Burman Enterprises, LLC dba Firestop America

This opinion is not a
precedent of the TTAB
Mailed: February 26, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Burman Enterprises, LLC
_____
Serial No. 98400883
_____
Anthony A Kuenzel III, of McQueen Kuenzel, LLC,
for Burman Enterprises, LLC
Joe DeMarco, Trademark Examining Attorney, Law Office 133,
Laurie Kaufman, Managing Attorney
_____
Before Heasley, Casagrande, and Lavache, Administrative Trademark Judges.
Opinion by Casagrande, Administrative Trademark Judge:
Burman Enterprises, LLC (Applicant) seeks registration on the Principal Register
of the mark (the literal elements “FIRE STOP AMERICA”
disclaimed) for the following services in International Class 37:
Construction consultancy; Construction consultation;
Consultancy and information services in the field of
construction; Consultancy relating to residential and
building construction; Consultancy relating to the

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construction of buildings; Consultancy services relating to
building construction; Consultancy services relating to the
construction of buildings; Consultation in building
construction supervision; Consulting in the field of building
construction; Building construction consultancy; Building
construction consultancy services; Residential and
building construction consulting.1
The USPTO Examining Attorney refused registration under Section 2(d), 15
U.S.C. § 1052(d), due to likelihood of confusion with the standard-character mark
FIRESTOP SOLUTIONS GROUP (“SOLUTIONS GROUP” disclaimed), which is
registered for services in International Class 45 described as “Fire Prevention
Consultation.”2 The Examining Attorney also refused registration for another,
independent reason: whether Applicant’s specimens of use showed “a direct
association between the mark and services is established when the specimen,” under
Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051 & 1127, and 37 C.F.R. §§
2.34(a)(1)(iv).
After the Examining Attorney issued a final refusal,3 Applicant simultaneously
requested reconsideration (including submitting a substitute specimen of use) and
1 Application Ser. No. 98400883 was filed on February 10, 2024, under Section 1(a) of the
Lanham Trademark Act, 15 U.S.C. § 1051(a), claiming a date of first use anywhere and in
commerce of July 11, 2012. The application describes the mark as follows: “The mark consists
of an octagonal shape, with a red border surrounding a black interior background, upon which
the words ‘FIRE’ and ‘AMERICA’ appear in red uppercase letters, atop and below the word
‘STOP’ which is in larger letters, bordered in red, which have graduated shading from total
red to the left, to white on the right.” The application also states: “The color(s) red, white and
black is/are claimed as a feature of the mark.”
2 Reg. No. 2971261 issued on the Principal Register on July 19, 2005, without a claim of
acquired distinctiveness under Section 2(f), and is renewed.
3 See Jan. 3, 2025, Final Office Action. Any citations to specific pages of prosecution filings
will be to .pdf-format versions of the documents as downloaded from the USPTO’s Trademark
Status & Document Retrieval (TSDR) electronic trademark docketing system.

Serial No. 98400883
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appealed.4 We suspended the appeal and remanded to the Examining Attorney to
consider the request for reconsideration.5 The Examining Attorney denied the
request,6 upon which we resumed the appeal.7 Both Applicant and the Examining
Attorney filed appeal briefs.8 Applicant also filed a reply brief.9 The appeal is now
ready for decision.
We address the Section 2(d) refusal first. Because, for the reasons explained below,
we affirm that refusal, there is no need to address the alternative specimen refusal.
ANALYSIS
Section 2(d) of the Trademark Act prohibits registration of a mark that “so
resembles a mark registered in the Patent and Trademark Office … as to be likely,
when used on or in connection with the goods of the applicant, to cause confusion, or
to cause mistake, or to deceive.” 15 U.S.C. § 1052(d). We determine whether confusion
is likely by analyzing all probative facts in evidence relevant to the likelihood-of-
confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357,
1361 (CCPA 1973). See, e.g., In re Charger Ventures LLC, 64 F.4th 1375, 1379 (Fed.
4 See July 2, 2025, Request for Reconsideration; Notice of Appeal, 1 TTABVUE. References
to the briefs and appeal record cite to the Board’s TTABVUE electronic docket system. The
number preceding “TTABVUE” represents the docket number assigned to the cited filing in
TTABVUE and any number immediately following “TTABVUE” identifies the specifically-
cited page(s), if any.
5 See 2 TTABVUE.
6 See July 11, 2025, Denial of Reconsideration (also at 4 TTABVUE).
7 See 5 TTABVUE.
8 See 6 TTABVUE (Applicant’s brief); 8 TTABVUE (Examining Attorney’s brief).
9 See 9 TTABVUE.

