VIA Architecture Incorporated

Trademark Trial and Appeal Board

Oct 29, 2008

No. 78949705 (T.T.A.B. Oct. 29, 2008)

Mailed:
29 October 2008
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re VIA Architecture Incorporated
________

Serial No. 78949705
_______

Jere M. Webb of Stoel Rives LLP for VIA Architecture
Incorporated.

Frank J. Lattuca, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Seeherman, Drost, and Wellington, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On August 10, 2006, applicant VIA Architecture
Incorporated filed an application to register the mark VIA
ARCHITECTURE in standard character form on the Principal
Register for:
Architectural planning and architectural design
services, namely, urban planning and design,
commercial and residential building planning and
design, master planning, sustainability planning,
transit and infrastructure planning and design,
community consultation and development, planning and
THIS OPINION IS NOT
A PRECEDENT OF THE
TTAB
Ser No. 78949705
2
design for the renovation and historic preservation of
buildings (Class 42).1

Applicant has disclaimed the term “Architecture.”
The examining attorney has refused to register
applicant’s mark on the ground that it is confusingly
similar under Section 2(d) of the Trademark Act (15 U.S.C.
§ 1052(d)) with the marks in the following registrations
(owned by the same entity) for the identified services:
I.

For: Architecture design (Class 42)
No. 2700197
Issued: March 25, 2003
II.

For: Architecture design (Class 42)
No. 2702476
Issued: April 1, 2003

1 Serial No. 78949705. The application includes dates of first
use anywhere and in commerce of July 1, 2002.
Ser No. 78949705
3
After the examining attorney made the refusal final, a
request for reconsideration and this appeal followed.
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). See also In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003) and Recot, Inc. v. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000).
We first look at whether the services of applicant and
registrant are related.
It is a well settled principle of trademark law that
it is not necessary that the goods [or services] of
the parties be similar or competitive, or even that
they move in the same channels of trade to support a
holding of likelihood of confusion. It is sufficient
for purposes herein that the respective goods [or
services] of the parties are related in some manner,
and/or that the conditions and activities surrounding
the marketing of the goods [or services] are such that
they would or could be encountered by the same persons
under circumstances that could because of the
similarity of the marks used therewith, give rise to
the mistaken belief that they originate from or are in
some way associated with the same producer.

In re International Telephone & Telegraph Corp., 197 USPQ
910, 911 (TTAB 1978).
Both cited registrations define their services as
including “architecture design.” Registrant’s services are
not limited so we must consider these services broadly
Ser No. 78949705
4
without reading any limitations into the services. Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority
is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the
identification of goods [or services] set forth in the
application regardless of what the record may reveal as to
the particular nature of an applicant’s goods [or
services], the particular channels of trade or the class of
purchasers to which the sales of goods [or services] are
directed”). See also Paula Payne Products v. Johnson
Publishing 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” or services).
Applicant identifies its services as:
Architectural planning and architectural design
services, namely, urban planning and design,
commercial and residential building planning and
design, master planning, sustainability planning,
transit and infrastructure planning and design,
community consultation and development, planning and
design for the renovation and historic preservation of
buildings.

