In Re CHARGER VENTURES LLC

Case: 22-1094 Document: 39 Page: 1 Filed: 04/13/2023
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: CHARGER VENTURES LLC,
Appellant
______________________
2022-1094
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
88340651.
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Decided: April 13, 2023
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WILLIAM D. DAY, William Day Law Group, Bethesda,
MD, argued for appellant Charger Ventures LLC.
THOMAS L. CASAGRANDE, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, ar-
gued for appellee Katherine K. Vidal. Also represented by
CHRISTINA J. HIEBER, THOMAS W. KRAUSE, MONICA BARNES
LATEEF, FARHEENA YASMEEN RASHEED, MEREDITH HOPE
SCHOENFELD.
______________________
Before PROST, REYNA, and STARK, Circuit Judges.
REYNA, Circuit Judge.
Charger Ventures LLC appeals from a Trademark
Trial and Appeal Board decision that denied registration of
Charger’s trademark SPARK LIVING on grounds of
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2 IN RE: CHARGER VENTURES LLC
likelihood of confusion with an earlier registered trade-
mark, SPARK. On appeal, Charger challenges the Board’s
likelihood of confusion determination. Because the Board’s
determination is supported by substantial evidence, we af-
firm.
BACKGROUND
Appellant Charger Ventures LLC (“Charger”) filed in-
tent-to-use application No. 88,340,651 to register SPARK
LIVING on the Principal Register in International Class
036 for leasing of real estate; real estate listing; real estate
service, namely, rental property management. J.A. 22–27.
The examining attorney refused registration under Trade-
mark Act Section 2(d) of the Lanham Act, 15 U.S.C.
§ 1052(d), on grounds of a likelihood “to cause confusion, or
to cause mistake, or to deceive with an earlier registered
mark.” J.A. 30–32.
The earlier registered mark, SPARK, was registered
for “[r]eal estate services, namely, rental brokerage, leas-
ing and management of commercial property, offices and
office space.” Appellee’s Br. 2; J.A. 33. The examining at-
torney noted that (1) “a comparison of the respective marks
show[s] that they are comprised either in whole or signifi-
cant part of the term ‘SPARK,’” J.A. 30, and (2) both marks
are for real estate services, with “overlapping identifica-
tions of leasing and rental management services,” J.A. 31.
Charger then amended its description of services to only
cover residential real estate services. J.A. 125. In the
amendment, Charger asserted that the examining attorney
failed to compare the marks in their entireties—SPARK
(hereinafter, “registrant’s mark”) versus SPARK LIVING.
J.A. 127–28.
The examining attorney issued a new office action, re-
quiring Charger to disclaim “LIVING” because “adding a
term to a registered mark” or “[i]ncorporating the entirety
of one mark within another does not obviate the similarity
between the compared marks . . . nor does it overcome a
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IN RE: CHARGER VENTURES LLC 3
likelihood of confusion.” J.A. 138. Thus, the examining at-
torney found, the marks had similar sound, appearance,
connotation and commercial impression and similarity in
just one element of a mark, alone, is sufficient to find like-
lihood of confusion. Id. Charger filed a response, dis-
claimed the term “LIVING,” and again amended the
description to “specifically” exclude commercial property
and office space—the services of registrant’s mark. J.A.
200, 209–10. On July 13, 2020, the examining attorney is-
sued a final office action maintaining the refusal. J.A. 290–
93. Charger appealed the refusal to the Trademark Trial
and Appeal Board (“Board”) and filed a request to recon-
sider the final office action, which stayed the appeal. Ap-
pellant’s Br. 6. The Board denied the request and resumed
the appeal. Id. The Board affirmed the refusal to register
Charger’s mark after finding a likelihood of confusion. J.A.
2.
BOARD DECISION
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 to deceive.” 15
U.S.C. § 1052(d) (also called Section 2(d)). To determine
whether a likelihood of confusion exists under section 2(d),
the Board considers the so-called DuPont factors in its
analysis. In re E.I. du Pont de Nemours & Co., 476 F.2d
1357, 1361 (CCPA 1973) (reciting thirteen factors to be con-
sidered, referred to as “DuPont factors”).
In this case, the Board addressed five of the Dupont
factors: (1) similarity or dissimilarity of the marks, (2) sim-
ilarity of dissimilarity of the nature of the goods or services,
(3) the similarity or dissimilarity of established, likely-to-
continue trade channels, (4) the conditions under which
and buyers to whom sales are made, and (5) strength of the
mark (e.g., the number and nature of similar marks in use
on similar goods). J.A. 2–19. The Board found that two of
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4 IN RE: CHARGER VENTURES LLC
the factors were “key factors”: the similarity or dissimilar-
ity of the marks as well as the goods or services. J.A. 3
(citing Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 1103 (CCPA 1976)).
