Upside Capital Opco LLC

This Opinion is Not a
Precedent of the TTAB
Mailed: July 10, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Upside Capital Opco LLC
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Serial No. 99024809
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Stewart L. Gitler of Welsh Flaxman & Gitler LLC for Upside Capital Opco LLC.
Nathan Burcham, Trademark Examining Attorney, Law Office 106,
Mary Sparrow, Managing Attorney.
_____
Before Larkin, Cohen, and Stanley,
Administrative Trademark Judges.
Opinion by Larkin, Administrative Trademark Judge:
Upside Capital Opco LLC (“Applicant”) seeks registration on the Principal
Register of the standard-character mark UPSIDE CAPITAL HOLDINGS for services
ultimately identified as “Real estate investment advisory services; Financial and
investment services, namely, real estate asset and real estate investment acquisition

Serial No. 99024809
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services, real estate consultation services, real estate advisory services, and real
estate development services” in International Class 36.1
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 that it
so resembles the standard-character mark UPSIDE, registered on the Principal
Register for various services in International Classes 35, 36, and 42,2 as to be likely
to cause confusion when used in connection with the services identified in the
application.
When the Examining Attorney made the refusal final, Applicant appealed and
simultaneously requested reconsideration, which was denied. Applicant and the
Examining Attorney have filed briefs.3 We affirm the refusal to register.
I. Prosecution History and Record on Appeal4
We briefly summarize below the prosecution history of the application because it
provides useful background to our disposition of the appeal.
1 Application Serial No. 99024809 was filed on January 31, 2025 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s claimed first use of the mark and
first use of the mark in commerce at least as early as September 22, 2022.
2 The cited Registration No. 7844653 (the “’653 Registration”) issued on June 24, 2025 from
an application filed on July 23, 2021. As discussed below, the refusal to register is based only
on certain services in Class 36 in the ’653 Registration.
3 Citations in this opinion to the briefs and other materials in the case docket refer to
TTABVUE, the Board’s online docketing system. The number preceding TTABVUE
corresponds to the docket entry number, and any numbers following TTABVUE refer to the
page(s) of the docket entry where the cited materials appear. Applicant’s brief appears at 6
TTABVUE and the Examining Attorney’s brief appears at 8 TTABVUE.
4 Citations in this opinion to the application record are to pages in the downloadable .pdf
version of the Trademark Status & Document Retrieval (“TSDR”) database of the United
States Patent and Trademark Office (“USPTO”).

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Applicant originally applied to register its mark for services identified as
“Investment advisory services; Financial and investment services, namely, asset and
investment acquisition, consultation, advisory and development,” based on the
specimen of use that we display in pertinent part below, which Applicant described
as a screenshot from its website at upsidecapitalholdings.com:
5
5 January 31, 2025 Application at 1, 5.

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Applicant voluntarily entered a disclaimer of the exclusive right to use CAPITAL
HOLDINGS apart from the mark as shown.6 The Examining Attorney refused
registration under Section 2(d) based on the ’653 Registration, making of record
USPTO electronic records regarding the Registration.7
Applicant responded to the refusal to register by amending its identification of
services to read “Real estate investment advisory services; Financial and investment
services, namely, real estate asset and real estate investment acquisition services,
real estate consultation services, real estate advisory services, and real estate
development services,” and by arguing against the refusal. Applicant made of record
plain copies of the certificates of registration of what it described as “four
registrations . . . that coexist on the register and show the dilution of the mark
UPSIDE in the minds of the purchasing public,”8 and USPTO electronic records
regarding three allowed applications to register UPSIDE-formative marks.9
The Examining Attorney then issued an Office Action making final the refusal to
register. The Examining Attorney objected to Applicant’s submission of the pending
third-party applications,10 and noted that Applicant had made of record only four
third-party registrations of UPSIDE-formative marks.11 The Examining Attorney
6 Id. at 2.
7 July 15, 2025 Office Action at 7-9.
8 August 5, 2025 Response to Office Action at 6-11, 14-15, 23.
9 Id. at 12, 16, 18.
10 October 22, 2025 Final Office Action at 5.
11 Id.

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made of record third-party webpages that he claimed showed “that the same entity
commonly manufactures, produces, or provides the relevant goods and/or services and
markets the goods and/or services under the same mark, the relevant goods and/or
services are sold or provided through the same trade channels and used by the same
classes of consumers in the same fields of use, and the goods and/or services are
similar or complementary in terms of purpose or function.”12
Applicant appealed and simultaneously requested reconsideration. In its Request
for Reconsideration, Applicant made of record plain copies of the certificates of third-
party registrations of UPSIDE-formative marks for various services.13 The
Examining Attorney denied the Request for Reconsideration,14 and the appeal was
resumed and is now ready for decision.
II. Analysis of Likelihood of Confusion Refusal
“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 [or] mistake, or to deceive.” In re Charger
Ventures LLC, 64 F.4th 1375, 1379 (Fed. Cir. 2023) (citation omitted) (cleaned up).
Our determination of the likelihood of confusion under Section 2(d) of the Trademark
Act is based on an analysis of all probative facts in the record that are relevant to the
likelihood of confusion factors set forth in In re E.I. DuPont DeNemours & Co., 476
12 Id. at 7, 10-59.
13 December 11, 2025 Request for Reconsideration at 5-24.
14 January 5, 2026 Denial of Request for Reconsideration at 1-2.

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F.2d 1357, 1361 (CCPA 1973) (“DuPont”). Charger Ventures, 64 F.4th at 1379. 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).
“Two key factors in every Section 2(d) case are the first two factors regarding the
similarity or dissimilarity of the marks and the goods or services, because 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.” DC Comics
v. Cellular Nerd LLC, No. 91246950, 2022 WL 17832492, at *10 (TTAB 2022)
(internal quotations and quotation marks omitted).
In its brief, Applicant discusses these two key DuPont factors, 6 TTABVUE 2-4,
as well as the third factor, the “similarity or dissimilarity of established, likely-to-
continue trade channels,” DuPont, 476 F.2d at 1361, 6 TTABVUE 4, 9-11, the fourth
factor, the “conditions under which and buyers to whom sales are made, i.e. ‘impulse’
vs. careful, sophisticated purchasing,” DuPont, 476 F.2d at 1361, 6 TTABVUE 4-5, 9-
11, and the sixth factor, the “number and nature of similar marks in use on similar
goods [or services].” DuPont, 476 F.2d at 1361, 6 TTABVUE 4-9.
A. Number and Nature of Similar Marks in Use on Similar Services
We begin with the sixth DuPont factor because it may affect the scope of protection
to which the cited mark UPSIDE is entitled. Heil Co. v. Tripleye GmbH, No.
91277359, 2024 WL 4925901, at *17 (TTAB 2024). “There are two prongs of analysis
for a mark’s strength under the sixth factor: conceptual strength and commercial
strength.” Spireon, Inc. v. Flex Ltd., 71 F.4th 1355, 1362 (Fed. Cir. 2023) (citation