Therefore, both applicant and registrant have
architecture design services. Specifically, applicant’s
architectural design and planning services include
Ser No. 78949705
5
commercial and residential building planning and design.
The term “architecture” is defined as “the profession of
designing buildings, open areas, communities, and other
artificial constructions and environments, usually with
some regard to aesthetic effect. Architecture often
includes design or selection of furnishings and
decorations, supervision of construction work, and the
examination, restoration, or remodeling of existing
buildings.” Office Action dated January 8, 2007,
attachment (Dictionary.com Unabridged based on the Random
House Unabridged Dictionary (2006)). Applicant’s
architectural planning and architectural design services
including commercial and residential building planning and
design would overlap with or be encompassed by registrant’s
architecture design services. Other services of applicant,
including the planning and design for the renovation and
historic preservation of buildings are either overlapping
or closely related to registrant’s architecture design
services.
We add that the examining attorney has also included
evidence in the form of third-party, use-based
registrations to suggest that architectural design and
architectural planning services are registered under a
common mark. See, e.g., Registration No. 2369073
Ser No. 78949705
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(“architectural design and architectural planning
services”); No. 3205995 (“architectural design…
architectural planning”); No. 3195751 (“architectural
design, interior design, design of new products for others,
design of furniture for others, and architectural
planning”); and No. 2661462 (“architectural design,
architectural planning”). See In re Mucky Duck Mustard
Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988) (Although third-
party registrations are “not evidence that the marks shown
therein are in use on a commercial scale or that the public
is familiar with them, [they] may nonetheless have some
probative value to the extent that they may serve to
suggest that such goods or services are of a type which may
emanate from a single source”). See also In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993).
Therefore, we conclude that applicant’s and registrant’s
services include overlapping and closely related services.
“When marks would appear on virtually identical goods or
services, the degree of similarity necessary to support a
conclusion of likely confusion declines.” Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1701 (Fed. Cir. 1992).
Furthermore, inasmuch as the services overlap, we must
assume that the purchasers and channels of trade for such
Ser No. 78949705
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services would also overlap. See Genesco Inc. v. Martz, 66
USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical
and in-part related nature of the parties’ goods, and the
lack of any restrictions in the identifications thereof as
to trade channels and purchasers, these clothing items
could be offered and sold to the same classes of purchasers
through the same channels of trade”); In re Smith and
Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the
goods are legally identical, they must be presumed to
travel in the same channels of trade, and be sold to the
same class of purchasers”). In this case, the identified
services would be encountered by the same consumers.
Applicant also argues that the “purchasers of both the
Applicant’s and Registrant’s services are sophisticated…
Purchasers would not purchase these services casually
because of the time, money, and commitment required.”
Brief at 7. While we agree that purchases of architectural
services are not casual purchases, we cannot agree that
these purchasers are necessarily sophisticated. While
applicant contends that purchasers of its services include
sophisticated government agency purchasers, its identified
services are not limited to those that are purchased by
sophisticated purchasers. Purchasers of architectural
design services would include homeowners and other property
Ser No. 78949705
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owners who would be ordinary purchasers. To the extent
that architectural design services may be recommended from
one homeowner to another by word-of-mouth, even careful
purchasers are likely to be confused by similar marks. We
add that even if “the relevant class of buyers may exercise
care [that] does not necessarily impose on that class the
responsibility of distinguishing between similar trademarks
for similar goods.” In re Research and Trading Corp., 793
F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986). Therefore,
the fact that the purchasers may exercise care before
purchasing these services does not mean there can be no
likelihood of confusion.
The next du Pont factor we consider “requires
examination of ‘the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression.’” Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting
du Pont, 177 USPQ at 567). Here, the marks are VIA
ARCHITECTURE and VIA CONCEPTS (stylized) and VIA VIA
CONCEPTS LLC and design. We will concentrate our
discussion on registrant’s VIA CONCEPTS mark because, if
there is no likelihood of confusion with this mark, there
would likewise be no confusion with the ‘476 registration
Ser No. 78949705
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(the design mark), which adds additional features that are
not found in applicant’s mark. Similarly, if there is a
likelihood of confusion with the ‘197 registration (the
stylized mark), there is no need to determine if there is
also confusion with the ‘476 registration.
Inasmuch as applicant’s mark is shown in standard
character form, it may be displayed in the same type style
as registrant’s mark. Squirtco v. Tomy Corp., 697 F.2d
1038, 216 USPQ 937, 939 (Fed. Cir. 1983) (“[T]he argument
concerning a difference in type style is not viable where
one party asserts rights in no particular display. By
presenting its mark merely in a typed drawing, a difference
cannot legally be asserted by that party. Tomy asserts
rights in SQUIRT SQUAD regardless of type styles,
proportions, or other possible variations. Thus, apart
from the background design, the displays must be considered
the same”). See also Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000)
(“Registrations with typed drawings are not limited to any
particular rendition of the mark and, in particular, are
not limited to the mark as it is used in commerce”).
Therefore, when we compare the marks, we must
determine if the marks displayed with the identical
stylization, such as “VIA Architecture” and “VIA Concepts,”
Ser No. 78949705
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are similar. These marks are identical inasmuch as they
both begin with the word VIA and they differ because the
second words in the marks (Architecture and Concepts) are
different. The examining attorney points out that
consumers “are generally more inclined to focus on the
first word, prefix or syllable in any trademark or service
mark.” Brief at unnumbered p. 4. See Palm Bay Imports, 73
USPQ2d at 1692 (“To be sure, CLICQUOT is an important term
in the mark, but VEUVE nevertheless remains a ‘prominent
feature’ as the first word in the mark and the first word
to appear on the label. Not only is VEUVE prominent in the
commercial impression created by VCP's marks, it also
constitutes ‘the dominant feature’ in the commercial
impression created by Palm Bay’s mark”).
Regarding the second terms in the marks, applicant has
disclaimed the term “Architecture,” which is a generic term
for architectural design and planning services. Disclaimed
matter is often “less significant in creating the mark’s
commercial impression.” In re Code Consultants, Inc., 60
USPQ2d 1699, 1702 (TTAB 2001). Particularly here, where
the term “Architecture” is a generic term for applicant’s
services and registrant is providing “architecture design”
services, prospective purchasers will place much less, if
any, significance on this term to distinguish the services
Ser No. 78949705
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of applicant and registrant. In re Chatam International
Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)
(“With respect to ALE, the Board noted that the term is
generic and that the registrant disclaimed it in its
registration. Because ALE has nominal commercial
significance, the Board properly accorded the term less
weight in assessing the similarity of the marks under
DuPont. As a generic term, ALE simply delineates a class
of goods”).
Registrant’s term “concept” is defined as a “general
idea derived or inferred from specific instances or
occurrences.” Response dated July 9, 2007, attachment
(Bartleby.com based on The American Heritage Dictionary of
the English Language (2000)). Inasmuch as architecture
design would begin with a general idea derived from
specific instances, the term has a suggestive significance.
Therefore, the term “VIA” is a more significant term that
consumers would rely on to identify these services.
Certainly, the way registrant displays the term emphasizes
the VIA part of the mark.
While applicant argues that the “differences between
the marks far outweigh any common visual elements” (Brief
at 4), we cannot agree. The only difference between
applicant’s mark and the ‘197 mark is the second word in
Ser No. 78949705
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each. Neither term significantly distinguishes the marks.
"Human memories even of discriminating purchasers … are not
infallible." Research and Trading Corp., 230 USPQ at 50,
quoting, Carlisle Chemical Works, Inc. v. Hardman & Holden
Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970). Many
customers are likely to believe that “VIA Architecture”
architectural design services are associated with “VIA
Concepts” architecture design services. As discussed
below, there is no evidence that others have used or
registered the term VIA in connection with architectural
design services. The additional words “Architecture” and
“Concepts” for architectural design services do not result
in marks that are significantly different in meaning or
commercial impression, and the identical first term results
in marks that have similarities in appearance and
pronunciation. Ultimately, we find that the marks in their
entireties are similar in sound, appearance, meaning, and
commercial impression.
Applicant argues that “Registrant’s Mark is weak
because it occupies a crowded field and because the word
‘via’ is in common use as a mark.” Reply Brief at 3. In
support of this argument, applicant submitted evidence that
“345 filings have been registered or published for marks
that contain the word ‘via…’ Additionally, many of the
Ser No. 78949705
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uses of the word ‘via’ in registered or published marks are
within the same or similar classification of goods and
services, showing that the class of goods and services does
not impact whether confusion is likely.” Brief at 3. The
examining attorney responded by pointing out that “[n]one
of the third-party registrations submitted by applicant are
for these or even related types of services, but simply are
a variety of marks where the word ‘via’ is used.” Brief at
7. In reply, applicant points to the general use of the
term VIA: “Applicant’s and Registrant’s Mark are weak
because the word ‘via’ in [them] is in common use as a
mark, making such mark a weak mark, which purchasers are
able to distinguish.” Reply Brief at 4.
We begin by agreeing with the examining attorney that
the du Pont factors speak of the “number and nature of
similar marks in use on similar goods.” 177 USPQ at 567
(emphasis added). Inasmuch as the registrations that
applicant has made of record are for unrelated goods and
services, they do not have much, if any, relevance for the
issue in this specific case. In re Melville Corp., 18
USPQ2d 1386, 1388-89 (TTAB 1991) (“Registrations for goods
unrelated to the clothing field are irrelevant to our
discussion”); SBS Products Inc. v. Sterling Plastic &
Rubber Products Inc., 8 USPQ2d 1147, 1149 n.6 (TTAB 1988)
Ser No. 78949705
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(“[E]ven if evidence of such third-party use were
submitted, it would be of no aid to respondent herein where
the third-party usage was for goods unrelated to either
petitioner's skin care products or respondent's stuffing
box sealant”); and Anderson, Clayton & Co. v. Christie Food
Products Inc., 4 USPQ2d 1555, 1557 n.7 (TTAB 1987) (“The
other third-party registrations relating to marks in
unrelated fields are of no probative value”). Accord Palm
Bay Imports, 73 USPQ2d at 1693 (“Evidence of third-party
use of similar marks on similar goods is relevant to show
that a mark is relatively weak and entitled to only a
narrow scope of protection”) (emphasis added).2
Further, third-party registrations3 are not evidence of
use of the marks in commerce. See AMF Inc. v. American
Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269
(CCPA 1973) ("The existence of [third party] registrations

