The Lightup Method, Inc.

Trademark Trial and Appeal Board

Mar 8, 2021

88316012 (T.T.A.B. Mar. 8, 2021)

This Opinion is not a
Precedent of the TTAB

Mailed: March 8, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re The Lightup Method, Inc.
_____

Serial No. 88316012
_____

Neil A. Burstein of Law Offices of Neil Burstein,
for The Lightup Method, Inc.
Rachel E. Desjardins, Trademark Examining Attorney, Law Office 123,
Susan Hayash, Managing Attorney.
_____

Before Wolfson, Heasley, and Larkin,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
Applicant, The Lightup Method, Inc., seeks registration on the Principal Register
of the standard character mark THE LIGHTUP LAB (with “LAB” disclaimed) for
“educational services, namely, providing classes and workshops in the field of
meditation and mindfulness; providing classes and workshops featuring experiential
activities in the nature of positive psychology and mindfulness to promote self-
awareness and growth through group and individual experiences” in International
Serial No. 88316012
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Class 41.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of
likelihood of confusion with the registered standard character mark LIGHT UP
COACHING (with “COACHING” disclaimed) for “professional coaching services in
the field of leadership development, corporate culture, communication, personal
growth and empowerment, talent enhancement, wellness, energy, and balance” in
International Class 41.2
When the refusal was made final, Applicant requested reconsideration. After the
Examining Attorney denied the request for reconsideration, Applicant appealed. We
affirm the refusal to register.
I. Likelihood of Confusion
Section 2(d) of the Trademark Act prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). We base our determination of likelihood of confusion under Section 2(d) on
an analysis of all of the probative facts of record. See In re E. I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”). In making our

1 Application Serial No. 88316012 was filed on February 26, 2019 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s claim of first use anywhere and in
commerce since at least as early as January 29, 2019.

Page references to the application record are to the downloadable .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs, motions
and orders on appeal are to the Board’s TTABVUE docket system.
2 Registration No. 4830008, issued on the Principal Register on October 13, 2015.
Serial No. 88316012
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determination, we have considered each DuPont factor for which there is evidence or
argument. In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1161-62 (Fed.
Cir. 2019); see Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797,
1800 (Fed. Cir. 2018) (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d
1257, 1259 (Fed. Cir. 2010) (“Not all of the DuPont factors are relevant to every case,
and only factors of significance to the particular mark need be considered.”)).
Varying weights may be assigned to each DuPont factor depending on the evidence
presented in a particular case. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637
F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“the various evidentiary factors may play
more or less weighty roles in any particular determination”). “In any likelihood of
confusion analysis, two key considerations are the similarities between the marks
and the similarities between the goods and services.” In re Chatam Int’l Inc., 380 F.3d
1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004), cited in Ricardo Media Inc. v. Inventive
Software, LLC, 2019 USPQ2d 311355, *5 (TTAB 2019).
A. The Marks