Serial No. 99024809
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omitted). “Conceptual strength is a measure of a mark’s distinctiveness . . . and
distinctiveness is often classified in categories of generally increasing
distinctiveness[:] . . . (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5)
fanciful.” Id. (citation, quotation, and quotation marks omitted). “Distinctiveness is
relevant to a mark’s overall strength in the likelihood of confusion analysis.” Id.
(citation omitted). “Commercial strength, on the other hand, is the marketplace
recognition value of the mark. [It] is a question of whether consumers in fact associate
the . . . mark with a unique source[.]” Id. (quotation and quotation marks omitted).
Applicant argues that “[t]he term UPSIDE is commercially weak and has been
widely adopted in the financial services and investment sectors,” and that
“[n]umerous third-party marks incorporating ‘UPSIDE’ have been registered by
entities offering similar financial services.” 6 TTABVUE 4. According to Applicant,
“[t]his widespread use indicates that UPSIDE has become a descriptive or suggestive
term within these industries, entitled to only a narrow scope of protection.” Id.
(emphasis in bold here in italics in Applicant’s brief). Applicant concludes that “[a]s
demonstrated by the third-party registrations and usage, the term UPSIDE is
diluted within the investment and financial sectors, and small difference between
marks are sufficient to avoid confusion.” Id. (emphasis in bold here in italics in
Applicant’s brief).
Applicant cites the following ten third-party registrations of UPSIDE-formative
marks for various services, id. at 6-9:15
15 As noted above, Applicant submitted plain copies of the certificates of registration of these
marks, which is sufficient to make third-party registrations of record. See, e.g., Rocket

Serial No. 99024809
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• Registration No. 7229182 of the mark for “Providing
incentive award and customer loyalty programs to consumers through the
issuance of cash back rewards; web site and retail store services featuring
advertising, marketing and promotional services provided via
downloadable mobile application; promoting the sale of third-party
consumer products and services by offering cash back rewards and
promotions within a mobile application; administration of a consumer
loyalty program to promote restaurant services and retail services of others;
analytics, tracking and measuring consumers’ response to online
advertising; advertising, promotional and marketing services for others;
marketing analysis services” in Class 35, and “Providing temporary use of
non-downloadable software in the nature of a mobile application for
administering an incentive program to reward users with cash back
rewards for purchases; Software as a service (SAAS) services featuring
software for enabling consumers to use cash back rewards for purchases via
a mobile application; Software as a service (SAAS) services featuring
software for analyzing consumer preferences data, identifying, sorting and
filtering consumer cash-back rebates, promotions and discounts based on a
user’s personal information” in Class 42, id. at 6;16
• Registration No. 6869105 of the mark for the same
services identified in Registration No. 7229182, id. at 7;17
• Registration No. 6919445 of the standard-character mark UPSIDE for the
same services identified in Registration Nos. 7229182 and 6869105, id. at
6-7;18
• Registration No. 6869104 of the standard-character mark GET UPSIDE for
the same services identified in Registration Nos. 7229182, 6869105, and
6919445, id. at 7-8;19
• Registration No. 7145013 of the standard-character mark UNLOCK THE
UPSIDE for “capital investment services; equity capital investment
services; consultancy regarding capital and equity investment; financial
Trademarks Pty Ltd. v. Phard, S.p.A., No. 91172486, 2011 WL 810221, at *3 n.11 (TTAB
2011) (citations omitted).
16 December 11, 2025 Request for Reconsideration at 5-6.
17 Id. at 11-12.
18 Id. at 9-10.
19 Id. at 13-14. Registration Nos. 7229182, 6869105, 6919445, and 6869104 have a common
owner.

Serial No. 99024809
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planning and investment advisory services; wealth management services;
investment management services,” id.;20
• Registration No. 5657235 of the standard-character mark UPSIDE
AVENUE for “Real estate investment services; financial investment in the
field of real estate; financial asset management; investment services,
namely, asset acquisition, consultation, development and management
services,” id. at 8;21
• Registration No. 5304915 of the standard-character mark UPSIDE DOOR
for “Providing real estate listings via the Internet, namely, providing an
online interactive website featuring the listing of residential property
offered for purchase and sale; Providing an online searchable computer
database featuring real estate information, listings of housing, apartments,
condominiums, townhouses, real estate, commercial real estate; Providing
real estate listings via the Internet, namely, providing a website containing
real estate listings for residential housing, apartments, rooms in homes,
vacation homes, cabins and villas and office space in commercia properties
on a global computer network; Providing reviews and feedback about listers
of real estate, namely, providing reviews of real estate listing service
providers; Vacation real estate listing services and providing such services
via a global computer network; Real estate listing services; Providing real
estate listings via the Internet, namely, providing an interactive website
featuring properties for sale, rental property descriptions and images,
condominiums, cabins, villas, apartments, and time-shares; Providing an
online searchable database featuring properties for sale, rental property
descriptions and images of condominiums, cabins, villas, apartments, and
time-shares; Real estate services, namely, real estate brokerage services
through arranging purchase and sale agreements for real estate for others,”
id.;22
• Registration No. 5155651 of the mark for
“charitable fundraising services and fundraising for cancer research,” id.;23
20 Id. at 7-8.
21 Id. at 15-16.
22 Id. at 17-18.
23 Id. at 19-20.

Serial No. 99024809
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• Registration No. 5155645 of the standard-character mark TURN CANCER
UPSIDE DOWN for the same services as in Registration No. 5155651, id.;24
and
• Registration No. 4456278 of the standard-character mark UPSIDE
COLLECTIVE for “Advertising and publicity services, namely, promoting
the goods, services, brand identity and commercial information and news of
third parties through print, audio, video, digital and on-line medium; Post-
production editing services for video and audio commercials; advertising
and marketing; advertising consultancy; advertising copywriting, providing
advertising services using 3D and animation designs; and branding
services, namely, consulting, development, management and marketing of
brands for businesses and/or individuals” in Class 36, and “Graphic design;
Graphic illustration services for others; web site development for others;
and computer software development” in Class 42, id. at 9.25
As noted above, based on these third-party registrations, Applicant argues that “the
cited mark is entitled only to a narrow scope of protection, and there is no likelihood
of confusion between the applicant’s mark UPSIDE CAPITAL HOLDINGS and the
cited mark UPSIDE.” 6 TTABVUE 6.
The Examining Attorney responds that the registration of UPSIDE DOOR has
been cancelled and requests that Applicant’s “evidence and argument in relation to”
it not be considered, 8 TTABUE 5-7,26 and argues that Applicant’s brief thus
24 Id. at 21-22. Registration Nos. 5155651 and 5155645 have a common owner.
25 Id. at 23-24.
26 As noted above, Applicant properly made this registration of record with its Request for
Reconsideration. December 11, 2025 Request for Reconsideration at 17-18. The Board’s
general practice is to not take judicial notice of USPTO records regarding registrations, see
In re Weiss, No. 88621608, 2024 WL 3617597, at *1 (TTAB 2024), but an exception exists for
changes in the status or title of a registration that has been properly made of record. Cf.
Harry Winston Inc. v. Bruce Winston Gem Corp., No. 91153947, 2014 WL 3686875, at *4 n.19
(TTAB 2014) (taking judicial notice of status of pleaded registration made of record). We take
judicial notice that Registration No. 5304915 was cancelled on April 26, 2024 for failure to
file a declaration of continuing use of the mark. A cancelled registration has no probative
value under the sixth DuPont factor, Made in Nature, LLC v. Pharmavite LLC, No. 91223352,
2022 WL 2188890, at *15 (TTAB 2022), and we sustain the Examining Attorney’s objection
to Registration No. 5304915 and have given it no consideration in our decision.