Serial No. 98400883
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Cir. 2023). Though du Pont lists thirteen numbered factors (some with subparts), we
generally address only those that are relevant and material to the case. See, e.g., Shen
Mfg. Co. v. Ritz Hotel, Ltd., 393 F.3d 1238, 1241 (Fed. Cir. 2004); Octocom Sys., Inc.
v. Houston Computer Servs., Inc., 918 F.2d 937, 943 (Fed. Cir. 1990). Typically, these
are the factors that the parties address and on which there is relevant evidence in
the record. See, e.g., Dollar Fin. Grp., Inc. v. Brittex Fin., Inc., 132 F.4th 1363, 1371-
72 (Fed. Cir. 2025); Cunningham v. Laser Golf Corp., 222 F.3d 943, 946-47 (Fed. Cir.
2000). We then weigh together our findings on these factors to determine if, on
balance, they indicate that confusion is likely. See, e.g., Charger Ventures, 64 F.4th
at 1381; In re Majestic Distilling Co., 315 F.3d 1311, 1319 (Fed. Cir. 2003).
A. Comparison of the marks
The first likelihood-of-confusion factor assesses “[t]he similarity or dissimilarity
of the marks in their entireties as to appearance, sound, connotation and commercial
impression.” du Pont, 476 F.2d at 1361. This is always an important inquiry. See, e.g.,
Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165 (Fed. Cir. 2002);
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103 (CCPA 1976).
“Similarity is not a binary factor but is a matter of degree.” In re St. Helena Hosp.,
774 F.3d 747, 752 (Fed. Cir. 2014) (citation omitted). “The proper test is … 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.” In re i.am.symbolic, llc, 866 F.3d 1315, 1323 (Fed. Cir. 2017) (citation
omitted); see also Phillips Petroleum Co. v. Knox Indus. Corp., 277 F.2d 945, 947

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(CCPA 1960) (“This issue is whether the marks are confusingly similar, not whether
they are identical.”) (citation omitted).
In assessing the marks, we compare their “appearance, sound, connotation and
commercial impression.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334,
1340 (Fed. Cir. 2015) (citation omitted); accord i.am.symbolic, 866 F.3d at 1324.
Similarity of all four aspects is not required; in an appropriate case, similarity in even
one aspect may be sufficient to show that confusion is likely. See, e.g., Krim-Ko Corp.
v. Coca-Cola Bottling Co., 390 F.2d 728, 732 (CCPA 1968); Cecile Gagnon Co. v.
Bourjois, Inc., 223 F.2d 731, 733 (CCPA 1955).
We do not compare the marks side-by-side, as though in a laboratory. See, e.g., St.
Helena Hosp., 774 F.3d at 751; Grandpa Pidgeon’s of Mo., Inc. v. Borgsmiller, 477
F.2d 586, 587 (CCPA 1973). The issue is not “whether one can distinguish the marks
at a given moment.” Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005,
1007 (CCPA 1971). Rather, we keep in mind that consumers depend on their
recollection of marks to which they’ve previously been exposed and that their
memories are fallible. See, e.g., Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
1005, 1007 (CCPA 1981). Sometimes their recall of marks they’ve seen or heard before
can be “dim,” see Neutrogena Corp. v. Bristol-Myers Co., 410 F.2d 1391, 1393 (CCPA
1969), or “vague,” see In re J.F. Marr Co., 311 F.2d 814, 815 (CCPA 1963).
We compare marks in their entireties. See, e.g., Oakville Hills Cellar, Inc. v.
Georgallis Holdings, LLC, 826 F.3d 1376, 1380 (Fed. Cir. 2016). Not infrequently,
however, “one feature of a mark may be more significant than another, and it is not