Under the first DuPont factor, we compare the two standard character marks—
Applicant’s THE LIGHTUP LAB (with “LAB” disclaimed) and Registrant’s LIGHT
UP COACHING (with “COACHING” disclaimed)—in their entireties, taking into
account their appearance, sound, connotation and commercial impression. DuPont,
177 USPQ at 567; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm Bay Imps., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
Serial No. 88316012
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(Fed. Cir. 2005). “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) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)) aff’d, 777 F.
App’x. 516 (Fed. Cir. 2019).
As the Examining Attorney correctly observes, the marks share the virtually
identical dominant components LIGHTUP and LIGHT UP. In sound, these
components are identical. Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d
1464, 1470 (TTAB 2016). In sight, “[t]he absence of a space in Applicant’s mark …
does not meaningfully distinguish it from [Registrant’s] mark.” Id. (citing Seaguard
Corp. v. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (SEAGUARD and SEA
GUARD “are, in contemplation of law, identical”)). And in meaning, in the context of
the educational and coaching services identified in the application and the cited
registration, they convey the same connotation and impression of enlightening pupils.
These shared components appear at the beginning of each mark, where they are
more likely to be noticed, recognized and impressed on consumers’ minds than the
words that follow them. See 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); Presto Prods. Inc. v. Nice-Pak
Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark
which is most likely to be impressed upon the mind of a purchaser and remembered”)
cited in TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1115-16 (TTAB 2019).
The word “THE” prefacing the words LIGHTUP LAB in Applicant’s mark “does not
Serial No. 88316012
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have any trademark significance” and does not distinguish the marks. In re Thor
Tech, Inc., 90 USPQ2d 1634, 1635 (TTAB 2009).
Applicant argues that even though the marks begin with LIGHTUP and LIGHT
UP, they must be considered in their entireties, not dissected.3 We recognize that we
must compare the marks in their entireties, not merely the dominant portions. But
“in articulating reasons for reaching a conclusion on the issue of confusion, there is
nothing improper in stating that, for rational reasons, more or less weight has been
given to a particular feature of a mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties.” In re Detroit Athletic Co., 903 F.3d
1297, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (quoting In re Nat’l Data Corp., 753
F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)). “Thus, if the dominant portion
of both marks is the same, then confusion may be likely notwithstanding peripheral
differences.” In re Denisi, 225 USPQ 624, 624 (TTAB 1985).
Although we do not discount the differences in the marks’ suffixes, LAB and
COACHING, we find them insufficient to overcome the similarity engendered by the
LIGHTUP and LIGHT UP components. To begin with, both suffixes are disclaimed
as merely descriptive of the services, so they would make less of an impression on
consumers than the distinctive prefix components of the marks. In re Detroit Athletic,
128 USPQ2d at 1050 (citing In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1533-34 (Fed. Cir. 1997)).

3 Applicant’s brief, 4 TTABVUE 7,
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Moreover, the suffixes convey similar connotations, as a “LAB” may provide a
place where “COACHING” can take place. As the Examining Attorney points out,
“lab” is short for “a laboratory,” “[a] place for practice, observation, or testing.”4 And
to “coach” means “To instruct, direct, or prompt as a coach” or “to train intensively
(as by instruction and demonstration).”5 Applicant agrees that “[t]he component ‘lab’
in Applicant’s mark is short for ‘laboratory,’”6 but argues that the Examining
Attorney ignored other definitions of the term, such as “a room or building equipped
for scientific experimentation or research,” “an academic period devoted to work or
study in such a place,” or “a place where drugs and chemicals are manufactured.”7
But in the context of the educational services identified in the application,
Applicant is using “LAB” in precisely the way the Examining Attorney suggests: not
as a room equipped for scientific experimentation or a place where drugs or chemicals
are manufactured, but as a place to provide educational classes and workshops—i.e.,
instruction. That is why it had to disclaim “LAB” as descriptive of its services.8 In

4 AHDictionary.com, May 10, 2019 Office Action at 14, 16.
5 Merriam-Webster.com, Examining Attorney’s brief, 6 TTABVUE 28; Dictionary.com, Jan.
27, 2020 Petition to revive application at 96.
6 June 15, 2020 Response to Office Action (request for reconsideration) at 7-8.
7 AHDictionary.com, May 10, 2019 Office Action at 14; June 15, 2020 Response to Office
Action (request for reconsideration) at 8; Applicant’s brief, 4 TTABVUE 10; Applicant’s
reply brief, 7 TTABVUE 7-8.
8 Given the multiple definitions of “LAB,” Applicant also argues that the word creates a
“double entendre,” further distinguishing the marks. Applicant’s brief, 4 TTABVUE 10. This
is a concept from the law of mere descriptiveness under Section 2(e)(1) of the Trademark Act,
15 U.S.C. § 1052(e)(1). Applicant has disclaimed the word LAB, conceding that it merely
describes its identified educational services. “The issue as to the descriptiveness of the word
is not before us and applicant’s arguments relative thereto have not been considered.” In re
Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2014 n.4 (TTAB 1988). In any event, the
Examining Attorney rightly notes that the multiple interpretations that make an expression
Serial No. 88316012
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fact, its specimen refers to its educational services as “THE FITNESS CLASS FOR
YOUR MIND,”9 all of which is consistent with the notion of “COACHING” as
training during fitness classes. So the suffixes—disclaimed, descriptive, and
conveying similar connotations—do not dispel the strong similarity of the prominent,
dominant LIGHTUP and LIGHT UP components.
For these reasons, the marks are more similar than dissimilar, and the first
DuPont factor weighs in favor of finding a likelihood of confusion.
B. The Services and Channels of Trade