Serial No. 99024809
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“references . . . nine active third-party registrations owned by just five different
owners.” Id. at 7. According to the Examining Attorney, “the wording ‘UPSIDE’
appears as part of a unitary phrase (altering its connotation and commercial
impression) in seven of the nine marks,” and “only two of the nine marks are for
similar services to those at issue.” Id. at 8. The Examining Attorney concludes that
[t]he only two marks with similar services here (UNLOCK
THE UPSIDE, Reg. No. 7145013, and UPSIDE AVENUE,
Reg. No. 5657235) use “UPSIDE” as part of unitary marks
with a different commercial impression. Thus, applicant’s
third-party evidence falls far short of showing that
“UPSIDE” has “a normally understood and well-recognized
descriptive or suggestive meaning, leading to the
conclusion that that segment is relatively weak” and
entitled to only a narrow scope of protection.
Id. at 9-10 (quoting Spireon, 71 F.4th at 1364).
We agree with the Examining Attorney that there is far less to Applicant’s third-
party registration evidence than first meets the eye.27 The four registered GET
UPSIDE and UPSIDE marks actually consist of two marks that are each registered
in both stylized and standard-character forms, and the four registrations have a
common owner. The two TURN CANCER UPSIDE DOWN marks are essentially one
mark registered in stylized and standard-character forms, and also have a common
27 As noted above, Applicant claims that the cited mark is “commercially weak” based on the
third-party registrations. 6 TTABVUE 4. The third-party registrations, “with no evidence of
the extent of the use of the marks in commerce, do not diminish the commercial strength of
[the cited mark]” because the “existence of these registrations is not evidence of what happens
in the market place or that customers are familiar with them . . . .” Made in Nature, 2022 WL
2188890, at *19 (quoting Sock It To Me, Inc. v. Fan, No. 91230554, 2020 WL 3027605, at *12
(TTAB 2020) (quoting AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406 (CCPA
1973)). We will consider the third-party registrations only for the purpose of assessing
whether they show the conceptual weakness of the word Upside that is common to the marks.

Serial No. 99024809
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owner. These six registrations, out of the total of nine subsisting ones in the record,
thus actually involve only three different marks from two different sources, not six
different marks from six different sources. The total number of different registered
marks in the record is effectively only six, owned by five separate entities.
In addition, the sixth DuPont factor requires consideration of similar marks in use
on “similar” goods or services. DuPont, 476 F.2d at 1361. Under the sixth factor, the
similarity of the goods or services identified in a cited registration to the goods or
services identified in third-party registrations must be shown in every case unless it
is self-evident from the identifications of goods or services. Cf. Omaha Steaks Int’l,
Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 1325 (Fed. Cir. 2018) (finding that
the Board erred in considering third-party uses of marks for goods and services such
as oriental foods, alcoholic beverages, café food, or grocery delivery services where the
applicant had failed to show that those goods and services were “similar” to the
parties’ meat products).
Here, Applicant simply describes the registered third-party marks as being used
“in the financial services and investment sectors” for what Applicant calls “similar
financial services,” 6 TTABVUE 4, without providing any evidence establishing the
similarity of any of the specific services identified in the third-party registrations to
any of the specific services identified in the cited ’653 Registration.28
28 As we have repeatedly explained, “[a]ttorney argument is no substitute for evidence.” In re
Ye Mystic Krewe of Gasparilla, No. 90522364, 2025 WL 2953731, at *6 n.15 (TTAB 2025)
(citing Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1371 (Fed. Cir. 2018) (internal citation
omitted)).

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As discussed below, under the second DuPont factor, the similarity of goods or
services can be shown based on the language of the respective identifications
themselves, which may show that the goods or services are literally or legally
identical, or are otherwise intrinsically related. See, e.g., In re OSF Healthcare Sys.,
No. 88706809, 2023 WL 6140427, at *4 (TTAB 2023).29
The Examining Attorney concedes that the registrations of UNLOCK THE
UPSIDE for “capital investment services; equity capital investment services;
consultancy regarding capital and equity investment; financial planning and
investment advisory services; wealth management services; investment management
services,” and UPSIDE AVENUE for “Real estate investment services; financial
investment in the field of real estate; financial asset management; investment
services, namely, asset acquisition, consultation, development and management
services,” involve “similar services” to the “financial information, management and
analysis services” and the “information, advisory and consultancy services relating
to” those services identified in the ’653 Registration on which the Examining Attorney
bases the refusal to register. 8 TTABVUE 9. We will examine the identifications of
services in the other third-party registrations to see if any of them show the intrinsic
similarity of the services identified in the registrations to the “financial information,
29 The Federal Circuit has held that when the Board makes a factual finding regarding the
similarity of goods or services under the second DuPont factor, “the Board should retain the
same scope in its consideration of similarity under the other factors,” and there is “no reason
to impose a different and more stringent legal standard for similarity under the
sixth DuPont factor.” Apex Bank v. CC Serve Corp., 156 F.4th 1230, 1236 (Fed. Cir. 2025).

Serial No. 99024809
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management and analysis services” or the “information, advisory and consultancy
services relating to” those services identified in the ’653 Registration.
It is self-evident on the face of the respective identifications that the “charitable
fundraising services and fundraising for cancer research” identified in the two
registrations of the TURN CANCER UPSIDE DOWN marks have no intrinsic
similarity to the “financial information, management and analysis services,” or
“information, advisory and consultancy services relating to” those services identified
in the ’653 Registration, which have nothing to do with fundraising. The same is true
of the services identified in the registration of UPSIDE COLLECTIVE as
“Advertising and publicity services, namely, promoting the goods, services, brand
identity and commercial information and news of third parties through print, audio,
video, digital and on-line medium; Post-production editing services for video and
audio commercials; advertising and marketing; advertising consultancy; advertising
copywriting, providing advertising services using 3D and animation designs; and
branding services, namely, consulting, development, management and marketing of
brands for businesses and/or individuals” (Class 36), and “Graphic design; Graphic
illustration services for others; web site development for others; and computer
software development” (Class 42). The involved services identified in the ’653
Registration have no express or implicit relationship to advertising, publicity, editing,
or branding services.
The four registrations of the GET UPSIDE and UPSIDE marks cover services
identified as “Providing incentive award and customer loyalty programs to consumers