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improper to give more weight to this dominant feature in determining the commercial
impression created by the mark.” Coach Servs., Inc. v. Triumph Learning LLC, 668
F.3d 1356, 1368 (Fed. Cir. 2012) (citations omitted).
With these legal parameters in mind, we now compare the marks. The literal
components of Applicant’s mark are the words FIRE STOP AMERICA. The cited
registered mark is FIRESTOP SOLUTIONS GROUP. The first terms (FIRE STOP
and FIRESTOP) are essentially identical.10 That’s usually significant in assessing the
overall commercial impression of a mark, because “consumers typically notice [first]
words first.” In re Detroit Athl. Co., 903 F.3d 1297, 1303 (Fed. Cir. 2018) (citations
omitted); see also Edom Lab’ys, Inc. v. Llichter, No. 91193427, 2012 WL 1267961, at
*7 (TTAB 2012) (“The term CHIRO, as the first part of opposer’s mark, is most likely
to be impressed upon the mind of a purchaser and remembered.”) (cleaned up, citation
omitted).
Applicant argues that “FIRE STOP” and FIRESTOP are descriptive terms and
emphasizes that the second parts of the respective marks (AMERICA and
“SOLUTIONS GROUP”) are different.11 Applicant urges that the refusal is based on
10 That Applicant’s mark presents the terms as two words and the registered mark
eliminates the space between the two words is not significant in this case. See, e.g., In re Iolo
Techs., LLC, No. 77399654, 2010 WL 2513865, at *2 (TTAB 2010) (“The mark in the cited
registration consists entirely of the words ‘ACTIVE CARE,’ which is also the only wording in
applicant’s mark [ACTIVECARE]. The only difference is that applicant’s mark is a single
compound word, while registrant’s mark is two words. We find this difference to have no
trademark significance.”); In re Best W. Family Steak House, Inc., 1984 WL 63066, at *1
(TTAB 1984) (BEEFMASTER and BEEF MASTER “practically identical”). Applicant does
not argue otherwise.
11 See 6 TTABVUE 11. Applicant stops short of arguing that the entire mark in the cited
registration is descriptive, which would constitute an impermissible collateral attack on the
registration. See, e.g., In re Nat’l Data Corp., 753 F.2d 1056, 1059-60 & n.8 (Fed. Cir. 1985).

Serial No. 98400883
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the Examining Attorney’s “failure to give sufficient weight to these differentiating
elements.”12 We disagree. As Applicant acknowledges, the term AMERICA “evokes a
national scope, or implies a standard of quality associated with the United States”13,
and SOLUTIONS GROUP “connotes a corporate entity focused on providing
comprehensive answers or remedies.”14 These concepts are not mutually exclusive. A
“solutions group” entity may well have a national scope, and a service entity with a
national scope may wish to solve its clients’ issues. Thus, these concepts do very little
to differentiate source but rather serve to highlight and describe aspects of the
respective services. Indeed, in both marks these terms are disclaimed for that reason.
Generally, terms that are disclaimed due to their descriptive nature tend to play
less of a role in the overall commercial impression given by a mark. See, e.g., Citigroup
Inc. v. Cap. City Bank Grp., Inc., 637 F.3d 1344, 1351 (Fed. Cir. 2011) (“CCB’s
applications disclaim BANK and when a mark consists of two or more words, some of
which are disclaimed, the word not disclaimed is generally regarded as the dominant
or critical term.”) (citation omitted); Hewlett-Packard Co. v. Packard Press, Inc., 281
F.3d 1261, 1266 (Fed. Cir. 2002) (“Given the descriptive nature of the disclaimed word
‘Technologies,’ the Board correctly found that the word ‘Packard’ is the dominant and
distinguishing element of PACKARD TECHNOLOGIES.”). More important here,
however, is that the role played by these terms in the overall commercial impression
12 See id.
13 See id.
14 See id.

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of the marks as wholes is diminished by the fact that they’re not the first terms in
the respective marks. See, e.g., Century 21 Real Estate Corp. v. Century Life of Am.,
970 F.2d 874, 876 (Fed. Cir. 1992) (Board correctly found that “Century” is the
“dominant element of CENTURY LIFE OF AMERICA due to applicant’s disclaimer
of the rest of its mark” and because “upon encountering each mark, consumers must
first notice this identical lead word”). As the Board has noted before, consumers have
a “penchant” to shorten marks. See, e.g., 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) (“users of language have a universal habit of
shortening full names—from haste or laziness or just economy of words”)); accord
Sabhnani v. Mirage Brands, LLC, No. 92068086, 2021 WL 6072822, at *18 (TTAB
2021). So we do not see these ending words as doing much work to differentiate the
marks in the eyes of consumers.
Applicant next insists that its design differentiates the marks.15 But Applicant
does not explain how, other than to vaguely argue that “[t]he stylized nature of
Applicant’s Mark, combined with the distinct word ‘AMERICA,’ creates a unique
visual and conceptual identity that is separate from the standard character mark of
the Registrant.”16 To our eyes, the design elements do little, if anything, to
differentiate the overall commercial impressions of the marks.
15 See 6 TTABVUE 12.
16 See id.

