Night Owl Concrete, LLC

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Mailed: December 4, 2025
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Night Owl Concrete, LLC
_____
Serial No. 98341508
_____
Susan S. Jackson of Nelson Mullins Riley & Scarborough LLP,
for Night Owl Concrete, LLC.
Lucy Browne, Trademark Examining Attorney, Law Office 125,
Robin Mittler, Managing Attorney.
_____
Before Goodman, Allard, and Casagrande,
Administrative Trademark Judges.
Opinion by Allard, Administrative Trademark Judge:
Night Owl Concrete, LLC (“Applicant”) seeks registration on the Principal
Register of the mark (“CONCRETE” disclaimed) for the following
goods and services:
• “Downloadable computer application software for mobile devices, namely,
software for use in ordering and scheduling of on-site manufacturing, supply
and delivery of concrete by mixer truck,” in International Class 9;

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• “Material supplier services, namely, online ordering services in the field of
concrete and appointment scheduling services in the nature of scheduling
appointments for on-site manufacturing and delivery of concrete by mixer
truck,” in International Class 35; and
• “Material supplier services, namely, transportation and delivery of concrete for
others by mixer trucks to construction sites,” in International Class 39.1
Registration is refused under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground that Applicant’s mark, when used in connection with the
goods and services identified above, so resembles the composite word and design
mark (“CONSTRUCTION SUPPLY, INC.” and “FREE NIGHT
DELIVERIES” disclaimed) registered on the Principal Register for “Delivery services
for construction tools and construction supplies,” in International Class 39,2 that it is
likely to cause confusion, to cause mistake, or to deceive.
After the refusal was made final, Applicant appealed and requested
reconsideration. After the request was denied, the appeal resumed. Applicant and the
Examining Attorney filed briefs.3 We affirm the refusal.
1 Application Serial No. 98341508 was filed on January 4, 2024, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention
to use the mark in commerce. The mark is described as “consist[ing] of a design of an owl
adjacent to a partial bridge over the words NIGHT OWL and the word CONCRETE under
the words NIGHT OWL.” Color is not claimed as a feature of the mark.
2 Registration No. 2346893 was issued on May 2, 2000; renewed. The registration does not
contain a description of the mark.
3 Applicant’s brief appears at 6 TTABVUE and the Examining Attorney’s brief appears at 8
TTABVUE.

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I. Likelihood of Confusion
Section 2(d) of the Trademark Act prohibits the registration of a mark that
“[c]onsists of or comprises a mark which so resembles a mark registered in the Patent
and Trademark Office … as to be likely, when used on or in connection with the goods
[or services] of the applicant, to cause confusion, or to cause mistake, or to
deceive ….”15 U.S.C. § 1052(d). Our determination under Section 2(d) is based on an
analysis of all of the probative evidence of record bearing on a likelihood of confusion.
In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (“DuPont”);
see also In re Majestic Distilling Co., 315 F.3d 1311, 1314 (Fed. Cir. 2003). We consider
each DuPont factor for which there is evidence and argument. See, e.g., In re Guild
Mortg. Co., 912 F.3d 1376, 1379 (Fed. Cir. 2019). Varying weights may be assigned to
each DuPont factor depending on the evidence presented. See Citigroup Inc. v. Cap.
City Bank Grp., Inc., 637 F.3d 1344, 1356 (Fed. Cir. 2011); In re Shell Oil Co., 992
F.2d 1204, 1206 (Fed. Cir. 1993) (“[T]he various evidentiary factors may play more or
less weighty roles in any particular determination.”).
In every Section 2(d) case, two key factors are the similarity or dissimilarity of the
marks and the goods or services. See In re i.am.symbolic, llc, 866 F.3d 1315, 1322
(Fed. Cir. 2017); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103
(CCPA 1976).
References to the briefs on appeal refer to TTABVUE, the Board’s online docketing system.
The number preceding TTABVUE corresponds to the docket entry number; the number(s)
following TTABVUE refer to the page number(s) of that particular docket entry.

