
9.1
SmartThings, Inc. (“Opposer”) opposes registration of Applicant’s mark on the
ground of priority and likelihood of confusion under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), based on its ownership of Registration No. 4621914 for the
standard character mark SMARTTHINGS for:
Computer hardware; computer peripherals; electric
sensors; electric actuators; wireless routers; kits comprised
of computer hardware and computer peripheral devices,
electric sensors and actuators, in International Class 9;
and
Online retail store services featuring computer hardware,
computer firmware, computer peripheral devices,
computer software for use on mobile devices, and a wide
range of devices and products in the nature of electric
sensors and actuators for use in monitoring and control of
electronic devices in homes and businesses, in
International Class 35;2
and Registration No. 5476722 for the standard character mark SMARTTHINGS
LINK for:
Computer network bridges; wireless computer network
bridges; computer telecommunications network consisting
of, computer hardware and software for setting up,
configuring and connecting local area networks to enable
communicating of audio, video and data between
computers via a global computer network, wide-area

1 Application Serial No. 87471187 was filed on June 1, 2017, based on Applicant’s assertion
of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b). The mark is described in the application as: “consist[ing] of the
stylized wording ‘SMARTBEINGS’ in yellow and blue with the letter ‘T’ formed by a stick
figure with a square head and two blue curved lines over the letter ‘I’ forming a signal sign.”
The colors yellow and blue are claimed as a feature of the mark.
2 Registration No. 4621914 issued on the Principal Register on October 14, 2014 alleging
dates of first use and first use in commerce use for the goods and services identified above at
least as early as March 1, 2013; §§ 8 & 15 accepted and acknowledged June 10, 2020.
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computer networks, and peer-to-peer computer networks;
computer telecommunication networks consisting of,
multiple wireless free-standing communication modems,
LAN (local area network) access points for connecting
network computer users, and associated computer
networking hardware and software which establish a
wireless meshed digital network and communicates to end
users to enable communicating of audio, video and data
between computers via a global computer network, wide-
area computer networks, and peer-to-peer computer
networks; home computer network interface devices; USB
(universal serial bus) hardware; USB (universal serial bus)
operating software; USB hubs; pre-recorded USB flash
drives featuring software used to allow electronic
telecommunication devices to share data and communicate
with each other; universal serial bus (USB) dongles being
wireless network adaptors; computer networking and
telecommunications hardware in the nature of ethernet
network controllers for home use; wireless adapters used
to link computers to a telecommunication network, in
International Class 9.3
In its Answer to Notice of Opposition, Applicant denied the salient allegations and
alleged “affirmative defenses” which are not true affirmative defenses but, rather,
constitute amplifications of Applicant’s denials of the allegations of likelihood of
confusion.4 See Trademark Rule 2.106(b)(2), 37 C.F.R. § 2.106(b)(2); TRADEMARK
TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 311.02(b) (2020).
The case is fully briefed. Opposer bears the burden of proving its § 2(d) claim by a
preponderance of the evidence. See Jansen Enters., Inc. v. Rind, 85 USPQ2d 1104,
1107 (TTAB 2007). Having considered the evidentiary record, the parties’ arguments

3 Registration No. 5476722 issued on the Principal Register on May 22, 2018, alleging dates
of first use and first use in commerce at least as early as August 17, 2017. “LINK” is
disclaimed.
4 4 TTABVUE.
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and applicable authorities, as explained below, we find that Opposer has carried this
burden, and sustain the Opposition.
I. The Record
The record includes the pleadings and, by operation of Trademark Rule
2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the file history of Applicant’s application Serial
No. 87471187, which is the subject of this proceeding.
The record also includes the following evidence submitted by Opposer:
1. Trial Testimony Declaration of Ruth Ann Hudock, Senior Paralegal of Opposer
(20 TTABVUE) with Exhibits:

- Exhibit C: Kickstarter campaign materials from
https://www.kickstarter.com (20 TTABVUE 6-15);

- Exhibit D: Webpages stating that SMARTTHINGS products work
with a range of connected devices including voice assistants, lighting
and switches, cameras and doorbells, door locks, thermostats and
speakers (20 TTABVUE 16-35);

- Exhibit E: Spreadsheet showing unit and dollar sales of
SMARTTHING goods from 2015-June 2018 (20 TTABVUE 36)
(CONFIDENTIAL 21 TTABVUE 36-37);

- Exhibit F: Webpages featuring SMARTTHINGS hubs, sensors,
outlets, light bulbs; and indicating that the SMARTTHINGS mobile
app is free (20 TTABVUE 37-51) (21 TTABVUE 38-52);

- Exhibit G: Business record spreadsheet detailing locations where
SMARTTHINGS goods have been available for sale (20 TTABVUE
52) (CONFIDENTIAL 21 TTABVUE 53-78);

2. Notice of Reliance of SmartThings, Inc. (22 TTABVUE 2-4):

- Exhibit A: TSDR records evidencing status and ownership of
Registration Nos. 4621914 and 5476722 (1 TTABVUE 13-19, 22
TTABVUE 2);

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- Exhibit B: copies of Registration Certificates for Registration Nos.
4621914 and 5476722 (1 TTABVUE 20-, 22 TTABVUE 2);

- Exhibit C: TSDR records of Applicant’s application Serial No.
87471187;

NOTE: Opposer has submitted two different Exhibits designated as
Exhibit C (see Exhibit C to Hudock Declaration). Inasmuch as the
file history of Applicant’s application Serial No. 87471187 is
automatically in the record pursuant to Trademark Rule 2.122(b)(1)
as noted above, any references to Exhibit C in this decision shall refer
to Applicant’s Kickstarter campaign materials from (Exhibit C to Hudock Declaration, 20 TTABVUE
6-15);

- Exhibit H: Excerpts from Opposer’s website and social media accounts (22 TTABVUE 2, 5-37);

- Exhibit I: Examples of third-party media coverage of Opposer (22
TTABVUE 2, 38-52);

- Exhibit J: Webpages from a third-party site selling Opposer’s goods
(22 TTABVUE 3, 53-56);

- Exhibit K: Third-party registrations (22 TTABVUE 3, 57-124);

- Exhibit L: Applicant’s responses to Opposer’s Requests for Admission
and Interrogatories (22 TTABVUE 3, 125-133);

- Exhibit M: Applicant’s advertising materials and product packaging
(22 TTABVUE 3, 134-157).