Serial No. 98400883
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Putting aside that designs do not come into play when orally discussing a brand
of goods or a service provider, the design comprises a large, red-outlined, octagonal
shape, which serves as background for the words. The octagonal shape and red color
is reminiscent of a traffic stop sign, and the word “STOP” appears in the largest-sized
typeface, positioned in the center of the red octagon, just as it would be in a “STOP”
sign. That presentation reinforces the term STOP in “FIRE STOP,” which also
appears in the first term of the cited mark. The mark also contains changing-gradient
red fill: . The red fill conjures heat or fire and thus reinforces the
literal term FIRE. So while the design and typefaces superficially constitute a visual
difference, collectively they do little, if anything, to impart Applicant’s mark with a
different connotation or overall commercial impression than that of the mark in the
cited registration. Cf. Herbko Int’l, 308 F.3d at 1165 (“This design connotes a
crossword puzzle, which reinforces the connotation created by the words
[CROSSWORD COMPANION] of the mark. Thus, the puzzle design does not convey
any distinct or separate impression apart from the word portion of the mark. Rather,
it serves only to strengthen the impact of the word portion in creating an association
with crossword puzzles.”).
In summary, though the different terms that follow FIRE STOP and FIRESTOP
collectively create visual and aural differences, they do not detract much from the

Serial No. 98400883
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similarity imparted by the lead terms FIRE STOP and FIRESTOP. Nor does
Applicant’s design play much of a differentiating role. Putting all this together, we
find the overall commercial impressions of the marks to be quite similar. When we do
our final weighing, this will be on the “confusion is likely” side of the scale, though its
net weight—whatever that turns out to be in view of the potential interplay of other
factors, e.g., the sixth du Pont factor, see infra—will be less than it would have been
had the marks been identical.
B. Comparison of the services
The likelihood-of-confusion inquiry also examines “[t]he similarity or dissimilarity
and nature of the goods or services as described in an application or registration.” du
Pont, 476 F.2d at 1361. We compare the services as they are set forth in the
applications and registration. See, e.g., Detroit Athl., 903 F.3d at 1307; i.am.symbolic,
866 F.3d at 1325. This is a factor of “considerable importance” when weighing
whether confusion is likely or not. See, e.g., Pink Lady Corp. v. L.N. Renault & Sons,
Inc., 265 F.2d 951, 953 (CCPA 1959); Pep Boys–Manny, Moe and Jack v. Edwin F.
Guth Co., 197 F.2d 527, 528-29 (CCPA 1952).
Applicant argues that the two services are “distinct.”17 But “[i]t is … not necessary
that the goods of the parties be identical in order to sustain a finding of likelihood of
confusion.” In re Rsch. & Trading Corp., 793 F.2d 1276, 1278 (Fed. Cir. 1986)
(citations omitted). Rather, “likelihood of confusion can be found if the respective
products are related in some manner and/or if the circumstances surrounding their
17 See 6 TTABVUE 14-15.

Serial No. 98400883
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marketing are such that they could give rise to the mistaken belief that they emanate
from the same source.” Coach Servs., 668 F.3d at 1369 (citation omitted); see also
Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 1328 (Fed.
Cir. 2017) (Newman, J., concurring) (relatedness of goods or services “should be
analyzed along a sliding scale”).
Here, the services listed in the cited registration are “Fire Prevention
Consultation.” Applicant’s services are consulting in the field of building construction.
The record reflects excerpts from three websites explaining that fire prevention
consultants participate in the building construction process.18 Thus, the application’s
identification of consulting in the field of building construction is broad enough to
cover “fire prevention consultation” in the cited registration, which includes fire
prevention consultation in the field of construction. The services thus overlap.
There is also evidence in the record that other companies offer both services under
the same mark. This shows that relevant consumers view the services as related. See,
e.g., Naterra Int’l, Inc. v. Bensalem, 92 F.4th 1113, 1117 (Fed. Cir. 2024); Detroit Athl.,
903 F.3d at 1306; Hewlett-Packard, 281 F.3d at 1267. The more consumers see
companies offering two non-identical services under one mark, the more they tend to
see those services as related in the sense that they may emanate from the same
source, and the Examining Attorney placed evidence in the record that several other
companies offer both types of services:
18 See SFPE website (July 11, 2025, Denial of Reconsideration, at TSDR 26); Chamberlin
website (id. at 30-31); Int’l Ass’n of Fire Chiefs website (id. at 36).

