Western Veterinary IP, LLC

This Opinion is Not a
Precedent of the TTAB
Oral Hearing: April 16, 2026 Mailed: August 24, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Western Veterinary IP, LLC
_____
Serial No. 98727230
_____
Benjamin Kahn of The Cranium Group LLC,
for Western Veterinary IP, LLC.
Tracy Fletcher, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
_____
Before Goodman, Elgin and O’Connor,
Administrative Trademark Judges.
Opinion by Goodman, Administrative Trademark Judge:
Western Veterinary IP, LLC (“Applicant”) seeks registration on the Principal
Register of the mark MONTANA EQUINE (EQUINE disclaimed, Section 2(f) claimed
as a whole) in standard characters for:
Breeding services for horses; Horse breeding and stud services;
Veterinary sports medicine and physical rehabilitation services for
horses through use of modalities and exercise; Veterinary dentistry;
Veterinary emergency and trauma services; Veterinary services;
Veterinary services, namely, full service veterinary care for horses,
ponies, mules and donkeys including surgery, vaccinations, lameness
treatment, reproductive medicine, preventative care and internal
medicine; Veterinary specialty services featuring advanced dental and

Serial No. 98727230
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oral surgery; Veterinary specialty services featuring advanced medical,
diagnostic and surgical services for animals; Veterinary surgery in
International Class 44.1
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), based on a likelihood
of confusion with the Principal Register standard character mark MONTANA ROSE
EQUINE THERAPY (EQUINE THERAPY disclaimed) for the following
International Class 44 services: “Equine massage and kinesthesiology services;
Massage therapy services for horses; Physical rehabilitation services for horses
through use of massage and exercises.”2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
1 Application Serial No. 98727230 was filed on August 30, 2024, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and
use in commerce since at least as early as February 27, 2006. Applicant filed a “Request to
Make Special” to expedite examination of the trademark application because of the expiration
of its prior registration (issued 2016) for the same mark and stated in that request that it did
not intend to abandon the mark. August 31, 2024, Request to Make Special. Applicant also
put in the record portions of the application file from the prior registration. November 20,
2024 Response to Office Action pp. 13-37; April 1, 2025 Request for Reconsideration pp. 22-
35.
Page references to the application record are to the downloadable .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) electronic database. References to the
briefs on appeal refer to the Board’s TTABVUE docket system. Applicant’s brief is at 7
TTABVUE and its reply brief at 12 TTABVUE. The Examining Attorney’s brief is at 11
TTABVUE.
2 Registration No. 6927336 issued December 20, 2022. The registration includes the following
statement: “The name(s), portrait(s), and/or signature(s) shown in the mark identifies Ciarra
R. Olson and Colt Bates, whose consent(s) to register is made of record.”

Serial No. 98727230
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reconsideration, the appeal was resumed.3 Applicant and the Examining Attorney
filed briefs, after which an oral hearing was held on April 16, 2026. We affirm the
refusal to register.
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, or to cause mistake, or to
deceive. Trademark Act Section 2(d), 15 U.S.C. § 1052(d). Our determination of
likelihood of confusion under Section 2(d) 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. du Pont 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). 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); In re Country Oven, Inc., No.
87354443, 2019 TTAB LEXIS 381, at *2.
Varying weight may be assigned to each DuPont factor depending on the evidence
presented, and not all DuPont factors are relevant in every case. See In re Charger
Ventures LLC, 64 F.4th 1375, 1381 (Fed. Cir. 2023) (“In any given case, different
DuPont factors may play a dominant role and some factors may not be relevant to the
analysis.”); Stratus Networks, Inc. v. UBTA-UBET Commc’ns Inc., 955 F.3d 994, 998
3 The Examining Attorney also had a requirement it made final but that requirement was
resolved on remand. 6 TTABVUE (request for remand); 9 TTABVUE (subsequent final). See
note 4.

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(Fed. Cir. 2020) (“Not all DuPont factors are relevant in each case, and the weight
afforded to each factor depends on the circumstances. Any single factor may control
a particular case.”) (citation omitted).
In every Section 2(d) case, two key factors are the similarity or dissimilarity of the
marks and the goods or services. See In re i.am.symbolic, llc, 866 F.3d 1315, 1322
(Fed. Cir. 2017); 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) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative
effect of differences in the essential characteristics of the goods [or services] and
differences in the marks.”). These factors, and others, are discussed below.
A. Similarity or Dissimilarity of the Services
The second DuPont factor considers “[t]he similarity or dissimilarity and nature
of the goods or services as described in an application or registration.” DuPont, 476
F.2d at 1361. It is sufficient for a finding of likelihood of confusion if relatedness is
established for any service encompassed by the identification within a particular
class in the application or registration. See Tuxedo Monopoly, Inc. v. Gen. Mills Fun
Grp., Inc., 648 F.2d 1335, 1336 (CCPA 1981).
In the request for remand, Applicant amended a portion of its identification from
“physical rehabilitation services for horses through use of modalities and exercise” to
“Veterinary sports medicine and physical rehabilitation services for horses through

Serial No. 98727230
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use of modalities and exercise.”4 Applicant argues that “the Examining Attorney
ignores Applicant’s most recent amendment to the identification of services” which
resolves any “services overlap without limitation or in any material way” as the
services “are not closely related enough to confuse consumers.”5 Applicant reiterates
in its reply that “Applicant’s services are prefaced by the qualifying terms “Veterinary
sports medicine” and “Registrant’s identification of services is ‘qualified on the back
end as ‘through use of massage”’ and that massage is not “a veterinary medicine
modality” which “involve[s] medical consult and procedures provided and/or
supervised by a licensed veterinarian.”6
However, the amendment does not transform the originally identified services into
exclusively veterinary services. Rather, by adding “veterinary sports medicine and”
before the existing wording, Applicant added an additional service component while
retaining the original physical rehabilitation services.
4 Applicant sought to amend “physical rehabilitation services for horses through use of
modalities and exercise” to “veterinary sports medicine and rehabilitation services for horses
through use of modalities and exercise.” April 1, 2025 Request for Reconsideration pp. 11-13.
The Examining Attorney rejected this proposed amendment as outside the scope of the
identification and suggested that the following amendment would be acceptable: “Veterinary
sports medicine and physical rehabilitation services for horses through use of modalities and
exercise.” April 30, 2025 Denial of Reconsideration pp. 4-5. Applicant later accepted this
suggested amendment in a request for remand. July 4, 2025 Request for Remand. The
Examining Attorney approved the amendment. December 15, 2025 Subsequent Final Office
Action. In its reply, Applicant points out that it adopted the suggestion proposed by the
Examining Attorney and argues that the amendment reduces the similarities in the services.
12 TTABVUE 7, note 5.
5 7 TTABVUE 15, 12 TTABVUE 7.
6 12 TTABVUE 7, note 5.