Serial No. 99024809
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through the issuance of cash back rewards; web site and retail store services featuring
advertising, marketing and promotional services provided via downloadable mobile
application; promoting the sale of third-party consumer products and services by
offering cash back rewards and promotions within a mobile application;
administration of a consumer loyalty program to promote restaurant services and
retail services of others; analytics, tracking and measuring consumers’ response to
online advertising; advertising, promotional and marketing services for others;
marketing analysis services” in Class 35, and “Providing temporary use of non-
downloadable software in the nature of a mobile application for administering an
incentive program to reward users with cash back rewards for purchases; Software
as a service (SAAS) services featuring software for enabling consumers to use cash
back rewards for purchases via a mobile application; Software as a service (SAAS)
services featuring software for analyzing consumer preferences data, identifying,
sorting and filtering consumer cash-back rebates, promotions and discounts based on
a user’s personal information” in Class 42.
It is obvious that the Class 42 services have no intrinsic relationship to the
involved services identified in the ’653 Registration, which do not pertain to or
encompass downloadable software services or SAAS services. The Class 35 services
include the more broadly identified services of “analytics, tracking and measuring
consumers’ response to online advertising,” “advertising, promotional and marketing
services for others,” and “marketing analysis services,” which are not limited to
incentive award and customer loyalty programs, but there is also no express or

Serial No. 99024809
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implied relationship of these services to the “financial information, management and
analysis services,” or “information, advisory and consultancy services relating to”
those services identified in the ’653 Registration, which do not pertain to or
encompass advertising, promotion, or marketing.
We agree with the Examining Attorney that for purposes of the sixth DuPont
factor, the services identified in the third-party registrations of UNLOCK THE
UPSIDE and UPSIDE AVENUE are similar to the “financial information,
management and analysis services” and “information, advisory and consultancy
services relating to” those services identified in the ’653 Registration, but two
registrations of UPSIDE-formative marks for similar services do not show that
UPSIDE has “a normally understood and well-recognized descriptive or suggestive
meaning” with respect to the involved services identified in the ’653 Registration.
Spireon, 71 F.4th at 1363 (quoting Jack Wolfskin Ausrustung Fur Draussen GmbH v.
New Millenium Sports, S.L.U., 797 F.3d 1363, 1374 (Fed. Cir. 2015)). They show, at
most, that consistent with its dictionary meanings,30 the word “upside” evokes a sense
of an upward trend and potential prosperity in one’s finances through use of the
identified services. The record does not show that the cited mark UPSIDE is
conceptually weak.
30 The Board may take judicial notice of dictionary definitions, including definitions from
online dictionaries that exist in printed format or have fixed regular editions. See, e.g., In re
Nursecon, LLC, No. 88052194, 2024 WL 5265079, at *10 n.64 (TTAB 2024) (citation omitted).
We take judicial notice that “upside” means “an upward trend,” a “positive aspect,” and
“promise, potential.” MERRIAM-WEBSTER DICTIONARY (merriam-webster.com, last accessed
on July 7, 2026).

Serial No. 99024809
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The cited ’653 Registration issued on the Principal Register without a showing of
acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C.
§ 1052(f),31 and we thus presume that the UPSIDE mark “is inherently distinctive,
i.e., that it is at worst suggestive of the [services].” Heil Co., 2024 WL 4925901, at *18
(citing 15 U.S.C. § 1057(b)). The sixth DuPont factor is neutral in our analysis of the
likelihood of confusion, and we will accord the cited UPSIDE mark the “normal scope
of protection to which inherently distinctive marks are entitled.” Iron Balls Int’l Ltd.
v. Bull Creek Brewing, LLC, No. 92079099, 2024 WL 2844425, at *15 (TTAB 2024)
(citation omitted).
B. Similarity or Dissimilarity of the Marks
Under the first DuPont factor, “we consider the ‘similarity or dissimilarity of the
marks in their entireties as to appearance, sound, connotation and commercial
impression.’” Ye Mystic Krewe of Gasparilla, 2025 WL 2953731, at *4
(quoting DuPont, 476 F.2d at 1361). “Similarity in any one of these elements may be
sufficient to find the marks confusingly similar.” Sage Therapeutics, Inc. v. Sageforth
Psych. Servs., LLC, No. 91270181, 2024 WL 1638376, at *5 (TTAB 2024) (quoting In
re Inn at St. John’s LLC, No. 87075988, 2018 WL 2734893, at *5 (TTAB
2018) (citation omitted), aff’d per curiam, 777 F. App’x 516 (Fed. Cir.
2019)); accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 732 (CCPA
1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely
to cause confusion.”) (citation omitted).
31 July 15, 2025 Office Action at 7-9.

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“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.” Sage Therapeutics, 2024 WL 1638376, at *5 (quoting Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368 (Fed. Cir. 2012)). “The
focus is on the recollection of the average purchaser, who normally ‘retains a general
rather than a specific impression of marks.’” Id. (quoting In re i.am.symbolic, llc, No.
85916778, 2018 WL 3993582, at *4 (TTAB 2018) (citations omitted)).
The involved marks are UPSIDE and UPSIDE CAPITAL HOLDINGS, both in
standard characters. Applicant argues that the marks differ in appearance and sound
because Applicant’s mark “is a three-word phrase that includes the term ‘CAPITAL
HOLDINGS’ in addition to ‘UPSIDE,’” which Applicant claims creates a “distinct
visual impression” in comparison to the one-word cited mark UPSIDE, 6 TTABVUE
2, and because the “additional terms ‘CAPITAL’ and ‘HOLDINGS’ introduce distinct,
independently pronounced sounds,” which Applicant claims make its mark “aurally
distinguishable from the cited mark.” Id.
With respect to connotation and commercial impression, Applicant argues that
the cited mark UPSIDE “conveys a broad aspirational message of benefit,
particularly in the context of vehicle sales, valuations, and financial software,
suggesting potential for gain or improved value,” id. at 3, while Applicant’s mark
UPSIDE CAPITAL HOLDINGS “conveys a sophisticated, institutional meaning,
implying an investment firm focused on managing capital and generating positive

Serial No. 99024809
- 19 -
returns.” Id. According to Applicant, the “inclusion of ‘CAPITAL HOLDINGS’
transforms [its] mark from a general expression of benefit into a corporate identifier
within the financial and real estate sectors.” Id. Applicant concludes that the
commercial impression of the mark “is that of a professional, investment-focused
entity, while the cited mark suggests a modern, consumer-facing service related to
automotive transactions.” Id.
The Examining Attorney responds that “[t]he marks are identical in part (in
appearance, sound, connotation, and commercial impression), and the differences
between the marks do not obviate a finding of similarity.” 8 TTABVUE 3. He argues
that the word UPSIDE is the dominant portion of Applicant’s mark and is identical
to the cited mark, id. at 3-4, and that the “addition of ‘CAPITAL HOLDINGS’ does
not obviate a finding of similarity here, despite the sound and appearance differences
created by the added wording.” Id. at 5.
With respect to meaning, the Examining Attorney argues that the different
meanings of the word UPSIDE in the marks claimed by Applicant are unsupported
by evidence. Id. at 5-6. He concludes that “‘UPSIDE’ is the dominant and unique
wording in applicant’s mark that consumers are likely to focus on, remember, and
use to refer to applicant and its services,” and that “[a]ny slight differences in
connotation and meaning in applicant’s mark due to the addition of ‘CAPITAL
HOLDINGS’ is [sic] not enough to obviate a finding of similarity with registrant’s
UPSIDE mark.” Id. at 6.

