VIAAS, Inc.

Trademark Trial and Appeal Board

Jul 12, 2021

87632430 (T.T.A.B. Jul. 12, 2021)

Mailed: July 12, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re VIAAS, Inc.
_____

Serial No. 87632430
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Letao Qin of Rimon PC,
for VIAAS, Inc.
Rachel E. Desjardins,1 Trademark Examining Attorney, Law Office 123,
Susan Hayash, Managing Attorney.
_____

Before Zervas, Cataldo and Lykos,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
Applicant, VIAAS, Inc., seeks registration on the Principal Register of the mark
PREPARE. PROTECT. PREVENT. (in standard characters), identifying the
following services, as amended,
Providing temporary use of non-downloadable cloud-based software for
storing, organizing, sorting, and managing surveillance videos,
monitoring audio and video data, and other security related data;
Providing a web site featuring temporary use of non-downloadable
software for monitoring and surveillance of homes, offices, buildings and
other structures; Providing a secure, web-based service featuring

1 The above application was reassigned to Ms. Desjardins for to prepare the appeal brief.
This Opinion is not a
Precedent of the TTAB
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technology that enables individuals to remotely create and manage their
own accounts so that whatever private content they upload now can be
encrypted, then delivered to their intended recipients, at the time and
in the manner requested

in International Class 42.2
The Trademark Examining Attorney has issued a final refusal of registration
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark, as used in connection with the identified services, so resembles the
following three marks, previously registered on the Principal Register, as to be likely
to cause confusion, to cause mistake, or to deceive.
Reg. No. 5757872 for the mark PREPARE. PREDICT. PREVENT. (in standard
characters) identifying the following services:
Security services, namely, security guard services and security patrol
services; emergency response alarm monitoring services, namely,
monitoring of alert devices by a remote monitoring center for the
dispatch of security personnel and notification to third parties;
electronic monitoring services for security purposes in the field of
government facilities; Consulting in the field of security and monitoring
of security systems; detective investigations; concierge services, namely,
making requested customer arrangements and providing customer-
specific information and services to meet each customer’s needs
rendered together in connection with security services in gated
communities, commercial buildings and properties, namely, apartment
complexes, office buildings, retail centers, government properties and
manufacturing and distribution centers; warehouse security services

in International Class 45;3

2 Application Serial No. 87632430 was filed on October 3, 2017 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), asserting July 1, 2017 as a date of first use of the mark
anywhere and in commerce.
3 Issued May 21, 2019. The registration also recites services in Class 41.
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Reg. No. 5087927 for the composite mark
, identifying the following services:
Security services, namely, security guard services and security patrol
services; emergency response alarm monitoring services, namely,
monitoring of alert devices by a remote monitoring center for the
dispatch of security personnel and notification to third parties;
electronic monitoring services for security purposes in the field of
government facilities; Consulting in the field of security and monitoring
of security systems; detective investigations; concierge services, namely,
making requested customer arrangements and providing customer-
specific information and services to meet each customer’s needs
rendered together in connection with security services in gated
communities, commercial buildings and properties, namely, apartment
complexes, office buildings, retail centers, government properties and
manufacturing and distribution centers; warehouse security services;
truck and trailer tracking for security purposes in the transportation
industry

in International Class 45;4 and
Reg. No. 2524563, owned by a different entity, for the mark PREPARE AND
PROTECT (in typed or standard characters),5 identifying
Installation and maintenance of burglar alarms, fire alarms, home and
commercial security systems, voice intercom systems and closed circuit
television and card access systems

4 Issued November 22, 2016 with the following description of the mark: “The mark consists
of a vertical line placed in between the letter ‘P’ with the numeral ‘3’ over the top and the
words ‘PREPARE PREDICT PREVENT’ aligned vertically.” The registration also recites
services in Class 35.
Reg. Nos. 5757872 and 5087927 are owned by the same entity.
5 Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R. §2.52, was amended to replace
the term “typed” drawing with “standard character” drawing. A mark depicted as a typed
drawing is the legal equivalent of a standard character mark. See In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012) (“until 2003, ‘standard character’ marks
formerly were known as ‘typed’ marks.”).
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in International Class 37.6
After the Examining Attorney made the refusal final, Applicant appealed to this
Board. The appeal is fully briefed.7 We affirm the refusal to register.
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003).
We have considered each DuPont factor that is relevant. See 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