First, the Board considered the similarity or dissimi-
larity of the services. J.A. 3–9. Noting that the services
need not be “identical or even competitive” but merely “re-
lated in some manner,” J.A. 3, the Board found that the
examining attorney had submitted persuasive evidence of
third-party registrations from the trademark search sys-
tem, TESS, that showed that residential real estate ser-
vices and commercial real estate services “may emanate
from a single source under a single mark,” J.A. 4. The ex-
amining attorney had submitted website evidence showing
commercial and residential real estate services offered un-
der the same or similar marks. Id. Noting that use-based
third-party registrations alone are not evidence that the
public is familiar with them, the Board found that this ev-
idence has “some probative value” as they “suggest” that
the services are related and can be offered under the same
mark. Id. at 7. On this basis, the Board found that the
third-party registrations and website evidence sufficiently
showed relatedness of the services. Id. at 9.
Second, the Board considered the trade channels. J.A.
9–11. The Board presumed that the services would be mar-
keted in “all normal trade channels,” because neither
Charger nor the registrant restricted their respective trade
channels. Id. at 9. The Board considered the examining
attorney’s Internet evidence that commercial and residen-
tial real estate services can be offered by the same entity,
either on different or the same website(s). Id. at 10. After
assessing that evidence, the Board found “some overlap” in
the commercial and residential trade channels. Id. at 11.
Third, the Board considered the conditions of sale. J.A.
11. The Board acknowledged that the services offered are
“not average consumer services” and that the purchaser
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IN RE: CHARGER VENTURES LLC 5
would exercise elevated care due to the nature and cost of
real estate services. Id. at 12 (citing Elec. Design & Sales
Inc. v. Elec. Data Sys. Corp., 954 F.2d 713, 718 (Fed. Cir.
1992)). Nevertheless, the Board noted that “even careful
or sophisticated purchasers are not immune from source
confusion.” Id. (citing In re Rsch. Trading Corp., 793 F.2d
1276, 1279 (Fed. Cir. 1986)). Without assigning weight to
the factor, the Board found that the “classes of consumers
may overlap.” J.A. 11.
Fourth, the Board considered the strengths of the
marks. Id. at 12. Charger submitted a third-party regis-
tration of the mark SPARK LABS to show that SPARK is
conceptually weak, but the Board was unpersuaded. Id. at
13. Charger submitted a chart reflecting marketplace uses
of the term SPARK in real estate services. Id. at 13–14.
The Board ultimately found that the use-based evidence
was “probative of commercial weakness” but noted that the
term SPARK was not used alone in these examples. Id. at
14. So, while the evidence shows that there is “some com-
mercial weakness,” the Board found that “even weak
marks are entitled to protection.” Id. at 15 (citing King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
1401 (CCPA 1974) (“Confusion is confusion. The likelihood
thereof is to be avoided, as much between ‘weak’ marks as
between ‘strong’ marks, or as between a ‘weak’ and a
‘strong’ mark.”)). The Board also found Charger’s next
chart, which showed third-party registrations of different
entities using similar registered marks in the real estate
industry, not probative, as such evidence typically is before
the Board. J.A. 16 (citing In re Joel Embiid, 2021 WL
2285576, at *17 (TTAB 2021)). The Board found some com-
mercial weakness in the mark SPARK for real estate ser-
vices. J.A. 15.
Fifth, the Board considered the similarity or dissimi-
larity of the marks. J.A. 17. Under this factor, the Board
assessed the appearance, sound, connotation, and overall
commercial impression of the marks—not in a side-by-side
Case: 22-1094 Document: 39 Page: 6 Filed: 04/13/2023
6 IN RE: CHARGER VENTURES LLC
comparison—to determine whether the marks are suffi-
ciently similar in their overall impression as to cause con-
fusion. Id. (citing Palm Bay Imps. Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371–
72 (Fed. Cir. 2005); Coach Servs., Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 1368 (Fed. Cir. 2012)). The Board con-
sidered the fact that both marks comprise the term
SPARK. J.A. 17. It also noted that the term LIVING in
Charger’s mark is both descriptive of real estate services
and disclaimed, thereby making that term subordinate to
SPARK and less significant. Id. (citing In re Detroit Ath-
letic Co., 903 F.3d 1297, 1305 (Fed. Cir. 2018)). As the first
term or word of Charger’s mark, SPARK is the portion the
Board found most likely to be remembered by consumers.