Serial No. 98727230
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We find an overlap in Applicant’s and Registrant’s services. Applicant’s amended
identification includes “Veterinary sports medicine and physical rehabilitation
services for horses through use of modalities and exercise.” Registrant’s identification
includes “Physical rehabilitation services for horses through use of massage and
exercises.” These services overlap because both identifications encompass physical
rehabilitation services for horses through exercise. In addition, Applicant’s reference
to “modalities” is broad enough to include therapeutic methods such as massage,
which is expressly identified in the cited registration. Further, Registrant’s
identification contains no limitation as to provider (veterinary/non-veterinary
context), so we must presume that Registrant’s physical rehabilitation services for
horses through massage and exercises encompass such services offered in all ordinary
settings, including both veterinary and non-veterinary settings. Applicant’s reliance
on the wording “veterinary sports medicine” does not avoid the overlap between the
identified physical rehabilitation services. Thus, the services are in part identical and
in part legally identical.7 See In re Hughes Furniture Indus., No. 85627379, 2015
7 Modality is defined as “Medicine/Medical. the application of a therapeutic agent, usually a
physical therapeutic agent.” Dictionary.com (accessed August 20, 2026). It has also been
defined as “Medicine. A therapeutic method or agent, such as surgery, chemotherapy, or
electrotherapy, that involves the physical treatment of a disorder.” AMERICAN HERITAGE
DICTIONARY, ahdictionary.com (accessed August 20, 2026). The Board may take judicial
notice of dictionary definitions, including online dictionaries that exist in printed form or
regular fixed editions. In re Red Bull GmbH, No. 75788830, 2006 TTAB LEXIS 136, at *7;
Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., No. 91061847, 1982 TTAB
LEXIS 146, at *7, aff’d, 703 F.2d 1372 (Fed. Cir. 1983). One website article provided by the
Examining Attorney at MD Mad Barn (madbarn.com) explains that equine massage is a body
work modality. April 30, 2025 Denial of Reconsideration p. 97. Another article indicates that
equine massage therapy is a form of rehabilitation. Alta View Veterinary Clinic (alta
viweveterinaryclinic.com), April 30, 2025 Denial of Reconsideration p. 93.

Serial No. 98727230
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TTAB LEXIS 65, at *10 (applicant’s broadly worded identification of “furniture”
necessarily encompasses Registrant’s narrowly identified “residential and
commercial furniture.”).
Applicant submits that the Board should consider the extrinsic evidence of
Applicant’s and Registrant’s use, alleged to show that the services are “disparate,”
and points out that equine massage and veterinary medical services are separate for
licensing and regulatory purposes, referencing evidence in the record, and
Registrant’s own website disclaimer.8
However, we may not consider arguments “about how the parties’ actual …
services … are narrower or different from the … services identified in the
application[] and registration[ ].” In re FCA US LLC, No. 85650654, 2018 TTAB
LEXIS 116, at *12 n.18; see also In re i.am.symbolic llc., 866 F.3d 1315, 1327 (Fed.
Cir. 2017) (“[T]he Board properly declined to import restrictions into the
identification of goods based on alleged real world conditions.”).
Applicant criticizes as a whole the third-party website evidence provided by the
Examining Attorney9 as insufficient to establish relatedness of the services (a
8 7 TTABVUE 16; 12 TTABVUE 8; April 1, 2025 Request for Reconsideration pp. 30-34, 46-
49.
9 Applicant objected in its brief to the evidence accompanying the denial of reconsideration.
7 TTABVUE 8 note 6. However, inasmuch as Applicant sought reconsideration after the
Examining Attorney’s final refusal, the Examining Attorney was permitted to submit
evidence in response to this request. Therefore, Applicant’s objection is overruled. In re Davey
Prods. Pty, No. 77029776, 2009 TTAB LEXIS 524, at *7-8 (in denying reconsideration
examining attorney may submit new evidence directed to the issue(s) for which
reconsideration is sought); In re Giger, No. 76545470, 2006 TTAB LEXIS 61, at *4 (evidence
attached to a request for reconsideration submitted with a notice of appeal, and evidence
attached to a denial of the request for reconsideration, is considered to have been filed prior

Serial No. 98727230
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“handful”; a “hodge podge of selective evidence”; “a smattering” and “scattered”).10
Applicant points out that the Examining Attorney never addresses the distinctions
to this evidence raised by Applicant.11
In particular, Applicant distinguished the third-party website evidence the
Examining Attorney provided in the January 2, 2025 Office Action, referencing
website service disclaimers to support its position that the website evidence does not
support that Applicant’s and Registrant’s services are offered under the same mark.12
Applicant’s analysis reflected that only two out of the six websites offered veterinary
services in combination with the alternative therapy of equine massage, and these
services were offered by an individual associated with the practice who was not a
veterinary doctor.13 The Examining Attorney then provided seven more websites in
the April 30, 2025 Denial of Reconsideration.14 It appears that at least three of these
additional websites show the offering of equine veterinary and massage services.
However, some of these websites are articles about equine massage therapy, and it is
unclear whether these businesses are offering equine veterinary and massage
services.
to appeal, and is part of the application record on appeal) (both referencing earlier editions
of the TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 1207.04).
10 7 TTABVUE 16; 12 TTABVUE 8-9.
11 7 TTABVUE 16; 12 TTABVUE 8-9.
12 April 1, 2025 Request for Reconsideration pp. 16-18.
13 April 1, 2025 Request for Reconsideration pp. 16-18.
14 April 30, 2025 Denial of Reconsideration pp. 46-108.