6 Issued January 1, 2002. First Renewal.
7 Applicant appended a corrected appeal brief (9 TTABVUE 11-31) to its reply brief (9
TTABVUE 1-10) in order to correct typographical errors in its original brief (4 TTABVUE).
Applicant’s corrected appeal brief is accepted as its operative brief in this appeal.
In its reply brief, Applicant submitted a screenshot from a search of Microsoft Bing. (9
TTABVUE 5.) However, Applicant did not introduce this screenshot or other evidence of the
results of the search into the record during prosecution of its application. The proper
procedure for an applicant or examining attorney to introduce evidence after an appeal has
been filed is to submit a written request with the Board to suspend the appeal and remand
the application for further examination. See Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d).
See also TBMP § 1207.02 and authorities cited therein. Accordingly, the screenshot
submitted with Applicant’s reply brief will be given no further consideration.
All citations to documents contained in the Trademark Status & Document Retrieval
(TSDR) database are to the downloadable .pdf versions of the documents in the USPTO TSDR
Case Viewer. See, e.g., In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1402 n.4 (TTAB
2018). References to the briefs on appeal refer to the Board’s TTABVUE docket system.
Before the TTABVUE designation is the docket entry number; and after this designation are
the page references, where applicable.
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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. 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”). Two key considerations
are the similarities between the marks and the relatedness of the goods or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (the “fundamental inquiry mandated by § 2(d) goes to the cumulative
effect of differences in the essential characteristics of the goods and differences in the
marks”); In re FabFitFun, Inc., 127 USPQ2d 1670, 1672 (TTAB 2018).
1. Focus on Cited Registration No. 5757872
For purposes of the DuPont factors that are relevant to this appeal we will
consider Applicant’s involved mark and the mark that is the subject of cited Reg. Nos.
5757872 (hereinafter, “cited registration”) for the standard character mark
PREPARE. PREDICT. PREVENT. identifying the following services:
Security services, namely, security guard services and security patrol
services; emergency response alarm monitoring services, namely,
monitoring of alert devices by a remote monitoring center for the
dispatch of security personnel and notification to third parties;
electronic monitoring services for security purposes in the field of
government facilities; Consulting in the field of security and monitoring
of security systems; detective investigations; concierge services, namely,
making requested customer arrangements and providing customer-
specific information and services to meet each customer’s needs
rendered together in connection with security services in gated
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communities, commercial buildings and properties, namely, apartment
complexes, office buildings, retail centers, government properties and
manufacturing and distribution centers; warehouse security services.

If likelihood of confusion is found as to the mark and services in this registration, it
is unnecessary to consider the other cited registrations because they too identify
related services. Conversely, if likelihood of confusion is not found as to the mark and
services in this registration, we would not find likelihood of confusion as to the mark
and services in the other cited registrations. In re Max Capital Grp. Ltd., 93 USPQ2d
1243, 1245 (TTAB 2010).
2. Relatedness of 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,” Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1159
(Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
A proper comparison of the services considers whether “the consuming public may
perceive [the respective services of the parties] as related enough to cause confusion
about the source or origin of the … services.” Hewlett Packard, 62 USPQ2d at 1004.
Therefore, to support a finding of likelihood of confusion, it is not necessary that the
services be identical or even competitive. It is sufficient that the services are related
in some manner, or that the circumstances surrounding their marketing are such
that they would be encountered by the same persons in situations that would give
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rise, because of the marks, to a mistaken belief that they originate from the same
source or that there is an association or connection between the sources of the
services. In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009).
Applicant’s services include providing temporary use of software for “storing,
organizing, sorting, and managing surveillance videos, monitoring audio and video
data, and other security related data” and providing a website featuring such
software for “monitoring and surveillance of homes, offices, buildings and other
structures.” The cited registration recites services including “emergency response
alarm monitoring services, namely, monitoring of alert devices by a remote
monitoring center for the dispatch of security personnel and notification to third
parties; electronic monitoring services for security purposes in the field of government
facilities.” As identified, the services are related inasmuch as both provide, inter alia,
remote monitoring of security data.
In support of the refusal of registration, the Examining Attorney introduced with
her January 18, 2018 first Office Action,8 November 13, 2019 non-final Office Action,9
and June 9, 2020 final Office Action10 printouts from sixteen third-party Internet
websites advertising under the same mark services of the type identified in the
subject application and cited registration. The following examples are illustrative:

8 At 20-59.
9 At 22-29.
10 At 17-106.
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ADT offers live, streaming and prerecorded security camera video
monitoring, live and stored video, remote web management and viewing
through, inter alia, a phone app;11