Applicant did not submit any admissible evidence or testimony. However, prior to
the close of discovery, Applicant filed its Answer to Opposer’s Second Set of Requests
for Admission to SmartThings Inc. (19 TTABVUE). In an order dated February 3,
2020, the Board noted that responses to discovery requests should not be filed with
the Board, except when submitted with a motion relating to disclosure or discovery,
or in support of or in response to a motion for summary judgment, or under a notice
Opposition No. 91241345
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of reliance, when permitted, during a party’s testimony period.5 Inasmuch as
Applicant’s Answer to the Second Set of Requests for Admission was not filed with
respect to any of the reasons set forth in Trademark Rule 2.120(k)(8), 37 C.F.R.
§ 2.120(k)(8), the Board ordered that it would not be given further consideration. (23
TTABVUE).
Nevertheless, Opposer subsequently introduced Applicant’s Answer to Opposer’s
Second Set of Requests for Admission to SmartThings Inc.6 into evidence, so it is of
record and may be relied on by either party. When an interrogatory answer, or an
admission, has been made of record by one party in accordance with Trademark Rule
2.120(k)(3), 37 C.F.R. § 2.120(k)(3), it may be referred to by any party for any purpose
permitted by the Federal Rules of Evidence. See Henry Siegel Co. v. M & R Int’l Mfg.
Co., 4 USPQ2d 1154, 1155 n.5 (TTAB 1987); Beecham Inc. v. Helene Curtis Indus.,
Inc., 189 USPQ 647, 647 (TTAB 1976) (where party relies on all of adversary’s
answers to interrogatories, the adversary need not file its own notice of reliance
thereon); TBMP § 704.10. Inasmuch as Opposer also introduced Applicant’s
responses to Opposer’s First Set of Requests for Admission to Applicant,7 Applicant’s
Reply to Opposer’s Interrogatories,8 and Applicant’s Answers to Opposer’s

5 It is noted that on February 2, 2019, Applicant filed answers to Opposer’s First Set of
Requests for Admission which was captioned “Answer to Notice of Opposition.” (11
TTABVUE).
6 Opposer’s Exhibit L, 22 TTABVUE 133.
7 Opposer’s Exhibit L, 22 TTABVUE 126-127.
8 Opposer’s Exhibit L, 22 TTABVUE 127-129.
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Interrogatories and Document Requests,9 they are part of the record and may be
referred to for any purpose.10
Opposer submitted a trial brief. Applicant filed its trial brief 10 days late resulting
in Opposer’s Motion to Strike Applicant’s trial brief.11 In response to the Motion to
Strike, Applicant filed a Request to Consider its late-filed trial brief arguing its delay
was “purely unintentional” and “[d]ue to COVID 19, unnecessarily [sic] delay
happened as we have been working under severe restrictions.”12 Given that
Applicant’s delay in filing its brief was only 10 days, occurred during the first 5
months of the ongoing COVID 19 pandemic, and that Opposer did not identify any
prejudice resulting from the late filing, we deny Opposer’s Motion to Strike and grant
Applicant’s request to accept its trial brief.13
II. Entitlement to a Statutory Cause of Action
Opposer’s entitlement to a statutory cause of action, formerly referred to as
“standing,” is a threshold issue that must be proven by the plaintiff in every inter

9 Opposer’s Exhibit L, 22 TTABVUE 130-132.
10 Applicant’s responses to Opposer’s document requests set forth in Applicant’s Answers to
Opposer’s Interrogatories and Document Requests (22 TTABVUE 130-132) are admissible
only for purposes of showing that Applicant has stated that there are no responsive
documents. See City Nat’l Bank v. OPGI Mgmt. GP Inc./Gestion OPGI Inc., 106 USPQ2d
1668, 1674 n.10 (TTAB 2013) (responses to document production requests are admissible
solely for purposes of showing that a party has stated that there are no responsive
documents); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036 n.7 (TTAB 2012) (written
responses to document requests indicating that no documents exist may be submitted by
notice of reliance).
11 26 TTABVUE.
12 27 TTABVUE 2.
13 Applicant’s trial brief, filed on August 18, 2020, is captioned “Remarks/Arguments.” 25
TTABVUE. Opposer’s Motion to Strike was filed on August 23, 2020. (26 TTABVUE).
Opposition No. 91241345
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partes case. To determine whether a party has established entitlement to bring and
maintain a statutory cause of action, we consider whether it has demonstrated a real
interest in the proceeding and a reasonable belief of damage. Corcamore, LLC v. SFM,
LLC, 978 F.3d 1298, 2020 USPQ2d 11277 (Fed. Cir. 2020) (discussing the application
of the zone-of-interests and proximate causation test under Lexmark Int’l, Inc. v.
Static Control Components, Inc., 572 US 118 (2014)); see also Australian Therapeutic
Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837 (Fed. Cir.
2020) (discussing entitlement to bring and maintain a cause of action); Empresa
Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed.
Cir. 2014). Despite the change in nomenclature, our prior decisions and those of the
U.S. Court of Appeals for the Federal Circuit interpreting Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063, 1064, remain applicable as the tests “share a
similar purpose and application.” Corcamore, 2020 USPQ2d 11277, at *7.
There is no genuine dispute as to Opposer’s entitlement to bring and maintain a
statutory cause of action. Opposer has made of record its Registration Nos. 4621914
for the mark SMARTTHINGS; and 5476722 for the mark SMARTTHINGS LINK.
Therefore, Opposer is within the zone-of-interests protected by § 2(d), has shown the
requisite proximate causation between the application and Opposer’s claim,
possesses a real interest in the proceeding, is not an intermeddler, and has
established a reasonable belief of damage to oppose registration of Applicant’s
mark. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1844 (Fed. Cir. 2000) (“[P]rior registrations … and the products sold under the mark
Opposition No. 91241345
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they register suffice to establish . . . [a] direct commercial interest and its . . .
[entitlement to bring and maintain a statutory cause of action].”).
III. Grounds of Opposition
To prevail on the ground of likelihood of confusion under § 2(d) based on a
previously used mark, it is Opposer’s burden to prove by a preponderance of the
evidence both priority of use and likelihood of confusion. Cunningham v. Laser Golf,
55 USPQ2d at 1848; Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209
USPQ 40, 43 (CCPA 1981); WeaponX Performance Prods. Ltd. v. Weapon X
Motorsports, Inc., 126 USPQ2d 1034, 1040 (TTAB 2018).
A. Priority
Because Opposer’s pleaded registrations are of record, and Applicant has not
counterclaimed for their cancellation,14 priority is not at issue in this proceeding, at
least with respect to the goods and services identified in the registrations. See King
Candy Co. v. Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108, 110 (CCPA
1974).15 Thus, Opposer has priority due it its registration of the marks
SMARTTHINGS and SMARTHINGS LINK, which Applicant does not dispute.