The second DuPont factor concerns the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration…,” and the third
DuPont factor concerns the “similarity or dissimilarity of established, likely-to-
continue trade channels.” DuPont, 177 USPQ at 567; Stone Lion Capital v. Lion
Capital, 110 USPQ2d at 1161.
We compare the services as they are identified in the application and registration.
Stone Lion Capital v. Lion Capital, 110 USPQ2d at 1162. The application for THE
LIGHTUP LAB identifies “educational services, namely, providing classes and
workshops in the field of meditation and mindfulness; providing classes and
workshops featuring experiential activities in the nature of positive psychology and

a double entendre must be associations that the public would make fairly readily, and must
be readily apparent from the mark itself. In re S. Malhotra & Co. AG, 128 USPQ2d 1100,
1105 (TTAB 2018); In re Calphalon, 122 USPQ2d 1153, 1163-64 (TTAB 2017). Nothing about
the disclaimed descriptive term evokes associations with the other definitions of “lab.” It is
not a double entendre.
9 Applicant’s Specimen, Feb. 26, 2019.

Serial No. 88316012
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mindfulness to promote self-awareness and growth through group and individual
experiences” in Class 41. The registration for LIGHT UP COACHING identifies
“professional coaching services in the field of leadership development, corporate
culture, communication, personal growth and empowerment, talent enhancement,
wellness, energy, and balance,” also in Class 41.
A proper comparison of these services “considers whether ‘the consuming public
may perceive [them] as related enough to cause confusion about the source or origin
of the goods and services.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082,
1086 (Fed. Cir. 2014) (quoting Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d
1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002)) quoted in In re FabFitFun, Inc., 127
USPQ2d 1670, 1672 (TTAB 2018).
Applicant contends that even if the respective services are in the same broad
industry, they nonetheless differ, arguing:
Broadly speaking, the Registrant’s services covers “professional coaching.”
On the other hand, Applicant’s services cover meditation, mindful training
and experiential services featuring group classes and workshops. Unlike
registrant, Applicant services use positive psychology applications and
mindfulness to promote self-awareness and growth.10

“Registrant’s coaching services are a horse of a different color,” Applicant concludes.11
We find, though, that the identified services overlap in key respects. While some
of Registrant’s identified services are business oriented, such as “professional”
coaching in the field of “leadership development” and “corporate culture,” they also

10 Applicant’s brief, 4 TTABVUE 14.
11 Applicant’s reply brief, 7 TTABVUE 13.
Serial No. 88316012
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cover coaching in the fields of “personal growth and empowerment” as well as
“wellness, energy, and balance,” which correspond in nature to Applicant’s services
regarding “positive psychology and mindfulness to promote self-awareness and
growth.” The identified services thus overlap in key respects. See In re Detroit
Athletic, 128 USPQ2d at 1051 (citing Hewlett-Packard Co. v. Packard Press, 62
USPQ2d at 1005 (finding confusion to be likely between HEWLETT PACKARD and
PACKARD TECHNOLOGIES where “several of HP’s registrations cover goods and
services that are closely related to the broadly described services that Packard Press
seeks to register”)).
To underscore the relatedness of the services, the Examining Attorney submits
evidence of ten use-based third-party registrations encompassing both sorts of
services under single marks.12 For example:
Registration
No.
Mark Pertinent Services
5635956 UNBEATABLE MIND Educational services, namely, conducting
lectures, academic mentoring and enrichment
programs, instruction, teaching, training, classes,
seminars, courses, presentations, workshops,
panel discussions, personal and professional
coaching, retreats and camps in the fields of …
leadership, life performance, success, mental
skills, emotional skills, mental strength and
control, emotional strength and control, mind-
body character development, self-awareness, self-
mastery, self-improvement and personal lifestyle
development…. IC 41.