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A. Similarity or Dissimilarity and Nature of the Goods and Services,
and the Similarity or Dissimilarity of Established and Likely-to-
Continue Channels of Trade and Classes of Purchasers
The second DuPont factor “considers ‘[t]he similarity or dissimilarity and nature
of the goods or services as described in an application or registration,’” while the third
DuPont factor “considers ‘[t]he similarity or dissimilarity of established, likely-to-
continue trade channels.’” In re Detroit Athletic Co., 903 F.3d 1297, 1306-08 (Fed. Cir.
2018) (quoting DuPont, 476 F.2d at 1361). Our analysis under these factors is based
on the identifications of goods and services in the involved application and the cited
registration. Id. at 1306-08; Stone Lion Cap. Partners, LP v. Lion Cap. LLP, 746 F.3d
1317, 1323 (Fed. Cir. 2014).
1. Applicant’s Class 39 Services
Applicant’s Class 39 services are identified as “Material supplier services, namely,
transportation and delivery of concrete for others by mixer trucks to construction
sites.” Registrant, for its part, identifies “Delivery services for construction tools and
construction supplies.” Here, the cited registration uses broad wording, i.e., “delivery
services for ... construction supplies,” which presumably encompasses all services of
the type described and all types of construction supplies, including Applicant’s more
narrowly identified “material supplier services, namely, transportation and delivery
of concrete for others by mixer trucks to construction sites,” as concrete constitutes
“construction supplies.” See Int’l Paper Co. v. Valley Paper Co., 468 F.2d 937, 938
(CCPA 1972) (where “registration description is broad enough to cover the goods [of
the applicant], … the legal effect of this fact is that the goods and channels of trade
are to be considered the same for the purposes of this opposition”); see also In re Solid

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State Design Inc., No. 87269041, 2018 TTAB LEXIS 1, at *13-16 (cited registration’s
relatively broader “[d]ownloadable mobile applications for mobile phones and mobile
electronic devices, primarily software for travel and destination marketing
organizations and travel marketing professionals” encompassed application’s more
specific “[c]omputer application software for mobile phones and desktop computers,
namely, software for visualizing the popularity of places in real time”). Accordingly,
we find that Applicant’s identified services are encompassed by Registrant’s
identified services and are, as a result, legally identical to them.
Next we consider established, likely-to-continue channels of trade, the third
DuPont factor. Registrant’s identified services are not restricted to any channel of
trade or class of consumer. Admittedly, Applicant’s identified services are restricted
to “transportation and delivery of concrete for others by mixer trucks to construction
sites,” but this constitutes a delivery limitation rather than a limitation as to the
channels of trade through which the services are sold. Because the services are legally
identical, and because the involved application and the cited registration have no
restrictions as to channels of trade or classes of consumers, Applicant’s and
Registrant’s services are presumed to travel in the same channels of trade to the same
class of purchasers. See In re Viterra Inc., 671 F.3d 1358, 1362 (Fed. Cir. 2012)
(finding Board entitled to rely on legal presumption of channels of trade and classes
of consumers in determining likelihood of confusion); Stone Lion, 746 F.3d at 1323
(where “[t]he parties’ recited services were in part legally identical,” the Board

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“properly found Stone Lion’s application and Lion’s registrations covered the same
potential purchasers and channels of trade”).
2. Applicant’s Class 9 and 35 Goods and Services
We find that the face of the identifications themselves supports a finding that
Applicant’s goods and services in Classes 9 and 35 and Registrant’s identified services
are related. Recall that Applicant identifies (1) a mobile app for ordering and
scheduling the on-site manufacturing, supply and delivery of concrete by mixer truck
in Class 9, and (2) online ordering services for scheduling appointments for on-site
manufacturing and delivery of concrete by mixer truck in Class 35. It is clear from
the face of the identifications themselves that Applicant’s goods and services are
closely related to Registrant’s “delivery services for construction tools and
construction supplies,” inasmuch as both Applicant and Registrant identify goods and
services that serve the same purpose: both provide the consumer with means for
obtaining concrete by mixer truck. See, e.g., In re Power Distrib., Inc., No. 77825939,
2012 TTAB LEXIS 402, at *9 (“By their intrinsic nature, the goods are related
because they both consist of electrical power distribution products used for similar
purposes, namely, for the distribution of electrical power.”); In re Toshiba Med. Sys.
Corp., No. 79046106, 2009 TTAB LEXIS 447, at *17 (medical MRI diagnostic
apparatus and medical ultrasound devices are related in part because they have
complementary purposes and may be used by the same medical personnel on the
same patient to address the same medical issue).
Additionally, the Examining Attorney points out that third-party website
evidence of record establishes that “registrant’s construction supply delivery services