14 Despite Applicant’s denial of Opposer’s ownership of Registration Nos. 4621914 and
5476722 in paragraph 8. of its Answer to Notice of Opposition (4 TTABVUE 3), the TSDR
records for Registration No. 4621914 attached as Exhibit A to the Notice of Opposition show
that a Change of Name from Physical Graph Corporation to SmartThings, Inc. was recorded
in the USPTO on September 12, 2014 (1 TTABVUE 15-16). The TSDR records for
Registration No. 5476722 attached as Exhibit B to the Notice of Opposition also show
Opposer, SmartThings, Inc., as the owner.
15 Opposer also asserts use of a “stylized version” of its SMARTTHINGS mark, where the
mark appears in light blue lettering, i.e., . Inasmuch as its registered
SMARTTHINGS mark is a standard character mark, the registration also covers the
Opposition No. 91241345
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B. Likelihood of Confusion
In determining the likelihood of confusion, we must analyze all of the probative
facts in evidence that are relevant to the factors set forth in In re E.I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See Cai v. Diamond
Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (DuPont
“articulated thirteen factors to consider when determining likelihood of confusion”).
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).
However, “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).
Two key considerations are the similarities between the marks and the
similarities between the goods and/or services. See In re i.am.symbolic, llc, 866 F.3d
1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa
Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods,
Inc. v. Fort Howard Paper Co. 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). We
have also considered other DuPont factors for which one or both of the parties have
submitted evidence and argument, namely, the similarity of trade channels; strength
of Opposer’s mark and bad faith. DuPont, 177 USPQ at 567.

“stylized version” of its SMARTTHINGS mark when used on the goods and services identified
in Registration No. 4621914.
Opposition No. 91241345
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1. Similarity of the Goods/Services, Trade Channels and
Class(es) of Purchasers
We turn first to the second DuPont factor which involves consideration of the
“similarity or dissimilarity and nature of the goods or services as described in an
application or registration.” Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1159 (Fed. Cir. 2014); Octocom Sys., Inc. v. Hous.
Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Paula
Payne Prods. Co. v. Johnson Publ’g Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
Below is a chart featuring some of Applicant’s and Opposer’s goods and services:
Applicant’s Goods Identified in Its
Application
Opposer’s Goods and Services
Identified in its Registrations
Computer software for home automation
and home device integration
Online retail store services featuring . . .
a wide range of devices and products in
the nature of electric sensors and
actuators for use in monitoring and
control of electronic devices in homes
(Registration No. 4621914 for
SMARTTHINGS)
Computer networking and
telecommunications hardware in the
nature of ethernet network controllers
for home use (Registration No. 5476722
for SMARTTHINGS LINK).
Home computer network interface
devices (Registration No. 5476722 for
SMARTTHINGS LINK)
Computer software for connecting,
operating, integrating, controlling, and
managing networked consumer
electronic devices, home climate devices
and lighting products via wireless
networks
Online retail store services featuring . . .
a wide range of devices and products in
the nature of electric sensors and
actuators for use in monitoring and
control of electronic devices in homes
(Registration No. 4621914 for
SMARTTHINGS)
Computer networking and
telecommunications hardware in the
nature of ethernet network controllers
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for home use (Registration No. 5476722
for SMARTTHINGS LINK)
Computer software for use in completing
retail and ordering services for a wide
variety of consumer goods
Online retail store services featuring . . .
computer software for use on mobile
devices, and a wide range of devices and
products in the nature of electric sensors
and actuators for use in monitoring and
control of electronic devices in homes
(Registration No. 4621914 for
SMARTTHINGS)

The parties’ goods and services listed in the chart above are, on their face, closely
related and complementary. The goods on which Applicant intends to use its mark
are software products that control and connect to the types of hardware and software
products that Opposer offers. The relatedness of the parties’ products is further
supported by Applicant’s acknowledgement of a statement on its website that
Applicant’s “product works with SmartThings as an integration tool.”16 Thus,
customers could reasonably presume that the goods and services bearing similar
marks originate from a common source. The confusion which the trademark statute
is concerned with is not only that a customer would mistakenly choose Applicant’s or
Opposer’s product for the job but also whether such a customer, familiar with
Applicant’s goods (or vice versa), would believe that Opposer’s goods and services
were yet another product from Applicant or that their products and goods were
somehow associated with the same source. In re Uncle Sam Chemical Co., Inc., 229
USPQ 233, 235 (TTAB 1986); see also Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different