12 May 10, 2019 Office Action at 67-83; Feb. 27, 2020 Office Action at 32-45.
Serial No. 88316012
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Registration
No.
Mark Pertinent Services
5694625 SUCCESS
MINDPOWER
Educational services, namely, conducting
personal, professional, business and group
instruction, lectures, seminars, workshops,
training, webinars, conferences, consulting,
coaching groups and individuals in the field of
success instruction, achievement of goals, health
and vitality, business and life growth,
leadership, wealth and energy creation, mind-
body connection, self hypnosis, relaxation,
mindfulness, and meditation techniques…. IC
41.
5968766 ONE & MANY Educational workshops and individual and group
coaching in the fields of meditation and
personal development, namely, self-
improvement, self-fulfillment, and interpersonal
communication; business education and
training services, namely, providing coaching
services for executives and
entrepreneurs….IC 41.
5965606 UNHUSTLE Providing coaching and educational services in the
field of human potential development and growth,
namely, providing online and offline classes,
seminars, workshops, programs and retreats in
self-improvement, self-fulfillment, social,
emotional, relational, physical and spiritual needs
and well-being of a person, stress management,
mindfulness, productivity, life design, mind,
body and digital well-being, physical fitness,
emotional and spiritual well-being,
communication, meditation, movement,
breathing, nutrition, business growth and
mindset, entrepreneur growth and mindset,
and simplicity….IC 41. (Emphases added.)

These registrations demonstrate how common it has become for a single source
under one mark to offer services that blur the line between personal and professional
education and coaching. They serve to suggest that Applicant’s and Registrant’s
services are of a type that may emanate from a single source. See Hewlett-Packard v.
Packard Press, 62 USPQ2d at 1004 (evidence that “a single company sells the goods
Serial No. 88316012
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and services of both parties, if presented, is relevant to a relatedness analysis”) cited
in DeVivo v. Ortiz, 2020 USPQ2d 10153, *13 (TTAB 2020).
To corroborate this registration evidence, the Examining Attorney submits
printouts from various websites showing a single source providing both sorts of
personal and professional education and coaching services under a single mark.13 For
instance:
The Path
 Offers “Your Personal Meditation Trainer (for One-on-One Coaching)
 Designed to “increase clarity, productivity & efficiency”
 “Like a personal trainer, our teachers will also motivate you to build, and
continue, a daily practice, so your life…truly …transforms through your
meditation practice”
 Provides “Corporate Meditations” “We bring certified meditation teachers to
your company, organization or event” “The Path Offers guided meditations for
companies of any size to:
o Reduce stress
o Increase clarity, productivity & efficiency
o Promote teamwork
o Increase employee retention14
Mary Spinoso
 “Choose to be my coaching client, … or Invite me to speak to your business,
school, or organization.”
 “Learn stress reduction techniques, create a mindfulness and meditation
practice….”
 “Integrating health and wellness into daily life at your organizations leads to