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are frequently provided under the same mark as applicant’s Class 035 online ordering
and scheduling services and Class 009 downloadable mobile application software, all
of which pertain to the ordering and delivery of concrete.”4 As a result, the Examining
Attorney continues, “applicant’s Class 009 goods and Class 035 services and
registrant’s Class 039 services are considered related for likelihood of confusion
purposes.”5
When considering the relatedness of the services, it is not necessary that the goods
and services of Applicant and Registrant be similar or even competitive to support a
finding of likelihood of confusion. Coach Servs., Inc. v. Triumph Learning LLC, 668
F.3d 1356, 1369 (Fed. Cir. 2012). Rather, likelihood of confusion may be found if the
respective goods and services are related in some manner or if the circumstances
surrounding their marketing are such that they could give rise to the mistaken belief
that they emanate from the same source. Id.
“Evidence of relatedness may include news articles or evidence from computer
databases showing that the relevant goods [or services] are used together or used by
the same purchasers; advertisements showing that the relevant goods [or services]
are advertised together or sold by the same manufacturer or dealer; or copies of prior
use-based registrations of the same mark for both applicant’s goods [or services] and
the goods [or services] listed in the cited registration.” In re Embiid, No. 88202890,
2021 TTAB LEXIS 168, at *30.
4 8 TTABVUE 11.
5 8 TTABVUE 11.

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The record shows that the following third-parties offer both online ordering and
scheduling services and a mobile app for ordering and scheduling the delivery of
concrete by mixer truck:
• Made Easy Concrete offers mixers that measure, mix and dispense concrete all
from one truck on-site; it offers “fresh-mix on-site (as opposed to pre-mix….),”
“concrete on demand” and “on-demand dispatching when you need it.”6
Deliveries can be ordered and scheduled around the clock online via the
“schedule your concrete” link and via the mobile app.7
• Concrete Direct offers concrete delivery online and via its mobile app.8 “You
place an order of the concrete grade you want and the materials all poured
inside the mixer tank and water is added. Mixing happens on the way to the
job site.”9
• Thomas Concrete offers consumers the option to order concrete online and via
a mobile application.10 “[We] ensure[ ] that you receive high-quality ready-
mixed concrete precisely when and where you need it.”11
• Ozinga, a ready mix concrete supplier and mixer, offers delivery services that
can be scheduled via both (1) a mobile app, and (2) a desktop app, which is a
“web-based desktop app [that] features all the real-time aspects of the [mobile
app], plus access to historical and financial data. No download required.”12
Both platforms allow “users to order, chat and track their orders anytime,
anywhere.”13
6 December 10, 2024 Final Action at TSDR 6-8.
Page references herein to the application record refer to the online database of the USPTO’s
Trademark Status & Document Retrieval (“TSDR”) system.
7 December 10, 2024 Final Action at TSDR 9-10.
8 April 8, 2025 Denial of Request for Reconsideration at TSDR 2-5.
9 April 8, 2025 Denial of Request for Reconsideration at TSDR 2.
10 April 8, 2025 Denial of Request for Reconsideration at TSDR 11-16.
11 April 8, 2025 Denial of Request for Reconsideration at TSDR at 14.
12 April 8, 2025 Denial of Request for Reconsideration at TSDR 6-10.
13 April 8, 2025 Denial of Request for Reconsideration at TSDR 9.