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• SAFEbuilt offers consultation and planning in the construction field that
includes fire prevention;19
• Exponent offers consulting in fire prevention and suppression and in
building construction;20
• Vertex offers consulting in building construction and fire protection
systems design;21
• Campbell Consulting Services offers consulting in the areas of building
construction and fire safety;22
• CCA offers consulting in the fields of fire prevention plans and building
construction;23
• Rimkus offers consulting in the areas of building construction and fire
protection;24
• EFI Global offers consulting in the fields of fire protection and construction
of building “envelopes” (i.e., roofs and exterior wall systems);25
• PDM Constructors offers consulting in the fields of “Fireproofing and
Firestopping” as well as building construction;26
• R•M•B offers construction consulting as well as advice on fire safety;27
• Fireshield consults on fire safety systems through, inter alia, “pre-
construction consulting”;28
19 See Jan. 3, 2025, Final Office Action, at TSDR 11-23.
20 See id. at 25-45.
21 See id. at 46-57.
22 See id. at 58-61.
23 See id. at 62-66.
24 See id. at 68-77.
25 See id. at 78-84.
26 See July 11, 2025, Denial of Reconsideration, at TSDR 7-12.
27 See id. at 13-24.
28 See id. at 40-41.

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• DJG Insulation collaborates “with residential and commercial builders” on
“firestopping systems”;29 and
• G&M Services website states that “firestop contractors” work “both in new
construction work” and in existing property renovation;30
Applicant tries to minimizes the third-party evidence by suggesting that “[t]hese
entities are often large, multi-disciplinary consulting firms that provide a vast array
of specialized services through distinct departments or divisions.”31 Applicant suggest
that, in contrast, it and the owner of the cited registration currently are a small,
“specialized” companies.32 Some of the websites give the impression that the firms
are multidisciplinary; others do not.33 But this is beside the point. There are no
restrictions in the application (or the cited registration) as to the size of offeror of the
services, and though Applicant may currently be a small, “specialized” company, were
this registration to issue, Applicant would be able not only to expand its business as
much as it wanted and could accomplish, but also could freely sell the business and
assign the registration to a larger, broader consulting company, like those Applicant
believes many of the third parties to be. Cf. CBS Inc. v. Morrow, 708 F.2d 1579, 1581
(Fed. Cir. 1983) (“a registrant’s current business practices … may change at any
time”); San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683,
29 See id. at 44-45.
30 See id. at 56.
31 See 6 TTABVUE 14-15.
32 See 6 TTABVUE 15; 9 TTABVUE 7.
33 Applicant did not submit any evidence of its own to substantiate its claims as to the size
or breadth of these third-party construction consulting businesses, leaving us to infer what,
if anything, we can from the few webpages of each in the record.

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684-85 (CCPA 1977) (same). In short, there is no basis for us to discount the impact
on consumer perception of the existence of these third parties who offer both the
services in the application and those in the cited registration.
In summary, the evidence shows that the respective services overlap to a degree
and otherwise are related. In our final weighing of the relevant factors, this will
support a conclusion that confusion is likely.
C. Comparison of the channels of trade and the classes of
relevant customers
Another consideration in determining whether confusion is likely is “[t]he
similarity or dissimilarity of established, likely-to-continue trade channels.” du Pont,
476 F.2d at 1371. It is also “relevant to consider the degree of overlap of consumers
exposed to the respective services ….” In re Shell Oil Co., 992 F.2d 1204, 1207 (Fed.
Cir. 1993); see also du Pont, 476 F.2d at 1361 (listing “buyers to whom sales are made”
as a consideration). We make our assessment of the trade channels and customer
classes based on the services as set forth in the applications and cited registration.
See, e.g., Detroit Athl., 903 F.3d at 1308; Glamorene Prods. Corp. v. Procter & Gamble
Co., 538 F.2d 894, 896 (CCPA 1976).
We found in the preceding section that the services overlap to a degree. To that
extent, we presume that the trade channels and classes of customers overlap as well.
See, e.g., Stone Lion Cap. Partners, L.P. v. Lion Cap. LLP, 746 F.3d 1317, 1323 (Fed.
Cir. 2014); In re Hitachi High-Techs. Corp., No. 79110412, 2014 WL 879500, at *4
(TTAB 2014). The presumption is confirmed by the third-party website evidence
summarized in the preceding section, which the Examining Attorney argues

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“conclusively establishes Applicant’s and Registrant’s services … are marketed to the
same consumer class in the same trade channels.”34 Applicant does not address these
factors directly, but, in addressing consumer care and sophistication—which we
discuss in the next section—Applicant seems to agree that both types of services are
offered to “businesses, developers, [and] public entities.”35
Thus, the overlap in trade channels and classes of customers will both favor a
likelihood of confusion when weigh our findings on the relevant factors.
D. “The conditions under which … sales are made, i. e.
‘impulse’ vs. careful, sophisticated purchasing”
We next consider “[t]he conditions under which … sales are made, i. e. “impulse”
vs. careful, sophisticated purchasing.” du Pont, 476 F.2d at 1361. As we alluded to in
the preceding section, Applicant contends that the respective services are “highly
specialized,” offered not to individual consumers but to “highly knowledgeable
businesses.”36 We agree with Applicant that, given the descriptions of the respective
services and the evidence showing how third parties who provide both market their
services, consumers of such services are primarily, if not exclusively, construction
businesses or public or private entities that own properties and are considering
significant infrastructure renovations.
34 See 8 TTABVUE 10.
35 See 6 TTABVUE 15; 9 TTABVUE 5.
36 See 6 TTABVUE 15; 9 TTABVUE 5. Applicant at times uses the shorthand “B2B” services,
meaning “business-to-business.”

