Spark Therapeutics, Inc.

Trademark Trial and Appeal Board

Feb 26, 2021

87614036 (T.T.A.B. Feb. 26, 2021)

This Opinion is Not a
Precedent of the TTAB

Hearing Date: January 19, 2021

Mailed: February 26, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Spark Therapeutics, Inc.
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Serial Nos. 87614019 and 87614036
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Edward F. Behm, Jr. of Armstrong Teasdale LLP,
for Spark Therapeutics, Inc.
Josette M. Beverly, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
_____

Before Kuhlke, Lynch and Hudis,
Administrative Trademark Judges.

Opinion by Hudis, Administrative Trademark Judge:
Spark Therapeutics, Inc. (“Applicant”) seeks registration on the Principal Register
of the standard character mark SPARK THERAPEUTICS GENERATION PATIENT
SERVICES, and the following composite mark:

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(with the terms THERAPEUTICS and PATIENT SERVICES disclaimed in each
application), both for the following services:1
Providing information for patients, families and health care providers
about healthcare insurance coverage, insurance reimbursement
programs, insurance payer policies and patient financial assistance
programs; claims and billing processing services involving processing
and obtaining approval from insurance companies and government
agencies for the payment of gene therapies, in International Class 36;

Providing health care information in connection with patient and family
support programs, in International Class 44; and

Patient and family health care coordination services for use in case
management, namely, providing health care advisory and management
services for coordinating educational, medical, social, and claims
processing services for patients and their families relating to the
treatment of gene-based diseases; providing patient advocate services
for patients and their families regarding the coordination of medical
services and related travel for patients and their families relating to the
treatment of gene-based diseases; health care case management advice
and consultation services, namely, care coordination for patients and
families and coordinating medical, physical, personal care, and claims
processing and services for patients and their families in dealing with
medical service providers, hospitals, insurance companies, and others
involved in patient care, in International Class 45.
The Trademark Examining Attorney refused registration of both marks pursuant
to Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the ground of likelihood of
confusion with the following composite mark:

1 Application Serial Nos. 87614019 and 87614036 were filed on September 19, 2017, both
based upon Applicant’s allegation of a bona fide intention to use the marks in commerce
under Trademark Act Section 1(b), 15 U.S.C. § 1051(b). The mark of Application Serial No.
87614036 is described as follows: “Color is not claimed as a feature of the mark. The mark
consists of a helix ‘DNA’ design with the wording ‘SPARK THERAPEUTICS GENERATION
PATIENT SERVICES’ appearing next to it. The words ‘SPARK THERAPEUTICS’ appear in
the first line in all upper case lettering; The word generation appears on the second line in
lower case lettering. The wording ‘PATIENT SERVICES’ appears on the third line in all
upper case lettering.”
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registered on the Principal Register for “Providing health information services,
namely, providing information relating to medical healthcare plans” in International
Class 44.2
When the refusals were made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the requests for
reconsideration, the appeals were resumed. The appeals are fully briefed. Applicant
and the Examining Attorney participated in an oral hearing before a Panel of the
Board. We affirm the refusals to register.
I. Separate Appeals, Single Opinion
Because these appeals present similar issues, we issue a single opinion for both.
In re Vertex Grp. LLC, 89 USPQ2d 1694, 1695 (TTAB 2009) (“In view of the virtually
identical issues presented, the Board has chosen to issue this single decision.”).
However, each proceeding retains its separate character and will result in the entry
of a separate judgment for each appealed application; a copy of this decision shall be
placed in each proceeding file. In re Hudson News Co., 39 USPQ2d 1915, 1916 n.5

2 Registration No. 4126694 issued on April 10, 2012; Affidavit of Use pursuant to Trademark
Act Section 8, 15 U.S.C. § 1058, accepted, Declaration of Incontestability pursuant to
Trademark Act Section 15, 15 U.S.C. § 1065, acknowledged. The mark of Registration No.
4126694 is described as follows: “Color is not claimed as a feature of the mark. The mark
consists of the word mark ‘SPARQ’ with an arch above composed of larger dots on the left
and getting smaller as it moves to the right and ending with a sun burst.”