Serial No. 99024809
- 20 -
We begin our analysis by determining the dominant portion of Applicant’s mark
UPSIDE CAPITAL HOLDINGS. Marks must be considered in their entireties, 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, 1305 (Fed. Cir. 2018) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058 (Fed.
Cir. 1985)).
The word UPSIDE is the first word in Applicant’s mark, and “consumers are more
likely to notice and remember the first elements of a trademark.” Sage Therapeutics,
2024 WL 1638376, at *6. Applicant also voluntarily disclaimed the exclusive right to
use the words CAPITAL HOLDINGS that follow UPSIDE, thus conceding that those
words currently have no source-identifying significance in connection with the
identified services. See, e.g., Ye Mystic Krewe of Gasparilla, 2025 WL 2953731, at *4
(citations omitted). The “non-source identifying nature of the words [CAPITAL
HOLDINGS] and the disclaimer[ ] thereof constitute rational reasons for giving those
[words] less weight in the analysis.” Detroit Athletic Co., 903 F.3d at 1305. We agree
with the Examining Attorney that the lead word UPSIDE is the dominant portion of
Applicant’s mark, and we turn now to the required comparison of the marks in their
entireties, giving greater weight in that comparison to the word UPSIDE in
Applicant’s mark than to the words CAPITAL HOLDINGS.

Serial No. 99024809
- 21 -
With respect to appearance, UPSIDE and UPSIDE CAPITAL HOLDINGS are
both standard-character marks, and “each could be used in any typeface, color, or
size, including the same stylization actually used or intended to be used by the other
party, or one that minimizes the differences or emphasizes the similarities between
the marks.” Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., No. 91194148, 2015 WL
5316485, at *8 (TTAB 2015) (citing Citigroup Inc. v. Cap. City Bank Grp. Inc., 637
F.3d 1344, 1353 (Fed. Cir. 2011) (the “registrant is entitled to depictions of the
standard character mark regardless of font style, size, or color, not merely ‘reasonable
manners’ of depicting its standard character mark.”)). Accordingly, we must consider
how the two involved standard-character marks might appear, and “illustrations of
the mark[s] as actually used may assist the T.T.A.B. in visualizing other forms in
which the mark[s] might appear.” Citigroup, 637 F.3d at 1353.
As shown above, Applicant’s specimen of use displays its mark as follows:
32
In Applicant’s actual use of its mark, the word UPSIDE is the most impactful visual
portion because it appears in large white capital letters above the words CAPITAL
HOLDINGS, which appear in much smaller capital letters. Applicant’s actual use of
its mark “minimizes the differences or emphasizes the similarities between the
32 January 31, 2025 Application at 5. We have enlarged this portion of the specimen shown
above to illustrate the relative sizes of the words UPSIDE and CAPITAL HOLDINGS. On
the specimen itself, UPSIDE is clearly visible, but the words CAPITAL HOLDINGS beneath
UPSIDE are difficult to see.

Serial No. 99024809
- 22 -
marks,” Anheuser-Busch, 2015 WL 5316485, at *8, because it highlights the
dominant word UPSIDE. This is particularly significant because we must also
assume that the cited UPSIDE standard-character mark could be displayed in the
same size, font, and color in which the word UPSIDE appears in Applicant’s mark.
Citigroup, 637 F.3d at 1353. We find that the marks are similar in appearance from
the standpoint of a consumer with a general rather than specific impression of the
cited UPSIDE mark who separately encounters Applicant’s UPSIDE CAPITAL
HOLDINGS mark.
With respect to sound, Applicant assumes the verbalization of its mark as “Upside
Capital Holdings,” 6 TTABVUE 2, involving three words and seven syllables, but
consumers may instead verbalize the mark as “Upside” alone “given the propensity
of consumers to shorten marks when speaking.” Ye Mystic Krewe of Gasparilla, 2025
WL 2953731, at *5 (citations omitted). The Board has recognized this “penchant of
consumers to shorten marks,” In re Bay State Brewing Co., No. 85826258, 2016 WL
1045677, at *3 (TTAB 2016) (citing In re Abcor Dev. Corp., 588 F.2d 811, 815 (CCPA
1978) (Rich, J., concurring) (“the users of language have a universal habit of
shortening full names from haste or laziness or just economy of words”), and has
noted that consumers are especially likely not to verbalize a “highly
descriptive/generic term.” Id. (finding that consumers were likely to drop the non-
source identifying term BLONDE when verbalizing the applicant’s mark TIME
TRAVELER BLONDE for beer).

Serial No. 99024809
- 23 -
We find that it is very likely that consumers verbalizing Applicant’s mark will
drop the highly-descriptive phrase “CAPITAL HOLDINGS,” which Applicant has
disclaimed and deemphasized in its actual use of the mark. The involved marks would
be identical in sound if both were verbalized as “Upside,” a recognized word in
American English with an established pronunciation. The marks would still be
similar in sound, however, if Applicant’s mark were verbalized as “Upside Capital
Holdings” because the word “Upside” would be the first thing heard in Applicant’s
mark and would sound the same in both marks, and the aural differences arising
from the presence of the words “Capital Holdings” in Applicant’s mark could be heard
and understood as an extended version of the registrant’s UPSIDE mark. Ye Mystic
Krewe of Gasparilla, 2025 WL 2953731, at *5.
Finally, with respect to meaning, Applicant offers only argument of counsel that
the word UPSIDE has one meaning when it appears as the cited mark, “a broad
aspirational message of benefit, particularly in the context of vehicle sales,
valuations, and financial software, suggesting potential for gain or improved value,”
6 TTABVUE 3, and a second and very subtle meaning as part of Applicant’s mark,
“convey[ing] a sophisticated, institutional meaning, implying an investment firm
focused on managing capital and generating positive returns.” Id. “[T]here is no
evidence here, or other reason to find, that [UPSIDE] has one meaning when used
with” the “financial information, management and analysis services” identified in the
’653 Registration, and “a second and different meaning when used with” the real
estate-related services identified in the application, “based on the nature of the