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Two other companies (J3 Concrete Pumping and QE Quality Enterprises) further
evidence the relatedness of Applicant’s Class 9 goods to the services in the cited
registration. J3 Concrete Pumping offers ordering and scheduling of concrete delivery
via a mobile app (Applicant’s Class 9 goods), and that shows that these Class 9 goods
are related to Registrant’s identified services.14 And QE Quality Enterprises similarly
offer consumers the ability to order, track and manage concrete deliveries via a
mobile app (Applicant’s Class 9 goods), further lending further support to a finding
that these goods are related to the identified services of the cited registration.15
With the above discussion in mind, our determination that Applicant’s identified
Class 9 goods and Registrant’s identified services are inherently closely related is
bolstered by the fact that we find that the website evidence from Made Easy Concrete,
Concrete Direct, Thomas Concrete, Ozinga, J3 Concrete Pumping, and QE Quality
Enterprises demonstrates that Applicant’s Class 9 goods are marketed under the
same mark as Registrant’s identified construction supply delivery services. This
third-party website evidence showing both Applicant’s Class 9 goods and Registrant’s
identified services offered by the same company under the same mark, particularly
when combined with the finding that the goods and services are closely related, is
14 December 10, 2024 Office Action at TSDR 5. We disagree with the Examining Attorney
that this evidence shows that J3 Concrete Pumping offers consumers the ability to order and
schedule the on-site delivery of concrete online (Applicant’s Class 35 services), as it merely
shows that the site allows one to contact the company for a “free quote.”
15 December 10, 2024 Final Action at TSDR 13. We disagree with the Examining Attorney,
however, that QE Quality Enterprises offers consumers online ordering and scheduling
services (Applicant’s Class 35 services), as the record only shows that consumers can message
the company.

Serial No. 98341508
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sufficient to establish their relatedness under the second DuPont factor. See, e.g.,
Detroit Athletic, 903 F.3d at 1306-07 (evidence of third parties offering the goods and
services at issue under one mark shows relatedness); Hewlett-Packard Co. v. Packard
Press, Inc., 281 F.3d 1261, 1267 (Fed. Cir. 2002) (stating that evidence that even “a
single company sells the goods … both parties, if presented, is relevant to a
relatedness analysis”).
Turning to Applicant’s Class 35 services, four third-party websites show that
Applicant’s Class 35 services and Registrant’s identified services are offered under
the same mark: Made Easy Concrete, Concrete Direct, Thomas Concrete, and Ozinga.
Absent any evidence that would indicate that relevant consumers are not exposed to
any significant degree to these companies, this evidence, combined with our finding
that the identifications alone demonstrate that the services are closely related,
further supports that these services are related.
Because neither Applicant’s nor Registrant’s identification of goods or services
includes any restrictions or limitations as to trade channels, we presume that the
respective goods and services are or would be marketed in all normal trade channels
for such goods and services. Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d
1352, 1361 (Fed. Cir. 2000). The third-party website evidence demonstrating that the
goods and services identified in both Applicant’s Class 9 and 35 identifications and
Registrant’s registration are related (e.g., Made Easy Concrete, Concrete Direct,
Thomas Concrete, Ozinga, J3 Concrete Pumping and QE Quality Enterprises) further
show that such goods and services move in the same channels of trade, such as

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concrete providers, and that they are sold to the same classes of consumers, namely,
consumers needing concrete for residential or commercial use. See, e.g., In re Charger
Ventures LLC, 64 F.4th 1375, 1382 (Fed. Cir. 2023) (“Because the record shows that
companies are known to offer both residential and commercial services under the
same mark and, often, on the same website, we find that substantial evidence
supports the Board’s finding[s]” that they are related and that there is “some overlap”
in trade channels). Based on this evidence, we find that the channels of trade for
Applicant’s Class 9 and 35 goods and services together with the services identified in
the cited registration overlap.
3. Applicant’s Arguments
Applicant does not dispute or even address in any meaningful way the Examining
Attorney’s third-party website evidence showing the relatedness of the goods and
services and the overlap in trade channels and customer classes, but rather argues
that the differences in the identifications combined with the fact that Registrant’s
“mark itself shows in its design a drill and states ‘FREE Night Deliveries[,]’” and that
“[t]his collective information further emphasizes that the … respective goods and
services differ ….”16 We find Applicant’s arguments unpersuasive, as our
determination about the relatedness of the identified goods and services must be
made based on the identifications set forth in the application and registration. See,
e.g., Detroit Athletic, 903 F.3d at 1306. As we previously found, the identification of
services in the cited registration is relatively broad. That the mark in the cited
16 6 TTABVUE 9.