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We further agree with Applicant that, as the predecessor to our primary reviewing
court has put it: “[C]onfusion is less likely where [services] are expensive and are
purchased after careful consideration than where they are inexpensive and are
purchased casually.” Magnaflux Corp. v. Sonoflux Corp., 231 F.2d 669, 671 (CCPA
1956) (citations omitted); accord Weiss Assocs., Inc. v. HRL Assocs., Inc., 902 F.2d
1546, 1548 (Fed. Cir. 1990). But that principle is not unlimited. As the Examining
Attorney notes,37 that principle lives in counterpoise with another: expertise in a
professional field isn’t the same things as expertise in distinguishing between similar
service marks. See, e.g., Rsch. and Trading Corp., 793 F.2d at 1279 (“That the
relevant class of buyers may exercise care does not necessarily impose on that class
the responsibility of distinguishing between similar trademarks for similar [services].
Human memories even of discriminating purchasers are not infallible.” ) (cleaned up;
citation omitted); see also Charger Ventures, 64 F.4th at 1383 (“[C]areful or
sophisticated consumers are not immune from source confusion.”); Contour Chair-
Lounge Co. v. Englander Co., 324 F.2d 186, 189 (CCPA 1963) (“We do not believe that
mere high cost necessarily makes a purchaser discriminating as to the source of the
goods … .”).
Nevertheless, we disagree with the Examining Attorney’s assertion that “the
record is wholly devoid of evidence to establish the parties’ consumers exert more
than an ordinary level of care when purchasing the parties’ services.”38 The issue in
37 See 8 TTABVUE 15.
38 See id.

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this appeal is not whether “the parties’ consumers” are or are not careful, but
whether consumers of the types of services identified in the application and
registration are or are not careful. See, e.g., Can. Imperial Bank of Com. v. Wells
Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1492-93 (Fed. Cir. 1987) (basing the finding
on this factor not on the parties’ current practices, but on the services as described);
Feed Serv. Corp. v. FS Servs., Inc., 432 F.2d 478, 480 (CCPA 1970) (same). And from
the third-party evidence in the record, these respective types of services are likely to
be procured with care. In our final weighing and balancing of our findings on the
relevant factors, this factor will count in Applicant’s favor. Just how much will depend
on the confluence of the findings we make on the other relevant factors.
E. “The number and nature of similar marks in use on similar
goods”
Another factor to consider is “[t]he number and nature of similar marks in use on
similar goods.” du Pont, 476 F.2d at 1361. “The purpose of introducing evidence of
third-party use is to show that customers have become so conditioned by a plethora
of such similar marks that customers have been educated to distinguish between
different such marks on the bases of minute distinctions. Third-party use is relevant
to show that a mark is relatively weak ….” Omaha Steaks Int’l, Inc. v. Greater Omaha
Packing Co., 908 F.3d 1315, 1324 (Fed. Cir. 2018).
Applicant makes the argument that there is a “crowded field” of marks containing
FIRESTOP (as in the registered mark) or FIRE STOP (as in Applicant’s mark) and
that this “compel[s] consumers to rely on subtle differences for source