Id. at 18. It also noted that Charger’s mark “incorporates
Registrant’s entire mark.” Id. (citing Presto Prods. Inc. v.
Nice-Pak Prods., Inc., 1988 WL 252340, at * 3 (TTAB 1988);
Coca-Cola Bottling Co. v. Seagram & Sons, Inc., 526 F.2d
556, 557 (CCPA 1975)). The Board found that SPARK
LIVING is “overall very similar to SPARK” and that the
differences between the marks “do not outweigh the strong
similarities” when evaluated as a whole. Id. at 19. The
Board found that consumers encountering Charger’s mark
are likely to mistakenly believe that the mark represents a
variation on the registered mark. Id.
The Board concluded that, despite some commercial
weakness in the term SPARK and sophistication of con-
sumers, there was “insufficient evidence in the record” to
overcome the “close similarity” of the marks and related-
ness of the services. Id.
Charger timely appealed. We have jurisdiction under
12 U.S.C. § 1295(a)(4)(B).
DISCUSSION
Likelihood of confusion is a question of law with under-
lying factual inquiries based on the DuPont factors. Stra-
tus Networks, Inc. v. UBTA-UBET Commc’s Inc., 955 F.3d
Case: 22-1094 Document: 39 Page: 7 Filed: 04/13/2023
IN RE: CHARGER VENTURES LLC 7
994, 998 (Fed. Cir. 2020). We review the legal question of
likelihood of confusion de novo. On-Line Careline, Inc. v.
America Online, Inc., 229 F.3d 1080, 1084 (Fed. Cir. 2000).
We review the Board’s weighing of the Dupont factors de
novo, QuickTrip West, Inc. v. Weigel Stores, Inc., 984 F.3d
1031, 1034 (Fed. Cir. 2021), but we review the Board’s fac-
tual findings on each Dupont factor for substantial evi-
dence, Hylete LLC v. Hybrid Athletics, LLC, 931 F.3d 1170,
1173 (Fed. Cir. 2019). Substantial evidence is “more than
a mere scintilla”—“it means such relevant evidence as a
reasonable mind might accept as adequate to support a
conclusion.” Consolidated Edison Co. of New York v.
N.L.R.B., 305 U.S. 197, 216–17 (1938). The possibility of
drawing two inconsistent conclusions from the evidence
does not prevent the Board’s findings from being supported
by substantial evidence. Consolo v. Fed. Maritime
Comm’n, 383 U.S. 607, 620 (1966).
In any given case, different DuPont factors may play a
dominant role and some factors may not be relevant to the
analysis. Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d
1367, 1370 (Fed. Cir. 2002). The Board is required to con-
sider each factor for which it has evidence, but it can focus
its analysis on dispositive factors. In re Dixie Restaurants,
Inc., 105 F.3d 1405, 1406–07 (Fed. Cir. 1997). A single
DuPont factor may, for example, be dispositive of the like-
lihood of confusion analysis. Kellogg Co. v. Pack’em En-
ters., Inc., 951 F.2d 330, 333 (Fed. Cir. 1991). The weight
given to each factor depends on the circumstances of each
case. Dixie Restaurants, Inc., 105 F.3d at 1407.
Charger challenges each factual finding that the Board
made on the DuPont factors. Appellee’s Br. 13. At bottom,
Charger asks us to reweigh the evidence considered by the
Board, which is not the role of this court. Stratus Networks,
955 F.3d at 998. We instead evaluate whether the evidence
relied on by the Board is supported by substantial evi-
dence. Henkel Corp. v. Procter & Gamble Co., 560 F.3d
Case: 22-1094 Document: 39 Page: 8 Filed: 04/13/2023
8 IN RE: CHARGER VENTURES LLC
1286, 1290 (Fed. Cir. 2009). We find that the Board’s fac-
tual findings here are supported by substantial evidence.
First, Charger makes a series of arguments related to
the Board’s comparison of the marks when it assessed the
appearance, sound, connotation and commercial impres-
sion. To Charger, the Board dissected its mark—which
this court has prohibited doing—when it gave no meaning-
ful weight to the term “LIVING.” Appellant’s Br. 20–21
(citing China Healthways Inst., Inc. v. Xiaoming Wang, 491
F.3d 1337, 1340 (Fed. Cir. 2007)). Charger argues that, if
the Board had evaluated the marks in their entireties, it
would not have found a likelihood of confusion, nor would
it have denied registration based on its incorporation of an-
other mark. Appellant’s Br. 21–22. In other words, keep-
ing the mark as SPARK LIVING would arguably result in
a different appearance, sound, and meaning. Id. at 23.