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registration may highlight some aspects of the owner’s services beyond what
Applicant may provide does not detract from the inherent relatedness of Applicant’s
Class 39 services and the services identified in the cited registration. Nor does that
detract from the third-party evidence showing that other companies offer goods and
services found in both the application and the cited registration under one mark, and
showing that such goods and services are offered through the same channels of trade
to the same customer classes.
Applicant argues that its identified goods and services are marketed and sold in
different channels of trade than Registrant’s identified services because each of
Applicant’s three identifications “makes clear that its concrete is delivered by a
concrete mixer truck (as opposed to by overnight mail).”17 While it is true that each
of Applicant’s identifications are limited to the delivery of concrete by mixer truck,
this merely limits how the concrete is delivered and is not, as we mentioned earlier,
a limitation on the channels of trade through which the services are offered or sold.
First, “Night Deliveries,” which means deliveries at night, is not the same thing as
“overnight mail,” which means using a mail service to deliver items the day after
they’re ordered. Second, Applicant does cite to any evidence supporting its argument
that Registrant’s construction supplies are delivered “by overnight mail,” nor do we
see any in the record. Moreover, the cited registration’s identification does not, as
Applicant argues, limit delivery of construction tools and supplies “by overnight
mail.” As stated, we must base our analysis on the identifications of the involved
17 6 TTABVUE 8.

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application and cited registration, not on extrinsic evidence of actual use, even
assuming it were to exist. See Detroit Athletic, 903 F.3d at 1306-07; see, e.g.,
i.am.symbolic, 866 F.3d at 1325.
Applicant also argues that even assuming that the marks are similar, confusion
is not likely because its goods and services are not “in the same category or class” as
Registrant’s services.18 As discussed above, Applicant’s Class 39 services are legally
identical to Registrant’s identified services. While the cited registration does not
include goods in Class 9 or services in Class 35, the fact that Applicant’s goods and
services fall in different classes is not controlling. The classification of goods and
services by the USPTO is a purely administrative determination and is irrelevant to
whether the involved goods and services are related. Detroit Athletic, 903 F.3d at 1307
(“Classification is solely for the ‘convenience of Patent and Trademark Office
administration,’ … and ‘is wholly irrelevant to the issue of registrability ….’”)
(quoting Jean Patou, Inc. v. Theon, Inc., 9 F.3d 971, 975 (Fed. Cir. 1993)).
B. Similarity or Dissimilarity of the Marks
Under the first DuPont factor, we determine the similarity or dissimilarity of
Applicant’s and Registrant’s marks in their entireties, considering their appearance,
sound, meaning and commercial impression. DuPont, 476 F.2d at 1361; see also
Detroit Athletic, 903 F.3d at 1303. “Similarity in any one of these elements may be
sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, No.
87075988, 2018 TTAB LEXIS 170, at *13 (quoting In re Davia, No. 85497617, 2014
18 6 TTABVUE 8.

Serial No. 98341508
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TTAB LEXIS 214, at *3-4), aff’d mem., 777 F. App’x 516 (Fed. Cir. 2019). “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.”
i.am.symbolic, 866 F.3d at 1323 (quoting Coach Servs., 668 F.3d at 1368). Moreover,
“marks must be considered in light of the fallibility of memory and not on the basis
of side-by-side comparison.” In re St. Helena Hosp., 774 F.3d 747, 751 (Fed. Cir. 2014)
(cleaned up; citation omitted).
All elements of the respective marks must be considered. See Viterra, 671 F.3d at
1362 (“[M]arks must be viewed ‘in their entireties,’ and it is improper to dissect a
mark …, including when a mark contains both words and a design.”); In re Nat’l Data
Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985) (stating that “marks must be compared
in their entireties”). However, 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. Nat’l
Data, 753 F.2d at 1058.
Recall that Applicant seeks to register the composite mark and
it has been refused in light of the composite mark . “In the case of a
composite mark containing both words and a design, ‘the verbal portion of the mark