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(TTAB 1996) (Board issued a single opinion in the interest of judicial economy, but
each appeal stands on its own merits), aff’d mem., 114 F.3d 1207 (Fed. Cir. 1997).
As these two appeals involve common issues of law and fact, unsurprisingly the
prosecution histories on appeal are nearly identical. For judicial economy, in this
opinion unless otherwise indicated, we cite to the prosecution history and appellate
briefs concerning Applicant’s standard character mark (of Application Serial No.
87614019, or the “‘019 Application”); where additional issues pertain to Applicant’s
composite mark (of Application Serial No. 87614036, or the “‘036 Application”), we
cite to those briefs.3
II. Evidentiary Issue
Before proceeding to the merits of the refusals, we address an evidentiary matter.
Embedded within its Request for Reconsideration, Applicant provided the marks,
registration numbers, goods or services and owners of third-party SPARQ[K] marks
(i.e., marks comprising or including the term SPARQ or SPARK).4 Applicant also
attached to its Request for Reconsideration lists of third-party SPARQ[C][K] marks
(i.e., marks comprising or including the term SPARQ, SPARC or SPARK), providing
only the marks and registration numbers.5

3 Page references herein to the application records refer to the online database of the USPTO’s
Trademark Status & Document Retrieval (“TSDR”) system. All citations to documents
contained in the TSDR database are to the downloadable .pdf versions of the documents in
the USPTO TSDR Case Viewer. References to the briefs on appeal refer to the Board’s
TTABVUE docket system. The number before the designation TTABVUE is the docket entry
number; the numbers after this designation are the page references, if applicable.
4 Request for Reconsideration of May 19, 2020 at TSDR 10-11.
5 Id. at 14-17.
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In the denial of Applicant’s Request for Reconsideration, the Examining Attorney
objected that “the mere submission of a list of registrations … does not make such
registrations part of the record. … To make third party registrations part of the
record, an applicant must submit copies of the registrations, or the complete
electronic equivalent from the USPTO’s automated systems, prior to appeal.”6
(emphasis original). The Examining Attorney repeated this objection in her Brief on
Appeal.7
The Examining Attorney’s objection is well taken. Third-party registrations may
not be made of record by merely listing them in response to an Office Action. See
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) §§ 1207.03
and 1208.02 (2020) and cases cited therein. The proper way to submit third-party
registrations into the record is to submit copies of the registrations themselves, or the
electronic equivalent thereof from the USPTO’s electronic databases. Such
submissions should be made prior to appeal or, if after appeal, pursuant to a remand
to the Examining Attorney for further examination. Trademark Rule 2.142(d), 37
C.F.R. § 2.142(d); see also In re City of Houston, 101 USPQ2d 1534, 1536 n.5 (TTAB
2012) (quoting In re Broadway Chicken Inc., 38 USPQ2d 1559, 1560 n.6 (TTAB
1996)). We therefore give no further consideration to the third-party registration
information embedded within Applicant’s Request for Reconsideration or the lists of
third-party registrations that Applicant attached thereto.