Serial No. 99024809
- 24 -
respective [services],” In re Embiid, No. 88202890, 2021 WL 2285576, at *9 (TTAB
2021), and, as noted above, argument of counsel is no substitute for evidence. Based
on the dictionary definitions of “upside” noted above, UPSIDE suggests an upward
trend or potential prosperity in one’s finances in both marks.
“[S]imilarity is not a binary factor, but is a matter of degree.” In re St. Helena
Hosp., 774 F.3d 747, 752 (Fed. Cir. 2014) (quoting In re Coors Brewing Co., 343 F.3d
1340, 1344 (Fed. Cir. 2003)). We find that UPSIDE and UPSIDE CAPITAL
HOLDINGS are quite similar in appearance, sound, connotation, and commercial
impression. The first DuPont factor strongly supports a conclusion that confusion is
likely. Naterra, Inc. v. Bensalem, 92 F.4th 1113, 1119 (Fed. Cir. 2024).
C. Similarity or Dissimilarity of the Services, Channels of Trade,
and Classes of Consumers
The second DuPont factor “considers ‘[t]he similarity or dissimilarity and nature
of the goods or services as described in an application or registration . . . .’” Detroit
Athletic Co., 903 F.3d at 1306 (quoting DuPont, 476 F.2d at 1361). “This factor
considers whether ‘the consuming public may perceive [the goods or services] as
related enough to cause confusion about the source or origin of the goods or services.’”
St. Helena Hosp., 774 F.3d at 752 (quoting Hewlett-Packard Co. v. Packard Press,
Inc., 281 F.3d 1261, 1267 (Fed. Cir. 2002)). “In analyzing the [services], the Board
considers ‘[t]he similarity or dissimilarity and nature of the [services] as described in
an application or registration.’” OSF Healthcare, 2023 WL 6140427, at *4 (quoting
Embiid, 2021 WL 2285576, at *10).

Serial No. 99024809
- 25 -
The goods or services “‘need not be identical or even competitive to find a likelihood
of confusion.’” Id. (quoting In re Country Oven, Inc., No. 87354443, 2019 WL 6170483,
at *2 (TTAB 2019)). “They need only be ‘related in some manner and/or if the
circumstances surrounding their marketing are such that they could give rise to the
mistaken belief that [they] emanate from the same source.” Id. (quoting Country
Oven, 2019 WL 6170483, at *2 (quoting Coach Servs., 668 F.3d at 1369 (internal
quotation omitted)).
The “Examining Attorney need not prove, and we need not find, similarity as to
each [service] listed in the description of [services]” in Class 36 in the application. Id.
(citation omitted). “It is sufficient for a finding of likelihood of confusion if relatedness
is established for any item encompassed in the identification of [services] in a
particular class in an application.” Ye Mystic Krewe of Gasparilla, 2025 WL 2953731,
at *3 (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336
(CCPA 1981)).
The relatedness of goods or services may be established based on (1) the language
of the involved identifications of goods or services, which may show, on the face of the
identifications, that the goods or services are literally or legally identical, or are
otherwise intrinsically related, and (2) evidence of third-party uses or registrations,
which may show that the identified goods or services are commonly offered by the
same entity under the same mark. See, e.g., OSF Healthcare, 2023 WL 6140427, at
*4. As discussed below, the Examining Attorney relies here on evidence of third-party
uses.

Serial No. 99024809
- 26 -
The Class 36 services identified in the application are “Real estate investment
advisory services; Financial and investment services, namely, real estate asset and
real estate investment acquisition services, real estate consultation services, real
estate advisory services, and real estate development services.” The Class 36 services
identified in the ’653 Registration and relied on by the Examining Attorney in support
of the refusal to register are “Financial affairs and monetary affairs, namely,
financial information, management and analysis services” and “information, advisory
and consultancy services relating to” those services. 8 TTABVUE 10.
Applicant argues that the “services associated with UPSIDE CAPITAL
HOLDINGS are exclusively related to real estate investment advisory, asset
management, and financial services in the real estate sector,” and are “targeted at
institutional investors, real estate developers, and high-net worth individuals,” 6
TTABVUE 3 (emphasis in bold here in italics in Applicant’s brief), while the “services
associated with UPSIDE are focused on the automotive industry, including vehicle
sales, valuations, and financial services related to motor vehicles,” and “are aimed at
automobile dealers, financers, and individual consumers.” Id. (emphasis in bold here
in italics in Applicant’s brief). Applicant concludes that “[g]iven these fundamental
differences in the nature of the services and the targeted consumer bases, it is highly
unlikely that consumers would confuse the marks.” Id. at 4.
The Examining Attorney responds that the Internet evidence in the record shows
that
the same entity commonly provides the relevant services
and markets the services under the same mark, the

Serial No. 99024809
- 27 -
relevant services are sold or provided through the same
trade channels and used by the same classes of consumers
in the same fields of use, and the services are similar or
complementary in terms of purpose or function.
8 TTABVUE 10. The Examining Attorney provides a chart summarizing the contents
of seven third-party websites. Id. at 10-11.
The Examining Attorney also rejects Applicant’s focus on the automotive industry
in its discussion of the services identified in the cited registration, arguing that “the
services listed in the identifications of applicant and registrant are related, regardless
of actual use in more narrow fields.” Id. at 12.
We begin our analysis by noting that the ’653 Registration covers seven distinct
services separated by semicolons,33 two of which are not limited on the face of the
identifications to what Applicant calls the “automotive industry”: (1) “Financial
affairs and monetary affairs, namely, financial information, management and
analysis services,” and (2) “information, advisory and consultancy services relating
to” those services. “[W]e must construe [these] services identified in the cited
registration as broadly as reasonably possible to include all [services] of the nature
and type described therein,” OSF Healthcare, 2023 WL 6140427, at *5 (internal
quotation and quotation marks omitted), and we must “resolve any ambiguities
regarding their coverage in favor of the cited registrant given the presumptions
afforded the registration under Section 7(b) of the Trademark Act.” Id. (internal
33 “‘Under standard examination practice, a semicolon is used to separate distinct categories
of goods or services.’” Monster Energy Co. v. Lo, No. 91225050, 2023 WL 417620, at *7 n.35
(TTAB 2023) (quoting In re Midwest Gaming & Ent. LLC, No. 85111552, 2013 WL 1442237,
at *4 (TTAB 2013) (internal citation omitted)).

Serial No. 99024809
- 28 -
quotation and quotation marks omitted).34 Accordingly, we must assume that the
services identified broadly in the ’653 Registration as “financial information,
management and analysis services,” and “information, advisory and consultancy
services relating to” those services could be rendered to consumers in the real estate
industry.35
The Examining Attorney made of record pages from seven websites, the contents
of which we summarize below:36
34 We must “also give the services identified in the application their full scope in our analysis
of the second DuPont factor.” OSF Healthcare, 2023 WL 6140427, at *5 (citation omitted).
35 Applicant argues that “the services offered under the cited mark UPSIDE relate primarily
to online platforms for motor vehicle sales, valuations, and related financial services” and
that “[e]ven where financial services are involved, they are tied to vehicle transactions and
are directed toward a different class of consumers, namely automobile dealers, lenders, and
individual vehicle purchasers, whose decision-making process is distinct from that of real
estate investors.” 6 TTABVUE 10. This argument ignores the fact that the distinct “financial
information, management and analysis services,” and “information, advisory and
consultancy services relating to” those services identified in the ’653 Registration are not
“tied to vehicle transactions,” id., on the face of the identifications.
As discussed above, Applicant initially applied to register its mark for “Investment advisory
services; Financial and investment services, namely, asset and investment acquisition,
consultation, advisory and development.” Applicant subsequently amended its identification
of services to cover the current real estate-related services, which necessarily had to be within
the scope of the original identification covering “Investment advisory services; Financial and
investment services, namely, asset and investment acquisition, consultation, advisory and
development.” See, e.g., In re Ox Paperboard, LLC, No. 87847482, 2020 WL 4530517, at *2
(TTAB 2020). Applicant’s amendment supports our assumption that the services identified
broadly in the ’653 Registration as “financial information, management and analysis
services,” and “information, advisory and consultancy services relating to” those services
could be rendered to consumers in the real estate industry.
36 The Board has recognized that “[w]ith respect to Internet evidence, in determining exactly
what services are offered through the respective websites, we acknowledge that services may
not be explicitly described at all, or may be described in colloquial language that does not
track the technical language of acceptable identifications of goods and services in applications
and registrations, including those involved here. . . . In such instances, we must determine
the nature of the services that are offered, and decide whether they fall within the full scope
of the language in the involved identifications.” OSF Healthcare, 2023 WL 6140427, at *10
(citation omitted).