16 Opposer’s Exhibit L (22 TTABVUE 132).
Opposition No. 91241345
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from, and thus not related to, one another in kind, the same goods can be related in
the mind of the consuming public as to the origin of the goods. It is this sense of
relatedness that matters in the likelihood of confusion analysis.”).
Applicant argues that “SmartThings is neither [a] direct or indirect competitor to
the Applicant’s product offerings since the [Applicant’s] product offering includes AI
[artificial intelligence] based personalized voice enabled assistants.”17 Looking at
Applicant’s identification, “AI based personalized voice enabled assistants” is not
identified as a feature of any of its goods. Additionally, the “voice enabled assistants”
feature is not a feature that would likely be found on all of the goods listed in its
application, for example: computer software for use as an application programming
interface (API) . . . downloadable cloud computing software for updating and
upgrading software and firmware over the cloud; software development kits. Even if
the identification of goods in Applicant’s application covered “AI based personalized
voice enabled assistants” that would not be a feature found on all of Applicant’s goods.
Therefore, Applicant’s argument does not overcome the relatedness of Applicant’s and
Opposer’s goods. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d
1816, 1825-26 (TTAB 2015) (Regardless of the parties’ actual business activities, the
goods in an application or registration are construed to include all goods of the type
identified, sold in all normal channels of trade for such goods, to all usual purchasers
of them.).

17 Applicant’s Remarks/Arguments (25 TTABVUE 4).
Opposition No. 91241345
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We need not address the similarity of all of Applicant’s goods once relatedness is
established for any item encompassed by the respective recitations of goods and
services in the application and Opposer’s registrations. See e.g., Tuxedo Monopoly,
Inc. v. General Mills Fun Group, Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)
(it is sufficient for a finding of likelihood of confusion if relatedness is established for
any item encompassed by the identification of goods or services within a particular
class in the application); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745
(TTAB 2014) (it is sufficient for a refusal based on likelihood of confusion that
relatedness is established for a good or service in each class).
It is well settled that goods and/or services need not be identical or even
competitive in nature in order to support a finding of likelihood of confusion. Instead,
it is sufficient that the goods and services are related in some manner and/or that the
circumstances surrounding their marketing are such that they would be likely to be
encountered by the same persons in situations that would give rise, because of the
marks employed in connection therewith, to the mistaken belief that they originate
from or are in some way associated with the same producer or provider. See Safety-
Klean Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 186 USPQ 476, 480 (CCPA 1975);
Wet Seal, Inc. v. FD Mgmt., Inc., 82 USPQ2d 1629, 1639 (TTAB 2007); McDonald’s
Corp. v. McKinley, 13 USPQ2d 1895, 1898 (TTAB 1989); In re Mucky Duck Mustard
Co. Inc., 6 USPQ2d 1467, 1469 (TTAB 1988) aff’d, 864 F.2d 149 (Fed. Cir. 1988);
Monsanto Co. v. Enviro-Chem Corp., 199 USPQ 590, 595-96 (TTAB 1978).
Opposition No. 91241345
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Also, confusion can occur from the use of the same or similar marks for goods on
the one hand and for services which deal with or are related to those goods on the
other hand. Wet Seal v. FD Mgmt., 82 USPQ2d at 1639-40 (holding ARDENBEAUTY
for fragrance and skin care goods is likely to cause confusion with ARDEN B for
women’s clothing and jewelry, and retail apparel stores); Ultratan Suntanning
Centers Inc. v. Ultra Tan Int’l AB, 49 USPQ2d 1313, 1316 (TTAB 1998) (ULTRATAN
marks with design features for ultra-violet lamps used in tanning, and tanning salons
and ultraviolet lamp assemblies, likely to cause confusion); Corinthian Broad. Corp.
v. Nippon Elec. Co., Ltd., 219 USPQ 733, 735-36 (TTAB 1983) (holding TVS for
transmitters and receivers of still television pictures and TVS for television
broadcasting services likely to cause confusion); Steelcase Inc. v. Steelcare Inc., 219
USPQ 433, 435 (TTAB 1983) (holding STEELCARE INC. for refinishing of furniture,
office furniture, and machinery likely to be confused with STEELCASE for office
furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ
32 (TTAB 1972) (holding similar marks for trucking services and on motor trucks and
buses likely to cause confusion).
Additionally, Opposer has submitted third-party registrations owned by entities
offering under the same mark one or more goods of the types identified in both
Applicant’s application and Opposer’s registrations.18 That third-party marks are