6 Denial of Request for Reconsideration of June 19, 2020 at TSDR 2.
7 Examining Attorney’s Brief, 10 TTABVUE 5-6.
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III. Likelihood of Confusion - Applicable Law
We base our determination of likelihood of confusion under Trademark Act Section
2(d) on an analysis of all of the probative facts in evidence that are relevant to the
factors enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973) (“DuPont”) (cited in B&B Hardware, Inc. v. Hargis Indus., Inc.,
575 U.S. 138, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each
DuPont factor for which there is evidence and argument. See, e.g., 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).
In applying the DuPont factors, we bear in mind the fundamental purposes
underlying Trademark Act Section 2(d), which are to prevent confusion as to source
and to protect registrants from damage caused by registration of confusingly similar
marks. Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 224 USPQ 327, 331
(1985); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161, 1163
(1995); DuPont, 177 USPQ at 566.
Varying weights may be assigned to the various DuPont factors depending on the
evidence presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344,
98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1688 (Fed. Cir. 1993) (“the various evidentiary factors may play more
or less weighty roles in any particular determination”). Two key considerations are
the similarities between the marks and the relatedness of the services. See In re
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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) (“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 … [services].’”)).
IV. Likelihood of Confusion - Analysis
We now consider the arguments of Applicant and the Examining Attorney, the
applicable law and the evidence of record. The likelihood of confusion factors
Applicant and the Examining Attorney discussed are the scope of protection to be
afforded Registrant’s SPARQ and Design mark, the similarity or dissimilarity of
Applicant’s and Registrant’s marks, the relatedness of the services associated with
the respective marks, the channels of trade in which the services under the marks
travel, consumer sophistication, the absence of actual confusion, and the existence of
Applicant’s extant registration for the mark SPARK. We discuss these factors below.
A. The Similarity or Dissimilarity of the Services
We first address the “similarity or dissimilarity and nature of the … services as
described in an application or registration.…” DuPont, 177 USPQ at 567; Stone Lion
Capital Partners v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1159 and
1162 (Fed. Cir. 2014). It is sufficient for a finding of likelihood of confusion as to a
particular class if relatedness is established for any item of identified services within
that class in the application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981).
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When we consider the relatedness of the services, our analysis is premised on a
comparison of the services as they are set out in the application and the cited
registration. Paula Payne Prods. v. Johnson Publ’g Co., 473 F.2d 901, 177 USPQ 76,
77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of confusion must
be decided on the basis of the respective descriptions of goods”). See also In re Dixie
Rests., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) (quoting Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813,
1816 (Fed. Cir. 1987) (“Likelihood of confusion must be determined based on an
analysis of the mark applied to the … services recited in applicant’s application
vis-à-vis the … services recited in [a] … registration, rather than what the evidence
shows the … services to be”)).
The broadly-worded identification of services in the cited SPARQ and Design
registration is “providing information relating to medical healthcare plans” in
International Class 44. The recited services encompass providing information about
all aspects of medical healthcare plans. 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.’”); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992)
(“Registrant’s goods are broadly identified as computer programs recorded on
magnetic disks, without any limitation as to the kind of programs or the field of use.
Therefore, we must assume that registrant’s goods encompass all such computer
programs including those which are for data integration and transfer.”). Applicant’s
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identification of services includes “providing information for patients, families and
health care providers about healthcare insurance coverage, insurance reimbursement
programs, insurance payer policies and patient financial assistance programs” in
International Class 36, and “providing health care information in connection with
patient and family support programs” in International Class 44. We find these
healthcare information services to be legally identical.
Applicant’s identification of services also includes “health care case management
advice and consultation services, namely, care coordination for patients and families
and coordinating medical, physical, personal care, and claims processing and services
for patients and their families in dealing with medical service providers, hospitals,
insurance companies, and others involved in patient care” in International Class 45.
These services are not identical to Registrant’s identified services of “providing
information relating to medical healthcare plans.”
However, the respective services need not be identical or even competitive to find
a likelihood of confusion. On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56
USPQ2d 1471, 1475 (Fed. Cir. 2000) (citing Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1898 (Fed. Cir. 2000)). They need only be “related in some manner
and/or if the circumstances surrounding their marketing are such that they could
give rise to the mistaken belief that … [the services] emanate from the same source.”
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722
(Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB
2007)).
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Evidence of relatedness may include news articles or evidence from computer
databases showing that the relevant goods and services are used together or used by
the same purchasers; advertisements showing that the relevant goods and services
are advertised together or sold by the same manufacturer or dealer; or copies of use
based registrations of the same mark for both the applicant’s services and the goods
listed in the cited registration. See, e.g., In re Davia, 110 USPQ2d 1810, 1817 (TTAB
2014).
Here, the Examining Attorney provided captured portions of the following
third-party websites showing that providing information relating to medical
healthcare plans and health care case management services are provided by the same
entity under the same trade name or mark:
 Child Welfare Information Gateway website – discussing casework relating to
family caregiver support services as well as research-based information to
families in factsheets and newsletters connecting parents to age-appropriate
resources and expert advice (January 8, 2018 Office Action at TSDR 44-45).
 Dana-Farber Cancer Institute website – discussing one-to-one support for
cancer patients, patient and family resource centers and patient financial
assistance (Id. at 46-52).
 HSC Health Care System website – discussing family support services,
information on health providers, home lead assessments and coordination
services and health plan information (Id. at 53-55).
 Family Connection South Carolina website – Sponsored by a nonprofit, family-
led organization promoting providing parent-to-parent mentor support
regarding health care for children and youth, particularly those with special
health care needs; also helps navigate the system of medical care and
insurance coverage for those with disabilities or special health care needs (Id.
at 56-60).
 NEJM Catalyst website – Discussing health care coordination services
inclusive of a variety of healthcare information (November 19, 2019 Office
Action at TSDR 7-18).
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 Patient Care-VA website – Showing healthcare services provided under the
umbrella of patient care services including case management services and
health information services (Id. at 19-21).
 Health Alliance website – Showing that Health Alliance provides care
coordination services that includes providing healthcare information services,
disease management and healthcare coaching (Id. at 22-24).
 Blue Cross Blue Shield Illinois website – Providing information on care
coordination services including healthcare information services on health
conditions, medications and treatment options (Id. at 25-26).
 Patient Support Services USA website – Showing that this entity provides case
management services for Medicare insurance providers for healthcare
providers including healthcare plan information services about costs of care
(Id. at 27-30).
 Sanofi Genzyme website – Showing that the website sponsor provides patient
care services including assistance and information on insurance plans,
treatment options and educational resources on disease and treatment
management (Id. at 31-37).
We find the above evidence demonstrates that Registrant’s information services
relating to medical healthcare plans and Applicant’s health care case management
services are related. See In re Detroit Ath. Co., 903 F.3d 1297, 128 USPQ2d 1047,
1050 (Fed. Cir. 2018) (crediting relatedness evidence that third parties use the same
mark for the goods and services at issue because “[t]his evidence suggests that
consumers are accustomed to seeing a single mark associated with a source that sells
both”); Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001,
1004 (Fed. Cir. 2002) (stating that evidence that “a single company sells the goods
and services of both parties, if presented, is relevant to a relatedness analysis”). We
do not give credence to Applicant’s attempt to limit the scope of Registrant’s services
or its own services to avoid a finding of likely confusion by resort to extrinsic evidence
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of how Registrant’s or Applicant’s marks are actually used in the marketplace.8 As
already noted, it is well settled that in making our determination, we must look to
the services as identified in the application vis-à-vis those recited in the cited
registration. We cannot consider extrinsic evidence regarding the similarities
between Applicant’s services and Registrant’s services. See Octocom Sys., Inc. v.
Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
The relatedness of the services weighs in favor of finding that confusion is likely.
B. Similarity in Channels of Trade
We now turn to the “similarity or dissimilarity of established, likely-to-continue
trade channels.” DuPont, 177 USPQ at 567; Stone Lion, 110 USPQ2d at 1159 and
1161. Where, as discussed above, we find Registrant’s and Applicant’s services to be
legally identical, “absent restrictions in the application and registration [and here
there are none], … services are presumed to travel in the same channels of trade to
the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012) (quoting Hewlett-Packard, 62 USPQ2d at 1005).
Where we find Registrant’s and Applicant’s services to be related (but not
identical), again neither the cited Registration nor the Applications at issue contain
any restriction on the channels of trade or classes of purchasers. We therefore
presume that the cited Registration and involved Applications encompass all services
of the type described, that they move in all normal channels of trade, and that they
are available to all classes of purchasers – members of the general public who are