2 We emphasize that there is no evidence of third-party use, only
third-party registrations, in this case.
3 We note that applicant has cited numerous third-party
applications that have been published for opposition. It has
long been held that “[w]hile applicant also submitted a copy of a
third-party application …, such has no probative value other than
as evidence that the application was filed.” In re Phillips-Van
Heusen Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002). See also
Glamorene Products Corp. v. Earl Grissmer Co., Inc., 203 USPQ
1090, 1092, n.5 (TTAB 1979) (“The filing of a notice of reliance
upon third-party applications is a futile act because copies of
those applications or the publication thereof in the Official
Gazette is evidence only of the filing of the applications and
nothing else”).
Ser No. 78949705
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is not evidence of what happens in the market place or that
customers are familiar with them").4
One obvious reason that third-party registrations can
have only nominal weight is the simple fact that if the
goods or services are unrelated, the registrant would have
little basis to oppose a mark before the board. Indeed, it
would be odd to limit the scope of protection for
registrant’s VIA CONCEPTS mark for architecture design
services because the Office has registered different VIA
mark such as VIAYOGA and design for yoga vacation services
(No. 2991782); VIA PENDIO for work bags sold empty for
personal items, handbags, purses and tote bags (No.
3352253); VIA NUEVA for Mexican spices and sauces (No.
302017); or VIA MC2 for bowling balls (No. 2854952). It is
not particularly relevant that the word “via” when combined
with other words for different and unrelated goods or
services has been registered.