Serial No. 98727230
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As for physical rehabilitation for horses, some of the horse massage therapy
articles or blogposts provided by the Examining Attorney indicate that massage is
part of physical rehabilitation15 and is an alternative form of treatment that can be
integrated with traditional veterinary medicine.16 Additionally, some of the websites
provided by the Examining Attorney indicate that physical rehabilitation for horses
can take the form of rehabilitation exercise to improve flexibility and joint mobility,
controlled exercise programs, and water exercise (hydrotherapy).17 Physical
rehabilitation therapies include the offering of a “free flow walker” which provides “a
natural form of exercise” and “underwater treadmill therapy.”18
These articles support the Examining Attorney’s argument19 that Applicant’s and
Registrant’s services are complementary in that they are used in combination.20 Cf.
In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1567 (Fed. Cir. 1984)
(holding bread and cheese to be related because they are often used in combination
15 One of the articles indicated that the rehabilitation center has veterinary doctors as staff.
April 30, 2025 Denial of Reconsideration p. 80.
16 April 30, 2025 Denial of Reconsideration pp. 91, 94, 97, 104. Both Applicant and the
Examining Attorney’s evidence reflects that equine massage therapy is an unregulated
industry and alternative form of treatment. April 30, 2025 Denial of Reconsideration pp. 91,
94, 97, 104. Applicant’s evidence indicates that veterinary services require licensing. April 1,
2025 Request for Reconsideration pp. 36-44.
17 April 30, 2025 Denial of Reconsideration pp. 56-58.
18 April 30, 2025 Denial of Reconsideration pp. 74, 81, 88.
19 11 TTABVUE 10.
20 Since the services are identical and legally identical in part, the additional evidence of
complementary services was not necessary. In re FabFitFun, Inc., No. 86847381, 2018 TTAB
LEXIS 297, at *5 (“In view of the identity of the recited [goods], there is no need for us to
further consider the relatedness of the goods.”).

Serial No. 98727230
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and noting that “[s]uch complementary use has long been recognized as a relevant
consideration in determining a likelihood of confusion”).
B. Similarity or Dissimilarity of the Trade Channels and Conditions of Sale
We consider the “similarity or dissimilarity of established, likely-to-continue trade
channels” and “[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.
Applicant argues that “[t]he Board should consider the actual differences in the
trade channels and customers associated with the services of Applicant and
registrant.”21 Applicant submits that “[t]he registrant and the Applicant use different
trade channels and market to different localized customers. Both parties target local
markets and consumers due to the nature of the services offered, and those two
markets are geographically distinct and distant from each other.”22 Applicant argues
that the Examining Attorney cannot “ignore actual differences in the trade channels
and customers associated with the services of applicant and registrant and avoid a
disciplined trade channels analysis,”23 and that the presumptions relating to trade
channels and nationwide use are misapplied.24
However, the analysis of the respective channels of trade of the marks at issue is
not based on real-world use but based on the identifications as set forth in the
21 7 TTABVUE 18.
22 7 TTABVUE 17, 12 TTABVUE 10.
23 7 TTABVUE 18.
24 12 TTABVUE 10.

Serial No. 98727230
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application and registration. In re Detroit Ath. Co., 903 F.3d 1297, 1308 (Fed. Cir.
2018) (“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.”). The real-world use restrictions argued by Applicant do
not appear in the identification of services, and we cannot read limitations into
identifications based on either argument or evidence of actual use. Therefore,
Applicant’s arguments and evidence about real-world trade channels are not
persuasive.
Moreover, although Applicant contends that the trade channels do not overlap
because Applicant’s and Registrant’s services are each local to a specific geographic
area, the Board is constrained to evaluate likelihood of confusion in terms of
nationwide markets when an applicant is seeking a geographically unrestricted
registration. “Thus, we may not limit our consideration of likelihood of confusion to
the geographic areas in which [Applicant and Registrant] actually use their marks.
Board proceedings are determined independent of the actual geographic scope of use.”
Panda Travel, Inc. v. Resort Option Enters., No. 91174767, 2009 TTAB LEXIS 708,
at *23.
As indicated, there are no trade channel restrictions nor are there limitations as
to the classes of consumers in the recitation of services in either Applicant’s
application or the cited registration. Because the services in Applicant’s identification
and the cited registration are in part identical and legally identical, we presume that
these in part identical and legally identical services are offered to the same classes of

Serial No. 98727230
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consumers and move through the identical trade channels. In re Viterra Inc., 671 F.3d
1358, 1362 (Fed. Cir. 2012) (even though there was no evidence regarding channels
of trade and classes of consumers, the Board was entitled to rely on this legal
presumption in determining likelihood of confusion).
As to conditions of sale, purchaser sophistication or degree of care may tend to
minimize likelihood of confusion. Conversely, impulse purchases of inexpensive items
may tend to have the opposite effect. Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin
Fondee En 1772, 396 F.3d 1369, 1376 (Fed. Cir. 2005). We must make our
determination based on the least sophisticated consumer. Stone Lion Cap. Partners,
L.P. v. Lion Cap. LLP, 746 F.3d 1317, 1325 (Fed. Cir. 2014).
The classes of consumers are those who own horses. Applicant argues “the
involved consumers are sophisticated equine owners, who inherently make measured
and complex service and care decisions.”25
Some of the website articles provided by the Examining Attorney indicate that
these services require higher level decision making and a degree of care. For example,
Reata Veterinary Hospital webpages discuss equine rehabilitation stating that “if you
suspect your horse may benefit from equine rehabilitation, it’s crucial to consult a
veterinarian experienced in this field. … Here are some key things to look for in an
equine rehabilitation program: … Customized plans … Advanced Modalities … On-
Site Facilities … Experienced Staff….”26 And the MB Mad Barn website discusses
25 7 TTABVUE 18.
26 April 30, 2025 Denial of Reconsideration p. 57.

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equine massage and states “[t]o ensure your horse receives the safest and most
effective equine massage treatment, horse owners should review potential
practitioners’ training and qualification before agreeing to services,” since it’s an
unregulated industry.27
Additionally, looking to the intrinsic nature of the services themselves, we
acknowledge that veterinary and rehabilitation services for horses are not “average
consumer services,” can be relatively expensive, and would require some degree of
care due to their nature and cost. See In re Charger Ventures LLC, 64 F.4th at 1378-
79 (noting the Board’s finding that the identified real estate services are “not average
consumer services” and that the purchaser would exercise elevated care due to the
nature and cost of real estate services) (citing Elec. Design & Sales Inc. v. Elec. Data
Sys. Corp., 954 F.2d 713, 718 (Fed. Cir. 1992)). We find that even in the case of the
least sophisticated purchaser, a decision as important as choosing a veterinarian or
a provider of rehabilitation services for horses will be made with some thought and
research and a higher degree of care.
We find the fourth DuPont factor weighs against a finding of likely confusion.
Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, No. 91217095, 2016
TTAB LEXIS 604, at *28-30 (on balance decisions regarding a senior living
community are made with significant thought, deliberation, and research resulting
in a careful purchase, although some purchasers may make these decisions hastily
and under duress).
27 April 30, 2025 Denial of Reconsideration p. 104.