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is the one most likely to indicate the origin of the goods [or services] to which it is
affixed.’” Viterra, 671 F.3d at 1362 (quoting CBS, Inc. v. Morrow, 708 F.2d 1579, 1581-
82 (Fed. Cir. 1983)). “[T]he verbal portion of a word and design mark likely will be
the dominant portion” because it “likely will appear alone when used in text and will
be spoken when requested by consumers.” Viterra, 671 F.3d at 1366; see also L.C.
Licensing, Inc. v. Berman, No. 91162330, 2008 TTAB LEXIS 756, at *9 (“[I]t is well
settled that if a mark comprises both a word and a design, then the word is normally
accorded greater weight because it would be used by purchasers to request the
goods.”).
This general principle applies to the marks here. As an initial matter, the design
element in Applicant’s mark is an image of an owl and, according to
the description of the mark in the application, it is “adjacent to a partial bridge” over
the literal elements of the mark. Here, the inclusion of the owl design reinforces (as
a pictorial representation) the literal elements NIGHT OWL in Applicant’s mark, and
the NIGHT OWL portion of the mark is at least as prominent as the owl image,
rendering the verbal portion of the mark the dominant portion.
Similarly, the cited mark consists of the large, all upper case, and
bolded literal elements NIGHT OWL. Again, the image of the owl design reinforces
the NIGHT OWL literal elements of the cited mark and renders the verbal portion

Serial No. 98341508
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the dominant portion of the mark. While we acknowledge that additional words
appear in the mark, such as ACME CONSTRUCTION SUPPLY, INC. and FREE
NIGHT DELIVERIES, the consumer’s eye is drawn to the more prominently
displayed terms NIGHT OWL.
Considering all of the literal elements of Applicant’s mark (NIGHT OWL
CONCRETE), we find that NIGHT OWL alone is the dominant literal portion. These
literal elements appear first and in larger font than the word CONCRETE. See, e.g.,
Century 21 Real Est. Corp. v. Century Life of Am., 970 F.2d 874, 876 (Fed. Cir. 1992)
(upon encountering the marks, consumers will first notice the identical lead word);
Presto Prods., Inc. v. Nice-Pak Prods., Inc., No. 91074797, 1988 TTAB LEXIS 60, at
*8 (“[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[.]”). Moreover, Applicant’s disclaimer of the
term CONCRETE supports our finding, as terms that are disclaimed due to their
descriptive nature have less source-identifying significance. See, e.g., Detroit Athletic,
903 F.3d at 1305 (“[T]he non-source identifying nature of the words ‘Co.’ and ‘Club’
and the disclaimers thereof constitute rational reasons for giving those terms less
weight in the analysis.”) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407 (Fed. Cir.
1997) (finding DELTA the dominant part of the mark THE DELTA CAFE, in part
because the generic word “cafe” was disclaimed)).
Similarly, considering all of the literal elements of the cited mark (NIGHT OWL
ACME CONSTRUCTION SUPPLY, INC. FREE NIGHT DELIVERIES), we find
NIGHT OWL to be its dominant portion because these elements appear at the top of

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the mark, in the largest font, in bold and all uppercase. See, e.g., Century 21 Real Est.,
970 F.2d at 876; Presto Prods., 1988 TTAB LEXIS 60, at *8. Moreover, the literal
elements CONSTRUCTION SUPPLY, INC. FREE NIGHT DELIVERIES are
disclaimed, further supporting their non-trademark significance and constituting a
rational reason for giving those terms less weight in our analysis. See, e.g., Detroit
Athletic, 903 F.3d at 1305.
And we note that, in both marks, the prominent words “NIGHT OWL” are
reinforced in each mark by the prominent owl designs. Cf. Herbko Int’l, Inc. v. Kappa
Books, Inc., 308 F.3d 1156, 1165 (Fed. Cir. 2002) (where both marks contained the
terms CROSSWORD COMPANION, one mark’s crossword-puzzle design did not
serve to differentiate it from the other).19
The marks are identical in part in sound because they would both be verbalized
as NIGHT OWL, which they share as their most prominent literal element. They are
similar in appearance because although they include different design elements and
other literal elements, the most memorable visual features of each mark is their
literal element NIGHT OWL, reinforced in both with owl designs. See Shell Oil, 992
F.2d at 1206 (composite marks containing the identical words RIGHT-A-WAY were
19 We think that, given the fallibility of memory, consumers are unlikely to recall specific
differences in how the owls are graphically depicted. Cf. Grandpa Pidgeon’s of Mo., Inc. v.
Borgsmiller, 477 F.2d 586, 587 (CCPA 1973) (“Side-by-side comparison is not the test… . That
one figure is upright and apparently spry while the other is slightly stooped is, we believe, a
difference not likely to be recalled by purchasers seeing the marks at spaced intervals.
Purchasers of retail services do not engage in trademark dissection. Legal surgery, in which
trademarks have parts enhanced or discarded, is of little aid in determining the effect of
design marks on purchasers who merely recollect. The scalpel is employed by lawyers, not
purchasers.”).