8 Applicant’s Brief, 6 TTABVUE 11-12.
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consumers of information relating to medical healthcare plans and health care case
management services, see Levi Strauss & Co. v. Abercrombie & Fitch Trading Co.,
719 F.3d 1367, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013), on the basis of all normal
and usual methods of distribution. SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ
937, 940 (Fed. Cir. 1983). We also note, once more, the 10 third-party websites made
of record by the Examining Attorney through which Registrant’s and Applicant’s
types of services are provided – online direct-to-consumer websites – demonstrating
an overlap of trade channels. The channels of trade weigh in favor of finding that
confusion is likely.
C. The Strength of Registrant’s Mark
In determining the strength of a mark, we consider both inherent strength, based
on the nature of the mark itself, and commercial strength or recognition. 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).”); Couch/Braunsdorf Affinity, Inc. v. 12
Interactive, LLC, 110 USPQ2d 1458, 1476 (TTAB 2014). We consider the strength of
Registrant’s SPARQ and Design mark so that we may evaluate the scope of protection
to afford the mark.
As noted, to demonstrate the inherent or conceptual weakness of Registrant’s
SPARQ and Design mark, Applicant submitted TESS database information and lists
records of third-party registered marks comprising or including the term
SPARQ[C][K]. However, as we discussed above, Applicant did not properly introduce
the third-party registrations on which it relies into the record during the prosecution
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of its Applications. We therefore find that Applicant’s mere lists of third-party
registrations are insufficient to show that the term SPARQ[C][K] is inherently or
conceptually weak for Registrant’s services. We further find Registrant’s SPARQ and
Design mark to be inherently distinctive inasmuch as it is registered on the
Principal Register without a claim of acquired distinctiveness under Trademark Act
Section 2(f), 15 U.S.C. § 1052(f).
We turn now to the commercial strength of Registrant’s SPARQ and Design mark.
In an ex parte appeal, the owner of the cited registration is not a party, and the
Examining Attorney is under no obligation to demonstrate exposure to or recognition
of the cited mark in the marketplace. In re Integrated Embedded, 120 USPQ2d 1504,
1512 (TTAB 2016). Moreover, Applicant has not made of record any third-party uses
of marks comprising or including the term SPARQ[C][K]. “The purpose of a defendant
introducing third-party uses is to show that customers have become so conditioned
by a plethora of such similar marks that customers ‘have been educated to distinguish
between different such marks on the bases of minute distinctions.’” Primrose
Retirement Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1033
(TTAB 2016) (quoting Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)). Here, in
the absence of such evidence, we find no proof of commercial weakness of Registrant’s
SPARQ and Design mark.
From a conceptual standpoint, we afford Registrant’s SPARQ and Design mark
the ordinary scope of protection given a registered, inherently distinctive mark, as
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opposed to a limited scope of protection that would be accorded a conceptually weaker
mark. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108,
109-110 (CCPA 1974); In re Colonial Stores, Inc., 216 USPQ 793, 795 (TTAB 1982).
Applicant, moreover, did not submit any evidence to limit the commercial strength of
Registrant’s SPARQ and Design mark in connection with Registrant’s services.
D. The Similarity or Dissimilarity of the Marks
We determine the similarity or dissimilarity of Applicant’s and Registrant’s marks
in their entireties, taking into account their appearance, sound, connotation and
commercial impression. DuPont, 177 USPQ at 567; In re Detroit Athletic, 128
USPQ2d at 1048. “Similarity in any one of these elements may be sufficient to find
the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746
(TTAB 2018) (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d mem.,
777 Fed. Appx. 516 (Fed. Cir. 2019). Where the services are legally identical, as they
are in this case (at least in part), the degree of similarity between the marks required
to support a finding of likelihood of confusion is not as great as in the case of diverse
services. See In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016)
(citing Coach Servs., 101 USPQ2d at 1721).
Under actual marketing conditions, consumers do not necessarily have the luxury
of making side-by-side comparisons between marks, and must instead rely upon their
imperfect recollections. Dassler KG v. Roller Derby Skate Corp., 206 USPQ 255, 259
(TTAB 1980). “The proper test[, therefore,] 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
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to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d
1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quotation omitted).
The parties’ marks “must be considered … in light of the fallibility of memory ….”
In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014)
(quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683,
196 USPQ 1 (CCPA 1977)). Therefore, the focus is on the recollection of the average
purchaser, here, a member of the general public who is a consumer of information
relating to medical healthcare plans and health care case management services, who
normally retains a general rather than a specific impression of trademarks. In re
Assoc. of the U.S. Army, 85 USPQ2d 1264, 1268 (TTAB 2007); Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, our analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). Further, “[n]o element of a mark is ignored
simply because it is less dominant, or would not have trademark significance if used
alone.” In re Electrolyte Labs. Inc., 913 F.2d 930, 16 USPQ2d 1239, 1240 (Fed. Cir.
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1990) (citing Spice Islands, Inc. v. Frank Tea & Spice Co., 505 F.2d 1293, 184 USPQ
35 (CCPA 1974)).
Nonetheless, 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 a consideration of the marks in their entireties. Stone Lion, 110
USPQ2d at 1161. For instance, merely descriptive matter that is disclaimed has been
accorded subordinate status relative to the more distinctive portions of a mark. Nat’l
Data, 224 USPQ at 751 (“That a particular feature is descriptive ... with respect to
the relevant goods or services is one commonly accepted rationale for giving less
weight to a portion of the mark.”).
We find the phonetically identical and visually similar terms SPARQ and SPARK
to be the dominant portions of the marks. SPARQ is the only term comprising
Registrant’s mark, and SPARK is the first term of Applicant’s marks. See Presto
Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often
the first part of a mark which is most likely to be impressed upon the mind of a
purchaser and remembered”); Century 21 Real Estate Corp. v. Century Life of Am.,
970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks,
consumers will first notice the identical lead word). We further find SPARQ and
SPARK to be arbitrary, having no definitional or descriptive significance with respect
to Registrant’s and Applicant’s respective services. The Nautilus Grp., Inc. v. Icon
Health & Fitness, Inc., 372 F.3d 1330, 71 USPQ2d 1173, 1180 (Fed. Cir. 2004) (“An
arbitrary mark is a known word used in an unexpected or uncommon way.”).
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On the other hand, while we do not disregard them, the remainder of the terms in
Applicant’s marks are diminished because consumers are not inclined to rely on
descriptive or generic terms to indicate source. See In re Dixie Rests., 41 USPQ2d at
1533-34; In re Nat’l Data, 224 USPQ at 752. The descriptive, and disclaimed, term
THERAPEUTICS and phrase PATIENT SERVICES merely describe the type of
services provided as well as the entity providing Applicant’s services. As such, these
elements of Applicant’s marks are not source-identifying. See, e.g., In re Dixie Rests.,
41 USPQ2d at 1533-34 (“DELTA,” not the disclaimed generic term “CAFE,” was the
dominant portion of the mark THE DELTA CAFE).
The remaining term of Applicant’s marks that we have not yet discussed is
GENERATION. In the healthcare field, the term GENERATION means “a stage or
period of sequential technological development and innovation.”9 In the context of
Applicant’s services, therefore, the term GENERATION at best is suggestive of gene
therapies and treatment of gene-based diseases that are the subjects of Applicant’s
services in Classes 36 and 44 – and consumers therefore are unlikely to rely on this
term as source identifying in connection with any of Applicant’s services identified in
the three classes of its Applications. Moreover, despite appearing in large font in
Applicant’s composite mark of the ‘036 Application, we find that GENERATION is
not the dominant element.

