98620760•Green Leaf Consulting Group, Inc.
Texte intégral
This Opinion is Not a Precedent of the TTAB Mailed: July 21, 2026 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Green Leaf Consulting Group, Inc. _____ Serial No. 98620760 _____ Kevin Grierson of CM LAW LLP, for Green Leaf Consulting Group, Inc. Jaime Batt, Trademark Examining Attorney, Law Office 125, Robin Mittler, Managing Attorney. _____ Before Pologeorgis, Casagrande, and Stanley, Administrative Trademark Judges. Opinion by Stanley, Administrative Trademark Judge: Green Leaf Consulting Group, Inc. (“Applicant”) seeks registration on the Principal Register of the standard-character mark GREENVIEW for “Software as a service (SAAS) services featuring software for deploying and reviewing reports, dashboards and analytics in a customizable interface that can be white labeled for external use,” in International Class 42.1 1 Application Serial No. 98620760 was filed on June 26, 2024 under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention to use the mark in commerce.
Serial No. 98620760 - 2 - The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when used in connection with the identified services, so resembles the registered composite mark (the “Cited Mark”), for the services listed below, that it is likely to cause confusion, to cause mistake, or to deceive: Business consultation services, professional business consulting, Business advisory services, consultancy and information; Statistical analysis and reporting services for business purposes; Business consulting service that provides transformational strategies to hospitality and tourism organizations wishing to move towards sustainability and socially responsible business practices, in International Class 35.2 When the refusal was made final, Applicant appealed. The case is now briefed.3 We affirm the refusal to register Applicant’s mark. 2 Registration No. 4509504 issued on the Principal Register on April 8, 2014 and has been renewed. The registration includes the following description: “The mark consists of the word ‘GREENVIEW’ with the ‘GREEN’ portion of the mark appearing in dark green and the ‘VIEW’ portion of the mark appearing in light green. Directly above the word ‘GREENVIEW’ are four leaves appearing in forest green.” The colors dark green, light green and forest green are claimed as a feature of the mark. The cited registration is owned by Greenview LLC (“Registrant”). 3 Applicant’s brief is at 4 TTABVUE. The Examining Attorney’s brief is at 6 TTABVUE. Applicant’s reply brief is at 9 TTABVUE. Applicant’s initial reply brief (7 TTABVUE) exceeded the page limit, and pursuant to the Board’s April 7, 2026 order giving Applicant time to file a substitute reply brief (8 TTABVUE), Applicant filed a substitute reply brief that same day (9 TTABVUE). Citations to the appeal record are to TTABVUE, the Board’s online docketing system. Citations to the prosecution file are to the USPTO’s TRADEMARK STATUS & DOCUMENT RETRIEVAL (“TSDR”) system in .pdf format.
Serial No. 98620760 - 3 - I. Likelihood of Confusion Section 2(d) of 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, mistake, or deception. 15 U.S.C. § 1052(d); see also In re Charger Ventures LLC, 64 F.4th 1375, 1379 (Fed. Cir. 2023). Our determination under Section 2(d) is based on an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (“DuPont”); see also In re Majestic Distilling Co., 315 F.3d 1311, 1315 (Fed. Cir. 2003). When analyzing the likelihood of confusion factors, the overriding concerns are not only to prevent buyer confusion as to the source of the goods and services, but also to protect registrants from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1207-08 (Fed. Cir. 1993). In any likelihood of confusion analysis, different DuPont factors may play a dominant role, and some factors may not be relevant. Naterra Int’l, Inc. v. Bensalem, 92 F.4th 1113, 1116 (Fed. Cir. 2024) (citing Tiger Lily Ventures Ltd. v. Barclays Cap. Inc., 35 F.4th 1352, 1362 (Fed. Cir. 2022)). Varying weight may be assigned to each factor depending on the evidence presented, and “any one of the factors may control a particular case.” Id.; see also Charger Ventures, 64 F.4th at 1381. Although we consider each DuPont factor for which there is evidence and argument, In re Guild Mortg. Co., 912 F.3d 1376, 1379 (Fed. Cir. 2019), two key considerations are the similarities between the marks and the similarities between the services. In re