13 May 10, 2019 Office Action at 17-66; Feb. 27, 2020 Office Action at 10-31.
14 ThePath.com, Feb. 27, 2020 Office Action at 10-17.
Serial No. 88316012
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happier and more productive employees.”15
A Course in Mindful Living
 “A 6-month Coaching program & community to help you master the skill of
Mindful Living”
 “An ever-growing library of Expert Workshops from Leading Teachers on
topics of …Preparing your mind for peak performance, how to be happier at
work….”16
MindKind Institute
 “Executive Coaching”
 “We coach high-performing leaders to take their careers to the next level, to
transform interpersonal conflicts, and to lead their teams and organizations
with greater wisdom and power.”
 “Whether you are new to mindfulness and emotional intelligence, or you are
seeking to deepen your understanding and application of these practices, we
are here to help expand your leadership potential.”17
This third-party evidence shows how Applicant’s attempted distinctions—
between education and coaching, between professional and personal—are illusory, as
“lifestyle balance” services covering both are offered together by a single source under
a single mark. See Ricardo Media v. Inventive Software, 219 USPQ2d 311355 at *3
(“[I]t is settled that evidence of third-party use of the same mark for an applicant’s
identified goods and services (or similar goods or services) on the one hand, and an
opposer’s (or registrant’s) identified goods and services (or similar goods and services)
on the other, may establish a relationship between those goods and services.”).

15 MarySpinoso.com, Feb. 27, 2020 Office Action at 27-31.
16 ACourseInMindfulLiving.com, May 10, 2019 Office Action at 24-47.
17 MindKindInstitute.com, May 10, 2019 Office Action at 48-66.
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Applicant protests that “advertising on the Internet is ubiquitous and proves little
if anything, about the likelihood that consumers will confuse similar marks used on
such goods or services”;18 that “none of these websites showed any advertising or use
of Registrant’s mark”;19 and that In re St. Helena Hosp., 113 USPQ2d 1082, requires
“something more” than a “showing that both services are used together or advertised
together on the internet.”20
These arguments miss the mark. The Examining Attorney did not introduce the
third-party website evidence to show that Internet advertising is a channel of trade;
she introduced it to show that single sources commonly offer Applicant’s and
Registrant’s services under a single mark. She need not adduce evidence of
Registrant’s use, as its mark is entitled to the presumptions of validity and
entitlement to protection afforded by Section 7 of the Trademark Act. 15 U.S.C.
§ 1057(b). And she need not show “something more” than a single source providing
both sorts of services under the same mark; “something more” is required only when
we compare goods with services, and the relatedness of those goods and services is
not evident, well-known or generally recognized. In re Country Oven, Inc., 2019
USPQ2d 443903, *12 (TTAB 2019) (citing In re St. Helena Hosp., 113 USPQ2d at
1087).
We find that Applicant’s and Registrant’s services are related. “It is sufficient that
the respective services are related in some manner, or that the conditions and

18 Applicant’s brief, 4 TTABVUE 13; Applicant’s reply brief, 7 TTABVUE 11.
19 Applicant’s brief, 4 TTABVUE 12.
20 Applicant’s brief, 4 TTABVUE 12.
Serial No. 88316012
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activities surrounding the marketing of the services are such that they would or could
be encountered by the same persons under circumstances that could give rise to the
mistaken belief that they originate from the same producer.” In re Integrated
Embedded, 120 USPQ2d 1504, 1514 (TTAB 2016) (citing Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012)).
As the third-party evidence shows, the services would be offered through the same
or similar channels of trade to the same or overlapping classes of consumers, both
professional and individual. See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB
2003) (“Given the in-part identical and in-part related nature of the parties’
[services], and the lack of any restrictions in the identifications thereof as to trade
channels and purchasers, these … items could be offered and sold to the same classes
of purchasers through the same channels of trade”). Applicant argues that consumers
frequently find such services through word-of-mouth recommendations from friends,
family, or human resource persons in the workplace.21 Given the marks’ similar
sounds, though, word-of-mouth recommendations could increase the likelihood of
confusion, as “any minor differences in the sound of these marks may go undetected
by consumers and, therefore, would not be sufficient to distinguish the marks.” In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012).
The second and third DuPont factors thus weigh in favor of finding a likelihood of

21 June 15, 2020 Response to Office Action (request for reconsideration) at 10, 23, citing
articles “How to Find A Great Coach” and “Who’s Your Guru? How To Find a Yoga
Instructor,” exs. I, J; Applicant’s brief, 4 TTABVUE 12; Applicant’s reply brief, 7 TTABVUE
11.