AT&T Digital Live offers professional monitoring of home security
systems, video monitoring of security systems and providing remote
access to monitoring of secured premises;12 and

Brinks Home Security offers remote security system monitoring, live
video streaming, cloud video storage and providing remote access to
security alarms and systems via smartphones or tablets.13

This evidence demonstrates that at least sixteen third parties offer both Applicant’s
services and certain of the services identified in the cited registration under the same
mark and that consumers would readily expect that these services could emanate
from the same sources. Internet material is competent evidence of trademark
registrability in ex parte appeals. See In re Bayer Aktiengesellschaft, 488 F.3d 960,
966, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007); In re Reed Elsevier Props., Inc., 482 F.3d
1376, 1380, 82 USPQ2d 1378, 1381 (Fed. Cir. 2007).
Applicant argues that “None of the above-mentioned companies provides cloud-
based software services.”14 However, it is not necessary for third-parties to offer
remote security monitoring by means of cloud based software in order to find that the
services are related. The question is whether the services are sufficiently related such
that, if similar marks are used thereon, consumers are likely to believe that the

11 November 13, 2019 non-final Office action at 26-29; June 9, 2020 final Office Action at 77-
79.
12 January 18, 2020 first Office Action at 28-32.
13 June 9, 2020 final Office Action at 58-65, 81.
14 Applicant’s reply brief; 9 TTABVUE 7-8.
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services emanate from the same source. Thor Tech Inc., 90 USPQ2d at 1635. In this
case, Applicant and the owner of the cited registration both provide, inter alia, remote
security system monitoring, storage and access. Applicant’s arguments are directed
more toward the manner in which it provides its services, i.e., by means of cloud-
based software, rather than the security monitoring services themselves. Further,
the Examining Attorney’s evidence, excerpted above, indicates that certain third
parties provide cloud-based security monitoring and storage in addition to the
services in the cited registration.
Applicant also argues that “evidence submitted by the Examining Attorney does
not prove that a typical security service company, similar in size and reputation to
Registrant’s, would engage in both sending crews to customer cite [sic] (as security
guard or installation technician) and providing cloud-based software for data
management.”15 Applicant seeks to limit the scope of the services in the cited
registration based upon limitations that are not present in the services as identified.
However, in determining the issue of likelihood of confusion, the Board must compare
Applicant’s services as set forth in its application with the services as set forth in the
cited registration. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). For purposes of
our determination, it is the identifications of services that controls, not what
unsupported argument or even, if it was present, extrinsic evidence may show about
the specific nature of the goods as provided in the marketplace. Stone Lion Capital v.
Lion Capital, 110 USPQ2d at 1162; In re Midwest Gaming & Entm’t LLC, 106

15 9 TTABVUE 8.
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USPQ2d 1163, 1165 (TTAB 2013); In re Bercut-Vandervoort & Co., 229 USPQ 763,
764-65 (TTAB 1986).
Further, it is not necessary for the Examining Attorney to prove likelihood of
confusion with respect to each of the services identified in Applicant’s single-class
application; if there is likelihood of confusion with respect to any of Applicant’s
identified services, the refusal of registration must be affirmed. “Likelihood of
confusion must be found as to the entire class [of services identified] … if there is
likely to be confusion with respect to any service that comes within the recitation of
services in that class.” Primrose Retirement Cmtys., LLC v. Edward Rose Senior
Living, LLC, 122 USPQ2d 1030, 1033 (TTAB 2016) (citing Tuxedo Monopoly, Inc. v.
Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)).
We recognize that consumers may be able to distinguish Applicant’s services from
the services in the cited registration; however, that is not the standard. See, e.g.,
Hydra Mac, Inc. v. Mack Trucks, Inc., 507 F.2d 1399, 184 USPQ 351 (CCPA 1975)
(“the confusion found to be likely is not as to the products but as to their source”)
(citation omitted); In re Anderson, 101 USPQ2d at 1919. The respective services need
only be “related in some manner and/or if the circumstances surrounding their
marketing [be] such that they could give rise to the mistaken belief that [the goods
and/or 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)). See also On-line
Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In
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re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984).
The third DuPont factor concerns “[t]he similarity or dissimilarity of established,
likely-to-continue trade channels.” Stone Lion Capital v. Lion Capital, 110 USPQ2d
at 1161 (quoting DuPont, 177 USPQ at 567).
Applicant argues that
Applicant’s services and Registrants’ services are marketed in different
trade channels and to different customers. Applicant’s cloud-based
software and the storage capacity that comes with the software purchase
are designed for security service companies like Registrants (and others
such as the security service department of large companies). As argued
in Applicant’s Appeal Brief, security service companies like Registrants
may purchase Applicant’s services (or the entire brand in some cases).
They either use or integrate services such as Applicant’s in their security
monitoring and surveillance services.16