Serial No. 98620760 - 4 - i.am.symbolic, llc, 866 F.3d 1315, 1322 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65 (Fed. Cir. 2002)). These factors, and others, are discussed below. A. The Marks The first DuPont factor requires us to compare the marks in their entireties as to appearance, sound, connotation, and commercial impression. Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371 (Fed. Cir. 2005); see also Stone Lion Cap. Partners, L.P. v. Lion Cap. LLP, 746 F.3d 1317, 1319 (Fed. Cir. 2014). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, No. 87075988, 2018 WL 2734893, at *5 (TTAB 2018) (quoting In re Davia, No. 85497617, 2014 WL 2531200, at *2 (TTAB 2014)), aff’d mem., 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). “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) (quoting In re Coors Brewing Co., 343 F.3d 1340, 1344 (Fed. Cir. 2003)). 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.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373 (Fed. Cir. 2018) (quoting Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 1368
Serial No. 98620760 - 5 - (Fed. Cir. 2012)) (internal quotation marks and citation omitted). “The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks.” In re St. Julian Wine Co., No. 87834973, 2020 WL 2788005, at *6 (TTAB 2020). We must base our comparison on the marks in their entireties, not on a dissection of their individual components. In re Nat’l Data Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985). “No element of a mark is ignored simply because it is less dominant, or would not have trademark significance if used alone.” In re Electrolyte Labs. Inc., 929 F.2d 645, 647 (Fed. Cir. 1990) (citing Spice Islands, Inc. v. Frank Tea & Spice Co., 505 F.2d 1293 (CCPA 1974)). Nonetheless, “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 Nat’l Data, 753 F.2d at 1058). With these principles in mind, we compare Applicant’s standard-character mark GREENVIEW with the cited composite mark . In sound and appearance, the marks are virtually identical. The sole literal element of the Cited Mark – GREENVIEW − is identical to the entirety of Applicant’s mark. The stylized color treatment and four-leaf design in the Cited Mark do not diminish the dominance of the shared word GREENVIEW. When evaluating a
Serial No. 98620760 - 6 - composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to request the services. In re Viterra Inc., 671 F.3d 1358, 1362 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F.2d 1579, 1581-82 (Fed. Cir. 1983)); see also In re Appetito Provisions Co., No. 423405, 1987 WL 124293, at *1 (TTAB 1987) (“if one of the marks comprises both a word and a design, then the word is normally accorded greater weight because it would be used by purchasers to request the goods or services”). Moreover, because Applicant is seeking to register its mark in standard characters, it is not limited to any particular lettering style, color, or font − and could therefore be displayed in a manner identical or substantially similar to the stylized GREENVIEW in the Cited Mark, further heightening the similarity between the marks. Viterra, 671 F.3d at 1363; Citigroup Inc. v. Cap. City Bank Grp. Inc., 637 F.3d 1344, 1353 (Fed. Cir. 2011). As to connotation and commercial impression, nothing in the record suggests − nor does Applicant argue − that the term GREENVIEW conveys a different meaning or creates a different commercial impression when used in connection with Applicant’s services than when used in connection with the services identified in the cited registration. In re Embiid, No. 88202890, 2021 WL 2285576, at *9 (TTAB 2021) (“[T]here is no evidence here, or other reason to find, that the mark TRUST THE PROCESS has one meaning when used with shoes, and a second and different
Serial No. 98620760 - 7 - meaning when used with shirts and sweatshirts, based on the nature of the respective goods.”). In sum, the marks share an identical dominant word element − the term GREENVIEW − and differ only in the Cited Mark’s addition of non-dominant design and stylization elements. Where, as here, the sole literal elements of the marks are identical, the first DuPont factor weighs heavily in favor of a likelihood of confusion. B. The Services We next consider the relatedness of the parties’ services, assessed based on the identifications in the application and cited registration. See Detroit Athletic, 903 F.3d at 1307 (“The relevant inquiry in an ex parte proceeding focuses on the goods and services described in the application and registration, and not on real-world conditions.”) (emphasis in italics in original); Stone Lion Cap. Partners, 746 F.3d at 1323; Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267 (Fed. Cir. 2002). “‘[I]t is not necessary that the products [or services] be similar or even competitive to support a finding of likelihood of confusion.’” Coach Servs., 668 F.3d at 1369 (quoting 7-Eleven, Inc. v. Wechsler, No. 91117739, 2007 WL 1431084, at *6 (TTAB 2007)). Nor is the question whether the services themselves will be confused with each other; rather, it is whether consumers would be confused as to their source. See Recot, Inc. v. Becton, 214 F.3d 1322, 1329 (Fed. Cir. 2000). It is sufficient that the services “are related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the services] emanate from the same source.” Coach Servs., 668 F.3d at 1369.