9 Definition of GENERATION from THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH
LANGUAGE (https://www.ahdictionary.com/word/search.html?q=generation, last visited
February 24, 2021). The Board may take judicial notice of dictionary definitions, including
online dictionaries that exist in printed format or have regular fixed editions. See 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)
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With the dominant terms of the respective marks, SPARQ and SPARK, being
phonetically identical and visually similar, and the remaining terms of Applicant’s
marks having little to no source-identifying significance, we find Registrant’s and
Applicant’s marks to be more similar than they are different in overall commercial
impression. Relevant consumers of the parties’ services could view Applicant’s marks
as a new variation of Registrant’s SPARQ and Design mark, referring to a more
specialized subset of Registrant’s broadly worded services. See Coca-Cola Bottling Co.
v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975)
(BENGAL v. BENGAL LANCER: “When one incorporates the entire arbitrary
registered mark of another into a composite mark, inclusion in the composite mark
of … non[-source identifying] element[s] do[] not necessarily preclude the marks from
being so similar as to cause a likelihood of confusion.”).
We further find that the ARCH and SUNBURST Design forming a part of
Registrant’s mark, and the DNA HELIX Design forming a part of Applicant’s mark
shown in the ‘036 Application, do not sufficiently distinguish the marks for likelihood
of confusion purposes. With respect to composite word-and-design marks, “the words
are normally accorded greater weight because they are likely to make a greater
impression upon purchasers, to be remembered by them, and to be used by them to
request the … [services].” In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184
(TTAB 2018) (citing Viterra, 101 USPQ2d at 1908). An underlying rationale for this
general principle is “that the literal component of brand names likely will appear
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alone when used in text and will be spoken when requested by consumers.” Viterra,
101 USPQ2d at 1911.
The similarities of the marks support the conclusion that confusion is likely.
E. Customer Sophistication
Next we consider “[t]he conditions under which and buyers to whom sales are
made, i.e. ‘impulse’ v. careful, sophisticated purchasing.” Stone Lion, 110 USPQ2d at
1159 and 1162 (quoting DuPont, 177 USPQ at 567). Applicant argues “that the life-
altering and necessary nature of Applicant’s services coupled with the highly
informed nature of the relevant consumers leads to a highly sophisticated consumer
that will carefully scrutinize the service and give considerable thought before
purchasing the Applicant’s services which will avoid any likelihood of confusion with
the Cited Mark.”10 Applicant does not point us to any part of the evidentiary record
to support this contention.
Focusing on the least sophisticated potential customers for Applicant’s services,
we find this consideration does not weigh in favor of or against likely confusion. See
Stone Lion, 110 USPQ2d at 1163 (“Although the services recited in the application
also encompass sophisticated investors, Board precedent requires the decision to be
based ‘on the least sophisticated potential purchasers.’”). Moreover, even were we to
consider customer care with respect to Applicant’s services, particularly in the
context of similar marks and identical or related services, this would not render the
consumers “immune from trademark confusion.” Harry Winston, Inc. v. Bruce