Serial No. 98727230
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C. Strength or Weakness of the Cited Mark
The fifth DuPont factor examines the extent to which the public perceives the cited
mark as indicating a single source of origin, i.e., its fame or commercial strength.
DuPont, 476 F.2d at 1361.
Applicant argues “with respect to the fame of the involved marks, the registered
mark has only been in use for two years.”28 However, the absence of evidence of fame
of the Registrant’s mark is not treated as a factor in Applicant’s favor. As is normally
the case in ex parte proceedings, this DuPont factor is treated as neutral. See In re
Thomas, No. 78334625, 2006 TTAB LEXIS 135, at *18 n.11.
The sixth DuPont factor considers “[t]he number and nature of similar marks in
use on similar goods [or services].” DuPont, 476 F.2d at 1361.
Applicant contends that the shared component terms MONTANA and EQUINE
are weak because MONTANA is primarily geographic and commonly used in third-
party registered marks, and EQUINE is generic or descriptive for horse-related
services and is a term used in many third-party registrations.29
Third-party registrations may affect conceptual strength.30 Tao Licensing, LLC v.
Bender Consulting Ltd., No. 92057132, 2017 TTAB LEXIS 437, at *47 (“third-party
registration evidence that does not equate to proof of third-party use may bear on
28 7 TTABVUE 18.
29 7 TTABVUE 8-9.
30 However, third-party registrations are not evidence of use in the marketplace, such that
we can infer the possible extent of consumer exposure. AMF Inc. v. American Leisure Prods.,
Inc., 474 F.2d 1403, 1406 (CCPA 1973) (“The existence of these registrations is not evidence
of what happens in the market place or that customers are familiar with them …”).

Serial No. 98727230
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conceptual weakness if a term is commonly registered for similar goods or services.”).
Conceptual strength is a measure of the cited mark’s distinctiveness, which may be
placed “in categories of generally increasing distinctiveness: … (1) generic;
(2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful.” Two Pesos, Inc. v. Taco
Cabana, Inc., 505 U.S. 763, 768 (1992).
Registrant’s mark has a disclaimer of EQUINE THERAPY but has been
registered without a showing of acquired distinctiveness. As a whole, the mark is
inherently distinctive, although the strength is somewhat limited by the disclaimed
generic or descriptive terms EQUINE THERAPY. See Sock It to Me v. Fan, No.
91230554, 2020 TTAB LEXIS 201, at *30 (SOCK IT TO ME for socks “taken as a
whole, is inherently distinctive, although its strength is somewhat limited by its first
word, SOCK, which is generic for socks.”). Although Registrant’s mark is inherently
distinctive as a whole, we may consider whether an inherently distinctive mark is
“weak as a source indicator” in the course of the DuPont analysis. See, e.g., In re Fat
Boys Water Sports LLC, No. 86490930, 2016 TTAB LEXIS 150, at *23.
Applicant specifically argues that the cited mark is a “weak mark or at least is
weak outside of the context of the successive terms ‘MONTANA ROSE,’” that the
term MONTANA as a component in marks is “ubiquitous,” and that EQUINE is a
weak element of the cited mark.31 Here, Applicant did not submit copies of
registrations but merely indicated there were “no less than fifteen (15) registered
trademarks consisting solely of the word Montana” including those that are in Class
31 7 TTABVUE 8, 10, 19.

Serial No. 98727230
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44, “hundreds more registered trademarks that begin[ ] with the first words
MONTANA,” and that there are 2,800 registered trademarks that include the term
equine, including over 200 registrations in Class 44.32 Applicant also argues that the
Examining Attorney waived any objection to these third-party registration
references.33
Applicant is correct that the Examining Attorney waived the objection by not
objecting in the final Office Action and waiting until reconsideration.34 See In re
Broyhill Furniture Indus., No. 75473959, 2001 TTAB LEXIS 612, at *6 n.3. Although
the Examining Attorney waived any objection, these references are entitled to little,
if any, probative weight.
The Board does not take judicial notice of USPTO registrations, and mere
references to registrations or search-results are insufficient to make them of record.35
See In re Duofold Inc., 1974 TTAB LEXIS 271, at *6 (no number in original). Our
consideration is limited to the information Applicant provided. See In re City of
32 November 20, 2024 Response to Office Action pp. 7-9.
33 7 TTABVUE 9.
34 The Examining Attorney responds by stating that to the extent this evidence is considered,
there is no evidence in the record that MONTANA EQUINE in combination is diluted since
Registrant’s mark is the only mark containing both terms. 11 TTABVUE 13. In reply,
Applicant objects to this reference to the Trademark Register by the Examining Attorney,
arguing that relying on this evidence does not meet the “evidentiary standard” set out by the
Examining Attorney. 12 TTABVUE 3.
35 To make third-party registrations of record, Applicant must introduce copies of the
certificates of registration or their electronic equivalents which Applicant failed to do. See,
e.g., In re Volvo Cars of N. Am., Inc., No. 74212578, 1998 TTAB LEXIS 20, at *4 n.2. However,
in the final office action, the Examining Attorney did not object to the references to
MONTANA and EQUINE registrations and did not instruct Applicant on how to properly
introduce them into the record. So we treat the objection as waived and consider the
information provided by Applicant for whatever limited probative value it may have.

Serial No. 98727230
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Houston, No. 77660948 2012 TTAB LEXIS 1, at *6 n.7. Here, Applicant did not
identify any specific registrations or registration numbers, marks, goods/services,
disclaimers, or owners, providing no meaningful basis to assess the relevance of those
alleged registrations. See, e.g., In re Peace Love World Live, LLC, No. 86705287, 2018
TTAB LEXIS 220, at *17 n.17 (Examining Attorney waived objection to list of
registrations, but list did “not include enough information to be probative.”).
Applicant also relies on dictionary definitions of “Montana” and “Equine.”36
Dictionary definitions can be used to show conceptual weakness.37 See Quiktrip W.,
Inc. v. Weigel Stores, Inc., 984 F.3d 1031, 1035 (Fed. Cir. 2021); Made in Nature, LLC
v. Pharmavite LLC, No. 91223352, 2022 TTAB LEXIS 228, at *26 (in connection with
evaluating the cited mark’s conceptual strength, we may consider dictionary
definitions). We also consider the evidence provided by the Examining Attorney as it
relates to conceptual strength to some of the component terms in Registrant’s mark.
The Examining Attorney provided information from Wikipedia relating to
MONTANA as a state, and information that MONTANA and ROSE can be either
surnames or given names.38
36 April 1, 2025 Request for Reconsideration pp. 26-29.
37 The Examining Attorney attached a definition of “equine” from AMERICAN HERITAGE
DICTIONARY (ahdictionary.com) with her appeal brief asking the Board to take judicial notice.
11 TTABVUE 5. Applicant objects to the Board’s consideration of this definition due to
timeless, relevancy and lack of probative value. 12 TTABVUE 3-4. Applicant is correct as to
the lack of timeliness of the submission (see Trademark Rule 2.142(d) 37 C.F.R. § 2.142 (the
record should be complete prior to the filing of an appeal. Evidence should not be filed with
the Board after the filing of a notice of appeal.)) However, the definition is proper subject
matter for judicial notice, see note 7, so we have considered it.
38 April 30, 2025 Denial of Reconsideration pp. 7-45. Applicant objects to the Examining
Attorney’s new argument on reconsideration that MONTANA can be a geographic term or a
name (given or surname), 7 TTABVUE 13; however, this is not a basis for objection. Applicant