Serial No. 98620760 - 8 - Evidence of relatedness may include news articles and/or evidence from online databases showing that the relevant services are used together or used by the same purchasers; advertisements showing that the relevant services are advertised together or sold by the same manufacturer or dealer; and/or copies of prior use-based registrations of the same mark for both an applicant’s services (or similar services) and the services listed in the cited registration (or similar services). See, e.g., In re Country Oven, Inc., No. 87354443, 2019 WL 6170483, at *2 (TTAB 2019); Davia, 2014 WL 2531200, at *6-8 (finding pepper sauce and agave related where evidence showed both were used for the same purpose in the same recipes and thus consumers were likely to purchase the products at the same time and in the same stores). As noted above, Applicant’s services are identified as: Software as a service (SAAS) services featuring software for deploying and reviewing reports, dashboards and analytics in a customizable interface that can be white labeled for external use. And the cited registration identifies: Business consultation services, professional business consulting, Business advisory services, consultancy and information; Statistical analysis and reporting services for business purposes; Business consulting service that provides transformational strategies to hospitality and tourism organizations wishing to move towards sustainability and socially responsible business practices. We find the services related for the following reasons. 1. The Services Are Intrinsically Related The Federal Circuit has recognized that goods or services sometimes are intrinsically related. See, e.g., Tiger Lily Ventures, 35 F.4th at 1363 n.3; Majestic
Serial No. 98620760 - 9 - Distilling, 315 F.3d at 1315; Shell Oil, 992 F.2d at 1207. Here, the respective services share an intrinsic functional relationship. Applicant’s identification covers the provision of a hosted software platform that enables users to deploy and review reports, dashboards, and analytics. The cited registration covers, among other things, “[s]tatistical analysis and reporting services for business purposes” − i.e., the performance of statistical analysis and reporting as a professional consulting deliverable. Both address the same core business function: analyzing data and generating reports. They differ principally in the mode of delivery − software platform versus professional service − rather than in the underlying need they serve. Where a technology service automates or facilitates the same function that a professional service performs, the two may be found intrinsically related. Here, a consumer seeking “statistical analysis and reporting services for business purposes” and a consumer seeking a SaaS platform for “deploying and reviewing reports, dashboards and analytics” are both seeking solutions to the same problem: generating actionable analytical insights from business data. See Recot, 214 F.3d at 1329 (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods. It is this sense of relatedness that matters in the likelihood of confusion analysis.”). Critically, neither identification limits the context in which these services are offered − the cited registration does not restrict its “statistical analysis and reporting services” to any particular mode of delivery, and
Serial No. 98620760 - 10 - Applicant’s identification does not restrict its SaaS to users who would never also seek consulting assistance with the same underlying business function. We recognize that not every software product that digitizes a function previously performed by a professional service will be found related to that professional service for purposes of Section 2(d). The degree of overlap in the core function, the marketplace context, and the expectations of the relevant consumers all bear on this determination. Here, the overlap is substantial and specific: both identifications expressly reference the generation of reports and analytics for business purposes, and the marketplace evidence discussed below confirms that consumers encounter both types of offerings from a single source. See Kellogg Co. v. General Mills, Inc., No. 91125884, 2007 WL 499921, at *5 (TTAB 2007) (acknowledging that in some cases “the identifications of goods alone [may] reveal sufficient facts about the respective goods from which a conclusion, not based on mere conjecture, as to the relationship between the goods may be made”). 2. The Internet Evidence Confirms Relatedness Beyond the intrinsic relationship, the Examining Attorney’s Internet evidence confirms that the same entity commonly provides both business consulting services of the type identified in the cited registration and SaaS analytics platforms of the type identified in Applicant’s application. Applicant’s own website. Applicant’s website is particularly probative. The record shows that Applicant − Green Leaf Consulting Group − offers both “Technical strategy and consultation” (encompassing consulting services of the type identified in the cited registration) and “GreenView” (a SaaS analytics platform matching the
Serial No. 98620760 - 11 - services identified in the application) under the same house mark, GREEN LEAF CONSULTING GROUP.4 Applicant thus provides both types of services under a single mark − precisely the same-source relationship at issue here. See Hewlett- Packard, 281 F.3d at 1267 (finding the Board erred in concluding that there was insufficient evidence of relatedness, because “[w]hile additional evidence, such as whether a single company sells the goods and services of both parties, if presented, is relevant to a relatedness analysis, [the Board] did not consider the important evidence already before it, namely the ITU application and [opposer's] registrations.”) (emphasis added); Octocom Sys. Inc. v. Houston Computer Servs. Inc., 918 F.2d 937, 941 (Fed. Cir. 1990) (finding a relationship between the applicant’s “modems” and the opposer’s “computer programs,” finding that the relationship between the goods “is shown,” in part, “by [applicant’s] original application, which indicates [applicant] itself used the mark OCTOCOM for both modems and computer programs”) (emphasis added); cf. Nike, Inc. v. WNBA Enters, LLC, No. 91160755, 2007 WL 763166, at *7 (TTAB 2007) (finding persuasive the fact that applicant itself offered or intended to offer both types of products under its mark). The fact that Applicant separately brands the platform as “GREENVIEW” does not negate the concurrent use of the GREEN LEAF CONSULTING GROUP mark in connection with both types of services. See Textron Inc. v. Cardinal Eng’g Corp., 1969 WL 8396, at *4 (TTAB 1969) (“[I]t is a common practice for manufacturers to apply both a house mark and a product mark to their various items of merchandise”). We 4 January 16, 2025 Non-Final Office Action, TSDR at 32-37.
Serial No. 98620760 - 12 - recognize that Applicant’s creation of a separate brand – GREENVIEW − for its SaaS platform might be viewed as evidence that Applicant itself recognizes the need to distinguish its consulting services from its SaaS offering. But this fact actually reinforces the likelihood of confusion rather than negating it. Applicant’s business model demonstrates precisely the scenario Section 2(d) is designed to address: a consulting firm launching a SaaS product under a new mark that consumers may then associate with the consulting firm’s source. The registrant here − also a consulting firm using the mark GREENVIEW − would be harmed if consumers encountering Applicant’s GREENVIEW SaaS assume it originates from or is affiliated with Registrant’s GREENVIEW consulting services. As such, Applicant’s website is probative in the same way that any third-party website would be: it demonstrates that, in the actual marketplace, the same entity offers both consulting and SaaS analytics services, and therefore consumers may expect a similar relationship when they encounter the same mark on both types of services offered by different entities. See Hewlett-Packard, 281 F.3d at 1267. Third-party websites. The Examining Attorney also submitted website evidence from four third-party entities − Epicor, IBM, Oracle, and SAP − each of which offers both business consulting services of type identified in the cited registration and SaaS or cloud-based analytics under the same house mark.5 • Epicor offers “Epicor Consulting” (e.g., business consulting workshops for ERP implementation, risk management, and change acceleration) and “Epicor Data Analytics” (a cloud-based analytics platform for 5 May 12, 2025 Final Office Action, TSDR at 7-41, 56-67.