18 Opposer’s Exhibit K (22 TTABVUE 57-124) includes the following pertinent registrations:
Registration Nos. 5818190 owned by NavoLabs LLC for NavoLabs (for goods in Class 9
including: computer hardware and software system for remotely monitoring environmental
conditions and controlling devices within a building, facility, grounds, or designated spatial
area; . . . ; Computer hardware and software systems for remotely controlling lighting, Audio,
networks, and access control within a building; Computer hardware and software used for
Opposition No. 91241345
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the control of voice controlled information and communication devices . . . ); 5819197 owned
by Wu Qian for MoonTV & Design (for goods in Class 9 including: Computer hardware for
communicating audio, video and data between computers via a global computer network,
wide-area computer networks, and peer-to-peer computer networks; Computer programs for
use in teaching children to read; Computer software to enhance the audio-visual capabilities
of multimedia applications, namely, for the integration of text, audio, graphics, still images
and moving pictures . . . ); 5805141 owned by Zhang Yanhui for Palficab (for Computer
peripheral devices, . . . Electronic and optical communications instruments and components
. . . Signal conditioning and communication devices for industrial process control; Wireless
communication devices for transmitting images taken by a camera; Wireless communication
devices for voice, data or image transmission); 5738146 owned by Rokid Corporation Ltd. for
(for Home and office automation systems comprising wireless and wired controllers,
controlled devices, and software for controlling lighting, HVAC, security and safety
networked devices in the internet of things . . . Computer software used for controlling voice
controlled information and personal assistant devices, namely, cloud-connected and voice-
controlled smart audio speakers with virtual personal assistant capabilities; . . . ); 5829472
owned by Intelligent Research for IG Intelligent Gadget & Design (for home automation
control devices, voice controlled information devices, voice controlled personal assistant
devices, and cloud-connected and voice controlled smart audio speakers preloaded with
software applications for controlling home automation devices, voice controlled information
devices, voice controlled personal assistant devices, and cloud-connected and voice controlled
smart audio speakers; computer hardware, computer peripherals, . . . ); 5719409 for CLAIM
YOUR SPACE, 5719407 for ON THE ROAD and 5474704 for , owned by Shenzhen
Grandsun Electronic Co., Ltd. (for . . . Computer hardware consisting of stand-alone voice-
controlled information devices, . . . Virtual reality game software . . . computer peripheral
devices); 5469992 owned by Amazon Technologies, Inc. for ECHO (for computer hardware,
computer hardware peripherals . . . home automation systems comprising wireless
controllers, controlled devices, and software for lighting, appliances, HVAC, security, safety
and other home monitoring and control applications; . . . ); 5096744 owned by Apple Inc. for
SIRI REMOTE (for computer hardware, computer peripherals, handheld digital electronic
devices, and remote control devices for controlling software applications and for searching,
manipulating, controlling, storing, displaying and playing video and multimedia content,
games, software applications, software application marketplaces, and program listings and
guides; computer software for voice command and recognition . . . ), 4689365 owned by Apple
Inc. for SENSORY MARK (for . . . computer hardware; . . . telephone-based information
retrieval software; telephones; electronic voice recognition apparatus; computer software for
personal information management; voice recognition software; speech to text conversion
software; . . . ) and 5360323 owned by Apple Inc. for TAPTIC ENGINE (for Linear actuators
sold as an integral component of computers, computer peripheral devices, computer
hardware, personal digital assistants, electronic organizers, electronic notepads, sound
recording and reproducing apparatuses . . . ); 5578535 owned by Anker Innovations Limited
for ROAV & Design (for information devices namely, stand-alone voice controlled information
devices comprised of cloud-connected and voice controlled smart audio speakers with virtual
personal assistant capabilities; personal assistant devices, namely, stand-alone voice
controlled information devices comprised of cloud-connected and voice controlled personal
Opposition No. 91241345
- 18 -

data assistants and personal digital assistants; . . .; home automation control devices
comprising wireless and wired controllers, controlled devices and software for lighting,
HVAC, security, safety and other home monitoring and control applications; . . . ; software
for controlling the operation of stand-alone voice controlled information devices comprised of
cloud-connected and voice controlled smart audio speakers with virtual personal assistant
capabilities and software for controlling the operation of stand-alone voice controlled
information devices comprised of cloud-connected and voice controlled smart audio speakers
with virtual personal assistant capabilities; . . . ); 5793602 owned by Beijing Ling Technology
Co., Ltd. for AURI (stylized) (for Computer operating software; Computer software platforms,
recorded, for maintaining and operating computer system; Downloadable mobile applications
using artificial intelligence for home automation; . . . ; Electric sensors; Humanoid robots with
artificial intelligence; . . . Personal digital assistant computers . . . ); 5753441 owned by Guilin
Zhishen Information Technology Co., Ltd. for WEEBILL (stylized) (for . . . Electronic data
processing apparatus; Computer game software for use on mobile and cellular phones; . . .
Integrated circuits; Apparatus for transmission of communication; . . . ); 5544520 owned by
Lin Zhou for Hexdeer (stylized) (for . . . Computer peripheral devices; Microphones; sound
recording apparatus; tablet computers and personal digital assistants; 3D virtual reality
glasses; smartglasses; Fitness tracker watch in the nature of wearable activity trackers;
Electric cables and wires; Home security equipment, namely, sound alarms and electric
sensors; Slide or photograph projection apparatus; Electric optical lamps and lighting control
apparatus); 5455099 owned by Sichuan Bohao Commerce Co., Ltd for Metalbay (stylized) (for
Alarm monitoring systems; . . . Wearable activity trackers; Alarm sensors; . . . Electrical
sensor apparatus for sensing the presence or absence of individuals or objects by contact or
pressure; Optical sensors; Pollutant sensors; Pressure sensors; Proximity sensors;
Temperature sensors; Touchscreen sensors; Ultrasonic sensors . . . ); 4822400 owned by DISH
Network L.L.C. for (for . . . communications software, namely, networking software for
residential and commercial audio, video and telephony systems; . . . Telecommunications
equipment, namely, smartphones, wireless and mobile telephones, all for voice, data, image,
graphic, audio, video and fax communications and electronic mail; . . . ) and 4827334 owned
by DISH Network L.L.C. for (for . . . Telecommunications equipment, namely,
smartphones, wireless and mobile telephones, all for voice, data, image, graphic, audio, video
and fax communications and electronic mail;. . . Telephone modems and radio modems;
Computer software for operating computer hardware, translating digital signals,
transmitting digital data and signals, electronic messaging, data management, computer
hardware and network security, and access to the internet for use in wireless
communications systems; . . .).
Registration No. 4405456 for BEACON is cancelled and has not been considered. Action
Temporary Servs. 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.”). Lastly,
because Registration No. 5588758 for MABERRY TECH DIRECT does not list goods and
services similar to those in Applicant’s application and Opposer’s registrations, it was not
considered.
Opposition No. 91241345
- 19 -
registered for use in connection with the same or similar goods as those of both
Applicant and Opposer is additional evidence that their goods are of a kind that may
emanate from a single source under a single mark. While they are not evidence that
the registered marks are used on a commercial scale or that they are known to the
public, third-party registrations based on use in commerce and covering different
goods or services serve to suggest that those goods are of a type that may emanate
from a single source. Anheuser-Busch v. Innvopak, 115 USPQ2d at 1827; L’Oreal S.A.
v. Marcon, 102 USPQ2d 1434, 1140 (TTAB 2012); see also In re Mucky Duck Mustard,
6 USPQ2d at 1470 n.6.
Next, we consider the DuPont factor concerning the trade channels and classes of
purchasers. This factor relates to whether Opposer’s and Applicant’s identified or
presumptive trade channels and customers would result in a likelihood customers
would consider the parties’ identified goods and services as “emanat[ing] from the
same source.” Shen Mfg. Co., Inc. v. Ritz Hotel, Ltd., 393 F.3d 1238, 73 USPQ2d 1350,
1356-1357 (Fed. Cir. 2004). Because there are no limitations as to trade channels or
classes of customers in the identifications of Applicant’s and Opposer’s goods and
services, it is presumed that the identifications encompass all goods and services of
the type described, that they move in all normal trade channels for such goods and
services, and that they are available to all potential customers. See Stone Lion Capital
v. Lion Capital, 110 USPQ2d at 1162; Octocom Sys. v. Houston Comptr. Servs., 16
USPQ2d at 1787; Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed.
Cir. 1983) (“[W]here the likelihood of confusion is asserted with a registered mark,
Opposition No. 91241345
- 20 -
the issue must be resolved on the basis of the goods named in the registration and, in
the absence of specific limitations in the registration, on the basis of all normal and
usual channels of trade and methods of distribution.”).
The evidence shows that the parties’ respective goods and services are marketed
through some of the same trade channels to the same customers. Opposer’s target
customers for its SMARTTHINGS goods are adults who own or rent a home or
apartment.19 Business owners also purchase SMARTTHINGS goods to help monitor
their facilities. For example, American Hotel Register Company, a supplier of
hospitality products to various industries identified on its website including those
involved in hospitality, funeral facilities, colleges and universities, healthcare
facilities and government entities, offers Opposer’s SMARTTHINGS goods for sale on
its website.20 Applicant “intend[s] to sell their products in the entire US market
covering both consumers of any age and enterprise sector mainly comprising Federal
Agencies, Corporations, Hospitality & Tourism, Healthcare, Retail, Banking etc.”21
Thus, Applicant intends to target many of the same classes of customers that
purchase Opposer’s goods and services.
Additionally, Opposer promotes its SMARTTHINGS goods at the trade shows it
attends. Among other events it has attended, Opposer exhibited at the Consumer