Serial No. 98727230
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We turn first to the MONTANA component of the cited mark. “Montana” is
defined as “[a] state in the western US on the Canadian border, and east of the Rocky
Mountains. (Oxford Dictionary).39 The Examining Attorney provided further
information about Montana as a western state in the United States.40 Based on this
evidence, we find that Montana is a well-known geographic location. Thus, the term
MONTANA can have geographic significance.
“Geographically descriptive terms are generally regarded as inherently weak and
entitled to less protection than arbitrary or suggestive marks. Ordinarily, a term that
describes the geographic source of a product is not protectable without a showing of
acquired distinctiveness.” Tea Bd. of India v. Republic of Tea, Inc., No. 91118587,
2006 TTAB LEXIS 330, at *61-62. See e.g., In re Tex. Trading & Milling Corp., 1973
TTAB LEXIS 80, at *2-3 (no number in original) (TEXAS BEST and TEXAS PRIDE
“were adopted to suggest that the products sold thereunder are of high quality
ostensibly originating from Texas. Under such circumstances, the scope of protection
afforded the registered mark TEXAS BEST must necessarily be narrow”). However,
the mere fact that a term is geographic does not automatically mean the term is weak.
As stated in In re Nantucket, Inc., 677 F.2d 95, 102 (CCPA 1982), “[a] geographic term
also objects to the Examining Attorney’s argument on reconsideration that the proposed
mark would be shorthand for the registered mark. 7 TTABVUE 12; 12 TTABVUE 6. However,
a change in rationale is not considered a new refusal and the Examining Attorney is
permitted to make such alternative arguments. TBMP § 1203.02(b) (2026).
39 April 1, 2025 Request for Reconsideration pp. 26-27.
40 April 30, 2025 Denial of Reconsideration pp. 7-32 (Wikipedia).

Serial No. 98727230
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may be used in a manner which is ... inherently distinctive, which includes arbitrary
and suggestive usage ....”.
Applicant has pointed out that Registrant’s services are offered in Minnesota, not
Montana; it also has not shown that Montana is known for physical rehabilitation
horse exercise and massage services. Therefore, we do not find MONTANA in
Registrant’s mark conceptually weak due to it being a geographic term.
The Examining Attorney’s evidence also shows that MONTANA and ROSE can
be surnames.41 Generally, without evidence of acquired distinctiveness, surnames are
conceptually weak and only entitled to a narrow scope of protection. Harry Winston,
Inc. v. Bruce Winston Gem Corp., No. 91153147, 2014 TTAB LEXIS 284 at *107.
However, a mark that combines two surnames is not primarily merely a surname,
within the meaning of Section 2(e)(4), unless there is evidence of record showing that
the combination would be perceived by the public primarily merely as a surname. See
In re Standard Elektrik Lorenz A.G., 371 F.2d 870, 873 (CCPA 1967) (insufficient
evidence in record to show combined terms SCHAUB-LORENZ primarily merely a
surname; it was error to dissect the mark and not consider the mark in its entirety).42
Additionally, MONTANA ROSE also might be perceived as two given names, or a
given name combined with a surname, neither of which would be primarily merely a
surname. See In re P.J. Fitzpatrick, Inc., No. 77256618, 2010 TTAB LEXIS 221, at
41 The ROSE Wikipedia personal name entry briefly indicates ROSE is a flower name. April
30, 2025 Denial of Reconsideration p. 36.
42 There is no evidence in the record regarding the combination MONTANA ROSE as a
surname.

Serial No. 98727230
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*9-10 (full name is not primarily merely a surname); Brooks v. Creative Arts By
Calloway, LLC, No. 91160266, 2009 TTAB LEXIS 653, at *19 (“A personal name
mark, unless it is primarily merely a surname, is registrable on the Principal Register
without a showing of secondary meaning, and thus is deemed to be inherently
distinctive under the Lanham Act if the record shows that it is used in a manner that
would be perceived by purchasers as identifying the services in addition to the
person”). See also, Ex parte Omaha Cold Storage Co., 1956 Commr. Pat. LEXIS 66,
at *1 (no number in original) (the record shows “‘DOUGLAS’ is the name of a Scottish
clan; it is a surname; it is a geographical name for cities and counties; it is the name
of a street in many localities; it is a species of fir tree; it is a species of squirrel; and
it is a baptismal name”; DOUGLAS not primarily merely a surname.).
Therefore, we do not find conceptual weakness in the term(s) MONTANA or
MONTANA ROSE due to surname significance.
Applicant also points to the weakness of the term EQUINE. “Equine” is defined
as “[o]f or relating to, or affecting horses or other members of the horse family.”43
Additionally, EQUINE has been disclaimed by Registrant, and this is an admission
relevant to conceptual strength as to this component of the cited mark. See Made in
Nature, 2022 TTAB LEXIS 228, at *26 (comment by witness that MADE IN NATURE
is “descriptive” is an admission relevant to the conceptual strength of the mark); In
43 April 1, 2025 Request for Reconsideration pp. 28-29. The definition provided by the
Examining Attorney for equine is as follows: “1. Of, relating to, or characteristic of a horse.
2. Of or belonging to the family Equidae, which includes the horses, asses, and zebras.” 11
TTABVUE 14.