Subsumed in this argument is Charger’s challenge to the
allegedly improper weight allotted by the Board to SPARK
because third-party use of the term should demonstrate
weakness. Id. at 24.
Appellee, the Director of the USPTO (hereinafter, “the
Director”), notes that Charger disclaimed the word
LIVING in its mark, thereby giving it less source-identify-
ing significance and making it subordinate to the term
SPARK. Appellee’s Br. 14 (“where terms are disclaimed,
the disclaimer supplies ‘rational reasons for giving those
terms less weight in the analysis’”) (citing Detroit Athletic,
903 F.3d at 1305).
Disclaimer of a word in an application to register a
mark has “no legal effect on the issue of likelihood of con-
fusion” because the public is unaware what words have
been disclaimed. In re Nat’l Data Corp., 753 F.2d 1056,
1059 (Fed. Cir. 1985); see also Shen Mfg. Co. v. Ritz Hotel
Ltd., 393 F.3d 1238, 1243 (Fed. Cir. 2004). Thus, the Board
must consider the mark in its entirety. Detroit Athletic,
903 F.3d at 1305 (citation omitted); see also QuikTrip West,
Case: 22-1094 Document: 39 Page: 9 Filed: 04/13/2023
IN RE: CHARGER VENTURES LLC 9
984 F.3d at 1035. Here, as the Director points out, the
Board explicitly compared the marks “in their entireties”
and based its findings on the “overall commercial impres-
sion engendered by the marks as a whole.” J.A. 17–19. So,
while the Board must consider the disclaimed term, an ad-
ditional word or component may technically differentiate a
mark but do little to alleviate confusion. Detroit Athletic,
903 F.3d at 1304–05. We have previously found no error
with the Board’s decision to focus on dominant portions of
a mark. Id. at 1305. We find that the Board’s determina-
tion on this factor is supported by substantial evidence.
Second, Charger argues that the nature of the services
described by the marks are distinct. The distinction be-
tween residential property services (Charger’s mark) and
commercial real estate services (registrant’s mark) are
“substantially different.” Appellant’s Br. 25. Because reg-
istrant’s mark is limited and cannot be amended to include
residential services, Charger argues that it cannot gain
protection outside of that limited description. Id. at 25–26.
Charger asserts that nothing in the record suggests that
the companies offering both residential and commercial
services have limited themselves like the parties have
here. Id. at 26–27. Relatedly, Charger argues that the
trade channels significantly differ. Id. at 27.
The Director contends that both Charger and regis-
trant offer real estate property management and leasing
services and the record shows “dozens of registrations” that
cover both residential and commercial real estate services.
Appellee’s Br. 17. As for trade channels, the Director ar-
gues that the Board “properly found that neither the appli-
cation nor the registration sets forth any limitation on the
trade channels through which the services are offered, so
the presumption applies.” Id. at 19. Because the record
shows that companies are known to offer both residential
and commercial services under the same mark and, often,
on the same website, we find that substantial evidence sup-
ports the Board’s finding on these factors.
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10 IN RE: CHARGER VENTURES LLC
Third, Charger argues that the Board’s finding on the
class of purchasers was improper because the consumers of
Charger’s services are substantially different from regis-
trant’s services. Appellant’s Br. 28–29. Charger argues
that “[p]eople looking to buy a home or a condominium are
likely to take their time and make an educated decision be-
fore entering into these purchases because of the important
impact these decisions can have on their lives . . .”. Id. at
29. The Director asserts that Charger fails to identify
where, in the record, it has demonstrated that residential
property owners are distinct consumers from commercial
owners. Appellee’s Br. 21. Indeed, the Director argues that
“people who seek commercial real estate services live some-
where.” Id. (emphasis in original).
As the Board explained, careful or sophisticated con-
sumers are not immune from source confusion. J.A. 12 (cit-
ing In re Rsch. and Trading Corp., 793 F.2d at 1279 (“That
the relevant class of buyers may exercise care does not nec-
essarily impose on that class the responsibility of distin-
guishing between similar trademarks for similar goods.”)).
Paired with the potential overlap of consumers, substantial
evidence supports the Board’s determination on this factor.