Serial No. 99024809
- 29 -
• The website of Emax at emaxllc.com offers “Real Estate Advisory Services,”
which are expressly identified in the application, as well as “Management
Consulting Services” and “Strategic Program Planning & Management”
services, which fall within the broadest reasonable construction of the
“financial information, management and analysis services,” and
“information, advisory and consultancy services relating to” those services
identified in the ’653 Registration;37
• The website of Bazilio Cobb Associates at baziliocobb.com offers “advisory
and consulting services for loan and real estate portfolios” and “Real Estate
Consulting,” which fall within the full scope of the “real estate consultation
services” identified in the application, as well as “Financial Management
Services” and “Management Consulting Services,” which fall within the
broadest reasonable construction of the “financial information,
management and analysis services” and “information, advisory and
consultancy services relating to” those services identified in the ’653
Registration;38
• The website of Kwill Merchant Advisors at kwilladvisors.com offers
“transaction management, asset optimization, and strategic advisory
services to help organizations make informed real estate decisions that
support business growth,” which fall within the full scope of the “Real estate
investment advisory services,” and “real estate asset and real estate
investment acquisition services, real estate consultation services, real
estate advisory services, and real estate development services” identified in
the application, as well as “Financial management services from controller
to CFO level,” which fall within the broadest reasonable construction of the
“financial information, management and analysis services” and
“information, advisory and consultancy services relating to” those services
identified in the ’653 Registration;39
• The website of Gordon Advisors, P.C. at gordoncpa.com offers “Real estate
development and management services” through a “Real Estate Services
Division,” including “comprehensive accounting, tax, and advisory
services,” which fall within the full scope of the “real estate development
services” identified in the application, as well as “financial management”
and “Business & Financial Consulting” services, which fall within the
broadest reasonable construction of the “financial information,
management and analysis services” and “information, advisory and
37 October 22, 2025 Final Office Action at 10-15.
38 Id. at 16-19.
39 Id. at 20-31.

Serial No. 99024809
- 30 -
consultancy services relating to” those services identified in the ’653
Registration;40
• The website of Brexton Commercial at brextoncre.com states that “Capital
Markets and Real Estate Go Hand in Hand,” and offers “real estate
advisory, financial consulting and brokerage services,” which fall within the
full scope of the “real estate consultation services” and “real estate advisory
services” identified in the application, as well as “Consulting” and
“Investment Advisory Services,” which fall within the broadest reasonable
construction of the “financial information, management and analysis
services” identified in the ’653 Registration;41
• The website of Willdan at willdan.com offers “Real Estate & Economic
Development” services, which fall within the full scope of the “real estate
development services” identified in the application, as well as “Financial
Consulting” services, which fall within the broadest reasonable
construction of the “information, advisory and consultancy services relating
to relating to” the “financial information, management and analysis
services” identified in the ’653 Registration;42 and
• The website of Alkaline Advisors at alkaline-advisors.com describes the
company as a “Real estate advisory firm offering custom, 24/7, full service
solutions,” which provides services falling within the full scope of the “real
estate advisory services” identified in the application, as well as “Financial
Modeling & Deal Analysis,” which fall within the broadest reasonable
construction of the “financial information, management and analysis
services” and “information, advisory and consultancy services relating to”
those services identified in the ’653 Registration.43
These third-party uses are sufficient to show that companies that provide one or
more of the real estate-related services identified in the application often also provide
the “financial information, management and analysis services” and “information,
advisory and consultancy services relating to” those services identified in the ’653
40 Id. at 32-40.
41 Id. at 41-43.
42 Id. at 44-52.
43 Id. at 53-59.

Serial No. 99024809
- 31 -
Registration. Hewlett-Packard, 281 F.3d at 1267. The second DuPont factor supports
a conclusion that confusion is likely.
The third DuPont factor “considers ‘[t]he similarity or dissimilarity of established,
likely-to-continue trade channels.’” Detroit Athletic Co., 903 F.3d at 1308 (quoting
DuPont, 476 F.2d at 1361). Applicant argues, again without citing any record
evidence, that its services “are marketed through professional, business-to-business
channels, including real estate investment firms, private consultations, and financial
networks,” to “investors, developers, and businesses” who are “sophisticated and
engaged in long-term, high-stakes investment decisions,” while the services identified
in the ’653 Registration “are marketed primarily through online platforms, digital
tools, and consumer-facing channels directed at automotive dealers and consumers
involved in vehicle transactions.” 6 TTABVUE 4. Applicant also claims that its
identification of services “makes clear that [it] operates within professional financial
and real estate investment markets,” id. at 9, that the registrant’s “channels of trade
are internet-based automotive marketplaces and digital platforms facilitation vehicle
transactions,” and that “[t]hese services are marketed to automotive dealers, vehicle
purchasers, and consumers seeking vehicle information seeking vehicle information
or financing, not to real estate investors or developers.” Id. Applicant concludes that
the “two markets do not overlap in purpose, audience, or method of delivery,” and
that its “services are not offered through the registrant’s online automotive channels,
nor would consumers seeking vehicle information encounter the applicant’s real
estate investment services in the same marketplace.” Id. at 10.