10 Applicant’s Brief, 6 TTABVUE 10.
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Winston Gem Corp., 111 USPQ2d 1419, 1442 (TTAB 2014); see also In re Research
Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (“That the relevant
class of buyers may exercise care does not necessarily impose on that class the
responsibility of distinguishing between similar trademarks for similar …
[services].”).
F. Lack of Actual Confusion, and the Relevance of Applicant’s
Extant SPARK Registration
We finally consider “[t]he nature and extent of any actual confusion” and “[t]he
length of time during and the conditions under which there has been concurrent use
without evidence of actual confusion.” DuPont, 177 USPQ at 567. We do so in the
context of Applicant’s assertion that its previously registered SPARK mark has
co-existed in the marketplace for a period of time with Registrant’s SPARQ and
Design mark. Applicant asserts:
The Cited Mark [SPARQ and Design] was allowed registration on April
10, 2012. The Applicant applied for registration of the mark “SPARK” for
biologic preparations for use in the diagnosis and treatment of retinal
degenerative and hematologic disorders and diseases in Class 005 on
September 19, 2013 and [the] registration [Registration No. 5068997]
was allowed on May 6, 2014. The allowance of Applicant’s mark “SPARK”
was allowed over the Cited Mark. Applicant has used the “SPARK” mark
in connection with its goods and/or services continuously since
registration in 2014. During this 5 year period, neither party has
challenged the other’s use. Moreover, Applicant is unaware of any actual
consumer confusion during this time period.