19 Declaration of Ruth Ann Hudock, Senior Paralegal of Opposer, ¶ 15 (20 TTABVUE 4).
20 Opposer’s Exhibit J (22 TTTABVUE 53-56). The products are identified on the American
Hotel Register Company website as “Samsung SmartThings [generic name of product].”
Opposer SmartThings was bought by Samsung Electronics in August 2014 and continues to
operate under its original name as an independent company within Samsung’s Open
Innovation Center. Hudock Declaration ¶ 4 (20 TTABVUE 2-3).
21 Applicant’s Response to Opposer’s Interrogatory No. 19 (22 TTABVUE 131).
Opposition No. 91241345
- 21 -
Electronics Show (“CES”) tradeshow in 2017, 2018, and 2020.22 Applicant also
“promoted its SMARTBEINGS prototype” at the CES tradeshow in 2017 and 2018.23
Thus, the parties have promoted their goods at the same time and place, arguably to
the same audience. Therefore, at least some of Applicant’s customers are part of the
general purchasing public for Opposer’s goods and services resulting in an overlap in
their channels of trade and classes of purchasers. This overlap weighs in favor of a
finding of likelihood of confusion. In re Wilson, 57 USPQ2d 1863, 1866 (TTAB 2001).
In view of the foregoing, we find that Applicant’s goods and Opposer’s goods and
services are related, travel in the same channels of trade, and will be sold to the same
classes of customers, supporting a likelihood of confusion under the second and third
DuPont factors.
2. Strength of Opposer’s Mark
To determine the scope of protection to which Opposer’s mark is accorded, we
consider the strength of its marks. In determining strength of a mark, we consider
both inherent strength, based on the nature of the mark itself, and commercial
strength or recognition. Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d
1340, 1345 (TTAB 2017) (citing 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

22 Hudock Declaration ¶¶ 19-20 (20 TTABVUE 5).
23 Opposer’s Exhibit L, Applicant’s Answer to Opposer’s Second Set of Requests for Admission
(22 TTABVUE 133).
Opposition No. 91241345
- 22 -
measured both by its conceptual strength (distinctiveness) and its marketplace
strength (secondary meaning).”).
Opposer argues that its “SMARTTHINGS marks are strong by virtue of its
extensive use of the marks in connection with its goods and services for more than
seven years,” entitling it to broad protection. In support, Opposer presents
confidential testimony and evidence of its sales of certain products including its “best-
selling product,” the SMARTTHINGS hub (“a small electronic device that connects
wirelessly with a wide range of other smart home devices” allowing users to control
and automate their home connected devices using Opposer’s SMARTTHINGS mobile
app), and its SMARTTHINGS kit, (which includes its hub along with smart sensors
and outlets), from 2015 through mid-2018.24 Opposer’s SMARTTHINGS goods are
sold by online by “big-name retailers” including “Samsung, Amazon.com, Best Buy,
Lowe’s, The Home Depot, and Sears” and in “hundreds of brick and mortar stores in
every state.25 Lastly, Opposer has more than 60,000 Facebook followers and more
than 49,000 Twitter followers.26 Opposer contends that its sales figures show that its
SMARTTHINGS marks have significant commercial strength.27