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identification.”39 But Applicant does not point to any evidence in the record of third
parties using marks with those terms. Rather, Applicant points to what it claims are
USPTO records of applications and registrations.
In In re Mighty Leaf Tea, 601 F.3d 1342 (Fed. Cir. 2010), the Federal Circuit
pointed out that registrations do not by themselves prove use. The Court cited and
quoted Professor McCarthy’s leading treatise: “The mere citation of third party
registrations is not proof of third party uses for the purpose of showing a crowded
field and relative weakness.” Id. at 1347 (quoting 2 J. THOMAS MCCARTHY, MCCARTHY
ON TRADEMARKS AND UNFAIR COMPETITION § 11:89 (4th ed. 2009));40 see also AMF Inc.
v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406 (CCPA 1973) (“The existence of [third
party] registrations is not evidence of what happens in the market place or that
customers are familiar with them....”)); In re Morinaga Nyugyo K.K., No. 86338392,
2016 WL 5219811, at *8 (TTAB 2016) (“[T]hird-party registrations standing alone,
are not evidence that the registered marks are in use on a commercial scale, let alone
that consumers have become so accustomed to seeing them in the marketplace that
they have learned to distinguish among them by minor differences.”) (citations
omitted).
Third-party registrations of similar marks can show something different: “The
existence of third-party registrations on similar goods can bear on a mark’s
39 See 6 TTABVUE 12-13.
40 The current version of the MCCARTHY treatise contains the substantially the same quote.
See MCCARTHY § 11:89 (“The citation of third party registrations is not proof of third party
uses for the purpose of showing a crowded field and relative weakness of a mark.”) (5th ed.
Dec. 2025 update).

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conceptual strength. Specifically, third-party registrations containing an element
that is common to both … marks can show that that element has a normally
understood and well-recognized descriptive or suggestive meaning.” Spireon, Inc. v.
Flex Ltd., 71 F.4th 1355, 1363 (Fed. Cir. 2023) (citations omitted); accord Institut
Nat’l des Appellations d’Origine v. Vintners Int’l Co., 958 F.2d 1574, 1582 (Fed. Cir.
1992).41
But there are no third-party registrations in the record. As the Examining
Attorney points out, all that Applicant provided was a list containing incomplete
excerpts of search results from the USPTO’s public electronic databases. As we have
consistently held, however, “[m]ere listings of registrations are not sufficient to make
the registrations of record.” In re Star Belly Stitcher, Inc., No. 85247730, 2013 WL
4635976, at *6 (TTAB 2013) (citation omitted); accord In re Compania de Licores
Internacionales S.A., No. 75010230, 2012 WL 1267898, at *2 (TTAB 2012); In re
Hoefflin, No. 77632391, 2010 WL 5191373, at *3 (TTAB 2010).42
For all these reasons, we do not credit Applicant’s “crowded field,” i.e., commercial
strength, argument.
41 Applications are not probative at all for this purpose: In re Mr. Recipe, LLC, No. 86040643,
2016 WL 1380730, at *6 (TTAB 2016) (“a pending application is evidence only that the
application was filed on a certain date; it is not evidence of use of the mark”); In re Pedersen,
No. 85328868, 2013 WL 6926518, at *10 n.45 (TTAB 2013) (“The Board has long held that
third-party applications are evidence only of the fact that they were filed; they have no other
probative value.”); accord Longshore v. Retail Royalty Co., 589 F. App’x 963, 967 n.4 (Fed.
Cir. 2014).
42 Yet another problem is that Applicant searched for the terms not just in the marks, but
anywhere in the USPTO records for applications and registrations, including the
descriptions of the goods and services. See July 2, 2025, Request for Reconsideration, at TSDR
18-48. So this list includes many marks that do not contain FIRESTOP or FIRE STOP.

Serial No. 98400883
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As to conceptual strength, we note that the mark in the cited registration was
registered in 2005 without a claim of acquired distinctiveness under Section 2(f) of
the Act, and thus is presumed inherently distinctive as a whole. See, e.g., Brooklyn
Brewery Corp. v. Brooklyn Brew Shop, LLC, 17 F.4th 129, 146 (Fed. Cir. 2021). The
evidence the Examining Attorney placed in the record suggests that, at present (i.e.,
over 20 years later), the component term “FIRESTOP” appears to be used with some
regularity to describe services that are a subset of the services for which the mark is
registered.43 Thus, at present, this component term appears to be somewhat
conceptually weakened as to the services at issue. Accordingly, as to conceptual (but
not market) strength, the sixth du Pont factor will weigh in Applicant’s favor when
we perform our final weighing. The ultimate impact this factor will have, of course,
depends on its interplay with the other likelihood-of-confusion factors.
F. “The length of time during and conditions under which
there has been concurrent use without evidence of actual
confusion”
The eighth factor du Pont lists is “[t]he length of time during and conditions under
which there has been concurrent use without evidence of actual confusion.” 476 F.2d
at 1361. Applicant argues that it’s been using the mark for many years (since 2009)
with no evidence of actual confusion.44 But the one declaration in the record (of the
“Authorized Representative” of Applicant) does not actually state that Applicant is
43 See September 12, 2024, Nonfinal Office Action, at TSDR 10-15, 19-24, 25-27; July 11,
2025, Denial of Reconsideration, at TSDR 7-12, 30-35, 43-46, 56-57.
44 6 TTABVUE 13-14.