Serial No. 98727230
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re Pollio Dairy Prods. Corp., No. 73596577, 1988 TTAB LEXIS 45, at *3 n.4 (“By its
disclaimer of the word LITE, applicant has conceded that the term is merely
descriptive as used in connection with applicant’s goods.”). Therefore, EQUINE in
Registrant’s mark is a conceptually weak term.
Although EQUINE in Registrant’s mark is conceptually weak, we do not find
MONTANA to be a conceptually weak component in Registrant’s mark. We find the
sixth DuPont factor neutral.
D. 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. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en
1772, 396 F.3d 1369, 1371 (Fed. Cir. 2005) (citing DuPont, 476 F.2d at 1361).
Similarity in any one of these elements may be sufficient to find the marks
confusingly similar. In re Davia, No. 85497617, 2014 TTAB LEXIS 214, at *4.
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 Nat’l Data Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985).
Disclaimed matter that is descriptive or generic of a party’s goods is typically less
significant or less dominant when comparing marks. Citigroup Inc. v. Cap. City Bank
Grp., 637 F.3d 1344, 98 USPQ2d 1253, 1257 (Fed. Cir. 2011) (when a mark consists

Serial No. 98727230
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of two or more words, some of which are disclaimed, the word not disclaimed is
generally regarded as the dominant or critical term) (citing In re Dixie Rests. Inc., 105
F.3d 1405, 1407 (Fed. Cir. 1997)); In re Hughes Furniture Indus., 2015 TTAB LEXIS
65, at *16 (disclaimed terms not dominant portion of mark) (citations omitted).
The test under the first DuPont factor is not whether the marks can be
distinguished when subjected to a side-by-side comparison, but rather whether the
marks are sufficiently similar in terms of their overall commercial impression that
confusion as to the source of the services offered under the respective marks is likely
to result. 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 specific, impression of trademarks. See Inter IKEA Sys. B.V. v.
Akea, LLC, No. 91196527, 2014 TTAB LEXIS 166, at *17; Sealed Air Corp. v. Scott
Paper Co., No. 91055167, 1975 TTAB LEXIS 236, at *6. Additionally, “[w]hen marks
would appear on virtually identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate
Corp. v. Century Life of Am., 970 F.2d 874, 877 (Fed. Cir. 1992).
The marks are MONTANA EQUINE (EQUINE disclaimed) and MONTANA
ROSE EQUINE THERAPY (EQUINE THERAPY disclaimed). The marks are both in
standard characters which means that no claim is made to any particular font style,
size, or color. Trademark Rule 2.52, 37 C.F.R. § 2.52.
Applicant argues that the marks MONTANA EQUINE and MONTANA ROSE
EQUINE THERAPY are not similar in appearance, sound, connotation, or

Serial No. 98727230
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commercial impression when considered in their entireties.44 Applicant further
maintains that the marks differ structurally and aurally in their entireties because
one mark has two words and the other has four, Applicant’s mark does not include
ROSE or THERAPY, and the marks have a different cadence and sound.45 Applicant
argues that the Examining Attorney erred in relying on terms whose primary
significance is geographic and/or merely descriptive of the subject matter of the
services (MONTANA and EQUINE).46 Applicant argues that “term ‘Montana’ does
not in fact connote a ‘name’ except one that is geographic in nature.”47 Applicant
argues that its mark (under Section 2(f) as a whole with a disclaimer of EQUINE),
gives the commercial impression of its geographic practice area and the nature of
equine services, whereas Registrant’s mark would not give the same connotation as
it is located in Minnesota.48 Applicant points out that purchasers referencing
Registrant’s mark in “shorthand” would use MONTANA ROSE, not MONTANA, in
44 7 TTABVUE 8.
45 7 TTABVUE 11.
46 7 TTABVUE 11.
47 7 TTABVUE 13, note.
48 7 TTABVUE 14.

Serial No. 98727230
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view of the disclaimers and Registrant’s own marketing.49 Applicant argues the case
law cited by the Examining Attorney is not on point.50
We are not persuaded by Applicant’s argument that the differences between the
numbers of words, letters or syllables is sufficient to distinguish the marks. A
determination of likelihood of confusion is not made on a purely mechanical basis.
Fuji Jyukogyo K.K. v. Toyota Jidosha K.K., No. 91063523, 1985 TTAB LEXIS 31, at
*8 (“Purchasers do not count letters when reacting to trademarks in the
marketplace.”); Am. B.D. Co. v. N.P. Beverages, Inc., No. 91060900, 1981 TTAB
LEXIS 117, at *2 (“Purchasers are not expected to, and do not, count the number of
letters which marks have in common.”) (citing cases); In re John Scarne Games, Inc.,
1959 TTAB LEXIS 31, at *1 (no proceeding number in original) (“Purchasers of game
boards do not engage in trademark syllable counting[;] they are governed by general
impressions made by appearance or sound, or both.”).
The marks are similar in sound and appearance to the extent that they both
contain the identical terms MONTANA and EQUINE. The points of dissimilarity are
the additional terms in Registrant’s mark: the term ROSE in the middle of
Registrant’s mark and the end term THERAPY, disclaimed.
49 7 TTABVUE 13. Applicant references Registrant’s display of the mark on its website and
its Facebook marketing. 7 TTABVUE 14; April 1, 2025 Request for Reconsideration pp. 46-
49; November 20, 2024 Response to Office Action pp. 34-35. However, because both marks
are in standard characters, they are not limited to any particular display, including the
manner in which they are currently used; they could be displayed in the same manner.
Therefore, it is irrelevant that the display of the marks in actual use is different.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 950 (Fed. Cir. 2000).
50 7 TTABVUE 10.

Serial No. 98727230
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In view of the disclaimers in each mark (EQUINE and EQUINE THERAPY), the
dominant term in Applicant’s mark is MONTANA while the dominant terms in
Registrant’s mark are MONTANA ROSE. See In re Allegiance Staffing, No.
85663950, 2015 TTAB LEXIS 180, at *11 (“Because descriptive words have little
source-indicating significance, it is appropriate that we give less weight”). The lead
element MONTANA in each of the marks has a position of prominence, as the first
word in each mark. Presto Prods. v. Nice-Pak Prods., No. 91074797, 1988 TTAB
LEXIS 60, at *8 (“[I]t is often the first part of a mark which is most likely to be
impressed upon the mind of a purchaser and remembered ....”).
Applicant’s mark and Registrant’s mark are similar in connotation and
commercial impression. Both marks begin with MONTANA and include equine-
related wording. Although disclaimed, the wording EQUINE and EQUINE
THERAPY conveys similar meanings because both refer to horses or other members
of the horse family, with EQUINE THERAPY merely identifying a more specific type
of equine-related service.
Applicant’s argument that MONTANA is a geographical term does not avoid a
finding of similarity. As discussed above, MONTANA is not geographically
descriptive as applied to Registrant’s services, which originate in Minnesota. The
term MONTANA appears as the identical first word in both marks and contributes
similarly to the marks’ connotations, whether consumers perceive MONTANA in
Registrant’s mark as arbitrary, geographic in the abstract, or name-like. Although
ROSE adds some additional connotation to Registrant’s mark, and THERAPY further