Serial No. 98620760 - 13 - creating “reports, dashboards, and graphs in minutes”) under the EPICOR mark.6 • IBM offers “IBM Consulting” (e.g., strategy consulting, cloud consulting, and finance consulting) and cloud-based data and analytics services (including “IBM Watson Studio”) under the IBM mark.7 • Oracle offers “Oracle Consulting” (e.g., ERP consulting, HCM consulting, and customer experience consulting) and “Oracle Analytics” (a cloud-based analytics platform with dashboards and reporting) under the ORACLE mark.8 • SAP offers “SAP Advisory Services” (e.g., business transformation consulting, organizational change management, and value design services) and “SAP Business Data Cloud” (a cloud-based data and analytics platform with dashboards and reporting) under the SAP mark.9 Applicant argues that these examples are unpersuasive because each entity uses distinct product-level sub-brands for its SaaS offerings (e.g., “Epicor Data Analytics,” “Oracle Analytics Cloud,” “SAP Business Data Cloud”), and that this branding pattern demonstrates a marketplace norm in which consumers expect SaaS platforms to carry separate brand identities from consulting services − even when offered by the same company.10 Applicant contends this norm undermines any inference that consumers encountering GREENVIEW for SaaS would assume a connection to GREENVIEW for consulting.11 6 May 12, 2025 Final Office Action, TSDR at 7-21. 7 Id. at 22-31. 8 Id. at 32-41. 9 Id. at 56-67. 10 Applicant’s Br., 4 TTABVUE 4; Applicant’s Reply Brief, 9 TTABVUE 3-4. 11 Applicant’s Br., 4 TTABVUE 4; Applicant’s Reply Brief, 9 TTABVUE 3-4.
Serial No. 98620760 - 14 - We are not persuaded that this negates the Examining Attorney’s showing. First, it is well established that a product or service may bear multiple marks simultaneously. Textron, 1969 WL 8396, at *4; see also In re Maugus Mfg., Inc., No. 88389863, 2021 WL 5206090, at *3 (TTAB 2021) (“A product ‘can bear more than one mark without diminishing the identifying feature of each.’”) (citation omitted); Weatherford/Lamb, Inc. v. C&J Energy Servs., Inc., No. 92050101, 2010 WL 4502073, at *7 (TTAB 2010) (“It is well settled that a party may use more than one mark to identify a product or service and thus may choose to use its housemark in conjunction with other marks.”). The use of a product-level sub-brand does not negate the concurrent use of the house mark in connection with the same service. Each of these entities prominently uses its house mark − Epicor, IBM, Oracle, SAP − in connection with both its consulting services and its analytics platform on the same website, reinforcing the single-source impression. The sub-brand identifies the specific product within the company’s portfolio; the house mark identifies the source. Both function as marks used in connection with the service. Second, and more fundamentally, the branding pattern Applicant identifies − house mark plus product sub-brand − is precisely the pattern that creates the source- confusion risk at issue here. If consumers are accustomed to encountering a company’s house mark on both consulting and SaaS (with the SaaS bearing an additional product-level mark), then a consumer encountering the standalone mark GREENVIEW on SaaS analytics would have reason to believe it is the house mark of a consulting firm that has launched a SaaS platform − exactly the confusion Section
Serial No. 98620760 - 15 - 2(d) is designed to prevent. The fact that the hypothetical full branding might be “GREENVIEW ANALYTICS” rather than just “GREENVIEW” does not eliminate the likelihood that consumers would associate the GREENVIEW mark with the consulting source. See Weatherford/Lamb, 2010 WL 4502073, at *7 (“While the housemark WEATHERFORD or generic wording appears frequently with petitioner's mark FRACSURE, this does not detract from the source-identifying nature of the mark.”). Third, the question is not whether consumers expect every SaaS platform to be branded identically to its parent’s consulting services, but whether consumers encountering the same mark on both types of services would be likely to assume a connection. The evidence shows they would, because the marketplace demonstrates that consulting entities do offer SaaS analytics under marks that include the same source-identifying word (the house mark). When that source-identifying word is all the consumer encounters − as here − the confusion risk is heightened, not diminished. Applicant further argues that IBM, Oracle, and SAP are large, well-known technology conglomerates whose house-mark usage across broad product lines has diminished probative force in establishing relatedness for non-famous marks.12 We acknowledge that IBM, Oracle, and SAP are large companies whose marks span a broad range of products and services, and we are mindful that evidence of famous- mark usage may overstate consumer expectations for less well-known marks. See In re Donnay Int’l, S.A., No. 74160268, 1994 WL 515456, at *1 n.3 (TTAB 1994) 12 Applicant’s Brief, 4 TTABVUE 7-8.