Serial No. 98400883
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unaware of any instances of actual confusion between the mark in the cited
registration and the mark in the application. The declaration states only that the
mark “FIRE STOP AMERICA” (as opposed to the word and design mark in the
application) has been in continuous use since 200945 for “Installation of Fire-
Retardant compositions in commercial, industrial, and residential buildings to inhibit
the scope of fire”46 (which is a different service than the “construction consulting”
services identified in the application). Thus, there is no evidence that there has been
no actual confusion between the mark in the application before us and the mark
of the cited registration.47
On this record, the eighth likelihood-of-confusion is neutral.
45 See Dec. 11, 2024, Response to Nonfinal Office Action, at TSDR 19.
46 See id. at 20.
47 Even if there were a declaration in the record attesting to Applicant’s lack of actual
confusion between the mark in the application and the mark in the cited registration, we
would be getting only half the story because the registrant is not a party to these proceedings.
See, e.g., In re Guild Mortg. Co., No. 86709944, 2020 WL 1639916, at *9 (TTAB 2020).
Moreover, such a declaration would be meaningful only if the record indicates appreciable
and continuous use by Applicant of its mark for a significant period of time in the same
markets as those served by Registrant under its marks. See Citigroup, Inc. v. Cap. City Bank
Grp., Inc., No. 91177415, 2010 WL 595586, at *17 (TTAB 2010), aff’d, 637 F.3d 1344 (Fed.
Cir. 2011); Gillette Can. Inc. v. Ranir Corp., No. 91082769, 1992 WL 215312, at *6 (TTAB
1992). In other words, for the absence of actual confusion to be probative, there must have
been a reasonable opportunity for confusion to have occurred. Han Beauty, Inc. v. Alberto-
Culver Co., 236 F.3d 1333, 1338 (Fed. Cir. 2001) (averments of no actual confusion discounted
due to absence of evidence of length of time and circumstances the parties’ goods under
respective marks were sold); Barbara’s Bakery Inc. v. Landesman, No. 91157982, 2007 WL
196406, at *5 (TTAB 2007) (probative value of the absence of actual confusion depends
whether circumstances indicate a significant opportunity for actual confusion to have
occurred). Our review of the record does not reveal this necessary contextual evidence.

Serial No. 98400883
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G. Weighing the findings on the relevant factors together
Having made findings on each of the relevant likelihood-of-confusion factors, our
final step is to assess together the findings we have made on the relevant factors to
determine if, on balance, they indicate that confusion is likely as to the marks before
us. See, e.g., Charger Ventures, 64 F.4th at 1384.
“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.”
Federated Foods, 544 F.2d at 1103; In re Max Cap. Grp. Ltd., No. 77186166, 2010 WL
22358, at *1 (TTAB 2010) (“In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods and/or services.”) (citations omitted).
Here, the services overlap in part and otherwise are clearly related. This is a
weighty factor. See, e.g., Pink Lady Corp., 265 F.2d at 953; Pep Boys, 197 F.2d at 528-
29. And the marks are similar. These core factors both support a conclusion that
confusion is likely. The evidence also shows that the respective channels of trade and
classes of customers overlap, adding further weight toward a conclusion that
confusion is likely.
On the other side of the scale is evidence showing that the targeted classes of
customers are business entities who typically may be expected to choose services
relating to building construction with care. Further, the component term FIRESTOP
in the cited registration appears to have developed a degree of conceptual weakness.
On balance, however, we believe that these two factors are outweighed by the overall

Serial No. 98400883
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similarity in the marks, the overlap and relatedness of the respective services, and
the corresponding overlap in the channels of trade and classes of customers. See, e.g.,
Rsch. and Trading Corp., 793 F.2d at 1279 (consumer care outweighed by other
factors); Conde Nast Publ’ns, Inc. v. Miss Quality, Inc., 507 F.2d 1404, 1406 (CCPA
1975) (where the factors on balance indicate that confusion is likely, “that ends the
matter whether appellant’s mark be termed ‘weak’ or ‘strong’”); Matsushita Elec.
Indus. Co. v. Nat’l Steel Const. Co., 442 F.2d 1383, 1385 (CCPA 1971) (“Neither
trademarks nor the public are adequately protected unless decisions in cases of this
kind are based on a realistic appraisal of the likelihood of purchasers or prospective
purchasers being confused as to source regardless of theoretical ‘weakness’ of a
mark.”).
On balance, we conclude on the evidence before us that confusion is likely.
Decision: We affirm the Section 2(d) refusal in this case. As a consequence, we
need not decide whether, alternatively, Applicant’s specimens are deficient.