Given the allowed registration of “SPARK” over the Cited Mark and [the]
period of time which the Cited Mark has co-existed with Applicant’s
registered mark “SPARK”, the PTO has already determined that
consumers are capable of distinguishing between the marks “SPARK”
and “SPARQ” and it is highly unlikely that confusion would arise
between the Cited Mark and the applied-for mark “SPARK
THERAPEUTICS GENERATION PATIENT SERVICES”. The period of
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co-existence between “SPARK” and “SPARQ” provides the “confluence of
facts” necessary to persuasively point to confusion being unlikely.11
Simply, “[a]ttorney argument is no substitute for evidence.” Cai v. Diamond
Hong, 127 USPQ2d at 1799 (quoting Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d
1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005)). Thus, given the record in this case,
we have no evidence to evaluate whether Applicant’s assertion that there have been
no instances of actual confusion between its previously registered SPARK mark and
Registrant’s SPARQ and Design mark is meaningful. “The absence of any reported
instances of confusion is meaningful only if the record indicates appreciable and
continuous use by applicant of its mark for a significant period of time in the same
markets as those served by opposer under its marks.” Citigroup Inc. v. Capital City
Bank Grp., Inc., 94 USPQ2d 1645, 1660 (TTAB 2010), aff’d, 637 F.3d 1344, 98
USPQ2d 1253 (Fed. Cir. 2011).
More particularly, “there is a lack of evidence that in the actual marketplace, the
same consumers have been exposed to both marks for the respective [goods and]
services, such that we could make a finding as to the ‘length of time during and
conditions under which there has been concurrent use without evidence of actual
confusion.’” In re Guild Mortg. Co., 2020 USPQ2d 10279 *25 (TTAB 2020). We also
note that “in this ex parte context, there has been no opportunity to hear from
Registrant about whether it is aware of any reported instances of confusion.” Id. at
*23. We therefore find the alleged absence of actual to be a neutral consideration.