Applicant’s argument, unsupported by evidence, misapprehends the third DuPont
factor. Because there are no limitations as to channels of trade or classes of
purchasers in the recitation of services in the cited registration, we must presume
that both Applicant’s services and Registrant’s services move in all channels of trade
normal for such services and are available to all potential classes of ordinary
consumers thereof. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344,
98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs LLC, 80 USPQ2d 1370,
1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
As noted above, the Examining Attorney has introduced evidence that both
Applicant’s services and Registrant’s services are offered for sale on the same

16 9 TTABVUE 6.
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websites. This evidence supports a finding that these services are offered in at least
one common channel of trade, i.e., third-party websites, to the same purchasers.
We find that the DuPont factors of the relatedness of the services, channels of
trade and consumers weigh in favor of likelihood of confusion.
3. Strength of the Cited Mark / Number and Nature of Similar Marks
Next, we evaluate the strength of the registered mark and the scope of protection
to which it is entitled. The fifth DuPont factor is the strength of the prior mark, and
the sixth factor is the number and nature of similar marks in use for similar goods or
services. DuPont, 177 USPQ at 567. In determining 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).”).
Turning first to inherent strength, the term PREPARE. PREDICT. PREVENT.
suggests services that are intended to prepare for, predict and prevent security-
related issues. Cited Reg. No. 5757872 issued on the Principal Register without a
claim of acquired distinctiveness under Trademark Act Section 2(f), 15 U.S.C.
§1052(f), and we must accord the cited registration the presumption of validity
provided for under Section 7(b) of the Trademark Act, 15 U.S.C. §1057(b). We thus
presume that the PREPARE. PREDICT. PREVENT. mark is inherently distinctive
with no need to acquire secondary meaning.
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There is no evidence regarding the mark’s commercial or marketplace strength.
Further, 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). For that reason, “in an ex parte analysis of the du
Pont factors for determining likelihood of confusion …, the ‘[commercial strength] of
the mark’ … is normally treated as neutral when no evidence as to [marketplace
recognition] … has been provided.” TRADEMARK MANUAL OF EXAMINING PROCEDURE
(“TMEP”) § 1207.01(d)(ix) (Oct. 2018). Because there is no evidence of record
regarding the commercial strength of the cited mark, this consideration is neutral.
Applicant relies upon the following two third-party registrations issued to
different entities on the Principal Register:17
Reg. No. 3438355 for the mark PREDICT. PREVENT. PROTECT. identifying
credit card monitoring, consumer alert and identity theft protection, identity
fraud protection and related support services; and