Serial No. 98620760 - 16 - (acknowledging that registrations for house marks are not particularly persuasive to show relatedness because house marks can be used to identify a broad range of products). However, we do not find this concern dispositive here for three reasons. First, the Federal Circuit has not recognized a categorical rule excluding marketplace evidence simply because the third parties are large or well-known. The relevant question is whether the evidence shows that the same source commonly provides both types of services − and it does. Second, the evidence is not limited to multinational conglomerates. Epicor has not been shown to be a large company or a household name. Its concurrent offering of “Epicor Consulting” and “Epicor Data Analytics” under the same mark demonstrates that the consulting-plus-SaaS-analytics pattern is not unique to mega-conglomerates whose brands span hundreds of product or service categories. See Detroit Athletic, 903 F.3d at 1306 (evidence that third parties use the same mark for involved goods and services “suggests that consumers are accustomed to seeing a single mark associated with a source that sells both”); In re Davey Prods. Pty Ltd., No. 77029776, 2009 WL 2420527, at *5 (TTAB 2009) (third-party website evidence shows that the applicant’s and registrant’s products “can be manufactured and sold by a single source”). Third, and most significantly, Applicant itself − a company not shown to be famous or multinational − offers both consulting and SaaS analytics in connection with the mark GREEN LEAF CONSULTING GROUP. If the pattern existed only among IBM, Oracle, and SAP, Applicant’s argument about diminished probative force would carry
Serial No. 98620760 - 17 - greater weight. But the fact that Applicant’s own business model replicates the same pattern substantially undermines the contention that only famous companies operate this way. Applicant’s own commercial behavior is the strongest evidence that the consulting-plus-SaaS-analytics model is not limited to conglomerates with famous house marks. 3. Applicant’s Third-Party Registration Evidence Does Not Rebut the Showing of Relatedness Applicant attempts to counter the Examining Attorney’s evidence by submitting eighteen pairs of use-based, Principal Register registrations owned by different entities for identical or substantially similar marks, where one entity’s registration covers software and the other’s covers business consulting.13 Applicant argues that these paired registrations demonstrate the Office’s repeated recognition that business consulting services on the one hand and software or SaaS on the other are not related for likelihood of confusion purposes.14 See, e.g., In re G.B.I. Tile & Stone, Inc., No. 77369073, 2009 WL 3491050 at *5 (TTAB 2009) (“[T]hird-party registrations can be used by examining attorneys to suggest that the goods are related because the same party has registered a common mark for the goods at issue in a likelihood of confusion case. Similarly, applicants may submit sets of third-party registrations to suggest the opposite, i.e., that the Office has registered the same mark to different parties for the goods at issue.”); see also In re Thor Tech, Inc., No. 85667188, 2015 WL 496133, at *4 (TTAB 2015) (considering similar argument). 13 Ex. A to April 16, 2025 Response to Office Action, TSDR at 20-120. 14 Applicant’s Br., 4 TTABVUE 10-19.
Serial No. 98620760 - 18 - Applicant’s paired-registration evidence is entitled to limited weight for several reasons. First, three of the registrations in Applicant’s pairs have been cancelled for failure to file a declaration of use under Section 8 of the Trademark Act, 15 U.S.C. § 1058: Registration Nos. 4691082 (BRIGHTSPOT), 5657410 (MINDSIGHT), and 5783150 (SUPERMASSIVE).15 A cancelled registration is evidence only that the registration once issued; it is not evidence of present rights or actual use. In re Seminole Tribe of Fla., No. 87890892, 2023 WL 3751113, at *3 n.15 (TTAB 2023); see also In re Kysela Pere et Fils Ltd., No. 77686637, 2011 WL 1399224, at *2 (TTAB 2011) (“‘dead’ or cancelled registrations have no probative value at all”). The three pairs containing these cancelled registrations are therefore not probative. Second, unlike the Examining Attorney’s website evidence − which shows actual marketplace use of the same mark in connection with both types of services − Applicant’s registration evidence tells us nothing about whether the listed marks are currently in use, whether the public is familiar with them, or whether consumers have formed any expectations based on their coexistence. In re Midwest Gaming & Entm’t LLC, No. 85111552, 2013 WL 1442237, at *5 n.5 (TTAB 2013) (citing In re Mighty Leaf Tea, 601 F.3d 1342, 1346 (Fed. Cir. 2010)); see also Palm Bay Imps., 396 15 The Board’s general practice is not to 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 properly been 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 Registrations No. 4691082, 5657410, and 5783150 were each cancelled for failure to file a declaration of continuing use of the mark.