Serial No. 99024809
- 32 -
The Examining Attorney responds that “the services of the parties have no
restrictions as to nature, type, channels of trade, or classes of purchasers and are
‘presumed to travel in the same channels of trade to the same class of purchasers,’” 8
TTABVUE 12 (quoting In re Viterra Inc., 671 F.3d 1358, 1362 (Fed. Cir. 2012)
(internal quotation omitted)), and that the third-party use evidence offered to prove
relatedness also “refutes applicant’s trade channels argument, as the evidence shows
the services are provided by the same entities under the same marks in the same
trade channels.” Id.
We agree with the Examining Attorney’s second argument.44 Applicant’s
arguments regarding the third DuPont factor are unsupported by evidence, but miss
the mark in any event because they purport to establish the channels of trade based
on Applicant’s and the registrant’s actual use of their marks rather than on the
identifications of services in the application and the ’653 Registration. Detroit Athletic
Co., 903 F.3d at 1308 (“the third DuPont factor—like the second factor—must be
evaluated with an eye toward the channels specified in the application and
registration, not those as they exist in the real world”) (citing In re i.am.symbolic, llc,
866 F.3d 1315, 1325-27 (Fed. Cir. 2017); Stone Lion Cap. Partners, L.P. v. Lion Cap.
LLP, 746 F.3d 1317, 1323 (Fed. Cir. 2014)). The involved identifications of services
do not contain any restrictions or limitations regarding channels of trade or classes
of consumers, so we “must therefore assume that these . . . services move in all
44 The Examining Attorney’s first argument quoting Viterra misstates the applicable law
because the referenced presumption applies only where the involved goods or services are
identical, as in Viterra, which is not the case here.

Serial No. 99024809
- 33 -
channels of trade that are usual for such . . . services and are available to all potential
classes of consumers.” Heil Co., 2024 WL 4925901, at *35 (citations omitted).
The evidence that shows that the involved identified services are related because
they are often provided by the same source under the same mark also shows that the
services are provided through some of the same channels of trade, the websites of real
estate companies, to the same classes of consumers. The third DuPont factor also
supports a conclusion that confusion is likely.
D. The Fourth DuPont Factor
“The fourth DuPont factor considers ‘[t]he conditions under which and buyers to
whom sales are made, i.e. ‘impulse’ vs. careful, sophisticated purchasing.’” Stone Lion,
746 F.3d at 1323 (quoting DuPont, 476 F.2d at 1361). We must determine the
conditions and buyers based on the language of Applicant’s identification of services,
not Applicant’s “current activities.” Id. at 1324.
Applicant argues that the services identified in the application are rendered to
“investors, developers, and business” who are ”sophisticated and engaged in long-
term, high-stakes investment decisions.” 6 TTABVUE 4. According to Applicant,
[t]he level of care exercised by consumers of the applicant’s
services significantly reduces any likelihood of confusion.
Real estate investment clients typically engage in multi-
step evaluations, including reviewing investment
proposals, consulting with legal and tax advisors, and
negotiating detailed agreements. They are unlikely to rely
on superficial similarities in names when selecting a firm
to manage or advise on multimillion-dollar real estate
assets. The decision-making process is deliberate,
informed, and based on professional reputation, expertise,
and trust rather than brand name alone.

Serial No. 99024809
- 34 -
Moreover, the cost and complexity of the applicant’s
services inherently demand heightened scrutiny. Clients
often conduct background checks, request references, and
review prior project performance before entering into any
engagement. This level of diligence ensures that consumers
are acutely aware of the identity and qualifications of the
service provider. Such informed and cautious purchasing
behavior makes confusion with a company offering online
vehicle-related services implausible.
In addition, the applicant’s clients are typically repeat
participants in the real estate investment market who are
familiar with industry terminology and the distinctions
among various financial services providers. Their
familiarity with the marketplace further minimizes the
potential for mistaken association.
In conclusion, the high degree of care, sophistication, and
deliberation exercised by consumers of the applicant’s real
estate investment and advisory services eliminates any
realistic likelihood of confusion with the cited mark.
Id. at 11.
The Examining Attorney responds that these arguments are “unpersuasive and
presented without evidence,” 8 TTABVUE 12, and argues that the fact that
consumers of the services identified in the application “are sophisticated or
knowledgeable in a particular field does not necessarily mean that they are
sophisticated or knowledgeable in the field of trademarks or immune from source
confusion.” Id. at 13.
Applicant’s positions are once again based solely on arguments of counsel, not
record evidence, but as with its arguments under the third factor, they miss the mark
in any event. The services identified in the application as “Real estate investment
advisory services; Financial and investment services, namely, real estate asset and
real estate investment acquisition services, real estate consultation services, real

Serial No. 99024809
- 35 -
estate advisory services, and real estate development services” are not limited on the
face of the identification to rendition to “investors, developers, and business” who are
“sophisticated and engaged in long-term, high-stakes investment decisions.” 6
TTABVUE 4. It is improper “to disregard the broad scope of services recited in [the]
application, and to instead rely on [Applicant’s] current . . . practices” because “the
services recited in the application determine the scope of the post-grant benefit of
registration.” Stone Lion, 746 F.3d at 1324.
In Stone Lion, the parties were investment management companies and the
applicant sought registration of its mark for “financial services, namely investment
advisory services, management of investment funds, and fund investment services.”
Id. at 1319. In its decision sustaining the opposition, the Board had “recogniz[ed] that
[the parties] in fact require large minimum investments and target sophisticated
investors,” but had “focused on the sophistication of all potential customers of the
parties’ services as they are recited in the application and registrations, respectively,”
which the Board had found “are not restricted to high-dollar investments or
sophisticated consumers, but rather could be offered to, and consumed by, anyone
with money to invest, including ordinary consumers seeking investment services.” Id.
at 1323 (internal quotation and quotations marks omitted) (emphasis in bold here in
italics in Stone Lion). The Federal Circuit held that the Board “properly
considered all potential investors for the recited services, including ordinary
consumers seeking to invest in services with no minimum investment requirement,”
and that “[a]lthough the services recited in the application also encompass

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sophisticated investors, Board precedent requires the decision to be based on the least
sophisticated potential purchasers.” Id. at 1325 (internal quotation and quotations
marks omitted) (emphasis in bold here in italics in Stone Lion).
Here, at least the “real estate investment advisory services,” “real estate asset and
real estate investment acquisition services,” “real estate consultation services,” and
“real estate advisory services” identified in the application could be rendered to
ordinary consumers. As in Stone Lion, we find that “such ordinary consumers will
exercise care when making financial decisions, but are not immune from source
confusion where similar marks are used in connection with related services.” Id.
(internal quotation and quotations marks omitted). The fourth DuPont factor is
neutral in our analysis of the likelihood of confusion.
E. Summary
The key first and second DuPont factors, and the third factor, support a conclusion
that confusion is likely, while the fourth and sixth factors are neutral. The standard-
character UPSIDE and UPSIDE CAPITAL HOLDINGS marks are quite similar in
appearance, sound, connotation, and commercial impression, and the record shows
that the real estate-related services identified in the application and the “financial
information, management and analysis services” and “information, advisory and
consultancy services relating to” those specific services identified in the ’653
Registration are often provided by companies under the same mark in the same
channels of trade to the same classes of consumers. We conclude that consumers with
a general impression of the cited UPSIDE mark for “financial information,

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management and analysis services” and “information, advisory and consultancy
services relating to” those specific services who separately encounter Applicant’s
UPSIDE CAPITAL HOLDINGS mark for “Real estate investment advisory services;
Financial and investment services, namely, real estate asset and real estate
investment acquisition services, real estate consultation services, real estate advisory
services, and real estate development services” are likely to believe mistakenly that
the services have a common source.
Decision: The refusal to register is affirmed.