4 “[T]hird-party registrations can be used in the manner of a
dictionary definition to illustrate how a term is perceived in
the trade or industry.” In re Box Solutions Corp., 79 USPQ2d
1953, 1955 (TTAB 2006). "Such third party registrations show the
sense in which the word is used in ordinary parlance and may show
that a particular term has descriptive significance as applied to
certain goods or services." Institut National Des Appellations
D'Origine v. Vintners International Co., 958 F.2d 1574, 22 USPQ2d
1190, 1196 (Fed. Cir. 1992). However, because the goods and
services in the registrations submitted by applicant are
different from applicant’s and the cited registrant’s services,
they do not show that the term “via” has any descriptive
significance for the services in this case.
Ser No. 78949705
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We must determine whether there is a likelihood of
confusion for the marks VIA ARCHITECTURE and VIA CONCEPTS
for overlapping services based on the record in this case.
The fact that, for other goods and services, different
marks containing the word “via” have been registered cannot
control the result here. “Each case must rest upon its own
distinctive fact situation.” Star Watch Case Company v.
Gebruder Junghans, A.G., 267 F.2d 950, 122 USPQ 370, 371
(CCPA 1959). See also In re Venturi, Inc., 197 USPQ 714,
717 (TTAB 1977) (“It is of course well settled that prior
decisions, while pertinent to the extent that they may set
standards to be applied generally in proceedings such as
this, are of little value in determining a specific issue
of descriptiveness, distinctiveness, likelihood of
confusion, etc. since each case must be decided on its own
facts”). Quite simply, even if the third-party
registrations did show that registrations for marks
containing the word VIA co-exist in other classes, it would
hardly establish there is no likelihood of confusion in
this case where there are no co-existing registrations for
architectural design services.
Finally, applicant argues that “despite almost six
years of concurrent use, no actual confusion has been
observed.” Brief at 8. However, we have few facts upon
Ser No. 78949705
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which to conclude that there has been a significant
opportunity for actual confusion to occur. Particularly in
ex parte cases where the registrant has not had an
opportunity to present any evidence of confusion, the fact
there is no evidence of actual confusion is not uncommon
and is entitled to little weight. See Majestic Distilling,
65 USPQ2d at 1205:
With regard to the seventh DuPont factor, we agree
with the Board that Majestic's uncorroborated
statements of no known instances of actual confusion
are of little evidentiary value. See In re Bissett-
Berman Corp., 476 F.2d 640, 642, 177 USPQ 528, 529
(CCPA 1973) (stating that self-serving testimony of
appellant’s corporate president's unawareness of
instances of actual confusion was not conclusive that
actual confusion did not exist or that there was no
likelihood of confusion). A showing of actual
confusion would of course be highly probative, if not
conclusive, of a high likelihood of confusion. The
opposite is not true, however. The lack of evidence
of actual confusion carries little weight, J.C. Hall
Co. v. Hallmark Cards, Inc., 52 C.C.P.A. 981, 340 F.2d
960, 964, 144 USPQ 435, 438 (CCPA 1965), especially in
an ex parte context.

When we consider, inter alia, that the services in
this case overlap and that the marks, VIA ARCHITECTURE and
VIA CONCEPTS, are similar, we conclude that there is a
likelihood of confusion.
Decision: The refusal to register is affirmed.