11 Applicant’s Brief, 6 TTABVUE 14.
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Even if we consider Applicant’s previously registered SPARK mark under the
rubric of “[a]ny other established fact probative of the effect of use[,]” DuPont, 177
USPQ at 567, the fact of this prior registration still does not help Applicant’s position.
In In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012), the Board reversed
a refusal to register the mark ANYWEAR (Stylized), for “footwear,” finding no
likelihood of confusion with the registered mark ANYWEAR BY JOSIE NATORI and
Design for “jackets, shirts, pants, stretch T-tops and stoles.” Given the similarity in
the marks and the relatedness of the goods, the Board stated that “under usual
circumstances” it would conclude that confusion is likely to occur; however, an
“unusual situation” compelled the Board “to balance the similarities between the
marks and goods against the facts that applicant already owns a registration for a
substantially similar mark for the identical goods, and that applicant’s registration
and the cited registration have coexisted for over five years.” Id. at 1399. Applicant’s
prior registration of the mark ANYWEARS for goods including footwear was found
substantially similar to the applied-for mark ANYWEAR for the same goods, and the
registration had achieved incontestable status. Id. Basing its decision “any other
established fact probative of the effect of use,” the Board determined that this factor
outweighed the others and confusion was unlikely. Id. at 1399-1400 (quoting DuPont,
177 USPQ at 567).
In view of Strategic Partners, when determining whether the co-existence of an
applicant’s prior registration with another party’s registration weighs against citing
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the latter registration in a Section 2(d) refusal of the applicant’s applied-for mark,
the USPTO considers:
(1) whether the applicant’s prior registered mark is the same as the
applied-for mark or is otherwise not meaningfully different; (2) whether
the identifications of goods/services in the application and the
applicant’s prior registration are identical or identical in relevant part;
and (3) the length of time the applicant’s prior registration has co-
existed with the registration being considered as the basis for the
Section 2(d) refusal.

TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1207.01 (2018) (citing
Strategic Partners, 102 USPQ2d at 1400)).
The duration of co-existence, however, is not dispositive as to whether a Section
2(d) refusal is appropriate; instead, this factor should be considered together with all
the other relevant DuPont factors. Strategic Partners, 102 USPQ2d at 1400; cf. In re
Inn at St. John’s, 126 USPQ2d at 1748 (finding that applicant’s earlier registration
of a partially similar mark was a neutral factor in the Section 2(d) analysis, because
the applied-for mark was more similar to the cited registered mark than applicant’s
previously registered mark); In re USA Warriors Ice Hockey Program, Inc., 122
USPQ2d 1790, 1793 (TTAB 2017) (distinguishing Strategic Partners and finding that
the 3½-year co-existence of applicant’s prior registration and the cited registration
was a relevant consideration but did not outweigh the other relevant DuPont factors).
Here, (1) Applicant’s prior registered SPARK mark is not the same as its presently
applied-for marks and they otherwise are meaningfully different; (2) the
identifications of services in the applications now on appeal and the identification of
goods of Applicant’s prior SPARK registration are not identical in whole or in relevant
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part; even though (3) Applicant’s previously registered SPARK mark purportedly has
co-existed with Registrant’s SPARQ and Design mark for five years. We therefore do
not consider the extant SPARK registration to be relevant in the instant appeals.
V. Conclusion on Likelihood of Confusion
On balance, the DuPont factors favor finding a likelihood of confusion. The marks
at issue are more similar than dissimilar; the services are identical and otherwise
related. We also presume the trade channels and classes of purchasers are identical,
and proof has been submitted that they otherwise are related. Moreover, the record
does not show customer sophistication sufficient to outweigh these factors.
Additionally, the alleged absence of actual confusion between Registrant’s SPARQ
and Design mark and Applicant’s previously registered SPARK mark is neutral. We
therefore find that Applicant’s marks, used in connection with Applicant’s services,
so closely resemble Registrant’s mark as to be likely to cause confusion, mistake or
deception as to the source of Applicant’s services.
Decision:
The refusals to register Applicant’s marks SPARK THERAPEUTICS
GENERATION PATIENT SERVICES (in standard characters) and the composite
mark on the ground of likelihood of confusion under Trademark
Act Section 2(d) are affirmed as to all three classes in each Application (Classes 36,
44 and 45).