24 Opposer’s Brief at p. 13 (24 TTABVUE 19) citing to Hudock Declaration ¶¶ 12-14 and
Exhibit E (Confidential 21 TTABVUE 4, 36-37), (20 TTABVUE 4, 36). While Ms. Hudock
testifies that Exhibit E is a business record kept in the regular course of Opposer’s business,
it appears to be a spreadsheet comprised of selected information for a certain period of time.
Additionally, although her Declaration was executed on January 24, 2020, the information
appearing on the spreadsheet only covers 2015 through “2018 (~Jun).”
25 Opposer’s Brief at p. 13 (24 TTABVUE 19); Hudock Declaration ¶¶ 17-18 and Exhibit G
(20 TTABVUE 4-5, 52) (Confidential 21 TTABVUE 53-78).
26 Hudock Declaration ¶ 7 (20 TTABVUE 3); Exhibit H (22 TTABVUE 17-28, 29-37).
27 Opposer’s Brief at p. 13 (24 TTABVUE 19) citing to Hudock Declaration ¶¶ 12-14 (20
TTABVUE 4); Notice of Reliance, Exhibit E (Confidential 21 TTABVUE 36-37).
Opposition No. 91241345
- 23 -
While Opposer’s sales appear to be strong over the three and a half year time
period covered in its evidence, that time period ended well before the date of Ms.
Hudock’s testimony. Additionally, the sales figures for 2018 which were through
“~June,” show a decline from the sales in prior years. Details regarding such sales
through the present would be more supportive particularly if they gave some
indication of Opposer’s sales versus sales of competitive products, as well as amounts
spent on advertising and promotion. See Omaha Steaks Int’l, Inc. v. Greater Omaha
Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1689-90 (Fed. Cir. 2018); Bose Corp.
v. QSC Audio Products, Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002)
(“Raw numbers of product sales and advertising expenses may have sufficed in the
past to prove fame of a mark, but raw numbers alone in today’s world may be
misleading.”).
Opposer’s marks and Applicant’s mark start off with the term “SMART.” The
definition of “smart” is:
4 b: operating by automation
// a smart machine tool
c: using a built-in microprocessor for automatic oper-
ation, for processing of data, or for achieving greater
versatility
// a smart card28

28 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); 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).
Opposition No. 91241345
- 24 -
MERRIAM-WEBSTER.COM Dictionary,

Accessed January 25, 2021
Thus, the term “smart” used as the first term in Opposer’s marks describes a
feature of its goods and services, i.e., they are comprised of built-in microprocessors
for data processing or for achieving greater versatility. More than twenty-five years
ago, the Board held that “[i]t is undeniable that computers have become pervasive in
American daily life. The ‘computer’ meaning of the term ‘smart,’ as is the case with
many ‘computer’ words, is making its way into the general language.” In re
Cryomedical Sciences Inc., 32 USPQ2d 1377, 1378 (TTAB 1994). There is no question
that the term “smart” is in common use with a variety of computer and software
related goods and services and has a descriptive connotation with respect to Opposer’s
goods and services. Thus, use of “SMART” in Opposer’s marks renders them
somewhat weak.
Nevertheless, we find that Opposer’s marks (which registered without a claim of
acquired distinctiveness), are strong enough to be entitled to protection against
Applicant’s similar mark used for related goods pursuant to Trademark Act § 7(b), 15
U.S.C. § 1057(b). While the evidence falls short of establishing that Opposer’s marks
are famous for purposes of our likelihood of confusion determination, the record
supports a finding that Opposer’s SMARTTHINGS marks are inherently distinctive
in view of their registration on the Principal Register, and commercially strong in
light of Opposer’s sales figures, and the absence of any evidence of third-party use or
registration.
Opposition No. 91241345
- 25 -
3. Similarity of the Marks
We next consider 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 a particular case, any one of these means
of comparison may be critical in finding the marks to be similar. See Cai v. Diamond
Hong, 127 USPQ2d at 1800.
Applicant’s mark (SMARTBEINGS & Design) is similar in sight, sound, and
meaning to Opposer’s marks. “SMART” is the dominant and first element of
Applicant’s mark which is identical to the dominant first term in Opposer’s
SMARTTHINGS and SMARTTHINGS LINK marks. Although we consider the
marks in their entireties, the fact that Applicant’s and Opposer’s marks begin with
“SMART” is noteworthy because “it is often the first part of a mark which is most
likely to be impressed upon the mind of a purchaser and remembered.” Presto Prods.,
Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988); see also Palm Bay
Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005); Century 21 Real Estate Corp. v. Century Life of
Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (“[U]pon encountering
each mark, consumers must first notice this identical lead word.”). Therefore, the use
of the identical term “SMART” as the first part of Applicant’s and Opposer’s marks,
SMARTBEINGS & Design, SMARTTHINGS, and SMARTTHINGS LINKS, is likely
to make a similar impression upon consumers because the marks have the same
leading term.
Opposition No. 91241345
- 26 -
Moreover, the remaining portions of Opposer’s and Applicant’s marks, i.e., the
words “THINGS” and “BEINGS,” convey similar meanings or impressions. “Thing” is
defined as:
3: individual // not a living thing in sight
. . . a synonym for “thing” is “being.”
MERRIAM-WEBSTER.COM Dictionary,

Accessed January 25, 2021;
and “being” is defined as:
3: a living thing.
MERRIAM-WEBSTER.COM Dictionary,

Accessed January 25, 2021.29
Not only are the definitions of “thing” and “being” similar; “thing” is a synonym for
“being.” Thus, the additional terms “THINGS,” “LINK” and “BEINGS” contained in
Opposer’s and Applicant’s marks do not result in marks having different overall
connotations to distinguish them.
Additionally, when a mark such as SMARTTHINGS LINK, consists of two or more
words, some of which are disclaimed as is the word “LINK,” the word(s) not
disclaimed are generally regarded as the dominant or critical term. Citigroup Inc. v.
Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1257 (Fed. Cir. 2011);
In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)
(finding “delta” the dominant part of the mark THE DELTA CAFÉ because CAFÉ