Serial No. 98727230
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specifies the type of equine services, these additions do not materially alter the
similar overall commercial impression created by the shared initial term MONTANA
and the related wording EQUINE.
Considered in their entireties, we find that Applicant’s MONTANA EQUINE
mark and Registrant’s MONTANA ROSE EQUINE THERAPY mark are similar
overall in appearance, sound, connotation, and commercial impression due to the
shared terms MONTANA and EQUINE, which are likely to create a similar overall
recollection of the marks. Even if consumers note and remember the additional
middle and end words in Registrant’s mark, they are not likely to ascribe the
differences between the marks to differences in the source of the respective services.
E. Actual Confusion
The seventh and eighth DuPont factors consider, respectively, the nature and
extent of any actual confusion, and the length of time and conditions under which
there has been concurrent use without evidence of actual confusion. DuPont, 476 F.2d
at 1361. Under the eighth DuPont factor, we “look at actual market conditions, to the
extent there is evidence of such conditions of record.” In re Guild Mortg. Co., No.
86709944, 2020 TTAB LEXIS 17, at *19. For the absence of actual confusion to be
probative, there must have been a “significant opportunity” for confusion to have
occurred. Barbara’s Bakery Inc. v. Landesman, No. 76308993, 2007 TTAB LEXIS 9,
at *14.

Serial No. 98727230
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Applicant argues “there also is no evidence of actual consumer confusion
regarding the marks at issue, notwithstanding two years of concurrent use and
significant opportunity for any confusion to occur.”51
However, as to the seventh factor, “uncorroborated statements of no known
instances of actual confusion are of little evidentiary value” and this factor is neutral.
In re Majestic Distilling Co., 315 F.3d at 1317. Moreover, in the context of an ex parte
appeal, there is no opportunity to hear from the registrant about whether it is aware
of any reported instances of confusion. See In re Opus One, Inc., No. 75722593, 2001
TTAB LEXIS 707, at *19-20 (citations omitted) (“The fact that an applicant in an ex
parte case is unaware of any instances of actual confusion is generally entitled to
little probative weight in the likelihood of confusion analysis, inasmuch as the Board
in such cases generally has no way to know whether the registrant likewise is
unaware of any instances of actual confusion, nor is it usually possible to determine
that there has been any significant opportunity for actual confusion to have
occurred.”).
As to the eighth DuPont factor, we have considered the evidence of actual market
conditions but as Applicant itself indicated, Applicant’s and Registrant’s services
have never operated in the same geographic markets or overlapped. Therefore, we
find this factor neutral. Stratus Networks, 955 F.3d at 1000 (finding no error in the
Board’s finding that the eighth DuPont factor was neutral where the parties’ services
51 7 TTABVUE 19.

Serial No. 98727230
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did not geographically overlap because, “as a result, the record indicates that no
consumers were exposed to both trademarks during the relevant time periods”).
F. Variety of Goods or Services On Which the Mark Is Used
This DuPont factor considers “the variety of goods [or services] on which a mark
is or is not used.” DuPont, 476 F.2d at 1361. Applicant argues that “neither the
Applicant or the registrant utilize the marks for the sale of goods or other products
to consumers” and the services are not provided through the internet.52 We presume
that Applicant is arguing that this factor is entitled to no weight because no goods
are involved. However, this factor could also be applied to services.
In view of our finding that there is identity and legal identity of the services in
part, “there is no need to rely on this factor which, in essence, is used to show
relatedness of the goods and services.” KME Germany v. Zhejiang Halliang Co., Ltd.,
No. 91267675, 2023 TTAB LEXIS 379, at *55, (subsequent history omitted). This
factor is neutral.
G. Market Interface
The tenth DuPont factor requires us to consider evidence pertaining to the
“market interface” between the parties, including evidence of any past dealings
between the parties which might be indicative of a lack of confusion. DuPont, 476
F.2d at 1361.”
52 7 TTABVUE 19.

Serial No. 98727230
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Applicant’ assertion that there is “no market overlap or interface” between
Applicant and Registrant does not establish any market interface relevant under the
tenth DuPont factor. 53 See In re Opus One, Inc., 2001 TTAB LEXIS 707, at *31 (most
of the reported decisions involving the tenth DuPont factor “have focused on factor
10(a), ‘a mere ‘consent’ to register or use,’ and on factor 10(b), ‘agreement provisions
designed to preclude confusion, i.e., limitations on continued use of the marks by each
party.’”).
Here, there is no consent agreement, license, arrangement, or prior dealings
between the parties that would bear on likelihood of confusion. Any assertion of no
actual marketplace overlap by Applicant is also unpersuasive because the involved
application and cited registration are not geographically limited and would afford
presumptive nationwide rights. This DuPont factor is neutral.
H. Right to Exclude
This DuPont factor considers any evidence that Applicant has a right to exclude
third parties from using its applied-for mark. DuPont, 476 F.2d at 1361. Under this
factor, the Board assesses whether the applicant has achieved “an appreciable level
of consumer recognition” and whether the applicant could demonstrate having
“successfully asserted its [trademark] rights.” McDonald’s Corp. v. McSweet, LLC,
No. 91178758, 2014 TTAB LEXIS 351 at *45.
53 7 TTABVUE 19.

Serial No. 98727230
- 30 -
Applicant points to its common law trademark rights “under Montana law” and
its Montana state trademark registration as supporting its right to exclude under
Montana law (MCA 30-13-335) with respect to infringing parties as well as its
statutory enforcement rights and remedies under Montana law.54
However, mere assertion of common law use and its rights under Montana
trademark law is insufficient in the absence of any advertising or sales information
or evidence of successful enforcement activity asserting its rights under the mark.55
See Monster Energy Co. v. Chun Hua Lo, No. 91225050, 2023 TTAB LEXIS 14, at *67
(“the factor may consider any successful trademark enforcement activity in which the
applicant has engaged ....”); DeVivo v. Ortiz, No. 91242863, 2020 TTAB LEXIS 15, at
*46 (factor relating to the right to exclude is neutral where party “has not provided
any significant information about the advertising and sales of [its] goods ... offered
under [its] mark”); In re Davey Prods. Pty, 2009 TTAB LEXIS 524, at *25
(“[A]pplicant’s mere assertion of common-law use of its mark for ten years in itself
54 7 TTABVUE 20; April 1, 2025 Request for Reconsideration pp. 50-52.
55 The Examining Attorney advises in the brief that the Applicant’s prior registration (No.
4894505) cancelled on August 12, 2022 and Registrant’s mark ultimately registered after its
cancellation. 11 TTABVUE 12-13, note 1. Applicant provided a copy of the prior registration
in its August 31, 2024 Request to Make Special.
Although Applicant provides its use history since 2006, Applicant’s priority is not relevant in
this ex parte proceeding. In re Calgon Corp., 435 F.2d 596, 598 (CCPA 1971) (“As the board
correctly pointed out, ‘the question of priority of use is not germane to applicant’s right to
register’ in this ex parte proceeding”) (citation omitted).
If Applicant believed it had priority, it could have sought to cancel the mark within the fifth-
year anniversary of the date of the cited registration, 15 U.S.C § 1064 or if Applicant believed
likelihood of confusion with Registrant’s mark was unlikely, it could have sought a consent
agreement from Registrant. See, e.g., In re Four Seasons Hotels Ltd., 987 F.2d 1565 (Fed. Cir.
1993).