Serial No. 88316012
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confusion.
C. Consumer Sophistication and Care

Under the fourth DuPont factor, we consider “[t]he conditions under which and
buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.”
DuPont, 177 USPQ at 567.
Applicant argues that its services are provided for persons seeking certain
“transformational life experiences” in group classes and workshops, and that such
services are generally purchased after careful consideration and generally only after
seeking personal recommendations, thereby diminishing any likelihood of source
confusion.22
The standard of care, however, is that of the least sophisticated potential
purchaser. Stone Lion Capital v. Lion Capital. 110 USPQ2d at 1163 cited in In re
FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018), aff’d, 778 Fed. Appx. 962 (Fed.
Cir. 2019) (“Board precedent requires our decision to be based on the least
sophisticated potential purchasers.”). Consumers of Applicant’s and Registrant’s
services could come from various economic and educational backgrounds. And they
could infer from Applicant’s and Registrant’s similar-sounding LIGHTUP-formative
marks and related services that they emanate from the same source, or from
affiliated sources. See Weiss Assocs. v. HRL Assocs., 902 F.2d 1546, 14 USPQ2d 1840,
1841-42 (Fed. Cir. 1990) (similarities of goods and marks overshadow sophistication
and care of purchasers).

22 June 15, 2020 Response to Office Action (request for reconsideration) at 11-12; Applicant’s
brief, 4 TTABVUE 15-16; Applicant’s reply brief, 7 TTABVUE 10-11.
Serial No. 88316012
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Consequently, we have no reason to find that the least sophisticated potential
purchasers of the involved services, ordinary consumers, would exercise more than
an ordinary degree of care. This factor is neutral.
D. The Number and Nature of Similar Marks in Use

The sixth DuPont factor requires us to consider the number and nature of similar
marks in use on similar services. DuPont, 177 USPQ at 567; Primrose Ret. Cmtys.,
LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1033 (TTAB 2016).
Applicant submitted evidence of five third-party registrations containing the
terms LIGHTUP or LIGHT UP “to show that consumers are well-versed at
distinguishing goods or services based on other distinguishing characteristics in the
marks”:23
Reg. No. Mark Pertinent Services; Status
5797774

Life coaching services in the field of
transition from homelessness; life
coaching services in the field of personal
development; life coaching services in the
field of leadership; life coaching services
in the field of team work; life coaching
services in the field of self-actualization;
life coaching services in the field of life
skills; life coaching services in the field of
self-care; life coaching services in the field
of self-sufficiency. IC 41
4876655 LIGHT UP PRODUCTIONS Entertainment services, namely, music
songwriting for non-advertising purposes;
musical composition for others. IC 41
4988438 LIGHT UP LIBERTY Organizing community festivals featuring
food and a variety of activities, namely,
live musical performances, amusement
games, petting zoo, and fireworks
displays. IC 41

23 Applicant’s reply brief, 7 TTABVUE 13-14; Applicant’s brief, 4 TTABVUE 16; June 15,
2020 Response to Office Action (request for reconsideration) at 12, 18-23.

Serial No. 88316012
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5299196 LIGHT UP YOUR MIND Providing 3D animation production
services. IC 41
Providing 3D animation design services
for others. IC 42
4506374 LIGHTSUP Computer software and entertainment
services. (Cancelled)
Contrary to Applicant’s argument, we find that these third-party registrations,
unaccompanied by proof of use of the registered marks, fail to weaken the conceptual
or commercial strength of the cited registered mark.24
Four of the third-party registrations—nos. 4876655, 4988438, 5299196, and
4506374—are for unrelated services, such as songwriting, community festivals,
animation design and computer software. Under the sixth DuPont factor, “the
controlling inquiry is the extent of third-party marks in use on ‘similar’ goods or
services. . . . ‘It is less relevant that [the mark] is used on unrelated goods or
services….’” Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315,
128 USPQ2d 1686, 1694 (Fed. Cir. 2018) (error to rely on third-party evidence of
similar marks for dissimilar goods, as Board must “focus on goods shown to be
similar”).
Furthermore, one of those four registrations, no. 4506374, has been cancelled. See
TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1117 (TTAB 2019) (a cancelled
registration is only evidence that the registration issued, and has little, if any,
probative value).