29 Judicial notice is taken of the definitions of “thing” and “being.”
Opposition No. 91241345
- 27 -
was disclaimed). Therefore, the word “LINK” in Opposer’s SMARTTHINGS LINK
mark is subordinate and has less source-identifying significance, resulting in the
similarity of SMARTTHINGS LINK mark to Applicant’s mark.
Additionally, the two-letter difference in the literal elements of Applicant’s mark
SMARTBEINGS and Opposer’s mark SMARTTHINGS, i.e., “BE” and “TH,” with
those two letters being tucked in the middle of the respective marks, does not
differentiate the appearance or sound of the marks to avoid a likelihood of confusion.
Also, given the similar meaning of “being” and “things” addressed above, the overall
connotation or meaning of the marks is similar.
In determining the commercial impressions created by the marks we must also
consider the marks in relation to the parties’ identified goods and services. See Coach
Servs., Inc. v. Triumph Learning LLC, 96 USPQ2d 1600 (TTAB 2010), aff’d 668 F.3d
1356, 101 USPQ2d 1713 (Fed. Cir. 2012); Embarcadero Technologies Inc. v. RStudio
Inc., 105 USPQ2d 1825, 1835 (TTAB 2013).
Inasmuch as Applicant’s proposed mark SMARTBEINGS & Design is to be used
on goods including:
Computer software for video conferencing, video, text and
voice chat communication over personal and handheld
computers, mobile phones smart phones, wireless
communications devices and personal digital assistant
devices, and
Computer software for connecting, operating, integrating,
controlling, and managing networked consumer electronic
devices, home climate devices and lighting products via
wireless networks,
Opposition No. 91241345
- 28 -
it connotes the same meaning or commercial impression as that of Opposer’s
SMARTTHINGS marks registered for:
online retail store services featuring . . . computer software
for use on mobile devices, and a wide range of devices and
products in the nature of electric sensors and actuators for
use in monitoring and control of electronic devices in homes
and businesses (Registration No. 4621914 for
SMARTTHINGS), and
computer networking and telecommunications hardware
in the nature of ethernet network controllers for home use
(Registration No. 5476722 for SMARTTHINGS LINK).
Since Applicant’s and Opposer’s marks begin with the identical first word followed
by terms having a similar meaning, they have the same or similar overall commercial
impression when used on Applicant’s and Opposer’s related goods and services.
That Applicant’s mark includes design elements incorporated into the “T” and “I”
portions of the mark does not impact the similarity between its mark and Opposer’s
marks which also contain the letters “T” and “I.” The design elements in Applicant’s
mark do not change the overall impression of its mark. In composite marks
comprising a design and words, the verbal portion of the mark is the one most likely
to indicate the origin of the goods to which it is affixed. CBS Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198, 200 (Fed. Cir. 1983). Thus, the design elements do not serve to
distinguish Applicant’s mark from Opposer’s marks. In re Nat’l Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“[I]n 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 that the ultimate conclusion rests on consideration of the marks in their
Opposition No. 91241345
- 29 -
entireties.”); In re Dixie Rests., 41 USPQ2d at 1533-34 (affirming TTAB finding that
DELTA was the dominant feature of the mark THE DELTA CAFE and design, and
that the design element and generic word “CAFÉ” were insufficient to overcome
likelihood of confusion with the registered mark DELTA). Moreover, Opposer’s
registered marks are standard character marks that make no claim to font style, size,
or color. See 37 C.F.R. 2.52(a). Thus, Opposer’s marks could be presented in the same
font and colors as Applicant’s mark.
Applicant’s mark and Opposer’s marks begin with the term “SMART” followed by
either “THINGS” or the synonymical term “BEINGS,” conveying similar themes in
connection with their goods and services. Thus, when viewed in their entireties, the
marks are similar and this DuPont factor favors a finding of a likelihood of confusion.
4. Bad Faith
While Applicant admits that it was aware of Opposer’s [company] name when it
adopted its SMARTBEINGS mark30 that, by itself, is not enough to support of finding
of bad faith. A party’s bad faith in adopting a mark is relevant to the thirteenth
DuPont factor, which includes “any other established fact probative of the effect of
use.” Quiktrip W., Inc. v. Weigel Stores, Inc., ___ F.3d ___, 2021 USPQ2d 35 at *4 (Fed.
Cir. 2021) citing DuPont, 177 USPQ at 567. An inference of “bad faith”' requires
something more than mere knowledge of a prior similar mark. Sweats Fashions, Inc.
v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987). It
requires an intent to confuse. Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588

30 Applicant’s Remarks/Arguments (25 TTABVUE 3).
Opposition No. 91241345
- 30 -
F.3d 97, 92 USPQ2d 1769, 1782 (2d Cir. 2009) (the only relevant intent is intent to
confuse) (quoting 4 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR
COMPETITION § 23.113)).
While a junior user’s continued use of a mark after the USPTO has refused
registration based upon the senior user’s own registration may be indicative of bad
faith and a likelihood of confusion, 4 J. Thomas McCarthy, MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION § 23:115 (5th ed.), this was not the situation
in this case. Applicant’s application was not refused registration based on either of
Opposer’s registrations. More importantly, Applicant’s mark is not identical to
Opposer’s marks.
Accordingly, there is a lack of evidence showing an intent to confuse or to exploit
Opposer’s reputation or good will. Thus, with respect to DuPont factor thirteen, there
is no showing of bad faith on the part of Applicant.

IV. Conclusion
Applicant’s mark SMARTBEINGS creates the same overall commercial
impression as Opposer’s marks SMARTTHINGS and SMARTTHINGS LINK, which
are used for related goods and services offered in overlapping trade channels to the
same classes of customers. The lack of any evidence of similar marks in use on similar
goods and the commercial strength of Opposer’s marks further support the conclusion
that Applicant’s mark so resembles Opposer’s registered marks as to be likely to
cause confusion or to cause mistake or to deceive.
Opposition No. 91241345
- 31 -
Decision: The Opposition to registration of the mark in Application
Serial No. 87471187 on the ground of likelihood of confusion pursuant to Section 2(d)
of the Trademark Act is sustained.