Fourth, as for the factor regarding the number and na-
ture of similar marks in use on similar goods, Charger re-
iterates its evidence of third-party use showing variations
of the term SPARK in trademarks as evidence of weakness.
Charger argues that weakness of the mark “is paramount
in the likelihood of confusion analysis.” Appellant’s Br. 20.
The Director argues that all marks on the principal regis-
ter are presumed valid and distinctive and that even weak
marks are entitled to protection. Appellee’s Br. 23 (citing
Conde Nast Publ’ns, Inc. v. Miss Quality, Inc., 507 F.2d
1404, 1406 (CCPA 1975)).
Here, the Board agreed that Charger’s evidence of
third-party use was “probative” and that the term SPARK
accordingly has “some” level of weakness in real estate
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IN RE: CHARGER VENTURES LLC 11
services. J.A. 14–15. But it found such evidence was not
enough to render it unprotectable. J.A. 16. We agree. In
this case, Charger submitted one third-party registration
as evidence that SPARK is conceptually weak, J.A. 13, and
about twenty-four third-party uses of a SPARK-formative
mark, J.A. 15. Other cases relied upon by the Board have
included examples of third-party uses of a term that the
Board ultimately found relevant to its determination of a
likelihood of confusion. See Jack Wolfskin Ausrustung Fur
Draussen GmbH & Co. KGAA v. New Millennium Sports,
S.L.U., 797 F.3d 1363, 1373 n.2 (Fed. Cir. 2015) (finding
that fourteen third-party uses and registrations were pro-
bative of weakness); Juice Generation Inc. v. GS Enters.
LLC, 794 F.3d 1334, 1337 n.1 (Fed. Cir. 2015) (finding
twenty-six third-party uses or registrations incorporating
the relevant phrase probative of weakness). Substantial
evidence thus supports the Board’s determination on this
factor.
Furthermore, an “ex parte proceeding is not the proper
forum” for a trademark applicant to launch an attack on a
registered mark to try to narrow the scope of services de-
scribed. Detroit Athletic, 903 F.3d at 1309. “The relevant
inquiry in an ex parte proceeding focuses on the goods and
services described in the application and registration.” Id.
at 1307. Given that this is a proceeding between Charger
and the PTO, the registrant of SPARK is not a party and
cannot defend the validity of its trademark rights. Appel-
lee’s Br. 23; see also In re Calgon Corp., 435 F.2d 596, 598
(CCPA 1971) (finding that a collateral attack on the valid-
ity and ownership of a registration without seeking formal
cancellation proceedings is improper in an ex parte pro-
ceeding). A certificate of registration of a mark on the prin-
cipal register is “prima facie evidence of [its] validity,” 15
U.S.C. § 1057(b), and the Board properly considered this
when evaluating the registered mark’s potential weakness
in an ex parte proceeding.
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12 IN RE: CHARGER VENTURES LLC
Separately, Charger asserts that the Board failed to in-
dicate the weight it accorded to the factors and, conse-
quently, its analysis lacks substantial evidence.
Appellant’s Br. 30. Assigning weight to the factors is typi-
cally the Board practice. See, e.g., QuikTrip West, 984 F.3d
at 1036–37 (“We finally turn to the Board’s weighing of the
DuPont factors . . . Analysis of the DuPont factors consti-
tutes a balancing test.”). While we review the Board’s
weighing of the DuPont factors de novo, see QuikTrip West,
984 F.3d at 1035–37, it is important to our review that the
Board itself weigh the DuPont factors used in its analysis
and explain the results of that weighing. In order for this
court to exercise its duty of review, and to do so meaning-
fully, the Board must provide a reasonable explanation for
its findings, explaining the weight it assigned to the rele-
vant factors. SEC v. Chenery Corp., 318 U.S. 80, 94 (1943)
(“[C]ourts cannot exercise their duty of review unless they
are advised of the considerations underlying the action un-
der review.”). We will, nevertheless, “uphold a decision of
less than ideal clarity if the agency’s path may reasonably
be discerned.” Motor Vehicle Mfrs. Ass’n of U.S., Inc. v.
State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983).
Here, the agency’s path may be reasonably discerned.
Based on the record as a whole, there is sufficient evidence
from its assessment of the relevant DuPont factors to sup-
port the Board’s finding of a likelihood of confusion of
Charger’s mark SPARK LIVING. Accordingly, we affirm.
CONCLUSION
We hold that the Board’s decision is supported by sub-
stantial evidence. Accordingly, we affirm the Board’s re-
fusal to register based on the determination of a likelihood
of confusion.
AFFIRMED
COSTS
No costs.