Serial No. 98727230
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[does not] suffice to establish that applicant has any significant right to exclude
others from use of the mark.”). We find this factor neutral.
I. Extent of Potential Confusion
The twelfth DuPont factor “discusses ‘[t]he extent of potential confusion, i.e.,
whether de minimis or substantial.’” DuPont 476 F.2d at 1361.
Applicant argues that Applicant’s and Registrant’s services are local so “there is
no potential for mark confusion or the potential for any confusion is de minimis given
the limited number of consumers involved.”56
We agree that the services are not mass-market services and are directed to a
specialized class of consumers. However, the record does not establish that the
number of potential consumers is so limited that confusion would be de minimis. We
find this factor neutral.
J. Any Other Established Fact Probative of the Effect of Use
The thirteenth DuPont factor examines “any other established fact probative of
the effect of use.” DuPont, 476 F.2d at 1361. Rarely invoked, the thirteenth DuPont
factor is intended to accommodate “the need for flexibility in assessing each unique
set of facts.” In re Strategic Partners, No. 77903451, 2012 TTAB LEXIS 80 at *6. “This
du Pont factor is highly fact specific and it is under very specific circumstances that
this factor may matter.” In re Country Oven, Inc., 2019 TTAB LEXIS 381, at *23-24.
56 7 TTABVUE 20.

Serial No. 98727230
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Applicant points to its “Request to Make Special,” its asserted continuous use of
the mark since 2006,57 its registration for an identical mark issued in 2016, (now
cancelled) and argues that these facts “obviat[e] any remaining concern that a recent
2021 registrant could suffer an adverse commercial impact due to use of a similar
mark by a newcomer.”58
Applicant did have a prior federal registration for the identical mark and
services.59 However, since Applicant’s prior federal registration cancelled prior to the
issuance of the cited registration, Applicant’s prior federal registration and the cited
registration never co-existed on the Principal Register.60 “[W]e find that the USPTO’s
57 Applicant provided a Section 2(f) declaration alleging continuous use for five years
proceeding September 3, 2024. September 23, 2024 Preliminary Amendment. Applicant also
provided a prior Section 2(f) declaration offered in conjunction with the examination of its
prior federal registration alleging continuous use for 5 years previous to September 10, 2015.
November 20, 2024 Response to Office Action, p. 33.
58 7 TTABVUE 20.
59 We point out that even assuming that Applicant maintains an active Montana state
trademark registration (registered until 2030), a state registration does not carry the same
presumptions as a federal registration. It is well-established that in trademark proceedings
before the USPTO, state registrations are neither controlling on the question of trademark
usage nor on the question of federal registrability of a mark. See In re Vico Prods. Mfg., No.
73358424, 1985 TTAB LEXIS 4, at *24-25 (state trademark registrations are of relatively
little probative value because it is the federal trademark statute and the cases interpreting
it by which we must evaluate the registrability of applicant’s asserted mark) (subsequent
history omitted); Philip Morris Inc. v. Liggett & Myers Tobacco Co., 1963 TTAB LEXIS 135,
at *11 (no number in original) (“Puerto Rican registration as in the case of State or foreign
registrations is not determinative or controlling on the question of the registrability of a
particular designation under the provisions of the [federal trademark] statute involved
herein.”).
60 As indicated, Applicant’s earlier MONTANA EQUINE registration has been cancelled; it
is not entitled to any of the presumptions of Section 7(b) of the Trademark Act, 15 U.S.C.
§ 1057(b). See Anderson, Clayton & Co. v. Krier, 478 F.2d 1246, 1248 (CCPA 1973) (“Whatever
benefits a registration conferred upon appellee were lost by him when he negligently allowed
his registration to become canceled.”). Applicant's cancelled prior registration does not justify
registration of its current application because the cancellation “destroys the Section [7(b)]
presumptions and makes the question of registrability ‘a new ball game’ which must be

Serial No. 98727230
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issuance of Applicant’s prior registration[ ] does not weigh against a finding of
likelihood of confusion. Indeed, there is no rule that a prior registration entitles a
party to another registration.” In re Country Oven, Inc., 2019 TTAB LEXIS 381, at
*23-24. We find this factor neutral.
II. Conclusion
As a final step, we “weigh the DuPont factors used in [our] analysis and explain
the results of that weighing.” In re Charger Ventures, 64 F.4th at 1384 (emphasis
omitted). The similarity of the marks, the in-part identity and legal identity of the
services, and the presumed overlap in trade channels and classes of consumers for
the in-part identical and legally identical services weigh in favor of finding a
likelihood of confusion. The conditions of sale weighs against such a finding, and the
remaining DuPont factors are neutral.
On balance, however, the factor weighing against confusion is outweighed by the
similarity of the marks, the identical-in-part and legally identical services, and the
overlapping trade channels and consumers. Accordingly, we find confusion likely. See
HRL Assocs., Inc. v. Weiss Assocs., Inc., No. 91075632, 1989 TTAB LEXIS 33, at *14-
15 (finding similarities of goods and marks outweigh sophisticated purchasers,
careful purchasing decision, and expensive goods), aff’d, 902 F.2d 1546 (Fed. Cir.
1990).
predicated on current thought.” In re Ginc UK Ltd., No. 78618843, 2007 TTAB LEXIS 83, at
*24 (TTAB 2007) quoting In re Hunter Publ. Co., 1979 TTAB LEXIS 87, at *19 (no number
in original).

Serial No. 98727230
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Decision: The Section 2(d) refusal to register Applicant’s mark MONTANA
EQUINE is affirmed.