Serial No. 98620760 - 19 - F.3d at 1374 (quoting Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1338 (Fed. Cir. 2001)) (“[W]here the ‘record includes no evidence about the extent of [third- party] uses … [t]he probative value of this evidence is thus minimal.’”). Third, the paired registrations are presented without context. We do not know whether the paired registrants entered into coexistence agreements, whether their marks actually coexisted in the marketplace without confusion, or whether they operate in a crowded field that has conditioned consumers to distinguish among similar marks. See In re Thomas, No. 78334625, 2006 WL 1258862, at *8 (TTAB 2006) (coexistence on the register does not prove coexistence in the marketplace without confusion). Without such context, the registrations are of limited probative value. Fourth, Applicant’s paired registrations almost certainly present an incomplete picture of USPTO practice. There is no comparative evidence of how many applications covering the relevant services were refused registration based on similar marks. See In re Ala. Tourism Dep’t, No. 87599292, 2020 WL 2301221, at *13 (TTAB 2020) (“Applicant’s evidentiary submission almost certainly presents an incomplete picture of USPTO practice, as it omits marks in applications that were refused registration under § 2(b) in a manner likely to be highly consistent with the action in this case.”). Moreover, the fact that these types of services may sometimes emanate from different sources does not negate the affirmative evidence that they may also emanate from a common source. Made in Nature, LLC v. Pharmavite LLC, No. 91223352, 2022 WL 2188890, at *25 (TTAB 2022) (“For Applicant’s and Registrant’s
Serial No. 98620760 - 20 - identified goods to be related, it is not necessary that they always emanate from the same source under the same mark.”). Fifth, prior decisions of other examining attorneys carry little evidentiary weight and are not binding on the Board. Midwest Gaming & Entm’t, 2013 WL 1442237, at *2 n.3 (citing In re Nett Designs, Inc., 236 F.3d 1339, 1342 (Fed. Cir. 2001)). Each case is decided on its own merits. The fact that some marks may have been registered to different parties for arguably similar services does not compel registration here − particularly where the services are intrinsically related and the Examining Attorney has produced affirmative marketplace evidence supporting that relationship. See In re Toshiba Med. Sys. Corp., No. 79046106, 2009 WL 1896059, at *6 (TTAB 2009) (“the third party registrations relied on by applicant cannot justify the registration of another confusingly similar mark”) (citations omitted). We recognize that paired third-party registrations have sometimes contributed to a successful rebuttal of an examining attorney’s relatedness showing. In Thor Tech, for example, the Board reversed a Section 2(d) refusal based in part on approximately 50 pairs of registrations for similar marks owned by different entities for automobiles versus recreational vehicles. Thor Tech, 2015 WL 496133, at *3-4. But that record is materially distinguishable: the examining attorney there relied on only two third- party registrations, the goods were expensive (respectively ranging between about $8,000-23,000 and $17,000-40,000), and the record did not establish overlapping trade channels. Id. at *2, *5.
Serial No. 98620760 - 21 - Here, by contrast, the Examining Attorney has produced five instances of actual marketplace use (including Applicant’s own use) showing the same entity offering both types of services under the same mark, the services are intrinsically related, and, as discussed further below, the trade channels overlap. The circumstances of Thor Tech are not present here. In sum, Applicant’s paired registrations carry diminished probative value due to the cancelled registrations, the absence of evidence of actual use, the unknown marketplace conditions, and the possible existence of coexistence agreements. Even at face value, they do not overcome the Examining Attorney’s affirmative showing − consisting of Applicant’s own website and four third-party websites − that the marketplace treats business consulting services of the type identified in the cited registration and SaaS analytics platforms of the type identified in Applicant’s application as commonly emanating from a single source under a single mark. We do not dismiss Applicant’s paired registrations entirely, and we credit them to the extent they demonstrate that coexistence between software and consulting marks is possible and has occurred. But the question before us is not whether coexistence is possible − it is whether confusion is likely on this record. The paired registrations demonstrate that the USPTO has sometimes permitted coexistence, but they do not establish that confusion never occurs or that the services are categorically unrelated. The Examining Attorney’s affirmative marketplace evidence, particularly Applicant’s own website, demonstrates that these services do in fact emanate from the same
Serial No. 98620760 - 22 - source in the actual marketplace − a showing that paired registrations, without more, cannot overcome. 4. Summary as to Relatedness Based on the foregoing, we find that the services identified in Applicant’s application and the cited registration are related for purposes of the likelihood of confusion analysis. The services share an intrinsic functional connection − both address the core business need of data analysis and reporting, differing principally in the mode of delivery. The Examining Attorney’s website evidence, including notably Applicant’s own website, confirms that consumers encounter both types of services from a single source in the marketplace. Applicant’s third-party registration evidence does not overcome this showing for the reasons discussed above. We acknowledge this is a closer case than one involving identical services or an overwhelming volume of marketplace evidence. But where, as here, the marks are virtually identical, “the degree of similarity between the goods and services that is required to support a finding of likelihood of confusion declines.” Country Oven, 2019 WL 6170483, at *2 (citing In re i.am.symbolic, llc, No. 85044494, 2015 WL 6746543, at *6 (TTAB 2015), aff’d, 866 F.3d 1315 (Fed. Cir. 2017)); see also Shell Oil, 992 F.2d at 1207; DeVivo v. Ortiz, Opp. No. 91242863, 2020 WL 1227592, at *13 (TTAB 2020) (“because the marks are identical, the degree of similarity between the goods or services required for confusion to be likely declines”). The intrinsic relationship between the services, confirmed by actual marketplace evidence of single-source offerings, satisfies that threshold. The second DuPont factor weighs in favor of a likelihood of confusion.