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dominated by those words, and differences in scripts and arrow designs in those
marks did “not diminish their substantial identity when viewed as a whole.”).
While we acknowledge Applicant’s arguments that there are some specific
differences between Applicant’s and Registrant’s marks,20 we disagree that
“inadequate consideration has been given to the dissimilarities between the
Appellant’s Mark and the ‘893 Registration.”21 We find that, in their entireties, the
marks are similar in appearance, sound, connotation and commercial impression due
to the shared dominant terms NIGHT OWL, together with owl designs.
Applicant argues that “in registrant’s mark the elements are inseparable such
that there is not a likelihood of confusion” and, when viewed as a whole, create a
different commercial impression than the involved mark.22 We agree with the
Examining Attorney that the cited mark is not a unitary mark because the terms
ACME CONSTRUCTION SUPPLY, INC. FREE NIGHT DELIVERIES are physically
separated from the terms NIGHT OWL, convey two additional and different ideas,
are displayed in much smaller font, and are intricately incorporated into the design
element of the mark rendering them separable from, and less distinct than, the term
NIGHT OWL.23 See, e.g., Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1561 (Fed.
Cir. 1991) (Factors to consider in determining if a mark is unitary: the physical
connection of the potentially unregistrable component to other elements of the
20 6 TTABVUE 10-11.
21 6 TTABVUE 7.
22 6 TTABVUE 11.
23 8 TTABVUE 8.

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proposed mark by lines or other design features; the relative location of the respective
elements of the proposed mark; and the significance of the terminology as used on or
in connection with the goods or services.).
C. Balancing the Factors and Conclusion as to Likelihood of Confusion
We have carefully considered all of the evidence made of record, as well as all of
the arguments related thereto and now weigh the DuPont factors for which there has
been evidence and argument. Charger Ventures, 64 F.4th at 1384.
Turning first to Applicant’s Class 39 services, having determined that Applicant’s
Class 39 services are legally identical to Registrant’s identified services, the second
DuPont factor weighs heavily in favor of a likelihood of confusion. Because the
services are in part legally identical, the channels of trade and classes of consumers
are, to that extent, presumed to be the same, causing these factors to weigh heavily
in favor of a likelihood of confusion. While there are some differences in the marks,
the marks appear in connection with legally identical services; as a result, the degree
of similarity between the marks that is necessary to support a finding of likely
confusion declines. Century 21 Real Estate, 970 F.2d at 877; In re La Peregrina Ltd.,
No. 78676199, 2008 TTAB LEXIS 38, at *8. Here, the shared use of the dominant
literal elements NIGHT OWL causes the marks to be similar. Because all three
factors weigh in favor confusion (the second and third heavily so), and none weigh
against it, we find that confusion is likely.
Turning next to Applicant’s Class 9 goods and Class 35 services, we find that,
based on the identifications themselves, Applicant’s identified goods and services and

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Registrant’s identified services are closely related. This finding is bolstered by third-
party website evidence showing that Applicant’s Class 9 goods and Class 35 services
are related to those services identified by Registrant and that their channels of trade
overlap. Thus, the factors comparing the goods and services, channels of trade, and
classes of customers weigh in favor of a likelihood of confusion. Again, while we
acknowledge that there are some differences in the marks, their shared use of the
dominant literal elements NIGHT OWL causes them to be similar and, as a result,
the first DuPont factor weighs in favor of a likelihood of confusion. Accordingly,
because all the relevant factors weigh in favor of confusion and none weigh against
it, we find that confusion is likely between Applicant’s involved mark and the mark
of the cited registration.
Decision
The refusal to register Applicant’s mark is affirmed as to all classes (Classes 9, 35
and 39).