24 Examining Attorney’s brief, 6 TTABVUE 23-24.
Serial No. 88316012
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That leaves one third-party word-and-design mark, ,
which, in addition to identifying “life coaching services in the field of transition from
homelessness,” identifies some relevant services, such as “life coaching services in the
field of personal development; life coaching services in the field of leadership; life
coaching services in the field of team work; life coaching services in the field of self-
actualization….”
However, as the Board has declared:
[E]vidence of one third-party user of a mark that is similar to [Registrant’s]
mark is not sufficient to establish that [Registrant’s] mark is a weak mark
entitled to only a narrow scope of protection or exclusivity of use especially
when Applicant has not introduced any evidence regarding the extent to
which that mark has been used. See Hunter Indus., Inc. v. Toro Co., 110
USPQ2d 1651, 1662 (TTAB 2014). Cf. In re Mr. Recipe, LLC, 118 USPQ2d
1084, 1089 (TTAB 2016) (“[O]ne third-party registration has little
probative value, especially in the absence of evidence that the mark is in
use on a commercial scale or that the public has become familiar with it.”).

Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016).

Moreover, it is well established that the existence of confusingly similar marks
already on the Register will not aid an applicant in registering yet another
confusingly similar mark. AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177
USPQ 268, 269 (CCPA 1973); In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d
1738, 1745 (TTAB 2016).
Consequently, the sixth DuPont factor is neutral.

E. Actual Confusion

Under the seventh and eighth DuPont factors, we consider the nature and extent
of any actual confusion, in light of the length of time and conditions under which
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there has been contemporaneous use of the parties’ subject marks. DuPont, 177
USPQ at 567.
Applicant asserts that the Examining Attorney failed to consider the nature and
extent of any actual confusion. “Indeed, no probative evidence of any actual or
likelihood of confusion has been produced.”25
As the Court of Appeals for the Federal Circuit has observed, however, “the
relevant test is likelihood of confusion, not actual confusion.” In re Detroit Athletic,
128 USPQ2d at 1053. While evidence of actual confusion may be considered in the
DuPont analysis, a showing of actual confusion is not necessary to establish a
likelihood of confusion. In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744,
1747 (Fed. Cir. 2017). “The lack of evidence of actual confusion carries little weight,
… especially in an ex parte context.” In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1205 (Fed. Cir. 2003) quoted in In re Detroit Athletic, 128 USPQ2d at
1053. That especially holds true here, where Applicant claims first use of its mark in
commerce as recently as January 2019, minimizing the opportunity for actual
confusion to occur in the marketplace. See Primrose Ret. v. Edward Rose Senior
Living, 122 USPQ2d at 1039-40 (three years’ contemporaneous use of marks
insufficient opportunity for actual confusion to have occurred).
We conclude that the seventh and eighth DuPont factors are neutral.

II. Conclusion

We have considered of all of the evidence and arguments as they pertain to the

25 Applicant’s brief, 4 TTABVUE 17.
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relevant DuPont likelihood of confusion factors. We find that the applied-for mark is
similar to the cited registered mark, that the identified services are related, and that
those services may travel through the same or overlapping channels of trade to the
same or overlapping classes of customers, who cannot be expected to exercise
sophistication or care in their purchases. The third-party registered marks cited by
Applicant do not weaken the cited registered mark. There is no evidence of actual
confusion, but that is unnecessary, and there is no evidence of an opportunity for
actual confusion to have occurred in the marketplace. For these reasons, we conclude
that Applicant’s applied-for mark, THE LIGHTUP LAB, as used in connection with
the services identified in the application, so resembles the cited registered mark as
to be likely to cause confusion or mistake, or to deceive under Section 2(d) of the
Trademark Act. 15 U.S.C. § 1052(d).
Decision: The refusal to register Applicant’s mark is affirmed.