17 Applicant did not introduce these registrations into the record. However, the Examining
Attorney introduced them with her June 9, 2020 final Office Action at 11-16.
Applicant further asserts the existence of a number of applications for marks including the
terms “prevent,” “protect,” or “predict.” 9 TTABVUE 5-6, 30. Even if these applications were
of record, and they are not, third party applications possess little, if any, probative value. See,
e.g., In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016) (third-party application is
“evidence only that the application was filed on a certain date”); Interpayment Services Ltd.
v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003).
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Reg. No. 5997360 for the mark PREDICT. PREVENT. PROTECT. identifying
various electronic devices related to HVAC performance and regulation, and
remote monitoring of HVAC equipment.
Neither of the marks in these third-party registrations recite goods or services
that are related to the services at issue herein. Evidence of the Trademark Office’s
registration of marks for services unrelated to the services at issue “has no bearing
on the strength of the term in the context relevant to this case.” See Tao Licensing,
LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1058 (TTAB 2017); In re
i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) (third-
party registrations for identical marks reciting unrelated goods not probative of
weakness of mark). It further is established that the Board is not bound by the prior
decisions of examining attorneys, and each case must be decided on its own merits.
In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001).
There is no evidence of third-party use; and there is no evidence of third-party
registrations of similar marks for related products or services. Cf. Juice Generation,
Inc. v. GS Enters LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-75 (Fed. Cir. 2015);
Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium
Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1135-36 (Fed. Cir. 2015). We
therefore find that the registered mark is entitled to the normal scope of protection
to which inherently distinctive marks are entitled. See Joseph Phelps Vineyards, LLC
v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017)
(stating that likelihood of confusion fame varies along a spectrum from very strong to
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very weak). Based upon the totality of the record evidence, we find that the registered
mark is suggestive of a function or feature of the services, but nonetheless distinctive
as applied to the identified services.
4. Similarity or Dissimilarity of the Marks
Under the first DuPont factor, we determine the similarity or dissimilarity of
Applicant’s PREPARE. PROTECT. PREVENT. mark and the registered PREPARE.
PREDICT. PREVENT. mark in their entireties, taking into account their appearance,
sound, connotation and commercial impression. DuPont, 177 USPQ at 567; Stone
Lion Capital v. Lion Capital, 110 USPQ2d at 1160; Palm Bay Imps., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). “Similarity in any one of these elements may be sufficient to find the
marks confusingly similar.” In re Davia, 110 USPQ2d at 1812; accord Krim-Ko Corp.
v. Coca-Cola Bottling Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is
sufficient if the similarity in either form, spelling or sound alone is likely to cause
confusion.”) (citation omitted). In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746
(TTAB 2018).
“The proper test 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 to assume a connection
between the parties.” Coach Servs., 101 USPQ2d at 1721 (internal quotation marks
omitted). See also Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470
(TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016).
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Consumers may not necessarily encounter the marks in close proximity and must
rely upon their recollections thereof over time. In re Mucky Duck Mustard, 6 USPQ2d
1467, 1468 (TTAB 1988).
In comparing Applicant’s PREPARE. PROTECT. PREVENT. mark and the
registered PREPARE. PREDICT. PREVENT. mark, the obvious points of similarity
are that they consist of three terms separated by a period, and both contain the terms
PREPARE. and PREVENT. in the same sequence. The respective middle terms in
the marks, PROTECT. and PREDICT., are similar in appearance and spelling. Thus,
the marks are visually quite similar. Both marks appear in standard characters and
thus may be presented in the same or highly similar styles or fonts inasmuch as
marks presented in standard characters are not limited to any particular depiction.
The rights associated with a mark in standard characters reside in the wording and
not in any particular display. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1909-11 (Fed. Cir. 2012).
With regard to sound, both marks consist of three commonly recognized terms,
with identical first and last words and different middle words that nonetheless
possess four identical letters and highly similar cadence and pronunciation. We see
no reason why these marks would not be pronounced by consumers in a highly similar
manner.
With regard to meaning, as noted above both marks consist of three commonly
understood terms. Applicant’s mark connotes security monitoring services that allow
the consumer to prepare for, protect against and prevent security issues. The
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registered mark connotes security monitoring services that allow a consumer to
prepare for, predict and prevent security issues. These connotations, apparent from
the plain meaning of the marks, are highly similar.
Applicant argues:
While the applied-for mark and the cited marks do share two common
words, such similarity would not lead a consumer to conclude those two
marks emanate from the same source. The differences between the
applied-for mark and the cited marks are very much discernable. The
general impression of the consuming public would be that these are
different marks. The applied-for mark and the cited marks all involve a
tagline or marketing slogan. When a mark is used as marketing slogan,
common sense says that a same company generally do not adopt two
slightly different slogans.18

Applicant’s somewhat speculative “common sense” arguments “are unsupported by
sworn statements or other evidence, and ‘attorney argument is no substitute for
evidence.’” In re OEP Enters., Inc., 2019 USPQ2d 309323 , *14 (TTAB 2019) (quoting
Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018)
(internal quotation omitted)). Applicant’s arguments further miss the point. Our
likelihood of confusion analysis is not based upon the putative marketing strategies
of trademark holders, but upon the perception of consumers who will encounter the
marks in the marketplace.
We find that the comparatively minor differences between the marks are
outweighed by their similarity in appearance, meaning and sound. Considered in
their entireties, we find that the marks convey overall commercial impressions that

18 9 TTABVUE 25.
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are far more similar than dissimilar. This DuPont factor supports a finding that
confusion is likely.
5. Summary
Considering all the evidence of record, we find that the marks in their entireties
are more similar than dissimilar and that the identified services are related and will
be encountered by the same consumers in a common channel of trade. Applicant’s
evidence of third-party registration of marks identifying unrelated goods and services
is insufficient to weigh in favor of a finding of no likelihood of confusion. We find
therefore that Applicant’s mark is likely to cause confusion with the mark in the cited
Reg. No. 5757872 when used in association with the identified services.
Decision: The refusal to register Applicant’s mark on the ground of likelihood of
confusion is affirmed.