Serial No. 98620760 - 23 - C. The Trade Channels, Classes of Consumers, and Purchasing Conditions We next consider the third DuPont factor, “[t]he similarity or dissimilarity of established, likely-to-continue trade channels,” and the fourth DuPont factor, “[t]he conditions under which and buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.” DuPont, 476 F.2d at 1361. As with the comparison of the services, we base our comparison of the trade channels and customers on what is set forth in the involved application and cited registration. See, e.g., i.am.symbolic, 866 F.3d at 1325. When, as in this case, the application’s and cited registration’s identifications of services do not contain any restrictions as to trade channels or classes of purchasers, we presume that both parties’ services move through all normal and usual channels of trade and are available to all normal potential purchasers for such services. See In re FCA US LLC, No. 85650654, 2018 WL 1756431, at *9 (TTAB 2018), aff’d mem., 778 F. App’x 962 (Fed. Cir. 2019). The record affirmatively demonstrates that the trade channels overlap. The same website evidence discussed under the second DuPont factor shows that Epicor, IBM, Oracle, SAP, and Applicant itself market both consulting services and SaaS analytics platforms on the same websites, accessible to the same consumers through the same site navigation. See Charger Ventures, 64 F.4th at 1382 (third-party website evidence showed that services and channels of trade were similar); Davey Prods. Pty, 2009 WL 2420527, at *6 (website evidence of third parties offering goods of both applicant and registrant showed same or overlapping channels of trade and purchasers). The trade
Serial No. 98620760 - 24 - channels are not merely theoretically overlapping based on the breadth of the identifications; they overlap in the actual marketplace. Applicant argues that trade channels differ because SaaS procurement involves “technology procurement processes, technical evaluation, integration assessments, and IT-driven purchasing decisions” distinct from the channels for retaining consulting services.16 We are not persuaded, for two reasons. First, neither identification limits the services to any particular trade channel. Applicant’s identification does not restrict its SaaS to enterprise-grade platforms sold exclusively through formal IT procurement processes; the identification is broad enough to encompass SaaS platforms marketed through general business channels, websites, and digital marketplaces. Similarly, the cited registration does not limit consulting services to engagements retained through any particular procurement methodology. Because neither identification contains trade-channel restrictions, we must presume that both parties’ services move through all normal and usual channels of trade. See In re FCA US LLC, 2018 WL 1756431, at *9. Second, the record evidence affirmatively contradicts Applicant’s premise. Applicant’s own website markets both types of services through the same digital channel to the same audience − business professionals visiting greenleafgrp.com encounter both consulting offerings and the GREENVIEW SaaS platform through the same site navigation, the same “Solutions” page, and directed at the same class of purchasers. Similarly, Epicor, IBM, Oracle, and SAP each market both consulting 16 Applicant’s Reply Brief, 9 TTABVUE 6.
Serial No. 98620760 - 25 - and analytics platforms through their respective websites to overlapping audiences of business decision-makers. We acknowledge that, in practice, some purchasers of enterprise SaaS may follow more rigorous procurement processes than some purchasers of consulting services (or vice versa). But this observation relates to the degree of care exercised by purchasers − addressed next under the fourth DuPont factor − rather than the channels of trade through which the services are marketed. The services travel through overlapping channels even if some purchasers exercise more care than others when making purchasing decisions within those channels. Because the record establishes that business consulting services of the type identified in the cited registration and SaaS analytics platforms of the type identified in Applicant’s application are offered through overlapping trade channels, the third DuPont factor weighs in favor of finding a likelihood of confusion. Having established that the trade channels overlap, we turn to the related question of whether the classes of consumers also overlap − and, if so, the degree of care those consumers exercise when purchasing the services. The relevant services are directed to business professionals and organizations seeking analytical tools and advisory services to support data-driven decision-making. Because the identifications contain no limitations as to industry, business size, or type of purchaser, we presume the classes of consumers are the same − namely, business professionals and organizations seeking data analytics, reporting, and advisory solutions. See Stone Lion Cap. Partners, 746 F.3d at 1323. An overlap in the classes of consumers,
Serial No. 98620760 - 26 - however, does not resolve the fourth DuPont factor. We must also consider the conditions under which purchases are made − specifically, whether they are impulse purchases or the product of careful deliberation. DuPont, 476 F.2d at 1361. A heightened degree of care in making a purchasing decision may tend to minimize likelihood of confusion. See, e.g., In re N.A.D., Inc., 754 F.2d 996, 999-1000 (Fed. Cir. 1985) (because only sophisticated purchasers exercising great care would purchase the relevant goods, there would be no likelihood of confusion merely because of the similarity between the marks NARCO and NARKOMED). Conversely, impulse purchases of inexpensive goods or services may tend to have the opposite effect. Palm Bay Imps., 396 F.3d at 1376. However, “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].” In re Rsch. & Trading Corp., 793 F.2d 1276, 1279 (Fed. Cir. 1986). Applicant contends this factor favors it because the services are “specialized, high consideration B2B offerings purchased by sophisticated enterprise purchasers exercising a heightened degree of care.”17 However, Applicant submitted no evidence regarding the degree of consumer care exercised in purchasing either its services or those identified in the cited registration. Attorney argument alone “is no substitute for evidence.” Cai, 901 F.3d at 1371 (quoting Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005)). 17 Applicant’s Br., 4 TTABVUE 19.
Serial No. 98620760 - 27 - Furthermore, because neither identification restricts the services by price, industry, or level of consumer sophistication, we must consider the full range of potential purchasers and base our analysis on “the least sophisticated potential purchasers.” Stone Lion Cap. Partners, 746 F.3d at 1325; FCA US LLC, 2018 WL 1756431, at *10. Nevertheless, we may take into account the inherent nature of the identified services in evaluating purchasing conditions. See In re Info. Builders Inc., No. 87862101, 2020 WL 2094122, at *6 (TTAB 2020) (“some degree of purchasing care may be exercised” in view of the inherent nature of the involved computer software goods and computer system services). Here, even the least sophisticated purchaser of SaaS analytics services or business consulting would likely exercise at least some degree of care beyond a casual impulse purchase. These are not inexpensive consumer goods purchased off a shelf; by their nature, they involve a threshold level of evaluation. At the same time, we cannot credit Applicant’s characterization that all purchasers are sophisticated enterprise buyers exercising the heightened care present in cases like N.A.D. The cited registration broadly covers “Business consultation services, professional business consulting, [and] Business advisory services” without restriction as to scale or formality. Such services may be retained by purchasers ranging from large enterprises with formal procurement processes to small businesses or sole proprietors seeking modest advisory assistance with relatively little deliberation. The breadth of this identification does not permit us to
Serial No. 98620760 - 28 - conclude that purchasers uniformly exercise the elevated level of care Applicant asserts. Because both parties’ services inherently involve at least some deliberation − and because there is no evidence that either party’s services are the type of inexpensive, impulse purchases that heighten the risk of confusion − the fourth DuPont factor slightly weighs against finding a likelihood of confusion.18 II. Conclusion The final step in analyzing likelihood of confusion is to weigh the DuPont factors for which there is evidence and argument, “explain the results of that weighing,” and address “the weight [we] assigned to the relevant factors.” Charger Ventures, 64 F.4th at 1384. “No mechanical rule determines likelihood of confusion, and each case requires weighing of the facts and circumstances of the particular mark.” Mighty Leaf 18 The Examining Attorney argues that because Applicant’s identification states the interface “can be white labeled for external use,” the identification also encompasses software that is not white-labeled and is instead sold directly to end users. Examining Attorney’s Br., 6 TTABVUE 9-10. Applicant counters this argument by asserting that it was raised for the first time on appeal and is, in any event, unpersuasive. Applicant’s Reply Br., 9 TTABVUE 5-6. We need not determine whether this argument was waived because it does not materially affect our analysis. Whether the platform is white labeled for external use or deployed directly by the purchasing entity, the service remains the same: a hosted SaaS analytics platform accessed through a customizable interface. The “can be white labeled” language describes a capability of the platform − not a distinct service category. We do not rely on the “can be white labeled” language to expand the universe of trade channels or purchasers beyond what the remainder of the identification already encompasses. That said, to the extent the identification’s breadth is relevant to our analysis, we note that because the identification does not require white labeling, it encompasses deployments in which the GREENVIEW mark is visible to end users of the platform. In such deployments, the GREENVIEW mark would be encountered by business professionals seeking analytics solutions − the same class of professionals who might also seek business consulting services. This supports our finding that the trade channels and classes of consumers overlap.
Serial No. 98620760 - 29 - Tea, 601 F.3d. at 1346; see also Naterra Int’l, 92 F.4th at 1116-17 (“Only the DuPont factors of significance to the particular mark need be considered in the likelihood of confusion analysis.”). We have carefully considered all evidence of record and all arguments related thereto. The marks are virtually identical − both sharing the dominant word element GREENVIEW. The services share an intrinsic functional connection − both address the core business need of statistical analysis and reporting − and this relationship is confirmed by marketplace evidence, including Applicant’s own website, showing that these services commonly emanate from a single source under a single mark. The record demonstrates overlapping trade channels and overlapping classes of consumers. The inherent nature of the services, however, suggests that purchasers will exercise at least some degree of care. On balance, the factors favoring a likelihood of confusion − the virtual identity of the marks, the relatedness of the services, and the overlapping trade channels − outweigh the modest counterweight of the fourth factor. As we have noted, even careful purchasers are not immune from source confusion when confronted with very similar marks for related services. See Shell Oil, 992 F.2d at 1208 (“[E]ven sophisticated purchasers can be confused by very similar marks.”). The marks at issue are virtually identical, the services are related, and the record shows that entities in the relevant market commonly offer both types of services under the same mark. Under these circumstances, even careful purchasers encountering Applicant’s GREENVIEW mark for SaaS analytics services would likely assume a connection
Serial No. 98620760 - 30 - with the source of Registrant’s GREENVIEW services for business consulting. Accordingly, we find that confusion is likely. To the extent that any doubts might exist as to the correctness of this conclusion, we resolve such doubts in favor of the prior registrant. See In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65 (Fed. Cir. 1988); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1568 (Fed. Cir. 1984); G.B.I. Tile & Stone, 2009 WL 3491050 at *8. Decision: The Section 2(d) refusal to register is affirmed.
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